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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Page 1
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` :
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`APPLE, INC., :
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` :
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` Petitioner, :
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` :
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` vs. : Case IPR2017-00315,
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` : 00319, 00321
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`VALENCELL, INC., :
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` :
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` Patent Owner. :
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` :
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`- - - - - - - - - - - - - - -x
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` Washington, D.C.
`
` Wednesday, April 5, 2017
`
` The following pages constitute the
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`teleconferenced proceedings in the above-captioned
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`matter before JUDGES ARPIN, McNAMARA and McSHANE,
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`before Denise M. Brunet, RPR, a Notary Public in
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`and for the District of Columbia, beginning at
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`3:30 p.m., when were present on behalf of the
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`respective parties:
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`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
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`Apple 1067
`Apple v. Valencell
`IPR2017-00321
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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Page 1
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`APPLE, INC., :
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` :
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` Petitioner, :
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` :
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` vs. : Case IPR2017-00315,
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` : 00319, 00321
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`VALENCELL, INC., :
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` :
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` Patent Owner. :
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` :
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`- - - - - - - - - - - - - - -x
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` Washington, D.C.
`
` Wednesday, April 5, 2017
`
` The following pages constitute the
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`teleconferenced proceedings in the above-captioned
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`matter before JUDGES ARPIN, McNAMARA and McSHANE,
`
`before Denise M. Brunet, RPR, a Notary Public in
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`and for the District of Columbia, beginning at
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`3:30 p.m., when were present on behalf of the
`
`respective parties:
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`Apple 1067
`Apple v. Valencell
`IPR2017-00321
`
`
`
`Page 2
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` A P P E A R A N C E S
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`O n b e h a l f o f t h e P e t i t i o n e r :
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` M I C H E L L E K . H O L O U B E K , E S Q U I R E
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` M I C H A E L D . S P E C H T , E S Q U I R E
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` M A R K J . C O N S I L V I O , E S Q U I R E
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` S t e r n e , K e s s l e r , G o l d s t e i n & F o x
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` 1 1 0 0 N e w Y o r k A v e n u e , N o r t h w e s t
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` W a s h i n g t o n , D . C . 2 0 0 0 5
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` ( 2 0 2 ) 3 7 1 - 2 6 0 0
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`O n b e h a l f o f t h e P a t e n t O w n e r :
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` J U S T I N B . K I M B L E , E S Q U I R E
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`7 8
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`9
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` B r a g a l o n e C o n r o y
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`1 0
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` 2 2 0 0 R o s s A v e n u e
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` S u i t e 4 5 0 0 - W e s t
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`1 1
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` D a l l a s , T e x a s 7 5 2 0 1
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` ( 2 1 4 ) 7 8 5 - 6 6 7 0
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`1 2
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`1 3
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`1 5
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`1 6
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`1 7
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`1 8
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`1 9
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`2 0
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`2 1
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`2 2
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` * * * * *
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` P R O C E E D I N G S
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` JUDGE ARPIN: I would like to do the
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`roll call. Who do I have on the line for
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`petitioner?
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` MS. HOLOUBEK: Michelle Holoubek from
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`Sterne Kessler representing petitioner Apple, and
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`I'm joined by my co-counsel Michael Specht and
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`Mark Consilvio, and we also have a court reporter
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`on the call.
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` JUDGE ARPIN: Who do we have on the
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`call for patent owner?
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` MR. KIMBLE: Your Honor, this is Justin
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`Kimble for the patent owner Valencell.
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` JUDGE ARPIN: Thank you. I understand
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`we have a court reporter. I'd like to address the
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`court reporter for a moment. I'd ask the court
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`reporter to please try not to interrupt. If
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`there's an issue as to the spelling of a term, I
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`hope that the parties can get together afterwards
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`and resolve that matter, but my main concern is to
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`try not to interrupt the parties when they're
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`speaking.
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` I'd also ask the court reporter when he
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`or she believes they can have the transcript of
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`this call ready.
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` (Discussion held off the record.)
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` JUDGE ARPIN: Petitioner, you requested
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`this call. I believe it's to request
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`authorization to file a reply to the preliminary
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`response, which I believe was filed about three
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`weeks ago now, and I would -- I understand that
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`there are issues of alleged misstatements and
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`alleged inconsistencies between preliminary
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`responses.
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` As a preliminary matter, I'd ask
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`petitioner is that inconsistencies between the
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`preliminary responses filed in these three cases
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`or is it inconsistencies with regard to other
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`preliminary responses?
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` MS. HOLOUBEK: Your Honor, Michelle
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`Holoubek for the petitioner. These
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`inconsistencies are between two of the POPRs,
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`namely, the 319 IPR and the 321 IPR, both of which
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`address the '941 patent.
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` JUDGE ARPIN: All right. Well, with
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`that clarification, petitioner, since you bear the
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`burden here, I'm going to let you speak first and
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`explain what you are asking for, why you think you
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`are entitled to it and if you are asking for
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`reply, I would also ask you to say exactly what
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`the scope of the reply is, length and when you
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`would propose to have this reply filed.
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` Go ahead, please.
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` MS. HOLOUBEK: Thank you. I'll address
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`each of those points. 37CFR42.108(c), gives the
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`Court authority to grant a reply to a POPR upon a
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`showing of good cause by the petitioner and here
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`we have that good cause.
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` We have identified seven instances
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`across the patent owner's POPRs in these three
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`cases that contain misrepresentations of
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`scientific principles, false statements regarding
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`the references and conflicting contradictory
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`positions taken in two different POPRs.
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` We're concerned that if the Board
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`relies on these constructions, representations of
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`facts and conflicting positions and institution
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`decision, petitioner could possibly be left with
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`no recourse at that time to correct the record or
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`revisit the issue.
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` For example, patent owner attempts to
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`narrow the definition of photoplethysmography in
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`the 319 POPR such that it does not include all
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`optical plethysmography in order to avoid an
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`applied reference.
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` While a conflicting statement in the
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`321 POPR, addressing the same term and the same
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`'941 patent, seeks a directly contradictory
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`definition of photoplethysmography stating that
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`the broadest reasonable interpretation of
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`photoplethysmography is optically obtained
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`plethysmography.
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` Such conflicting statements may not be
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`immediately apparent to the PTAB if different
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`judges are assigned to the different IPRS.
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` Another example, which is the last one
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`I'll make, unless Your Honors wish for a full list
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`at this time, is in the 315 IPR where patent owner
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`provides four new figures and characterizes them
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`as being as being from the Numaga reference,
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`though they are not and have no relationship to
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`the Numaga reference.
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` We conferred with patent owner's
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`counsel and identified to them the seven
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`statements at issue and they did not provide any
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`explanation or support for the misrepresentations.
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` Accordingly, we request authorization
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`to file a reply to the POPR in each of these three
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`cases. These replies would identify each
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`misrepresentation of facts and provide the correct
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`information for the record.
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` We believe that our replies could be
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`quite succinct and we seek to address only those
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`misstatements that we believe rise to the level of
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`needing to be brought specifically to your
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`attention at this time.
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` For example, for each case, we could
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`provide a reply in three pages, along with one or
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`two pieces of technical literature and exhibits
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`that we would cite to for support of our position,
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`and we could file those by the end of the day this
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`Friday.
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` We believe that this request has good
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`cause and represents an appropriate remedy given
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`that 37CFR42.12 specifically refers to misleading
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`arguments and misrepresentations of fact.
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` As I mentioned, there's good cause also
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`because the conflicting POPR statements may go
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`unnoticed if the IPRs are assigned to different
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`judges within the PTAB.
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` And finally, we cannot have addressed
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`these issues in our petition as we've not had
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`anticipated patent owner's false, misleading or
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`inconsistent statements.
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` If you would find it helpful to make
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`your decision on this, we could provide you with
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`additional examples; otherwise, we're happy to
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`answer any questions the Board may have for us.
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` JUDGE ARPIN: We don't have any other
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`questions, I don't think, at this time, but I will
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`inform both parties that Judges McShane, McNamara
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`and myself, Judge Arpin, are on the panel for
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`these three cases.
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` Patent owner, would you like the
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`opportunity to respond to what petitioner has just
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`said?
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` MR. KIMBLE: Yes, Your Honor. Thank
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`you very much. This is Justin Kimble again.
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` In the beginning, I would like to
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`address the standard for -- or giving leave to
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`file a reply such as being requested, and then I
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`want to address a couple of the examples that the
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`petitioner raised.
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` In IPR 2016-00593 and 00594, the panel
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`denied a request very much like the one it's
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`presented with here. This was last July 2016.
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`There, the petitioner argued there was good cause
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`for a preliminary reply because the preliminary
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`response had allegedly misstated facts and
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`petitioner's positions and the law relating to
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`public accessibility of prior art, teachings of
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`the references and claim language.
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` The panel in that instance denied the
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`request and said good cause may exist where there
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`is, for example, new evidence that's come to light
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`or a legal argument of first impression is made by
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`the patent owner.
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` But in situations where there's alleged
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`misstatements or misstatements of fact or
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`misstatements about the references, the panel said
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`that identifying and evaluating statements or
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`misstatements of fact are well within the purview
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`of the panel and, of course, will always be the
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`case that the petitioner's unhappy without patent
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`owner has characterized the facts of the law. And
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`we think that that same conclusion ought to be
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`reached here because there is no new evidence or
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`no novel issue.
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` Additionally, from that, though, of
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`course, we dispute that we have made any
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`misstatements of fact or misrepresentations
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`certainly, certainly not intentionally, going from
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`back to front.
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` With respect to the figures that
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`petitioner raised. What we discussed with them
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`was there -- and what you'll see in our
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`preliminary response, there's a figure from the
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`patent. That's obviously a patent figure, and
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`then there's four other figures. These are LEDs
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`is what it is. We think it's plainly obvious that
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`the other figure surrounding this art we're not
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`representing or suggesting those are in the
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`patent. They're clearly not patent drawings.
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`There was no intent to mislead and we don't think
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`that -- or to be misled.
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` We also don't think that we've taken
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`inconsistent positions. You know, we have argued
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`that all -- it just isn't the case that all
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`plethysmographs are photoplethysmographs. They're
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`not all PPGs, to use the shorthand. And that's
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`basically our point. And that's just an
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`unremarkable argument in our view.
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` So the arguments we've made and the
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`statements that have been identified to us aren't
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`misstatements of fact or mischaracterizations.
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`They're just arguments based on our, you know,
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`best understanding of the references at this
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` So in view of all that, you know, we
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`would hope that the Board would deny the request.
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`To the extent that the Board were to grant the
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`request, we would ask that we be given a chance to
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`respond, which I understand is how it's been done
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`in other cases where a preliminary reply has been
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`allowed for where there's new evidence, for
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`example.
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` So we'd ask for, you know, the same
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`page limitations and opportunity to respond to
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`whatever the petitioner raises. So I think with
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`that, though, I don't have any further comments
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`unless there's questions.
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` JUDGE ARPIN: I have a question for the
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`petitioner. You suggested that you would want
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`three pages for your reply and you would submit
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`additional exhibits.
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` MS. HOLOUBEK: Yes, that's --
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` JUDGE ARPIN: Are theses -- let me
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`finish my question, please.
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` Are these additional exhibits that are
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`supporting the arguments in your petition or are
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`these additional exhibits that only respond or
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`support the assertion of misstatements?
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` MS. HOLOUBEK: These exhibits are only
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`responding directly to and supporting our position
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`regarding the misstatements.
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` So, for example, in one case where the
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`patent owner has said that inductance is an
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`example of an optical technology, we have a
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`technical article that explains the difference
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`between those two.
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` And, in some cases, we can cite right
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`back to what's already existing in the record, but
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`for a couple of these misstatements of scientific
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`principles, we would like to submit a technical
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`article on point just for that issue.
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` JUDGE ARPIN: Let me be clear on one
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`other point. None of the exhibits that you are
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`suggesting that you might want to submit is a
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`declaration either prepared for this case or that
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`has been prepared in another case; is that
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`correct?
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` MS. HOLOUBEK: That's correct, Your
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`Honor.
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` JUDGE McNAMARA: Counsel, this is Judge
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`McNamara. This is for the petitioner. You used
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`this expression a couple of times now; and that
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`is, you've referred to misstatements of scientific
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`principles.
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` What misstatements, what scientific
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`principles have you identified to the patent owner
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`have been misstated? And after that, I would like
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`to hear what the patent owner says about that.
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` MS. HOLOUBEK: Your Honor, I'll give
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`you two examples. One is in the 319 IPR, POPR, on
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`page 27 to 28. The patent owner stated that
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`respiratory inductance plethysmographs are a type
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`of optically obtained plethysmographs that are not
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`photoplethysmographs.
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` That statement is actually erroneous
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`because magnetic inductance is not optical
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`radiation and respiratory inductance
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`plethysmographs operate under an entirely
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`different scientific principle than optically
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`obtained plethysmograph and we have a technical
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`journal article that we can cite to you for that.
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` And then one other example is in the
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`321 IPR, patent owner has said that motion noise
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`does not impact SPO2 determination and, in fact,
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`the scientific literature indicates that motion
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`noise is, in fact, something that must be
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`considered in SPO2 determination as part of the
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`calculation.
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` So those are two examples on the
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`scientific principle side.
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` JUDGE McNAMARA: I'd like to hear what
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`the patent owner has to say about those two
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`examples.
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` MR. KIMBLE: Yes, Your Honor. With
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`respect to the first example, I could perhaps be
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`getting confused about which example the
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`petitioner was giving based on the examples they
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`provided to us beforehand.
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` But I guess what I would say is this:
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`There are various types of plethysmographs and our
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`understanding based on the patent and the alleged
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`prior art and also, you know, discussions with the
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`inventors is that certain types of those just
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`simply aren't photoplethysmographs. We just don't
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`understand respiratory inductance, if that was the
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`example that was given, to be an example of
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`photoplethysmographs.
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` With respect to the second example in
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`the 321, what we've explained is that SPO2
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`determination requires the difference between PPG
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`readings for two wavelengths of light and that, in
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`that regard, motion noise doesn't impact that.
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` And we explain the reasons for that is
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`that motion noise affects both wavelengths
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`readings; therefore, motion noise essentially
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`cancel each other out. So that was the point we
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`made.
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` JUDGE McNAMARA: Let me ask a question.
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`Are there references to declaration testimony on
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`these two particular issues in the petition and in
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`the preliminary response?
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` Let's hear from the petitioner first.
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` MS. HOLOUBEK: Your Honor, regarding
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`the petition, when we are addressing
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`photoplethysmography and the explanation of that
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`technology, there are ample references to
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`declaratory evidence, which are also supported by
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`various articles.
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` We did not address, for example,
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`respiratory inductance photoplethysmographs and
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`just to -- when the patent owner was mentioning
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`this now, he stated we don't understand inductance
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`to be a photoplethysmograph, and I think we agree
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`with that. The problem is that the POPR says that
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`respiratory inductance was a type of optically
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`obtained plethysmograph. So that right there is
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`an example of some of these, you know,
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`inconsistencies that we're seeing throughout the
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`record.
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` But in terms of the petition, when
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`we're talking about photoplethysmography, we do
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`have citations to declaratory evidence regarding
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`what photoplethysmography is and what types of
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`measurements a person skilled in the art would
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`happen to receive photoplethysmography, but we
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`didn't address things that aren't considered
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`photoplethysmography because we could not have
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`anticipated that patent owner would make those
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`kind of analogies.
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` JUDGE McNAMARA: Okay. Let me hear
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`from the patent owner on that. Do you have
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`citations to declaration testimony?
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` MR. KIMBLE: No, Your Honor, we don't.
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`We didn't submit a declaration with this
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`preliminary response, you know, for one just
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`considerations of page limitations, but also --
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`but we do cite to the reference we're making
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`argument about, obviously, what the reference
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`shows.
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` JUDGE McNAMARA: The reason I'm asking
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`the question is I'm trying to determine whether or
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`not we have enough information in the petition and
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`in the preliminary response so that we would or
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`would not need additional briefs.
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` MS. HOLOUBEK: Your Honor, this is the
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`petitioner. If I may, our position is that
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`there's not sufficient information on the record
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`right now. As mentioned by the patent owner, they
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`are not supported. When he's referring to, you
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`know, there are statements from the reference,
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`we're not really sure what that means. A
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`particular statement that we have issue with do
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`not have any supporting citations near them, but
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`there are these statements floating out there that
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`have not yet been addressed, the veracity of those
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`have not yet been addressed.
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` And so we believe the Board is left
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`without any basis for accepting the treatment of
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`patent owner's assertions. That's why we believe
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`that a succinct reply would be helpful in this
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`situation.
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` JUDGE McNAMARA: So I question that why
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`you would want them to have an opportunity to
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`provide the material that they support you contend
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`is missing.
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` MS. HOLOUBEK: Your Honor, it's not the
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`fact that we believe that there's information
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`missing. We believe the information is just
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`incorrect. And we had previously asked patent
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`owner if they had anything to support their
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`statements, and they did not.
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` So we are not concerned if, you know,
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`they have the opportunity because, quite frankly,
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`the science is what the science is and we stand by
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`our position in that regard.
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` JUDGE McNAMARA: One other thing I want
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`to get to -- and, again, this is Judge McNamara
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`again -- is what is the -- you know, if we were to
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`take additional briefing from the petitioner, now
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`that patent owner is going to want to reply to
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`that again. So what's your position on that,
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`petitioner?
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` MS. HOLOUBEK: When the patent owner
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`was making these statements in the first place,
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`the patent owner had ample opportunity to provide
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`supporting evidence. I mean, the statements come
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`directly out of the POPR. They had the
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`opportunity to supply declaratory evidence. They
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`had the opportunity even just to cite to technical
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`literature and support their positions, and it
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`wasn't there.
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` So our position is that the patent
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`owner had the opportunity to put this information
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`on the record. We don't believe that giving them
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`an opportunity to fill in when we've already asked
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`for that information and they already had the
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`opportunity to provide it to the Board as
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`necessary.
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` JUDGE ARPIN: This is Judge Arpin.
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` Patent owner, a moment ago petitioner
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`mentioned a specific inconsistency that in the
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`POPR you identified induction -- I think it's PPG.
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`Is that the correct abbreviation -- as a type of
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`photo PPG. Is that a correct statement of what's
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`in the POPR?
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` MR. KIMBLE: So this is what I have
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`said that I was a little confused about the
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`argument that she made. We argued that -- you
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`know, and this is the quote, you know, from which
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`I thought patent owner -- I mean, sorry,
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`petitioner was arguing from.
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` In the 319, we argued, quote,
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`respiratory inductance plethysmographs is a type
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`of optically obtained plethysmographs, but it's
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`not a photoplethysmograph. So we made that
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`argument there. It's not a photoplethysmograph.
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` Now, I don't -- I don't think -- I
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`don't think that it's true that we argue that in
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`the 321 that respiratory inductance
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`plethysmographs are photoplethysmographs. I don't
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`understand us to have said that. I don't know if
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`that's what petitioner is arguing. I don't think
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`that's correct.
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` MS. HOLOUBEK: Your Honors, if I may
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`clarify. I think patent owner has combined two of
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`our statements together. So the first one
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`regarding the inductance plethysmograph was not
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`what we said was the conflicting statement.
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` On page 27 to 28 of the POPR in the 319
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`IPR, the statement is respiratory inductance
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`plethysmographs are all types of optically
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`obtained plethysmographs that are not
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`photoplethysmographs.
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` Our concern with that statement is that
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`it's saying that respiratory inductance
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`plethysmographs are optically obtained, but
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`respiratory inductance plethysmographs rely on the
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`type of principle of magnetic inductance, which
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`I'm sure Your Honors know quite a different
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`principle than optical magnetic currents through a
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`loop of wire is not optical radiation. That's
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`just simply a misstatement regarding the science
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`there.
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` Regarding the conflicting statements
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`between the two POPRs, just to make it clear,
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`we're dealing with a different statement there
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`from the 319 patent -- or, sorry -- the 319 IPRs,
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`POPR. Again, pages 27 to 28.
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` The patent owner says there are other
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`types of optically obtained plethysmographs
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`besides a photoplethysmograph. And, yet, in the
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`321 IPR, the patent owner says -- and this is at
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`page 16 of the POPR -- that the broadest
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`reasonable interpretation of PPG is an optically
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`obtained plethysmogram that results from the blood
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`flow modulation caused by the subject's heart
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`beat.
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` And so in one situation, the patent
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`owner is saying that there are other types of
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`optically obtained plethysmograms beside the
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`photoplethysmograph. And, yet, in the 321 POPR,
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`they're saying that a photoplethysmogram is an
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`optically obtained photoplethysmogram.
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` And for those two statements to us seem
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`to be in direct conflict because we understand
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`that photoplethysmography is optical
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`plethysmography.
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` JUDGE ARPIN: This is Judge Arpin
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`again. Counsel, you listed -- you said that there
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`were seven instances of inconsistent statements.
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`Am I correct on that?
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` MS. HOLOUBEK: We said there are seven
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`total misstatements. Some of those are
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`inconsistent statements, but the others are
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`misrepresentations of fact.
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` So we believe that the inconsistent
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`statements are the ones -- well, one I just
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`mentioned between the 319 and the 321. So those
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`are two inconsistent statements, and the other
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`ones are misrepresentations of fact either
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`describing the references, you know, having images
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`purport to be from a reference when they're not or
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`saying statements from one reference, you know,
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`that one reference that is clearly contradicted by
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`statements within a reference or some of these
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`scientific issues like the inductance aspect.
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` JUDGE ARPIN: Counsel for petitioner,
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`this is Judge Arpin again. It sounds as though --
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`as far as the inconsistent statements, a simple
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`list of them would be enough for us to decide
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`whether they're inconsistent; isn't that correct?
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` MS. HOLOUBEK: For the inconsistent
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`statements, that's right. That's why we proposed
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`a very short reply. So for the '965 patent, which
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`is the 315 IPR, there's a single misrepresentation
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`that we wish to address there. It does have
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`figures to -- either five figures at issue, I
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`guess, that are said to be from one particular
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`reference when four of them are not. And so we
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`would at least include that.
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` On the 319 IPR, there are -- there's
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`the, you know, conflicting statement and then two
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`additional misstatements that we would like to
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`address and then --
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` JUDGE ARPIN: Counsel, this is Judge
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`Arpin. And I'm breaking my own rule here by
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`interrupting you.
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` As far as the drawings are concerned,
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`if there are five -- if there are four drawings
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`and they're not part of the reference, that's
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`something we're going to be able to notice, I
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`would think, don't you?
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` MS. HOLOUBEK: I would hope so. It's
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`just in terms of the way that they were presented.
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`For instance, the patent owner specifically says
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`the images in Numaga confirm and as the images
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`show and it provides these images characterizing
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`them as part of the Numaga reference, and they
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`aren't.
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` And I agree. I would hope that you
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`would be able to catch those. But, again, it's
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`something that we would just be concerned. For
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`whatever reason, it didn't come across as
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`completely clear, we were worried that we would
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`not have an opportunity to raise that issue.
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` JUDGE ARPIN: I'm going to ask my --
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`this is Judge Arpin again. I'm going to ask my
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`colleagues whether either one of them has any
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`further questions to ask to the parties.
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` MR. KIMBLE: Your Honor, this is Justin
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`Kimble. May I address those last comments,
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`please?
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` JUDGE ARPIN: Could you wait one minute
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`while I hear the answer to the question to my
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`colleagues?
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` JUDGE McSHANE: This is Judge McShane.
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`I don't have any questions. Thank you.
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` JUDGE McNAMARA: This is Judge
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`McNamara. The only thing is I thought at the
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`beginning of this conference you said this only
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`involved the 319 and the 321 proceedings, but I
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`think I just heard you say you had stuff on 315 as
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`well?
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` MS. HOLOUBEK: Yes, Your Honor. That
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`was included in the listing that we sent to the
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`Board in our request.
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` JUDGE McNAMARA: I don't think we got
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`the e-mail. I thought at the beginning of this
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`conference you said just 319 and 321.
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` JUDGE ARPIN: Judge McNamara, do you
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`have any questions at this time?
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` JUDGE McNAMARA: No other questions.
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` JUDGE ARPIN: All right. Patent owner,
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`this is Judge Arpin. You may respond to what
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`petitioner has just -- or most recently said.
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` MR. KIMBLE: Thank you very much, Your
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`Honor. So with the 315, I just want to say again
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`that I think -- and I apologize. I forget which
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`of the judges made this point, but I do think it's
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`clear when you look at the assembly of figures.
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`There's five together in one box, if you will.
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`We've encircled one in red, which is the patent
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`figure.
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` It's very clear that the others are not
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`patent figures and we didn't intend that. You
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`know, I can see that we used the plural of image
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`instead of images. That was just a poor choice of
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`words, but I think it's -- I don't think anybody
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`would be confused about the way that it's
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`presented, certainly wasn't intended to be that.
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`I don't think that there ought to be additional
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`briefing on that.
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` With respect to the 319 and the 321 and
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`this issue about inconsistencies. In the 319, our
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`argument is just that the reference doesn't
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`disclose PPG. It's not a question of whether it
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`discloses optically obtained plethysmograph. It's
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`whether it's disclosing photoplethysmograph.
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` And with respect to the 321, that
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`definition, that construction we give is not
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`inconsistent because the full construction that we
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`pr
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