Petitioner’s Demonstratives on Remand
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`December 11, 2020
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`1
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`December 11, 2020
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`1
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`U.S. Patent No. 8,923,941 – Claims
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`2
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`‘941 Patent, Claim 1
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`U.S. Patent No. 8,923,941 – Claims
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`‘941 Patent, Claim 3-5
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`3
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`The Board Previously Found Independent Claim 1 Invalid
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`Paper No. 43 at 78
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`4
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`Claim 3
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`U.S. Patent No. 8,923,941 – Claim 3
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`‘941 Patent, Claim 3
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`‘941 Patent at 26:15-21
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`6
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`The Board’s Construction of “Application-Specific Interface (API)”
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`Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1117 (Fed. Cir. 2020)
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`7
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`The Board’s Construction of “Application-Specific Interface (API)”
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`Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1117 (Fed. Cir. 2020)
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`8
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`Valencell’s Expert Admitted Application-Specific Interface “Essentially Refers” to an API
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`Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1117 (Fed. Cir. 2020)
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`9
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`Valencell’s Expert Admitted Application-Specific Interface “Essentially Refers” to an API
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`Q.
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`If it helps, I can refer you to column 26 around line 18.
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`A.
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`I appreciate it.
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`Q. 17, 18.
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`A. Thank you so much. Yes, my interpretation of this section
`essentially refers to an API, even if it's used as
`application-specific interface, so the P -- there is kind of a
`mismatch between the spelled out, like, terminology and -- and
`the acronym for it. It -- I cannot -- I don't know exactly why the
`P or the programming word has been left out specifically, but it
`is -- in my interpretation it is definitely reasonable to assume
`they offer here, the inventor is referring to the API as I
`described before.
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`Pollonini Tr. at 127:8-23
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`10
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`The Federal Circuit Asked the Board to Determine “Patentability in Light of the Cited References”
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`Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1117 (Fed. Cir. 2020)
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`11
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`The Board Requested Briefing on Federal Circuit’s Opinion on “Application-Specific Interface”
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`12
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`Paper 57 at 10-11
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`Craw’s “Interfaces” Enable a “Particular Application” To Utilize the Data
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`13
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`Craw at ¶¶ 256, 208, and Figure 9A
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`Craw Discloses Tailoring the Interfaces “Depend[ing] on the Goal of the Application”
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`14
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`Craw at ¶ 48 and Figure 7H
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`Craw Discloses Tailoring the Interfaces “Depend[ing] on the Goal of the Application”
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`15
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`Craw at ¶¶ 202-203 and Figure 7H
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`The Board Previously Found Craw Discloses the “Application-Specific Interface (API)” Limitation
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`16
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`IPR2017-00321, Paper No. 44 at 73-74
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`Dr. Sarrafzadeh Explained It Would Be Obvious To Combine the Prior Art
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`17
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`Sarrafzadeh Decl. ¶ 90
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`Dr. Sarrafzadeh Explained It Would Be Obvious To Combine the Prior Art
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`Sarrafzadeh Decl. ¶ 92
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`18
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`The Board Previously Found It Would Be Obvious To Combine the Prior Art
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`Paper No. 43 at 34
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`Paper No. 43 at 42
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`19
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`Valencell Bears the “Burden of Production” on “Unexpected Results”
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`E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1011 (Fed. Cir. 2018)
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`20
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`Board Should Consider Invalidity Under New Construction of “Application-Specific Interface”
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`Ericsson Inc. v, Intellectual Ventures I LLC, 901 F.3d 1374, 1380 (Fed. Cir. 2018)
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`21
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`Fitbit Is Not Relying “on Previously Unidentified Portions of a Prior-Art Reference”
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`Petition at 25
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Petition at 27
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`22
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`Fitbit Previously Made the Same Arguments in its Additional Briefing
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`23
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`Paper No. 40 at 5-6
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`Fitbit Previously Made the Same Arguments in its Additional Briefing
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`24
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`Paper No. 13 at 2
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`Claims 4-5
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`Claims 4-5
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`U.S. Patent No. 8,923,941 – Claims 4-5
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`‘941 Patent, Claim 4-5
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`26
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`The Board Requested Briefing on “Claims 4 and 5, Assuming Their Dependence from Claim 3”
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`Paper 57 at 10-11
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`27
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`Luo Discloses Generating Relationships Between Physiological and Physical Activity Parameters
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`28
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`Luo at 0031
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`Wolf Discloses Generating Statistical Relationships and Machine Learning
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`29
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`Wolf at 0019, 0062
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`Dr. Sarrafzadeh Explained It Would Be Obvious To Combine the Prior Art
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`30
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`Sarrafzadeh Decl. ¶104
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`The Federal Circuit Asked the Board to “Resolve Patentability Issues” of “Corrected” Claims 4-5
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`Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1120 (Fed. Cir. 2020)
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`31
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`Fitbit Previously Made the Same Arguments in its Additional Briefing
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`Paper No. 40 at 6
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`32
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`Paper No. 40 at 7
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