`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`____________
`
`Case IPR2017-00319
`U.S. Patent No. 8,923,941
`__________________
`
`PETITIONER APPLE INC.’S
`REPLY TO PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`
`C.
`
`
`Introduction ...................................................................................................... 1
`I.
`Claim 1 of the ’941 Patent ............................................................................... 1
`II.
`III. As shown by the Petition, the combination of Luo and Craw renders
`claim 1 obvious. ............................................................................................... 2
`A.
`Luo and Craw are analogous art. ........................................................... 2
`B.
`The combination of Luo and Craw suggests that respiration rate
`can be extracted. .................................................................................... 5
`As shown in the Petition, the combination of Luo and Craw
`suggests limitations [1.4] and [1.5], and a POSA would have
`been motivated to combine Luo and Craw to render claim 1
`obvious. ...............................................................................................11
`D. A POSA would have been motivated to combine Luo and Craw
`because they are directed to similar physiological monitoring
`devices. ................................................................................................14
`IV. Mault and Al-Ali render claim 1 obvious. .....................................................16
`A. Mault and Al-Ali are analogous art. ....................................................16
`B. Mault discloses a single monitoring device capable of sensing
`both heart rate and respiration rate data. .............................................16
`Claim 1 does not require a PPG sensor capable of having its
`signals processed to produce a serial data output from which
`respiration rate can be extracted. .........................................................17
`The combination of Mault and Al-Ali suggests processing
`signals from the at least one motion sensor and signals from the
`at least one PPG sensor into a serial data output of
`physiological information and motion-related information. ...............18
`A POSA would have had a reason to combine Mault with Al-
`Ali. .......................................................................................................19
`PO waived arguments specific to the dependent claims. ..............................21
`V.
`VI. PO’s contention of unconstitutionality is not a proper request for
`relief. ..............................................................................................................21
`VII. Conclusion .....................................................................................................22
`
`
`C.
`
`D.
`
`E.
`
`
`
`- i -
`
`

`

`
`
`Exhibit No.
`1001
`
`1002
`1003
`1004
`1005
`
`1006
`
`1007
`1008
`
`1009
`
`1010
`
`1011
`
`1012 -1015
`1016
`
`1017
`1018
`
`1019
`1020
`
`1021
`
`1022
`
`1023
`
`PETITIONER’S UPDATED EXHIBIT LIST
`
`
`Description
`U.S. Patent No. 8,923,941 to LeBoeuf et al., issued December 30,
`2014
`U.S. Patent No. 8,923,941 File History
`Declaration of Dr. Majid Sarrafzadeh
`Curriculum Vitae of Dr. Majid Sarrafzadeh
`Valencell, Inc. v. Apple Inc., Case No. 5-16-cv-00010 (E.D.N.C),
`Complaint filed January 4, 2016
`U.S. Patent Application Publication No. 2005/0209516 to Fraden,
`published September 22, 2005
`Intentionally left blank
`U.S. Patent Application Publication No. 2008/0081972 to Debrec-
`zeny, published April 3, 2008
`Japanese Patent Application Publication No. 2005/040261 A to
`Numaga et al., published February 17, 2005
`Certified English-language translation of Japanese Patent Applica-
`tion Publication No. 2005/040261 A to Numaga et al., published
`February 17, 2005
`U.S. Patent Application Publication No. 2003/0065269 to Vetter et
`al., published April 3, 2003
`Intentionally left blank
`U.S. Patent Application Publication No. 2009/0105556 to Fricke et
`al., published April 23, 2009
`Intentionally left blank
`U.S. Patent No. 3,704,706 to Herczfeld et al., issued December 5,
`1972
`U.S. Patent No. 5,297,548 to Pologe, issued March 29, 1994
`Med. Sci. Series, Int’l Fed’n for Med. and Biological Eng’g and the
`Int’l Org. for Med. Physics, Design of Pulse Oximeters (J.G. Web-
`ster ed., Inst. of Physics Publ’g 1997)
`John Allen, Photoplethysmography and its application in clinical
`physiological measurement, Physiological Measurement 28 (2007)
`U.S. Patent Application Publication No. 2008/0132798 to Hong et
`al., published June 5, 2008
`U.S. Patent Application Publication No. 2008/0177162 to Bae et
`al., published July 24, 2008
`
`
`
`- ii -
`
`

`

`Exhibit No.
`1024
`
`1025
`
`1026
`1027
`
`1028
`
`1029 - 1030
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`1040
`1041
`
`1042
`
`1043
`
`
`
`Description
`U.S. Patent No. 5,807,267 to Bryars et al. issued September 15,
`1998
`Hyonyoung Han et al., Development of a wearable health monitor-
`ing device with motion artifact reduced algorithm, International
`Conference on Control, Automation and Systems, IEEE (2007)
`Intentionally left blank
`U.S. Patent Application Publication No. 2004/0186387 to Kosuda
`et al., published September 23, 2004
`U.S. Patent Application No. 2009/0287067 to Dorogusker et al.,
`published November 19, 2009
`Intentionally left blank
`U.S. Patent Application No. 2005/059870 to Aceti, published
`March 17, 2005
`G. Comtois & Y. Mendelson, A Comparative Evaluation of Adap-
`tive Noise Cancellation Algorithms for Minimizing Motion Artifacts
`in a Forehead-Mounted Wearable Pulse Oximeter, IEEE (2007)
`Declaration of Gerard P. Grenier in support of G. Comtois & Y.
`Mendelson, A Comparative Evaluation of Adaptive Noise Cancella-
`tion Algorithms for Minimizing Motion Artifacts in a Forehead-
`Mounted Wearable Pulse Oximeter, IEEE (2007) (Ex. 1032)
`U.S. Patent Application Publication No. 2004/0059236 to Margu-
`lies et al., published March 25, 2004
`U.S. Patent Application Publication No. 2007/0016086 to Inukai et
`al., published January 18, 2007
`U.S. Patent Application Publication No. 2003/0236647 to Yoon et
`al., published December 25, 2003
`International Patent Application Publication No. 2007/013054 to
`Schwartz, published February 1, 2007
`U.S. Patent No. 5,575,284 to Athan et al., issued November 19,
`1996
`U.S. Patent No. 5,503,016 to Koen, issued April 2, 1996
`Intentionally left blank
`U.S. Patent Application Publication No. 2007/0027367 to Oliver et
`al., published February 1, 2007
`U.S. Patent Application Publication No. 2007/0197881 to Wolf et
`al., published August 23, 2007
`U.S. Patent Application Publication No. 2005/0075542 to
`Goldreich, published April 7, 2005
`
`
`
`- iii -
`
`

`

`Exhibit No.
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`1049
`
`1050
`1051
`1052
`
`1053
`1054
`1055
`
`1056
`
`1057
`1058
`
`1059
`
`1060
`
`
`
`Description
`International Patent Application Publication No. WO2007/004089
`to Moroney et al., published January 11, 2007
`G. Sen Gupta et al., Design of a Low-cost Physiological Parameter
`Measurement and Monitoring Device, Instrumentation and Meas-
`urement Technology Conference, IEEE (2007)
`U.S. Patent Application Publication No. 2006/0084879 to Nazarian
`et al., published April 20, 2006
`U.S. Patent No. 5,243,992 to Eckerle et al., issued September 14,
`1993
`U.S. Patent No. 4,955,379 to Hall, issued September 11, 1990
`International Patent Application Publication No. WO 2007/122375
`to Crowe et al., published November 1, 2007
`Intentionally left blank
`Intentionally left blank
`Declaration of Gerard P. Grenier in support of G. Sen Gupta et al.,
`Design of a Low-cost Physiological Parameter Measurement and
`Monitoring Device, Instrumentation and Measurement Technology
`Conference, IEEE (2007) (Ex. 1045) and 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) (Ex. 1025)
`Intentionally left blank
`Intentionally left blank
`U.S. Patent Application Publication No. 2008/0200774 to Luo,
`published August 21, 2008
`U.S. Patent Application Publication No. 2008/0133699 to Craw et
`al., published June 5, 2008
`U.S. Patent No. 6,513,532 to Mault et al., issued February 4, 2003
`U.S. Patent Application Publication No. 2003/0181798 to Al-Ali,
`published September 25, 2003
`R.G. Lee et al. “A Mobile Care System With Alert Mechanism”
`IEEE Transactions on Information Technology in Biomedicine,
`Vol. 11, Issue 5, September 2007
`Declaration of Gerard P. Grenier in support of R.G. Lee et al. “A
`Mobile Care System With Alert Mechanism” IEEE Transactions on
`Information Technology in Biomedicine, Vol. 11, Issue 5, Septem-
`ber 2007 (Ex. 1059)
`
`
`
`- iv -
`
`

`

`
`
`Exhibit No.
`1061
`
`1062
`1063
`1064
`1065
`
`1066
`
`1067
`1068
`1069
`1070
`
`Description
`International Patent Application Publication No. WO 2006/009830
`to Behar et al., published January 26, 2006
`U.S. Patent No. 5,396,893 to Oberg et al., issued March 14, 1995
`U.S. Patent No. 6,721,584 to Baker, Jr. et al., issued April 13, 2004
`U.S. Patent No. 6,996,427 to Ali et al., issued February 7, 2006
`U.S. Patent Application Publication No. 2008/0154098 to Morris et
`al., published June 26, 2008
`International Patent Application Publication No. WO 00/44274 to
`Pougatchev et al., published August 3, 2000
`Teleconference Transcript, April 5, 2017
`Conference Call Transcript, October 13, 2017
`Transcript of Deposition of Dr. Luca Pollonini, November 9, 2017
`Collins English Dictionary, Tenth Edition, 2009
`
`
`
`- v -
`
`

`

`IPR2017-00319
`U.S. Patent No. 8,923,941
`
`I.
`
`Introduction
`
`The Board instituted trial because Petitioner established a reasonable
`
`likelihood of prevailing on its assertions that claims 1, 2, and 6-13 of U.S. Patent
`
`No. 8,923,941 (the ’941 Patent) are obvious. Inst. Decision, Paper 10, p. 55. In
`
`response, Patent Owner, Valencell Inc., (PO) has only submitted flawed, meritless
`
`arguments and no secondary indicia of any kind. PO repeatedly bases its arguments
`
`on erroneous claim interpretations and misunderstandings of the law of
`
`obviousness. The testimony of PO’s expert is similarly flawed and conclusory. As
`
`thoroughly explained in the originally filed Petition and below, claims 1, 2, and 6-
`
`13 are unpatentable as obvious.
`
`II. Claim 1 of the ’941 Patent
`As an initial matter and in light of PO’s arguments, careful examination of
`
`claim 1 may prove instructive in elucidating certain issues raised regarding claim
`
`scope. First, it is useful to identify what is not in dispute. PO does not dispute that
`
`Luo discloses a method of sensing physical activity via a motion sensor and
`
`sensing physiological information via a PPG sensor, and processing the signals via
`
`a single monitoring device. PO only disputes the obviousness of particular
`
`processing of the signals provided by the motion sensor and PPG sensor. The
`
`relevant portion of claim 1 states:
`
`[1.4] processing signals from the at least one motion
`sensor and signals from the at least one PPG sensor via a
`
`
`
`- 1 -
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`

`

`IPR2017-00319
`U.S. Patent No. 8,923,941
`processor of the monitoring device into a serial data out-
`put of physiological information and motion-related in-
`formation,
`
`[1.5] wherein the serial data output is configured such
`that a plurality of subject physiological parameters com-
`prising 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.
`
`Thus, limitation [1.4] involves processing at least two sets of signals—one or more
`
`from PPG sensors and one or more from motion sensors—into “a serial data
`
`output,” which contains “physiological
`
`information and motion-related
`
`information.” Limitation [1.5] further delineates the content of the information of
`
`the serial data output. Notably, “the physiological information” in limitation [1.5]
`
`refers to the physiological information of the serial data output and not the sensed
`
`physiological information recited earlier in the claim.
`
`III. As shown by the Petition, the combination of Luo and Craw renders
`claim 1 obvious.
`A. Luo and Craw are analogous art.
`PO asserts that “Luo and Craw do not relate to the same technology and do
`
`not attempt to solve the same problems.” POR, Paper 22, pp. 10-14. Though not
`
`readily apparent, PO’s argument seems to be that Luo and Craw are non-analogous
`
`
`
`- 2 -
`
`

`

`IPR2017-00319
`U.S. Patent No. 8,923,941
`prior art. See POR, p. 24 (alleging that “[g]iven the differences between Luo and
`
`Craw, a POSA would not have had a particular rationale to combine Luo with
`
`Craw in the first place.”); see also Ex. 1069, Pollonini Tr., 25:9-26:14. Contrary to
`
`PO’s characterization, the relevant two-fold inquiry for analogous prior art is:
`
`(1) whether the art is from the same field of endeavor,
`regardless of the problem addressed and,
`
`(2) if the reference is not within the field of the inventor’s
`endeavor, whether the reference still is reasonably perti-
`nent to the particular problem with which the inventor is
`involved.
`
`In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d
`
`1320, 1325 (Fed.Cir.2004)).
`
`Both Luo and Craw are within the same field of endeavor of the ’941 Patent.
`
`“[T]he appropriate field of endeavor [may be determined] by reference to
`
`explanations of the invention’s subject matter in the patent application, including
`
`the embodiments, function, and structure of the claimed invention.” In re Bigio,
`
`381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Wood, 599 F.2d 1032, 1036 (C.C.P.A.
`
`1979) (defining the field of endeavor by the scope explicitly specified in the
`
`background of the invention); see also In re Deminski, 796 F.2d 436, 442 (Fed.
`
`Cir. 1986) (determining that the cited references were within the same field of
`
`endeavor where they “have essentially the same function and structure”).
`
`
`
`- 3 -
`
`

`

`IPR2017-00319
`U.S. Patent No. 8,923,941
`The ’941 Patent broadly describes its “Field of the Invention” as relating to
`
`“physiological monitoring and, more particularly, to physiological monitoring
`
`apparatus.” Ex. 1001, 1:21-23. PO would seemingly concede to Luo’s inclusion in
`
`this field. See POR, p. 10 (“Luo discloses a wearable device for continuous health
`
`monitoring of a user” and specifically “for detecting physiological information and
`
`activity information.”) PO, however, questions the relevance of Craw. See POR, p.
`
`13 (alleging that “Craw has nothing to do with monitoring any type of health
`
`conditions.”); see also POR, p. 25 (alleging that Craw is not in the same field of
`
`endeavor “because Craw does not describe a monitoring device.”); POR, p. 14
`
`(alleging that “Craw does not disclose or even suggest the use of any sensor”).
`
`PO mischaracterizes Craw. PO recognized that Craw “describes use of a
`
`system for interoperability of medical devices on a network and particularly
`
`measurements of non-invasive blood pressure.” POR, p. 13 (PO’s emphasis). Yet,
`
`PO managed to overlook Craw’s disclosure of “a health care computing
`
`environment” including “a variety of medical monitoring and analysis devices that
`
`process physiological data and communicate the physiological data via a
`
`network.” Ex. 1056, Craw, ¶0004. For example, Craw teaches vital signs
`
`measuring devices (VSMDs) 140A, 140N, 140Y “used by operators to perform
`
`various vital sign related physiological measurements of a patient.” Ex. 1056,
`
`¶0068; see also Ex. 1056, ¶0210 (teaching “hardware sensors”). When specifically
`
`
`
`- 4 -
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`

`

`IPR2017-00319
`U.S. Patent No. 8,923,941
`asked about Craw’s VSMDs under cross-examination, PO’s expert simply made a
`
`questionable attempt at linguistic gymnastics to try to avoid simply recanting his
`
`original testimony. Ex. 1069, 79:6-95:5. Accordingly, PO’s repeated assertions that
`
`Craw does not relate to the field of physiological monitoring are not credible.
`
`In addition, Craw is reasonably pertinent to the ’941 Patent’s particular
`
`problem of “improv[ing] ways of collecting, storing and analyzing physiological
`
`information.” Ex. 1001, 1:42-43; compare Ex. 1001, 1:27-48 with Ex. 1056,
`
`¶0071; see also Ex. 1069, 26:15-29:15. In particular, claim 1 of the ’941 Patent is
`
`concerned with, inter alia, processing physiological information into a serial data
`
`output such that physiological parameters (heart rate and respiration) can be
`
`extracted. Craw’s system is similarly directed to communicating physiological data
`
`from a medical monitoring and analysis device, and processing the data into a
`
`serial data strings such that physiological parameters (such as heart rate and
`
`respiration) can be extracted. See Ex. 1056, ¶¶0004, 0013, 0061, 0068. Thus, Craw
`
`would have been reasonably pertinent “because of the matter with which it deals,
`
`logically would have commended itself to an inventor’s attention in considering his
`
`problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
`
`The combination of Luo and Craw suggests that respiration rate
`B.
`can be extracted.
`
`In PO’s judgment, claim 1 is limited in that it “does not allow that any
`
`‘physiological information,’ including respiration rate, can be sensed by anything
`
`
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`

`IPR2017-00319
`U.S. Patent No. 8,923,941
`besides a PPG sensor.” POR, p. 15; Ex. 2006, ¶75. PO draws this conclusion from
`
`the fact that “at least one PPG sensor” is “for sensing the physiological
`
`information” and that “respiration rate can be extracted from the physiological
`
`information.” POR, p. 15. Based on PO’s reading of claim 1, PO argues that Luo
`
`does not meet this aspect of claim 1 because Luo allegedly “does not disclose that
`
`a PPG sensor produces a signal which can be processed into an output comprising
`
`respiration rate.” POR, p. 16 (PO’s emphasis). According to PO, “[n]ot only does
`
`Luo fail to disclose a PPG sensor capable of outputting a respiratory rate, it
`
`expressly contemplates a processing module that employs not only physiological
`
`factors to determine a respiratory rate, but instead relies on other factors such as
`
`environmental variables.” POR, p. 17.
`
`PO is mistaken on more than one front. According to the ’941 Patent, the
`
`sensed signal from a PPG sensor is a raw PPG signal (i.e., a pulse wave), whereas
`
`heart rate and respiration rate are processed physiological parameters. See Ex.
`
`1069, 30:18-33:31, 104:20-107:12, 110:4-115:6. Thus, the sensed physiological
`
`
`1 Extraction of physiological parameters by an application from a data string
`
`containing various parameters (e.g., by parsing the data string) should not be con-
`
`fused with Dr. Pollonini’s use of “extraction” (e.g., using a particular filtering al-
`
`gorithm such as a beat finder algorithm) of a physiological parameter from a raw
`
`
`
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`

`

`IPR2017-00319
`U.S. Patent No. 8,923,941
`information is not the same physiological information contained in the serial data
`
`output from which respiration rate and heart rate can be extracted, and indeed
`
`cannot be the same. The language of claim 1 itself confirms this. See claim 1 of
`
`the ’941 Patent (reciting “serial data output of physiological information”—not
`
`“serial data output of the physiological information”).
`
`Moreover, PO’s proffered interpretation of claim 1 conflicts with the
`
`limitations of claims 6 and 8. Claim 6 includes a filtering step prior to the
`
`processing step, to reduce motion artifacts and noise artifacts from PPG signals to
`
`produce cleaner physiological information. Claim 8 further limits the filtering step,
`
`including the option of adaptive filtering. Such filtering is disclosed as using two
`
`types of sensor inputs to produce cleaner physiological information. See On–Line
`
`Techs., Inc. v. Bodenseewerk Perkin–Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir.
`
`2004) (“[A] claim interpretation that excludes a preferred embodiment from the
`
`scope of the claim is rarely, if ever, correct.”).
`
`As described by the ’941 Patent,
`
`FIG. 13 illustrates the basic configuration of an adaptive
`noise cancellation scheme 200 for extracting a physiolog-
`ical signal from noise. The two types of sensor inputs are
`
`
`pulse wave to determine a particular value of the parameter. See Ex. 1067, 57:6-
`
`65:17, 118:3-19, 121:11-122:13.
`
`
`
`- 7 -
`
`

`

`IPR2017-00319
`U.S. Patent No. 8,923,941
`represented by the terms “Channel A” and “Channel B”.
`Channel A refers to inputs from sensors that collect phys-
`iological information plus noise information, and Chan-
`nel B refers to inputs from sensors that collect primarily
`(or substantially) noise information. Channel B infor-
`mation is passed through an electronic filter 203 whose
`properties are updated adaptively and dynamically. The
`filter 203 properties are updated to minimize the differ-
`ence between Channel A and the post-processed Channel
`B, denoted as B^. In this way, noise is removed from
`Channel A and Channel C contains predominantly
`physiological information from which parameters such
`as blood flow, heart rate, blood analyte levels, breathing
`rate or volume, blood oxygen levels, and the like may be
`calculated.
`
`
`
`- 8 -
`
`

`

`IPR2017-00319
`U.S. Patent No. 8,923,941
`
`
`
`Ex. 1001, 23:38-54; see also FIG. 13 (reproduced above), FIG. 16. Thus, the
`
`adaptive filtering method described by the ’941 Patent is reliant on different sensor
`
`types—which would not be possible under PO’s overly restrictive view of claim 1.
`
`Indeed, PO’s expert could not identify any other adaptive filtering technique to
`
`reduce motion artifacts described in the ’941 Patent that did not use the signal from
`
`an inertial sensor as a reference signal. See Ex. 1069, 46:5-56:8, 57:6-65:17; see
`
`also Ex. 1001, 24:10-18. That is, the ’941 Patent itself indicates that both a motion
`
`sensor and a PPG sensor are used to produce the physiological information from
`
`which breathing rate can be extracted. Accordingly, claim 1 cannot be read to
`
`
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`

`

`IPR2017-00319
`U.S. Patent No. 8,923,941
`require that all sensed physiological information be obtained exclusively from a
`
`PPG sensor.
`
`
`
`Second, PO’s reading of Luo in regard to its teaching of a respiration rate is
`
`overly restrictive. PO fails to differentiate the very similar claim language in Luo
`
`and sufficiently explain why Luo’s processing of physiological, activity, and
`
`environmental variables to generate an output of physiological, activity, and
`
`environmental variables—including respiration rate—does not meet claim 1’s
`
`processing of physiological and activity signals into an output of physiological and
`
`activity information, from which respiration rate can be extracted. See POR, pp.
`
`16-17. The fact that Luo may process additional environmental variables is not a
`
`proper way to differentiate an open-ended method claim. Invitrogen Corp. v.
`
`Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (“The transition
`
`‘comprising’ in a method claim indicates that the claim is open-ended and allows
`
`for additional steps.”). The ’941 Patent states that environmental sensors may be
`
`incorporated in some embodiments (Ex. 1001, 5:1-30), yet PO proffers a
`
`construction that would exclude such embodiments without express claim language
`
`to that effect.
`
`Nor
`
`is
`
`there anything “logical” about PO’s conclusion
`
`that Luo
`
`“purposefully chose not to describe his invention as including a PPG sensor.”
`
`POR, p. 17. This is a pure mischaracterization of Luo. Contrary to PO’s
`
`
`
`- 10 -
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`

`

`IPR2017-00319
`U.S. Patent No. 8,923,941
`arguments, Luo expressly describes an embodiment where Luo’s physiological
`
`sensor is indeed a PPG sensor. Ex. 1055, Luo, ¶0028; see also Petition, Paper 2, p.
`
`23. Further, the presence of activity and environmental variables in Luo’s output
`
`does not mean that respiration rate is not physiological information – even if Luo
`
`classifies respiration rate as activity or environmental information, that does not
`
`change the fact that the ’941 Patent classifies respiration rate as physiological
`
`information, such that Luo’s teaching of respiration rate satisfies the claim
`
`limitation. “The specific limitation need not be disclosed in haec verba in the
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`reference.” In re Bode, 550 F.2d 656, 660 (C.C.P.A. 1977). The relevant inquiry is
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`whether Luo’s respiration rate would have each been considered the claimed
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`“physiological information” under the broadest reasonable construction of that
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`term. See In re Neugebauer, 330 F.2d 353, 356 (C.C.P.A. 1964) (“The claims as a
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`whole must be analyzed in light of the disclosure to see if the article defined
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`thereby is distinguishable in fact, vis-a-vis in verbis, over the prior art.”).
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`C. As shown in the Petition, the combination of Luo and Craw sug-
`gests limitations [1.4] and [1.5], and a POSA would have been mo-
`tivated to combine Luo and Craw to render claim 1 obvious.
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`PO argues that “[n]either Luo nor Craw individually disclose processing
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`signals … into a serial data output of physiological and motion-related information
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`[and thus] Petitioner fails to demonstrate that claim 1 … is obvious.” POR, p. 18.
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`But the Petition’s ground of unpatentability relies on Luo and Craw in combination
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`for the serial data output feature. Petition, pp. 23-26. “Non-obviousness cannot be
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`established by attacking references individually where the rejection is based upon
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`the teachings of a combination of references.” In re Merck & Co., Inc., 800 F.2d
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`1091, 1097 (Fed. Cir. 1986). Thus, PO’s arguments that do not consider the
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`proposed combination are irrelevant and should be ignored.
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`In addition, PO’s arguments regarding limitations [1.4] and [1.5] are based
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`on an erroneous interpretation of the claims. PO looks solely to the specification’s
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`description of Figures 17 and 18 for its understanding of the claimed invention,
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`rather than the broadest reasonable interpretation of the claims themselves. POR,
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`pp. 19-20. In PO’s judgment, the claim precludes processing the data into a serial
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`format for transmission of the data, though it admits that transmission occurs after
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`creation of the serial data output. Id. PO likens the claim term “serial data output”
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`to the specification’s “serial data string” shown in Figure 18 and infers that the
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`processing step of claim 1 requires forming the serial data output in a similar
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`fashion. In doing so, PO “has committed one of the cardinal sins of patent law—
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`reading a limitation from the written description into the claims.” SciMed Life Sys.,
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`Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001).
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`The specification broadly describes that “[d]ata from detectors 26 may be
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`processed by a processor/multiplexer 602 to generate multiple data outputs 604 in
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`a serial format.” Ex. 1001, 26:4-7. The ’941 Patent goes on to state that “in some
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`embodiments,” the processing methods may involve more specific processing
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`methods including using time division multiplexing to form “a serial data string of
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`activity and physiological information 700 (FIG. 18) parsed out specifically such
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`that an application-specific interface (API) can utilize the data. Ex. 1001, 26:7-19.
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`But it is legally improper to limit the claims to these specific embodiments.
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`“[P]articular embodiments appearing in the written description will not be used to
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`limit claim language that has broader effect.” Homeland Housewares, LLC v.
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`Whirlpool Corp., 865 F.3d 1372, 1376 (Fed. Cir. 2017) (quoting Innova/Pure
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`Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir.
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`2004). Other claim construction principles also caution against PO’s view. For
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`example, the claims were specifically changed by preliminary amendment from a
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`“serial data string” to the broader language of “serial data output.” Ex. 1002, p.
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`0132; see also Ex. 1070, Collins Dictionary, p. 1176 (defining output as “the
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`information produced by a computer.”). In addition, the limitations of claim 3 and
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`principles of claim differentiation counsel against a narrow reading of the term
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`“serial data output” to require the data to be parsed out in a particular manner.
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`Nevertheless, as discussed below, the combination of Luo and Craw as
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`presented in the Petition suggests even a serial data string. As described in the
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`Petition, though Luo teaches serial transmission of the physiological and activity
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`information, Luo does not specify the format of the data such that the requisite
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`parameters can be extracted. Petition, pp. 24-25. Craw, however, teaches a data
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`formatting scheme for sending multiple physiological parameters, so that a receipt
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`device can extract the parameters for display on a remote computing device. Id. at
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`19-21, 25-26. Like the ’941 Patent, Craw’s scheme organizes parameterized data
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`into a serial data string. Id. at 19-21. A set of dictionary definitions define the
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`particular parameters in the data string and how they are arranged. Id. Like Luo,
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`the data may then be serialized into byte streams of information and transmitted via
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`a conventional serial communications channel. Id. Thus, the Petition addressed
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`how the combination of Luo and Craw suggests claim 1—even under PO’s unduly
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`narrow reading of the claim.
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`D. A POSA would have been motivated to combine Luo and Craw
`because they are directed to similar physiological monitoring de-
`vices.
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`As discussed above, Luo and Craw are analogous art in the same field of
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`endeavor, and include teachings reasonably pertinent to the particular problem with
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`which the inventor is involved. As for the rationale to combine the teachings of
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`Luo and Craw, “any need or problem known in the field of endeavor at the time of
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`the invention and addressed by the patent can provide a reason for combining the
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`elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420
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`(2007). As detailed in the Petition, Luo describes a health monitoring device and
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`the desirability to transmit sensed physiological and activity parameters to remote
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`devices (via a serial communications channel such as USB). Petition, pp. 23-25;
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`Ex. 1055, ¶¶0029, 0040-0043. Thus, contrary to PO’s assertion that Luo is “not
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`concerned with potentially being ‘interoperable’ with other devices” (POR, p. 25),
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`Luo contemplates transmission of health information to emergency personnel or
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`simply for download to an external computer. Ex. 1055, ¶¶0029, 0040-0043; Ex.
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`1003, Sarrafzadeh Decl., ¶¶0084-0086. Indeed, it is hard to imagine the point of
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`Luo’s fall detection parameter if only the wearer is notified of his own fall.
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`Though Luo does not precisely explain how the data would have been
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`formatted such that the recipient remote device could actually extract and utilize
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`the information sent, Craw teaches a data structure and classification scheme to
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`allow vital sign monitoring devices to send different sensed physiological
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`parameters to recipient devices in the form of a serial data output. Petition, pp. 19-
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`21, 25-26. Utilizing the same classification scheme used for formatting the
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`transmitted data, the recipient device is able to extract and display the parameters
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`received. Id. Thus, “[i]mplementing Craw’s technique to output Luo’s data would
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`have amounted to the obvious use of a known signal processing technique to
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`improve a similar physiological monitoring device” and its method of ordinary use.
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`Id. at 26.
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`IV. Mault and Al-Ali render claim 1 obvious.
`A. Mault and Al-Ali are analogous art.
`PO asserts that “Mault and Al-Ali describe entirely different technologies
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`which solve completely d