Apple Inc. and Fitbit, Inc.
`Petitioners
`
`v.
`Valencell, Inc.
`Patent Owner
`
`Case IPR2017-00321
`
`U.S. Patent No. 8,923,941
`
`Patent Owner’s Demonstrative Exhibits
`
`In support of Its Conditional Motion to Amend
`
`Oral Hearing, February 27, 2018
`
`R. Scott Rhoades
`
`
`Petitioners
`
`v.
`Valencell, Inc.
`Patent Owner
`
`Case IPR2017-00321
`
`U.S. Patent No. 8,923,941
`
`Patent Owner’s Demonstrative Exhibits
`
`In support of Its Conditional Motion to Amend
`
`Oral Hearing, February 27, 2018
`
`R. Scott Rhoades
`
`
`
`U.S. Patent No. 8,923,941
`Substitute Claim 22
`
`Claim 22 – Substitute for Claim 14
`
`A wearable device, comprising:
`
`a housing; and
`
`a chipset enclosed within the housing, the chipset comprising at
`least one PPG sensor, at least one motion sensor, and at least one
`signal processor configured to process signals from the at least
`one motion sensor and signals from the at least one PPG sensor
`to reduce motion artifacts from the PPG signals and to extract
`physiological and motion parameters;
`
`wherein the at least one signal processor configured to process
`data to be output, wherein the output data comprises
`physiological information and motion-related information,
`and wherein the output data is parsed out such that an
`application-specific interface (API) can utilize the physiological
`information and motion-related
`information for
`an
`application;
`
`wherein the housing comprises at least one window that
`optically exposes the at least one PPG sensor to a body of a
`subject wearing the device, and wherein the housing comprises
`non-air light transmissive material in optical communication
`with the at least one PPG sensor and the window.
`
`2
`
`
`
`U.S. Patent No. 8,923,941
`
`Petitioners Attempt to change the construction for
`
`application-specific interface (API)
`
`• Petitioners ignore the claim construction of the Patent Trial
`and Appeal Board (“the Board”) in their opposition
`
`
`Patent Owner’s Reply Paper 32 at p. 1.
`
`,
`
`•
`
`Instead, the Petitioners developed their own construction and
`
`applied that construction to the prior art, ultimately
`
`developing the following:
`
`application-specific interface (API):
`“simply indicates that the data is delineated in
`some manner”
`
` at pp. 1 & 4.
`Id.,
`
`3
`
`
`
`U.S. Patent No. 8,923,941
`
`Petitioners Attempt to change the construction for
`
`application-specific interface (API)
`
`Board’s Claim Construction
`
` Paper 10 at p. 12.
`IPR2017-00319, Institution of Inter PartesReview,
`
`4
`
`
`
`U.S. Patent No. 8,923,941
`Petitioners’ Argument No. 1
`
`Petitioners’ arguments to change the construction for
`
`application-specific interface (API)
`
`• Patent Owner discussed the Board’s construction of this term
`for the ‘941 patent at length in its Motion to Amend
`
`• As the Board has already construed this term for the ‘941 patent
`
`in co-pending IPR2017-00319, no further construction is
`
`necessary
`
`o IPR2017-00319 references the plain meaning of (API) provided
`in the specification (Institution of InterPartesReview, Paper
`10 at p. 12)
`
`5
`
`
`
`U.S. Patent No. 8,923,941
`Petitioners’ Argument No. 2
`
`Petitioners’ arguments to change the construction for
`
`application-specific interface (API)
`
`
`
`Petitioners’ Opposition, Paper 31 at p. 3.
`
`• The only position taken by the Patent Owner in the Motion to
`Amend was a direct reference to the Board’s claim construction of
`
`the term in co-pending IPR2017-00319
`
`• Patent Owner has not taken claim construction positions
`
`contrary to this construction.
`
`6
`
`
`
`U.S. Patent No. 8,923,941
`Petitioners’ Argument No. 3
`
`Petitioners’ arguments to change the construction for
`
`application-specific interface (API)
`
`• Although Petitioners recognize that the Board has previously
`
`construed this term, Petitioners request reconsideration based
`upon expert testimony.
`
`,
`
`
`
`Patent Owner’s Reply Paper 32 at p. 2.
`
`o “In essence, Petitioners are requesting that the specific
`definition set forth in the specification be ignored in favor of
`extrinsic evidence in the form of expert testimony.”
`
`• this request is in direct contradiction to the rules for
`identified by this Board in its prior
`construing claims
`
`construction of this term.
`
`id.
`
`id.
`
`7
`
`
`
`U.S. Patent No. 8,923,941
`Petitioners’ Argument No. 3
`
`Petitioners’ arguments to change the construction for
`
`application-specific interface (API)
`
`“[W]hen 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 glean the meaning of the term. . . . We also may look to the
`
`prosecution history to try to discern a claim term’s meaning. . . . When we are
`
`unable to construe the claim term from such intrinsic evidence, we may turn
`to extrinsic evidence to aid in construing the claim term.”).
`
`See IPR2017-00319, Institution of Inter Partes Review, Paper 10 at pgs. 10-11.
`
`8
`
`
`
`U.S. Patent No. 8,923,941
`Petitioners’ Argument No. 3
`
`Petitioners’ arguments to change the construction for
`
`application-specific interface (API)
`
`• The Board does not need to “turn” to extrinsic evidence when
`
`the intrinsic evidence is sufficient to construe the term
`
`• there is still no need for extrinsic evidence to construe
`“application-specific interface (API)
`
`9
`
`
`
`U.S. Patent No. 8,923,941
`Petitioners’ Argument No. 4
`
`Petitioners’ arguments to change the construction for
`
`application-specific interface (API)
`
`
`
`Petitioners’ Opposition, Paper 31 at p. 9.
`
`•
`
`,
`
`“Petitioners are arguing that the construction of a claim term is ‘irrelevant’ as
`the prior art teaches an example from the ‘941 patent.”
`
`
`
`Patent Owner’s Reply Paper 32 at p. 3.
`
`• Patent Owner is not aware of any claim construction case law or statute stating
`a claim term is “irrelevant” if there are examples in the patent
`
`• Patent Owner is further unaware that a claim term can be ignored when
`
`determining patentability.
`
`Id.
`
`Id.
`
`10
`
`
`
`U.S. Patent No. 8,923,941
`Petitioners’ Argument No. 5
`
`Petitioners’ arguments to change the construction for
`
`application-specific interface (API)
`
`
`
`Petitioners’ Opposition, Paper 31 at p. 10.
`
`•
`
`“Petitioners have genericized the claim construction of application-
`specific interface (API) to mean ‘simply indicates that the data is
`delineated in some manner’ while ignoring the Board’s construction
`stating that the ‘application-specific interface (API)’ is directed to a
`‘particular application.’”
`
`
`
`Patent Owner’s Reply Paper 32 at p. 4.
`
`,
`
`11
`
`
`
`U.S. Patent No. 8,923,941
`
`Petitioners’ obvious arguments should be denied
`
`• The Board has already construed “‘application-specific interface”
`stating that an “‘application-specific interface (API)’ is directed to
`a ‘particular application.’”
`
`o The construction was based upon the specific definition set
`
`forth in the specification.
`
`• Petitioners incorrectly use their claim construction in their
`
`analysis of the prior art instead of using the claim construction
`
`set forth by the Board
`
`• Petitioners various arguments along with the ultimately flawed
`
`and unsupported claim construction are not persuasive
`
`12
`
`
`
`U.S. Patent No. 8,923,941
`
`Petitioners’ obvious arguments should be denied
`
`• Petitioners incorrectly use their claim construction in their
`
`analysis of the prior art instead of using the claim
`
`construction set forth by the Board
`
`• Petitioners have failed to identify any combination of prior
`art that discloses an “application-specific interface (API)
`directed to a particular application.”
`
`13
`
`
`
`U.S. Patent No. 8,923,941
`
`Petitioners contend that the claim element “parsing data
`for a particular application” is “not meaningful”.
`
`• A claim element cannot be ignored as “not meaningful”
`
`• Petitioners’ proposition is nonsensical
`
`o Data transmitted to a “particular application” is in a form
`
`only understandable by that application.
`
`o When the data is parsed for a particular application, only
`
`that particular application can use the parsed data.
`
`14
`
`
`
`U.S. Patent No. 8,923,941
`
`Petitioners’ Asserted Prior Art Combinations
`
`• Petitioners’ propose the combination of Kosuda, Maekawa,
`and Gupta render claims 22-29 obvious
`
`• Petitioners’ propose the combination Aceti, Fricke, and
`Craw render claims 22-29 obvious
`
`15
`
`
`
`U.S. Patent No. 8,923,941
`Kosuda + Maekawa + Gupta
`
`Combination Does Not Render Substitute Claims Obvious
`
`• Petitioners admit that “Kosuda does not expressly disclose
`
`that the data includes motion-related information or that
`
`the output data is parsed out such that an application-specific
`
`interface (API) can utilize the physiological information and
`motion-related information for an application.”
`
`• To cure this defect, Petitioners attempt to rely upon Gupta.
`
`o This attempt fails, however, as Gupta fails to disclose the
`application-specific interface (API) claim element.
`
`16
`
`
`
`U.S. Patent No. 8,923,941
`Kosuda + Maekawa + Gupta
`
`Combination Does Not Render Substitute Claims Obvious
`
`• Petitioners demonstrate the flawed application of Petitioners’ own
`
`construction, arguing as follows:
`
`Petitioners’
`Opposition,
`Paper 31 at p. 14.
`
`• Petitioners’ expert provides evidence of a data packet being disclosed in
`
`Gupta and then makes the leap that the creation of this data packet arranges
`the data “such that an application specific interface can decode the packet
`and a particular application can display the information from the packet.”
`
`17
`
`
`
`U.S. Patent No. 8,923,941
`Kosuda + Maekawa + Gupta
`
`Combination Does Not Render Substitute Claims Obvious
`
`• Petitioners provide no citation to Gupta showing “the
`
`output data is parsed out such that an application-specific
`
`interface (API) can utilize the physiological information
`and motion-related information for an application.”
`
`
`
`Patent Owner’s Reply Paper 32 at p. 8.
`
`,
`
`• Petitioner and their expert merely apply their “simply
`indicates that the data is delineated in some manner”
`
`construction to the application-specific interface (API)
`
`claim element.
`
`id.
`
`18
`
`
`
`U.S. Patent No. 8,923,941
`Kosuda + Maekawa + Gupta
`
`Combination Does Not Render Substitute Claims Obvious
`
`• Combination of Kosuda, Maekawa and Gupta fails to disclose:
`
`“the output data is parsed out such that an application-specific
`
`interface (API) can utilize the physiological information and
`motion-related information for an application.”
`
`19
`
`
`
`U.S. Patent No. 8,923,941
`Aceti + FRICKE + Craw
`
`Combination Does Not Render Substitute Claims Obvious
`
`• Petitioners admit that “Aceti does not explicitly disclose that
`
`the data is parsed out such that an application-specific
`
`interface (API) can utilize the physiological information and
`motion-related information application.”
`
`• To cure this defect, Petitioners attempt to rely upon Craw.
`
`o This attempt fails, however, as Craw fails to disclose the
`application-specific interface (API) claim element.
`
`20
`
`
`
`U.S. Patent No. 8,923,941
`Aceti + FRICKE + Craw
`
`Combination Does Not Render Substitute Claims Obvious
`
`• Petitioners contend as follows:
`
`Petitioners’ Opposition, Paper 31 at p. 22-23
`
`21
`
`
`
`U.S. Patent No. 8,923,941
`Aceti + FRICKE + Craw
`
`Combination Does Not Render Substitute Claims Obvious
`
`• Once again, the Petitioners use evidence of a serial data packet
`being disclosed in the prior art, this time Craw, and then make the
`
`leap that the serial data packet meets the application-specific
`
`interface (API) claim element.
`
`• Petitioners’ expert provides no citation to Craw showing “the
`
`output data is parsed out such that an application-specific
`
`interface (API) can utilize the physiological information and
`motion-related information for an application.”
`
`• Petitioner and their expert merely apply their “simply indicates
`that the data is delineated in some manner” construction to the
`
`application-specific interface (API) claim element.
`
`22
`
`
`
`U.S. Patent No. 8,923,941
`Aceti + FRICKE + Craw
`
`Combination Does Not Render Substitute Claims Obvious
`
`• Combination of Aceti, Fricke and Craw fails to disclose:
`
`“the output data is parsed out such that an application-specific
`
`interface (API) can utilize the physiological information and
`motion-related information for an application.”
`
`23
`
`
`
`U.S. Patent No. 8,923,941
`
`Valencell’s Listing of Specification Support is Sufficient
`
`• Unlike Respironics, Valencell did not seek to make extensive
`
`modifications
`
`• Unlike Google, Valencell did not simply provide a single list of string
`
`citations associated to an substitute claim in general.
`
`• Valencell’s listing of specification support specified exactly where
`
`each and every individual limitation of each substitute claim is found
`
`within the original specifications.
`
`o SeeShinnFuCo. ofAm., Inc. and. ShinnFuCorp. v. TheTireHangerCorp.,
`
`, (P.T.A.B. April 22, 2016)
`IPR2015-00208, Final Written Decision, Paper 24
`(granting patent owner’s motion to amend supported with a table
`listing each limitation and its corresponding specification citation).
`
`24
`
`
`
`U.S. Patent No. 8,923,941
`
`Substitute Claims 12-24 Satisfy the Scope Requirement of
`Valencell’s Motion to Amend Should Not Be Denied
`37 C.F.R. § 42.121
`
`“Both by statute and by its own rules, the Board has only limited grounds for
`denying a motion to amend: (1) if the amendment ‘does not respond to a ground of
`, or (2) if the amendment ‘seeks to
`unpatentability involved in the trial,’ 37 C.F.R. § 42.121
`enlarge the scope of the claims of the patent or introduce new subject matter,’ id.”
`
`Aqua Products, Inc. v. Matal, 872 F.3d. 1290, 1306 (Fed. Cir. 2017) .
`
`“[a] proposed substitute claim is not responsive to an alleged ground of
`
`unpatentability of a challenged claim if it does not either include or narrow
`
`each feature of the challenged claim being replaced.”
`
`Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (P.T.A.B. June 11, 2013).
`
`25
`
`
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