Filed on behalf of Valencell, Inc.
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`Nicholas C Kliewer (nkliewer@bcpc-law.com)
`Jonathan H. Rastegar (jrastegar@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`
`
`
`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`

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`Case IPR2017-00321
`U.S. Patent No. 8,923,941
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND OF PATENT OWNER AND TECHNOLOGY ................. 4
`
`III. OVERVIEW OF THE ’941 PATENT ............................................................ 6
`
`IV. OVERVIEW OF THE PETITION .................................................................. 9
`
`B.
`C.
`
`A. United States Patent Application Publication No. US 2004/0186387 Al
`to Kosuda .............................................................................................10
`JP Patent Application Publication No. 2005-270544 to Maekawa .....11
`United States Patent Application Publication No. 2005/0059870 to
`Aceti ....................................................................................................12
`D. United States Patent Application Publication No. 2009/0105556 to
`Fricke ...................................................................................................13
`
`V.
`
`CLAIM CONSTRUCTION ..........................................................................14
`
`A.
`B.
`C.
`
`Petitioner’s Construction of “Body” Is Confusing and Unnecessary. 15
`Petitioner’s Construction of “Window” Is Improper ..........................16
`Construction of “PPG Sensor” ............................................................16
`
`VI. LEGAL STANDARDS .................................................................................17
`
`A.
`B.
`
`Standard for Instituting Petition ..........................................................17
`Obviousness .........................................................................................20
`
`VII. PETITIONER FAILS TO ESTABLISH A REASONABLE LIKELIHOOD
`OF PROVING THE UNPATENTABILITY OF ANY CHALLENGED
`CLAIM...........................................................................................................24
`
`A.
`
`Petitioner Fails to Show a Reasonable Likelihood of Success with
`Respect to Grounds 1 and 2 .................................................................24
`
`1.
`
`2.
`
`3.
`
`Petitioner Does Not Demonstrate that Kosuda Discloses a “PPG
`Sensor” as Required by All Challenged Claims. ......................24
`Petitioner Fails to Show that Kosuda in View of Maekawa and
`Han Discloses Any of the Limitations in Claims 18-20. ..........27
`Petitioner Cannot Demonstrate Why a POSITA Would Modify
`Kosuda in View of Maekawa. ...................................................28
`
`B.
`
`C.
`
`Petitioner Fails to Show a Reasonable Likelihood of Success with
`Respect to Grounds 3 and 4 Because It Cannot Demonstrate Why a
`POSITA Would Modify Aceti in View of Fricke. ..............................30
`Petitioner Proposes Redundant Grounds for Challenging Claims 14, 15,
`18, 19, 20, and 21. ...............................................................................34
`
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`D.
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`Petitioner Fails to Conduct a Proper Analysis of the Second Graham
`Factor. ..................................................................................................36
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`VIII. CONCLUSION ..............................................................................................39
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`TABLE OF EXHIBITS
`
`Exhibit No.
`
`Description
`
` Skip West, Valencell and RapidSOS Honored with CTA's
`
`2016 Innovation Entrepreneur Awards
`
`Biometrics Lab: Performance of Leading Optical Heart
`
`Rate Monitors During Interval Exercise Conditions
`
`Valencell website (http://valencell.com/customers/)
`
`Electrical (ECG) vs. Optical-based (PPG) Biosensors in
`
`Wearable Devices
`
`Estimating Respiratory and Heart Rates from the
`
`Correntropy Spectral Density of the Photoplethysmogram,
`
`Continuous Blood Pressure Measurement by Using the
`
`Pulse Transit Time: Comparison to a Cuff-Based Method
`
`How an LDV/LDA works
`
`A New Look at the Essence of the Imaging
`
`Photoplethysmography
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`
`
`
`
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`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42. 107, Patent Owner Valencell,
`
`Inc. (“Valencell” or “Patent Owner”) hereby files this preliminary response
`
`(“Preliminary Response”) to the Petition (Paper 2) (the “Petition”) for Inter Partes
`
`Review of U.S. Patent No. 8,923,941 (Ex. 1001) (the “’941 Patent”) in IPR2017-
`
`00321 filed by Apple Inc. (“Apple” or “Petitioner”). The Board should deny
`
`institution because Petitioner has not established that “there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.” 35 U.S.C. § 314(a).
`
`This Response is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107(b), as
`
`it is filed within three months of the December 14, 2016 mailing date of the Notice
`
`of Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
`
`Response (Paper 3). For purposes of this Preliminary Response, Patent Owner has
`
`limited its identification of deficiencies in the Petition and does not intend to waive
`
`any arguments not addressed in this Preliminary Response.
`
`I.
`
`INTRODUCTION
`
`The ’941 Patent is part of a family of patents directed to biometric sensor
`
`technology for wearables and hearables. The Petition presents four Grounds for
`
`invalidating the system claims of the ’941 Patent, specifically claims 14-21. These
`
`four grounds can be divided into two groups: those based on Kosuda as the primary
`
`1
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`reference (Grounds 1-2), and those based on Aceti as the primary reference (Grounds
`
`3-4). Notably, the Grounds are redundant with respect to claims 14-15 and 18-21.
`
`Put simply, the Board should not institute. The Petition amounts to little more
`
`than unsupported, conclusory statements regarding the alleged art. The evidence
`
`does not support Petitioner’s sweeping statements. For example, for Grounds 1 and
`
`2, Petitioner wrongly concludes that Kosuda’s “pulse wave sensor” is a PPG sensor.
`
`Pet., 23. As detailed below, this conclusion goes too far. Pulse wave sensors cover a
`
`wide variety of heart rate monitors, and are not equivalent to PPG sensors. Petitioner
`
`makes no effort to show that the signal received by the “pulse wave sensor” is
`
`modulated with the subject’s heartbeat – the defining feature of a PPG sensor. This
`
`failing is important as the “pulse wave sensor” in Kosuda could be any number of
`
`non-PPG sensors. Petitioner ignores this reality and simply declares Kosuda to be a
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`PPG sensor, improperly placing the burden on Valencell to disprove its claims.
`
`For Grounds 3 and 4, Petitioner makes similar unsubstantiated claims
`
`regarding Aceti. For example, Petitioner simply declares that it would have been
`
`obvious to modify Aceti to process signals from the motion sensor and the PPG
`
`sensor to reduce motion artifacts from the PPG signals. Pet., 41. But Petitioner’s
`
`argument reveals that it does not appreciate Aceti’s disclosure. As explained below,
`
`Aceti utilizes its PPG sensor to determine the SpO2 of the subject, a determination
`
`2
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`which is not impacted by motion noise. While Aceti discloses determining the
`
`subject’s heart rate, it does so through the use of a wholly separate EKG sensor.
`
`Petitioner’s failure to call this distinction to the Board’s attention is troubling, as it
`
`suggests that Petitioner is simply mixing and matching items from the alleged art,
`
`based on hindsight reconstruction, to arrive at the claims rather than considering the
`
`disclosures.
`
`Further, the Petition repeatedly relies on hollow reasoning that lacks
`
`evidentiary support. For example, Petitioner states:
`
`Though Kosuda does not expressly mention removing footstep-related
`
`motion or disclose that the frequency bands are removed using a band-
`
`pass filter to produce pre-conditioned signals, such techniques were
`
`well known in the art. Ex. 1003, ¶ 96.
`
`Pet. 29. Petitioner fails to offer any evidence from the prior art to support this claim.
`
`Instead, Petitioner attempts to hide this failure with citations to an expert Declaration
`
`(“Declaration”) (Ex. 1003), but the Declaration is equally conclusory and not proper
`
`argument. Indeed, the cited paragraph from the Declaration echoes the same
`
`conclusory claims:
`
`Though Kosuda does not expressly disclose using a band-pass filter to
`
`precondition the signals before filtering, preconditioning PPG signals
`
`by band-pass filtering to remove components outside of a range of
`
`interest was a well-known signal processing technique. Further, though
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`Kosuda does not expressly disclose removing footstep-related motion
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`artifacts, one of ordinary skill would have recognized that Kosuda and
`
`others (such as Han) taught filtering techniques designed to do precisely
`
`that.
`
`Ex. 1003, ¶ 96. Neither Petitioner, nor its expert, offer any evidence to back their
`
`conclusory statements.
`
`Petitioner’s approach in this matter violates numerous statutes and Board
`
`rules, and represents a sufficient reason in and of itself to deny the Petition as to all
`
`grounds. Petitioner has not provided articulate reasoning supported by evidence that
`
`claims 14-21 of the ’941 Patent are rendered obvious by the references that it puts
`
`forward. Petitioner cannot meet its burden and the Petition should therefore be
`
`denied in full.
`
`II. BACKGROUND OF PATENT OWNER AND TECHNOLOGY
`
`Valencell was founded in 2006 by three Ph.D. electrical engineers with more
`
`than 50 years of combined experience in research and development. Since its
`
`founding, Valencell has steadily grown to roughly 30 employees and has become a
`
`leading innovator in biometric wearables. Valencell’s technology is used to power
`
`the most accurate wearable biometric heart rate sensors on the market. See e.g.,
`
`Consumer Technology Association’s press release, Ex. 2001 (“Accuracy in all
`
`conditions is at the heart of what Valencell does - anyone, anywhere, doing anything,
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`wearing any device.”); see also Ex. 2002 (showing test results comparing
`
`Valencell’s product’s accuracy compared to leading competitors). Valencell’s
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`reputation in the industry for having the most accurate devices is due to the
`
`innovators and creative thinking at Valencell which has resulted in industry
`
`recognition, numerous awards, and dozens of heavily cited U.S. patents, including
`
`U.S. Patent No. 8,923,941, the patent at issue in this proceeding.
`
`In particular, Valencell’s
`
`technology
`
`includes
`
`the use of photo-
`
`plethysmography (“PPG”) sensors to determine physiological information such as
`
`pulse rate, breathing rate, blood flow volume, etc. PPG sensors transmit light into
`
`biological tissue which can be absorbed by different substances including skin and
`
`blood. Although most of the transmitted light is absorbed or otherwise lost, photo
`
`detectors can be used to detect changes in the transmitted light via reflection from
`
`or transmission through the tissue.
`
`Prior to Valencell, the wearable industry focused on transmitting and
`
`collecting as much light as possible during PPG. The reasoning at the time was
`
`straight-forward and obvious: The more light transmitted results in more light (i.e.,
`
`more signal) collected. But Valencell realized that not all the light transmitted or
`
`delivered is good light and that the conventional “more is better” approach to
`
`delivering and collecting light could be improved by, for example, specifically
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`configuring its devices to block light to some areas and targeting the light delivery
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`and collection using non-air transmissive material to direct the light. In other words,
`
`Valencell configured its devices so that the most useful light is received thereby
`
`significantly improving the accuracy of the devices.
`
`As a result of these patented innovations, Valencell has allowed other groups
`
`to take advantage of its improved accuracy technology by licensing its patent
`
`portfolio to consumer electronics manufacturers, mobile device and accessory
`
`makers, sports and fitness brands, gaming companies, and military suppliers for
`
`integration into their products. Numerous consumer electronics manufacturers have
`
`recognized the need for this patented technology and partnered with Valencell. Such
`
`partners include major technology companies like: Samsung, LG, Sony, Bose, and
`
`Intel. See, e.g., Ex. 2003 available at http://valencell.com/customers.
`
`III. OVERVIEW OF THE ’941 PATENT
`
` The ’941 Patent, entitled “Method and Apparatus for Generating Data Output
`
`Containing Physiological and Motion-Related Information,” relates generally to an
`
`innovative method and apparatus for physiological monitoring. Ex. 1001, 1:20-23.
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`Specifically, the apparatus claims relate to a wearable device with a housing that
`
`comprises, among other things, a particularly claimed window and a non-air light
`
`transmissive material in optical communication with a PPG sensor and the window.
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`In its petition, Apple only challenges the apparatus claims (i.e., Claims 14-21). Pet.
`
`at 7. However, an understanding of the method described by the ’941 Patent will
`
`provide insight into the apparatus claims.
`
`The ’941 Patent discloses a novel method for generating data containing both
`
`motion-based or physical activity information and physiological information. Ex.
`
`1001, Abstract. The motion-based activity is captured through at least one motion
`
`sensor attached to the body of the user, while the physiological information comes
`
`from at least one PPG sensor through the body of the user enabling detection of
`
`physiological information such as heart rate, respiration rate, blood flow, etc. Id.,
`
`30:35-61. In particular, the ’941 Patent accomplishes its detection of physiological
`
`information through optical emitters which deliver light in a particular region
`
`through a “light transmissive material” into, for example, an ear canal of the user.
`
`Then, an optical detector detects the scattered light that is produced upon the emitted
`
`light penetrating the skin of the user. Id., 13:4-14; 14:40-49. The claimed apparatus
`
`embodiment requires that the transmissive material is not air (i.e., having a smaller
`
`index of refraction than air). Id. at 32:1-15. This provides that there is an impedance
`
`mismatch between the transitive material and any surrounding air thus slowing the
`
`light in the transmissive material.
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`The ’941 Patent further discloses novel methods for accurately measuring
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`physiological information in the presence of signal disrupting noise. See id., 3:45-
`
`55. In particular, the ’941 Patent thus discloses removing motion-related noise
`
`artifacts, such as running or footstep noise artifacts, from the physiological
`
`measurements of properties such as heart rate, blood flow, or blood oxygen levels
`
`measured by the PPG sensor. See id., 3:65-4:5; 31:18-19.
`
`Independent claim 14 of the ’941 discloses a “wearable device” configured to
`
`process signals from a motion sensor and signals from a PPG sensor in order to
`
`reduce motion artifacts from the PPG signals. Id., 32:1-15. Elements of the apparatus
`
`of claim 14 include a housing and a chipset within the housing containing at least
`
`one PPG sensor, at least one motion sensor, and at least one signal processor to
`
`process the PPG and motion sensor signals. Id. The signal processor, combined with
`
`the motion data, allows the device to reduce the motion artifacts that may be present
`
`in measurements of the PPG sensor. Id. The housing comprises at least one window
`
`that optically exposes the PPG sensor to the body of user of the device and uses
`
`“non-air light transmissive material” in further optical communication with the PPG
`
`sensor and window. Id.
`
`Figure 22B is shown below with elements highlighted:
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`8
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`Here, housing comprises a base 50 and windows 74W. Id., 29:30-30:4. The base
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`supports sensors 26 and 26’. Id. The housing contains non-air light transmissive
`
`
`
`material 19. Id.
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`IV. OVERVIEW OF THE PETITION
`
`Apple’s Petition requests review of claims 14-21, which comprise the
`
`apparatus claims of the ’941 Patent. Pet. 1. Claim 14 is the sole independent claim
`
`at issue, with claims 15-18 and 20-21 depending directly from claim 14 and claim
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`9
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`19 depending from claim 18. See Ex. 1001, 32:1-40. Petitioner asserts four separate
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`Grounds for review, all based on obviousness under 35 U.S.C. § 103. Pet. 7. The
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`following table summarizes the Grounds that Petitioner is asserting:
`
`Ground References Combined
`
`Basis Dependent
`Claims
`
`Independent
`Claim
`
`1
`
`2
`
`3
`
`4
`
`Kosuda & Maekawa
`
`Kosuda, Maekawa, & Han
`
`§ 103
`
`§ 103
`
`15, 21
`
`18-20
`
`Aceti & Fricke
`
`§ 103
`
`15-19, 21
`
`Aceti, Fricke, & Comtois
`
`§ 103
`
`20
`
`14
`
`
`
`14
`
`
`
` The Grounds can be broken down into two groups. Grounds 1 and 2 rely on
`
`the combination of Kosuda (Ex. 1027) in view of Maekawa (Ex. 1030) for
`
`independent claim 14 and dependent claims 15 and 21, with Han being added as
`
`prior art for dependent claims 18-20. See id. Grounds 3 and 4 rely on the combination
`
`of Aceti (Ex. 1031) in view of Fricke (Ex. 1058) for independent claim 14 and
`
`dependent claims 15-19 and 21, with Comtois being added as a reference for claim
`
`20. See id. Each of the four primary references differs significantly from one another
`
`and from the claims of the ’941 Patent.
`
`A. United States Patent Application Publication No. US 2004/0186387
`Al to Kosuda
`
`Kosuda generally discloses a “a pulse meter, a method for controlling a pulse
`
`meter, a wristwatch-type information device, a control program, a storage medium,
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`10
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`a blood vessel simulation sensor, and a living organism information measurement
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`device that are suitable for being mounted on a person's arm and measuring pulse
`
`during walking or running.” Ex. 1027 ¶ 2. Unlike the ’941 Patent, however, Kosuda
`
`does not expressly disclose a PPG sensor anywhere in the specification or claims.
`
`The PPG sensor and the way in which the signals from such a sensor are the most
`
`important elements of the ’941 Patent. The closest Kosuda comes to disclosing a
`
`PPG sensor is its reference to a “pulse wave sensor,” see, e.g., id. ¶ 12. Although
`
`Petitioner claims that such a sensor is a PPG sensor, Kosuda’s complete omission of
`
`any reference to terms such as “PPG” or “photoplethysmography” are strongly
`
`indicative that Kosuda does not disclose the essential PPG sensor. Particularly when
`
`these terms are the technical terms used by a POSITA.
`
`B.
`
`JP Patent Application Publication No. 2005-270544 to Maekawa
`
`Maekawa also differs in many respects from the ’941 Patent. Although
`
`Maekawa is generally directed to “provid[ing] a physiological information
`
`measuring device with a simple and small construction that does not generate
`
`erroneous detection even if there is external light,” Ex. 1030 ¶ 6, Maekawa contains
`
`no discussion whatsoever about a motion sensor. This indicates that Maekawa does
`
`not appreciate the problems associated with motion noise. Indeed, Maekawa
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`contains no discussion of the impact that movement has on the system. Instead,
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`Maekawa is totally silent on this issue.
`
`C. United States Patent Application Publication No. 2005/0059870 to
`Aceti
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`Aceti differs from the invention of the ’941 Patent in a number of significant
`
`ways. First, although Aceti may disclose a pulse oximetry sensor, Ex. 1031 ¶ 20, it
`
`uses it for measuring oxygenation rate rather than measuring heart rate. Aceti utilizes
`
`a separate EKG sensor for measuring heart rate:
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`12
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`Ex. 1031 at Fig. 3. While EKG and PPG sensors can both be used to provide the
`
`subject’s heart rate, the operation of each is very different. For example, a PPG
`
`sensor uses light-based technology to measure the subject’s blood flow. See Ex.
`
`2004, Electrical (ECG) vs. Optical-based (PPG) Biosensors in Wearable Devices,
`
`http://neurosky.com/wp-content/uploads/2016/06/TOF-side-by-side-competitor-
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`comparison.pdf, page 2 (last visited March 14, 2017). Conversely, an EKG sensor
`
`uses electrical signals to measure the expansion and contraction of the chambers in
`
`the subject’s heart. Id. Unlike PPG sensors, the electrical signals measured by an
`
`EKG sensor are generally not susceptible to motion noise. Id. at 3.
`
`D. United States Patent Application Publication No. 2009/0105556 to
`Fricke
`
`Fricke, unlike the ’941 Patent, does not disclose any sort of “wearable device.”
`
`Rather, Fricke is directed to “a system includes an optical sensor and a signal
`
`processing module.” Ex. 1016 ¶ 5. Fricke discloses methods and systems of reducing
`
`motion artifacts in obtaining physiological parameters through the use of band-pass
`
`filters, id. ¶ 53. Fricke further explains that additional filtering of the signals can be
`
`accomplished through a variety of methods. Id. ¶ 53. Fricke does not disclose a
`
`number of elements of claim 14, such as a “window” or non-air light transmissive
`
`material in optical communication with the window and PPG sensor. Significantly,
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`Fricke does not teach the reduction of any physiological measurements that are
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`impacted by noise.
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`V. CLAIM CONSTRUCTION
`
`In an inter partes review, “[a] claim in an unexpired patent shall be given its
`
`broadest reasonable construction in light of the specification of the patent in which
`
`it appears.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
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`2131, 2142 (2016). Although claim terms are given their broadest reasonable
`
`interpretation, claims are not interpreted in a vacuum but are part of and read in light
`
`of the specification. Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116
`
`(Fed. Cir. 1987). The terms are also given their ordinary and customary meaning, as
`
`would be understood by one of ordinary skill in the art in the context of the
`
`specification. In re Trans logic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`The construction that stays true to the claim language and most naturally aligns with
`
`the inventor’s description is likely the correct interpretation. Renishaw PLC v.
`
`Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).
`
`Petitioner proposes the construction of five claim terms “body,” “headset,”
`
`“housing,” “chipset,” and “window.” Petitioner does not believe that any of these
`
`claims terms need to be construed in order for the Board to deny the Petition, but
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`will address problems with two of them, below.
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`A.
`
`Petitioner’s Construction of “Body”
`Unnecessary.
`
`Is Confusing and
`
`The broadest reasonable interpretation of “body” is the body of the subject.
`
`While the term would not ordinarily require construction, Petitioner suggests that
`
`this term “should be construed as the portion of the body of a human or animal that
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`may wear a headset.” Pet. 12. This construction is misleading. As an initial matter,
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`with the exception of claim 17, the claims are not limited to a headset. In fact, the
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`existence of claim 17 counsels against Petitioner’s construction under the doctrine
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`of claim differentiation. See Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354,
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`1360 (Fed. Cir. 2010) (concluding that “[u]nder the doctrine of claim differentiation,
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`those dependent claims [reciting the use of particular wavelengths] give rise to a
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`presumption that the broader independent claims [reciting that laser radiation be
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`‘absorbed substantially completely’] are not confined to that range”). Moreover,
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`there is no need to construe this term, the claim language states “body of a subject
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`wearing the device.” ’941 Patent, Claim 14. And there is no dispute as to what
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`constitutes the body of a subject in this proceeding. Petitioner’s argument appears to
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`be little more than an attempt to obtain in this proceeding a construction that will
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`bolster an illegitimate non-infringement argument in the parallel district court
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`proceedings, and should thus be rejected by the Board.
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`B.
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`Petitioner’s Construction of “Window” Is Improper
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`The broadest reasonable interpretation of window is “an opening through
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`which light can pass.” This construction is consistent with the usage of the term
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`throughout the ’941 Patent. For example, the specification provides “the light guide
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`18 includes multiple windows 18w formed in the cladding material 21 on the outer
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`surface 18a of the cover and through which light emitted by the light emitter 24
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`passes and multiple windows 18w through which scattered light 110 passes into
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`the light guide 18 to be directed to the light detector 26. These openings 18w may
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`extend circumferentially around the light guide.” ’941 patent at 16:18-23 (emphasis
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`added). Nevertheless, Petitioner proposes that this term be construed as “an aperture
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`or opening; the framework enclosing such an opening or aperture; a transmissive
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`pane within such an aperture or opening.” Pet. 14 (citing Ex. 1003, ¶ 59). This
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`construction is incorrect as it improperly blurs the line between the window and the
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`structure surrounding it.
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`C. Construction of “PPG Sensor”
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`The broadest reasonable interpretation of “PPG Sensor” is “an optically
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`obtained plethysmogram that results from blood flow modulations caused by the
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`subject’s heartbeat.” This construction is echoed by various technical literature. See,
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`e.g., Ex. 2005, Garde et al., Estimating Respiratory and Heart Rates from the
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`Correntropy Spectral Density of
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`the Photoplethysmogram, at Abstract,
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`https://www.ncbi.nlm.nih. gov/pmc/articles/PMC3899260/ (last visited March 14,
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`2017) (“The photoplethysmogram (PPG) obtained from pulse oximetry measures
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`local variations of blood volume in tissues, reflecting the peripheral pulse modulated
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`by heart activity.”); Ex. 2008, Kamshilin et al., A New Look at the Essence of the
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`Imaging Photoplethysmography, at Abstract, http://www.nature.com/articles/
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`srep10494 (last visited March 14, 2017) (“It is widely believed that the light intensity
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`after interaction with the biological tissue in vivo is modulated at the heartbeat
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`frequency mainly due to pulsatile variations of the light absorption caused by arterial
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`blood-volume pulsations.”).
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`Petitioner does not offer a construction for this term. Nevertheless,
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`Petitioner’s treatment of the term in the Petition indicates that a construction is
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`necessary. Petitioner’s interpretation of PPG sensor broadens the term beyond its
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`broadest reasonable interpretation, such that it captures sensors that are not even
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`plethysmographs, let alone photoplethysmographs.
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`VI. LEGAL STANDARDS
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`A.
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`Standard for Instituting Petition
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`The Board may not grant a petition for inter partes review “unless the Director
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`determines that the information presented in the petition filed under section 311 and
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`any response filed under section 313 shows that there is a reasonable likelihood that
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`the petitioner would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314(a). “[I]t is the petitioner who bears the burden of
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`establishing a reasonable likelihood of unpatentability of one or more claims.” SAS
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`Inst., Inc. v. Complementsoft, LLC, No. IPR2013-00581, 2014 WL 977619, at *1
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`(P.T.A.B. Feb. 25, 2014) (citing 37 C.F.R. § 42.108(c)).
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`A petition for inter partes review may only be considered if “the petition
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`identifies, in writing and with particularity, each claim challenged, the Grounds on
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`which the challenge to each claim is based, and the evidence that supports the
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`Grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). Additional rules of
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`the Board, such as 37 C.F.R. 42.104, further specify the showing that must be made
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`in order for a petition to be granted. For instance, 37 C.F.R. § 42.104(b)(4) provides
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`that the petition must “specify where each element of the claim is found in the prior
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`art patents or printed publications relied upon.” Additionally, 37 C.F.R. §
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`42.104(b)(5) requires that the petition “identify[] specific portions of the evidence
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`that support the challenge.” Furthermore, 37 C.F.R. § 42.22(a)(2) provides that a
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`petition “must include . . . [a] full statement of the reasons for the relief requested,
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`including a detailed explanation of the significance of the evidence.” The Official
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`Trial Practice Guide of the Board further explains that the Board “may not authorize
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`a trial where the information presented in the petition, taking into account any patent
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`owner preliminary response, fails to meet the requisite standard for instituting the
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`trial.” 77 Fed. Reg. 48,756, 48,757 (Aug. 14, 2012).
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`In deciding whether to exercise its discretion to institute a trial under 37 C.F.R.
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`§ 42.108, the Board takes into account 37 C.F.R § 42.1(b), which mandates the “the
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`just, speedy, and inexpensive resolution of every proceeding.” See Illumina, Inc. v.
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`Trustees of Columbia Univ., No. IPR2012-00006, Paper 43 at 11 (P.T.A.B. May 10,
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`2013). This consideration has led the Board to conclude that “considering multiple
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`rejections for the same unpatentability issue would unnecessarily consume the time
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`and resources of all parties involved. As [Petitioner] did not provide a meaningful
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`distinction between the different, redundant rejections, we perceived no unfairness
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`by not authorizing what appeared to be redundant challenges because an inter partes
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`review had been instituted on the same factual basis.” Id. Thus, “in the absence of
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`the Petitioner identifying meaningful distinctions in terms of relative strengths and
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`weaknesses of the different prior art references, it is within the discretion of the
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`Board to conclude that even with different facts in different Grounds, multiple
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`Grounds may nevertheless be redundant.” Oracle Corp. v. Clouding IP, LLC, No.
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`IPR2013-00088, 2013 WL 5970180, at *3 (P.T.A.B. June 13, 2013) (emphasis
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`added). The Board has further observed that “multiple Grounds, which are presented
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`in a redundant manner by a petitioner who makes no meaningful distinction between
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`them, are contrary to the regulatory and statutory mandates, and therefore are not
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`all entitled to consideration.” Liberty Mutual Ins. Co. v. Progressive Casualty Ins.
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`Co., No. CBM2012-00003, Paper 7 at 2 (P.T.A.B. October 25, 2012) (emphasis
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`added).
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`B. Obviousness
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`The standard for finding a claim to be obvious under 35 U.S.C. § 103(a) is
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`well-established:
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are
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`such that the subject matter, as a whole, would have been obvious at the
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`time the invention was made to a person having ordinary skill in the art
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`to which said subject matter