`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner
`________________
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`________________
`
`
`
`
`
`PETITIONER’S OPENING BRIEF ON REMAND
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`06938-00001/12352983.5
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`
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`TABLE OF CONTENTS
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`Page
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`I.
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`II.
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`Introduction ...................................................................................................... 1
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`Technical Background ..................................................................................... 1
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`III.
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`Procedural Background ................................................................................... 2
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`IV. Claims 3-5 Are Obvious From Luo, Craw and Wolf ...................................... 4
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`A.
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`B.
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`C.
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`Claim 1 Has Already Been Found Invalid Based on Luo and
`Craw ...................................................................................................... 4
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`Claim 3 Is Rendered Obvious by Luo and Craw .................................. 5
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`Claims 4-5 Are Rendered Obvious by Luo, Craw, and Wolf ............... 8
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`V.
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`Claim 3 Is Obvious in View of Mault, Al-Ali, and Lee .................................. 9
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`VI. Conclusion ..................................................................................................... 10
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`i
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`TABLE OF AUTHORITIES
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`Page
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`CASES
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`Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed Cir. 2013) ........................................................................ 4
`
`Fitbit, Inc. v. Valencell, Inc.,
`964 F.3d 1112 (Fed. Cir. 2020) ............................................................ 3, 6, 10
`
`MaxLinear, Inc. v. CF CRESPE LLC,
`880 F.3d 1373 (Fed. Cir. 2018) ....................................................................... 5
`
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ..................................................................................... 2
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`06938-00001/12352983.5
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`i
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`I.
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`Introduction
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`This IPR is the last one remaining from a series of IPRs filed by Apple Inc.
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`(“Apple”) and joined by Petitioner Fitbit, Inc. (“Fitbit”). In every other IPR, this
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`Board found the claims of Patent Owner Valencell, Inc. (“Valencell”) unpatentable,
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`and the Federal Circuit has since affirmed the Board’s decisions. Even in this IPR,
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`the Board issued a final written decision finding claims 1-2 and 6-13 of U.S. Patent
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`No. 8,923,941 (“’941 patent”) unpatentable. Valencell did not appeal that decision.
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`Dependent claims 3-5 add little to the subject matter already found obvious
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`and invalid in claim 1. Indeed, Valencell never previously argued these claims
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`were patentable for any reason other than their dependency on claim 1, and the
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`Board concluded that Fitbit’s prior art discloses the limitations recited in claim 3 in
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`a separate IPR on claims 14-21 of the ’941 patent. In view of the petitioned
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`grounds, the Board should find claims 3-5 invalid.
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`II. Technical Background
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`The ’941 patent is directed to processing signals from a PPG sensor and a
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`motion sensor into serial data output containing physiological and motion
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`information. ’941 patent at Abstract. This physiological information may include
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`heart rate, and the motion information may include current running speed. Id. at
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`23:49-54, 23:63-66. Claim 1 of the ’941 patent, which has already been
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`invalidated, is directed to this core concept. Dependent claims 3-5 recite further
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`06938-00001/12352983.5
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`1
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`limitations related to the organization and use of the serial data output:
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`3. The method of claim 1, wherein the serial data output is parsed out such
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`that an application-specific interface (API) can utilize the physiological
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`information and motion-related information for an application.
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`4. The method of claim [3], wherein the application is configured to generate
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`statistical relationships between subject physiological parameters and subject
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`physical activity parameters in the physiological information and motion-
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`related information.
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`5. The method of claim 4, wherein the application is configured to generate
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`statistical relationships between subject physiological parameters and subject
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`physical activity parameters via at least one of the following: principal
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`component analysis, multiple linear regression, machine learning, and
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`Bland-Altman plots.
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`III. Procedural Background
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`Apple Inc. (“Apple”) challenged claims 1-13 of the ’941 patent in its
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`original IPR petition. Paper 2. The Board instituted this IPR on claims 1-2 and 6-
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`13 after disagreeing with Apple’s proposed construction for “application-specific
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`interface (API)” in claim 3 and its attempt to resolve the dependency of claims 4-5.
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`Paper 10. Fitbit later joined the instituted IPR. IPR2017-01555, Paper 9.
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`After oral arguments were already held for this IPR, the Supreme Court
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`issued its decision in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1358 (2018). In
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`response, the Board added dependent claims 3-5 to the IPR and authorized
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`additional briefing on this subject. Paper 39. Petitioners explained in this briefing
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`that claims 3-5 were invalid under both their proposed constructions and the
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`Board’s constructions. Paper 40. In response, Valencell did not challenge the
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`merits of petitioners’ invalidity arguments for the limitations added in claims 3-5.
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`Paper 41. In its Final Written Decision, the Board upheld the patentability of only
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`claims 3-5. Paper 43 at 4. The Board retained its prior constructions of these
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`claims and “d[id] not address these claims further in this Decision.” Id. at 11-23.
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`Fitbit appealed the Board’s patentability finding on claims 3-5. The Federal
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`Circuit affirmed in part, vacated in part, and remanded to the Board. Fitbit, Inc. v.
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`Valencell, Inc., 964 F.3d 1112 (Fed. Cir. 2020). On claim 3, the Court affirmed the
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`Board’s construction of “‘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.’”
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`Id. at 1116. The Court observed, however, that “[t]he Board’s narrowing
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`construction may have no significance, where, as here, the claimed ‘application-
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`specific interface’ performs the same function as an application programming
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`interface, i.e., ‘enabl[ing] a particular application to utilize data obtained from
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`hardware.’” Id. at 1117 (emphasis added). The Court vacated and “remand[ed] for
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`determination of patentability in light of the cited references.” Id. at 1118-19.
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`On claims 4-5, the Court found that “the error that claim 4 depend from
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`claim 3” should have been corrected, and remanded for the Board to determine the
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`U.S. Patent No. 8,923,941
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`patentability of corrected claims 4 and 5. Id. at 1120.
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`IV. Claims 3-5 Are Obvious From Luo, Craw and Wolf
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`The Board held independent claim 1 invalid in light of U.S. Pat. Appl. Pub.
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`No. 2008/0200774 (“Luo”) (Ex. 1055) and U.S. Pat. Appl. Pub. No. 2008/0133699
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`(“Craw”) (Ex. 1056). That same prior art combination also invalidates dependent
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`claim 3 under the Board’s construction of “application-specific interface (API).”
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`The petition adds U.S. Pat. Appl. Pub. No. 2007/01987881 (“Wolf”) (Ex. 1042) to
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`demonstrate that dependent claims 4-5 are also invalid.
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`Valencell never sought to distinguish the subject matter of dependent claims
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`3-5 from Fitbit’s prior art combinations. Nor did Valencell argue it would be non-
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`obvious to combine Wolf with Luo and Craw. Conversely, Fitbit’s positions are
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`consistent with petitioners’ arguments throughout this IPR. Every single paragraph
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`cited below as disclosing claims 3-5 was also cited in the original petition.
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`A. Claim 1 Has Already Been Found Invalid Based on Luo and Craw
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`The Board found Valencell’s independent claim 1 invalid over Fitbit’s
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`combination of Luo and Craw. See Paper 43 at 43. Because that holding was not
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`appealed by Valencell, the Board’s invalidation of independent claim 1 is now
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`“final and conclusive.” See Accenture Global Servs., GmbH v. Guidewire
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`Software, Inc., 728 F.3d 1336, 1341-42 (Fed Cir. 2013).
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`Under Federal Circuit precedent, Valencell is bound by the Board’s
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`U.S. Patent No. 8,923,941
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`invalidity holding on independent claim 1 and cannot rely on limitations of claim 1
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`to argue dependent clams 3-5 are patentable over the cited references. Instead,
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`Valencell must show that dependent claims 3-5 include additional limitations that
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`materially alter the invalidity analysis. See MaxLinear, Inc. v. CF CRESPE LLC,
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`880 F.3d 1373, 1377-78 (Fed. Cir. 2018). Valencell cannot meet this burden here.
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`B. Claim 3 Is Rendered Obvious by Luo and Craw
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`Claim 3 is rendered obvious by Fitbit’s combination of Luo and Craw. The
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`Board already found sufficient reason to combine the teachings of Luo and Craw to
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`achieve claim 1, in view of their similar technology (health monitoring) and
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`problems addressed (device interoperability). Id. at 34, 42. The same reasons that
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`support combining Luo and Craw for claim 1 also hold for claim 3. Ex. 1003
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`(Sarrafzadeh Decl.) ¶¶ 90, 92-93.
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`The combination of Luo and Craw teaches the additional limitations of claim
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`3. Luo teaches transmitting health data to health-monitoring devices and
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`computers, and Craw teaches that the health data is “parsed out” into a serial
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`output of physiological and motion information consistent with a defined
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`structure—for example, the structure shown in Fig. 7H. Ex. 1055 (Luo) ¶¶ 0033-
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`0041; Ex. 1056 (Craw) ¶¶ 0200-0216 (describing Fig. 7H); Ex. 1003 (Sarrafzadeh
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`Decl.) ¶92. Craw further discloses employing “interfaces” to enable a health-
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`monitoring application to utilize this data. Ex. 1056 (Craw) ¶¶ 0048, 0149, 0202-
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`0203; Ex. 1003 (Sarrafzadeh Decl.) ¶¶ 92-93. For example, Craw discloses that a
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`“data dictionary” and “string table classes” may “act as interfaces for managing,
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`extracting, and displaying information from binary information streams.” Ex. 1056
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`(Craw) ¶ 0256 (emphasis added); Ex. 1003 (Sarrafzadeh Decl.) ¶92. In turn,
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`Craw’s health-monitoring application may, for example, display the health data on
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`a graphical user interface. Ex. 1056 (Craw) ¶ 208 (describing Fig. 9A).
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`Craw’s “interfaces” each qualify as an “application-specific interface (API)”
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`under the Board’s narrowing construction. As the Federal Circuit observed, “the
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`claimed ‘application-specific interface’ performs the same function as an
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`application programming interface, i.e., ‘enabl[ing] a particular application to
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`utilize data obtained from hardware.’” Fitbit, 964 F.3d at 1117. Valencell’s expert
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`similarly testified in his deposition that the ’941 patent “essentially refers to an
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`API” that is “used as [an] application-specific interface.” Ex. 1069 (Pollonini Tr.)
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`at 127:8-24. Craw’s “interfaces” are also used by specific applications. For
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`example, Craw teaches that a health-monitoring application, such as the blood
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`pressure application in Figure 9A, uses the disclosed interfaces in order to display
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`extracted health data. Ex. 1056 (Craw) ¶¶ 203, 208 (describing Fig. 9A). Craw’s
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`interfaces thus “enabl[e] a particular application to utilize data obtained from
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`hardware”—that is all that is required under the Board’s construction of
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`“application-specific interface (API)” and the Federal Circuit’s guidance.
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`U.S. Patent No. 8,923,941
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`But even if more were required, Craw discloses tailoring the “application-
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`specific interface (API)” to a specific application. For example, Craw discloses
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`using “a decipherable dictionary and an interpreter” in order to “extract
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`information and act on it,” and further teaches that “[a]cting on the received
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`information may depend on the goal of the application.” Ex. 1056 (Craw) ¶ 48
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`(emphasis added). Craw thus recognizes that “medical devices may include one or
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`more types of software, and the medical devices and software may be configured
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`to operate upon a particular subset of physiological data.” Id. ¶ 4 (emphasis
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`added). Accordingly, not only are Craw’s “interfaces” used by “a particular
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`application,” they can be specifically tailored to each “particular application.” The
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`Board’s narrowing construction of “application-specific interface (API)” thus has
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`no significance on the ultimate success of the petitioned grounds.
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`The Board’s finding in IPR2017-00321 that Craw discloses the additional
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`limitations of claim 3 further confirms the unpatentability of claim 3. IPR2017-
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`00321 involved the same parties and claims 14-21 of the ’941 patent. Valencell
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`proposed substitute claim 22, which added the exact language of claim 3 of the
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`’941 patent to independent claim 14. IPR2017-00321, Paper 44 at 51. In
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`analyzing substitute claim 22, the Board construed “application-specific interface
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`(API)” to have the same meaning as in this IPR. Id. at 62. After then reviewing
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`the disclosure in Craw, including the specific disclosure cited in the original
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`petition in this IPR (id. at 72 (citing Craw ¶¶ 200-216)), the Board “[was]
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`persuaded that Craw teaches or suggests that ‘the output data is parsed out such
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`that an application-specific interface (API) can utilize the physiological
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`information and motion-related information for an application,” and rejected claim
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`22. Id. at 74. Valencell did not appeal this decision.
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`C. Claims 4-5 Are Rendered Obvious by Luo, Craw, and Wolf
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`Luo, Craw, and Wolf render obvious the additional limitations of claims 4-5.
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`As to claim 4, Luo teaches generating relationships between “subject physiological
`
`parameters and subject physical activity parameters” such as determining that a “a
`
`heart rate jump” is “normal” because “the subject is going through a activity
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`change from the resting condition to run condition.” Ex. 1055 (Luo) ¶ 0031
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`(discussing “the integration of the physiological signal monitoring and physical
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`activity monitoring”); see also Ex. 1003 (Sarrafzadeh Decl.) ¶ 99.
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`Wolf satisfies the remaining limitations of claims 4 and 5 by teaching the
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`“generat[ing] statistical relationships” limitation of claim 4 and the “machine
`
`learning” limitation of claim 5. For example, Wolf discloses “Bayesian filters 605,
`
`consisting of statistical filter subroutines,” that allow the system to “use voice and
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`other interactions to update [their] ability to provide correct detection of different
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`health related incidents”—that is, to “learn[] standard behavior patterns.” Ex.
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`1042 (Wolf) ¶¶ 0019, 0023, 0062, 0063, 0070-0073 (emphasis added); see also Ex.
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`06938-00001/12352983.5
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`8
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`
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`1003 (Sarrafzadeh Decl.) ¶¶ 100-103. The combination of Luo, Craw, and Wolf
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`thus teaches all limitations of claims 4-5.
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`It would be obvious to combine Luo and Craw with Wolf to arrive at claims
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`4-5. Wolf teaches a health monitoring device very similar to the device of Luo, but
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`with the added advantage of a cognitive inference engine to reduce uncertainties
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`regarding the health state of the monitored subject. Ex. 1042 (Wolf) ¶0024; Ex.
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`1003 (Sarrafzadeh Decl.) ¶104. It would thus have been obvious to combine the
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`method suggested by Luo and Craw with an application like the cognitive engine
`
`of Wolf to improve health state determinations weighing more learned information.
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`As with claim 3, Valencell never previously argued claims 4-5 were valid
`
`for any reason other than their dependency from independent claim 1. Valencell
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`did not address the additional limitations of claims 4-5 in its preliminary patent
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`owner response or supplemental briefing. Paper 6 at 27-30; Paper 41 at 5-7. Nor
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`did Valencell contest the obviousness of combining Luo and Craw with Wolf. Id.
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`Valencell’s failure to contest the obviousness of limitations in claims 4-5
`
`demonstrates that these claims are obvious over the combination of Luo, Craw, and
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`Wolf.
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`V. Claim 3 Is Obvious in View of Mault, Al-Ali, and Lee
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`The Board already found that Fitbit’s combination of Mault and Al-Ali
`
`renders obvious claim 1 of the ’941 patent. Paper 43 at 76. Valencell did not
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`06938-00001/12352983.5
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`9
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`appeal this finding and is thus bound by the Board’s prior decision.
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`The original petition adds Lee et al., “A Mobile Care System With Alert
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`Mechanism” (Sept. 2007) (“Lee”) (Ex. 1059) in order to render obvious the
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`additional limitations of claim 3. Lee discloses using a “Bluetooth application
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`programming interface (BT API)” to enable a “mobile phone application program”
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`to receive and process “physiological parameter measurement data” over a “serial
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`port transmission protocol.” Ex. 1059 (Lee) at 509- 511; see also Ex. 1003
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`(Sarrafzadeh Decl.) ¶¶ 157-61. Thus, Lee discloses “serial data output” (data
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`transmitted using Lee’s “serial port transmission protocol”) that is parsed out such
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`that an “application-specific interface (API)” (Lee’s “BT API”) can utilize the
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`physiological information and motion-related information for an application (Lee’s
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`“mobile phone application program”). Lee discloses “application-specific
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`interface (API)” because Lee’s “mobile phone application program” is a
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`“particular application” using the data. See Fitbit, 964 F.3d at 1117. Finally, it
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`would be obvious to combine Lee with Mault and Al-Ali to allow communicating
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`physiological information and motion-related information to a computing device,
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`such as a mobile device. Ex. 1003 (Sarrafzadeh Decl.) ¶¶ 162-63.
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`VI. Conclusion
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`Fitbit respectfully requests that the Board find remaining claims 3-5 of the
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`’941 patent unpatentable.
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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` By: /Jim Glass/
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Email: jimglass@quinnemanuel.com
`Phone: 212-849-7142
`Fax: 212-849-7100
`
`Counsel for Petitioner Fitbit, Inc.
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`
`
`
`
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`Date: October 5, 2020
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`
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`06938-00001/12352983.5
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(E), 42.105(A))
`
`The undersigned hereby certifies that the foregoing document was served in
`
`its entirety on October 5, 2020 upon the following parties via Electronic Mail.
`
`Justin B. Kimble
`Jeffrey R. Bragalone
`Daniel F. Olejko
`T. William Kennedy
`Jonathan H. Rastegar
`Marcus Benavides
`R. Scott Rhoades
`Sanford E. Warren, Jr
`
`BRAGALONE CONROY PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`JKimble-IPR@bcpc-law.com
`
`jbragalone@bcpc-law.com
`dolejko@bcpc-law.com
`bkennedy@bcpc-law.com
`jrastegar@bcpc-law.com
`mbenavides@bcpc-law.com
`srhoades@wriplaw.com
`swarren@wriplaw.com
`
`Date: October 5, 2020
`
`
`
`
`
`
`
` By: /Jim Glass/
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Email: jimglass@quinnemanuel.com
`Phone: 212-849-7142
`Fax: 212-849-7100
`
`Counsel for Petitioner Fitbit, Inc.
`
`06938-00001/12352983.5
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`12
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