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
`
`
`DECLARATION OF LUCA POLLONINI IN SUPPORT OF PATENT
`OWNER RESPONSE TO PETITION
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`Page 1
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`VALENCELL EXHIBIT 2010
`IPR2017-00321
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`

`

`Case IPR2017-00321
`
`Patent 8,923,941
`
`Patent Owner Response to Petition for Inter Partes Review of US. Patent
`
`No. 8,923,941
`
`Declaration of Dr. Luca Pollonini
`
`I, Luca Pollonini, do hereby declare and state, under penalty of perjury under
`
`the laws of the United States of America, that all statements made herein of my own
`
`knowledge are true and correct and that all statements made on information and
`
`belief are believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States Code.
`
`Executed on September 22, 2017, at Manvel, Texas.
`
`Luca Pollonini
`
`PAGE 2
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`Case IPR2017-00321
`Patent 8,923,941
`
`
`
`
`Table of Contents
`
`I. 
`
`INTRODUCTION .................................................................................................................. 4 
`A. 
`Engagement ...................................................................................................................... 4 
`B. 
`Background and Qualifications ........................................................................................ 5 
`C. 
`Compensation ................................................................................................................... 7 
`D. 
`Information Considered .................................................................................................... 8 
`II.  LEGAL STANDARDS .......................................................................................................... 9 
`A. 
`Obviousness ................................................................................................................... 10 
`III. 
`THE ’941 PATENT ........................................................................................................... 16 
`A. 
`Effective Filing Date of the ’941 Patent Claims ............................................................ 16 
`B. 
`Overview of the ’941 Patent ........................................................................................... 16 
`C. 
`Grounds in the Petition ................................................................................................... 22 
`D. 
`Prior Art Asserted........................................................................................................... 23 
`1. 
`Kosuda ........................................................................................................................ 23 
`2.  Maekawa ..................................................................................................................... 24 
`3. 
`Aceti............................................................................................................................ 26 
`4. 
`Fricke .......................................................................................................................... 28 
`E. 
`Level of Ordinary Skill in the Art .................................................................................. 29 
`F.  Claim Construction ............................................................................................................ 32 
`1. 
`“PPG sensor” .............................................................................................................. 34 
`PATENTABILITY ANALYSIS OF THE ’941 PATENT ................................................ 34 
`IV. 
`Neither Kosuda nor Maekawa discloses a PPG sensor enclosed within the housing. ... 35 
`A. 
`The Motivation to Combine Kosuda and Maekawa ....................................................... 37 
`B. 
`Neither Aceti nor Fricke teaches a housing that comprises both a window that optically
`C. 
`exposes a PPG sensor and a chipset. ......................................................................................... 41 
`
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`Case IPR2017-00321
`Patent 8,923,941
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`
`I.
`
`INTRODUCTION
`A. Engagement
`1. My name is Dr. Luca Pollonini. I have been asked to submit this
`
`declaration on behalf of Valencell, Inc. (“Valencell” or “Patent Owner”) in
`
`connection with Patent Owner’s response (the “Response”) to the petition (the
`
`“Petition”) of Apple Inc. (“Apple” or “Petitioner”) for inter partes review of U.S.
`
`Patent No. 8,923,941 (“the ’941 patent”). Valencell’s Response, I understand, is
`
`being submitted to the Patent Trial and Appeal Board (“PTAB” or the “Board”) of
`
`the United States Patent and Trademark Office (“PTO” or “USPTO”) in this
`
`proceeding having case number IPR2017-00321.
`
`2.
`
`I have been retained as a technical expert by Petitioner to study and
`
`provide my opinions on the technology claimed in, and the patentability or
`
`nonpatentability of, claims 1, 2, and 6-21 of the ’941 patent. I understand that two
`
`separate inter partes reviews have been instituted on the ’941 patent. My opinions
`
`in this declaration will concern those claims instituted in case number IPR2017-
`
`00321: claims 14-21.
`
`3.
`
`As part of my study, I have reviewed and am familiar with the
`
`specification of the ’941 patent. I understand that the ’941 patent has been provided
`
`as Exhibit 1001. Previously, Patent Owner filed its Preliminary Response (Paper 6,
`
`referred to as the “Preliminary Response”) to the Petition (Paper 2, referred to as the
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`Patent 8,923,941
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`“Petition”). And the Board issued its Decision (Paper 11, referred to and cited to as
`
`the “Decision”), which instituted review based on the finding that there was a
`
`reasonable likelihood that the Petitioner would prevail as to claims 14-21 of the ’941
`
`patent.
`
`B. Background and Qualifications
`4.
`I expect to testify regarding my background, qualifications, and
`
`experience relevant to the issues in this inter partes review proceeding.
`
`5.
`
`In this section, I discuss my educational background, work experience,
`
`and other relevant qualifications. My curriculum vitae is attached as Appendix A.
`
`6.
`
`I have over seventeen years of experience in biomedical optics, which
`
`I matured both in academia and industry. I am currently an Assistant Professor of
`
`Engineering Technology at the University of Houston, where I direct the Optical
`
`BioImaging Laboratory. My research activity is focused on the design, development
`
`and validation of optical devices and instruments for non-invasive sensing of
`
`physiological parameters of interest in healthcare. In particular, my lab operates in
`
`the field of optical brain imaging for measurement of cerebral blood flow, wearable
`
`optical sensors for early detection of pressure ulcers, and other applications based
`
`on near infrared spectroscopy.
`
`7.
`
`I have also co-founded two companies, Nirox (established in 2005 in
`
`Italy) and Performance Athlytics (established in 2013 in Texas), both of which are
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`Patent 8,923,941
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`currently active in the biomedical sensing arena. More specifically, Nirox is an
`
`engineering consulting and product development firm that produces optical
`
`instruments for measuring tissue oxygenation, whereas Performance Athlytics
`
`(doing business formerly as BSX Athletics and now as LVL Technologies) develops
`
`and sells several types of wearable sensors for quantifying physical activity and body
`
`hydration. I held a position of R&D director at Nirox from its inception to 2007
`
`before moving to the United States to pursue my academic career.
`
`8.
`
`I hold an M.S. in Electrical Engineering and a Ph.D in Information
`
`Engineering from University of Brescia (Italy) in 2000 and 2004, respectively. After
`
`graduation, I held a Research Associate position at the NASA Glenn Research
`
`Center in Cleveland, OH, where I contributed to the development of ophthalmic
`
`instruments based on dynamic light scattering and autofluorescence for early
`
`detection of eye diseases in astronauts. After my stint at Nirox, I received post-
`
`doctoral training at the University of Texas at Houston (2007-2008) and the
`
`University of Houston (2008-2010). My academic career continued at the University
`
`of Houston as a research faculty until 2015, when I transitioned to the assistant
`
`professorship position that I currently hold.
`
`9.
`
`At the time of this Declaration, I have published a total of 45 peer-
`
`review journal and conference papers and delivered several invited talks and
`
`seminars in the area of biomedical optics and biophotonics at universities and
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`research conferences. I am also a co-inventor in one issued patent (licensed to
`
`Performance Athlytics) and three pending patents.
`
`10.
`
`I have been an active participant in the profession since 2011 as a
`
`member and since 2015 as a senior member of the IEEE (Institute of Electrical and
`
`Electronics Engineers) and its Engineering in Medicine and Biology Society
`
`(EMBS), as a communication committee member of the Society for Functional Near
`
`Infrared Spectroscopy, and as an Associate Editor of the IEEE Journal of
`
`Translational Engineering in Medicine and Biology. I have also served as a
`
`panelist/reviewer for the National Science Foundation since 2013.
`
`11. Recently, I have organized and chaired a special session of engineering
`
`and clinical applications of functional near infrared spectroscopy at the 2015 Annual
`
`Meeting of the Engineering in Medicine and Biology Society (EMBS) held in Milan,
`
`Italy, and I will be the local organizer and chair of start-up panelists of the 2018
`
`IEEE International Instrumentation & Measurement Technology Conference
`
`(I2MTC) to be hosted in Houston, TX.
`
`C. Compensation
`12.
`I am being compensated for the time I spend on this case at a rate of
`
`$325 per hour. I am also being reimbursed for reasonable and customary expenses
`
`associated with my work and testimony in this investigation. My compensation is
`
`not contingent upon the outcome of this matter or the substance of my testimony.
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`
`D. Information Considered
`13. My opinions are based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials. I have
`
`reviewed the relevant papers and exhibits submitted in this proceeding (IPR2017-
`
`00319) up to the date of this declaration, including the declaration of Dr. Majid
`
`Sarrafzadeh (Apple’s Exhibit 1003). And I have reviewed the deposition testimony
`
`of Dr. Sarrafzadeh, which is submitted as Valencell’s Exhibit 2011, and which I cite
`
`to herein as “Sarrafzadeh Depo.” and provide the deposition page and line number
`
`in the format “page:line number”. In forming my opinions, I have considered the
`
`materials that I identify in this declaration and those listed in Appendix B.
`
`14.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by the Petitioner. I may also consider additional documents and
`
`information in forming any necessary opinions – including documents that may not
`
`yet have been provided to me.
`
`15. My analysis of the materials produced in this investigation is ongoing
`
`and I will continue to review any new material as it is provided. This report
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information and
`
`on my continuing analysis of the materials already provided.
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`
`II. LEGAL STANDARDS
`16.
`In expressing my opinions and considering the subject matter of the
`
`claims of the ’941 patent, I am relying upon certain basic legal principles that counsel
`
`has explained to me.
`
`17. First, I understand that for an invention claimed in a patent to be found
`
`patentable, it must be, among other things, new and not obvious from what was
`
`known before the invention was made.
`
`18.
`
`I understand the information that is used to evaluate whether an
`
`invention is new and not obvious is generally referred to as “prior art” and generally
`
`includes patents and printed publications (e.g., books, journal publications, articles
`
`on websites, product manuals, etc.).
`
`19.
`
`I understand that in this proceeding the Petitioner has the burden of
`
`proving that the claims of the ’941 patent are anticipated by or rendered obvious
`
`from the prior art by a preponderance of the evidence. I understand that “a
`
`preponderance of the evidence” is evidence sufficient to show that a fact is more
`
`likely true than it is not.
`
`20.
`
`I understand that in this proceeding, the claims must be given their
`
`broadest reasonable interpretation consistent with the specification. The claims after
`
`being construed in this manner are then to be compared to the information in the
`
`prior art.
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`21.
`
`I understand that in this proceeding, the information that may be
`
`evaluated is limited to patents and printed publications. My analysis below compares
`
`the claims to patents and printed publications that are prior art, which has been cited
`
`by the Petitioner.
`
`22.
`
`I understand that there are two ways in which prior art may render a
`
`patent claim unpatentable. First, the prior art can be shown to “anticipate” the claim.
`
`Second, the prior art can be shown to have made the claim “obvious” to a person of
`
`ordinary skill in the art. I understand that Petitioner contends that certain references
`
`render obvious the claims of the ’941 patent, but that Petitioner does not assert that
`
`any prior art anticipates any claim. My understanding of the applicable legal
`
`standards for obviousness is set forth below.
`
`A. Obviousness
`23.
`I understand that a claimed invention is not patentable if it would have
`
`been obvious to a person of ordinary skill in the field of the invention at the time the
`
`invention was made.
`
`24.
`
`I understand that the obviousness standard is defined in the patent
`
`statute (35 U.S.C. § 103(a)) as follows: A patent may not be obtained though the
`
`invention is not identically disclosed or described as set forth in section 102 of this
`
`title, if the differences between the subject matter sought to be patented and the prior
`
`art are such that the subject matter as a whole would have been obvious at the time
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`the invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. A patent is not invalid because of the manner in which the
`
`invention was made.
`
`25.
`
`I understand that the following standards govern the determination of
`
`whether a claim in a patent is obvious. I have applied these standards in my
`
`evaluation of whether claims 14-21 of the ’941 patent would have been considered
`
`obvious.
`
`26.
`
`I understand that to find a claim in a patent obvious, one must make
`
`certain findings regarding the claimed invention and the prior art. Specifically, I
`
`understand that the obviousness question requires consideration of four factors
`
`(although not necessarily in the following order):
`
` The scope and content of the prior art;
`
` The differences between the prior art and the claims at issue;
`
` The knowledge of a person of ordinary skill in the pertinent art; and
`
` Whatever objective factors indicating obviousness or non-obviousness
`
`may be present in any particular case.
`
`27.
`
`In addition, I understand that the obviousness inquiry should not be
`
`done in hindsight, but must be done using the perspective of a person of ordinary
`
`skill in the relevant art as of the effective filing date of the patent claim.
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`28.
`
`I understand the objective factors indicating obviousness or non-
`
`obviousness may include: commercial success of products covered by the patent
`
`claims; a long-felt need for the invention; failed attempts by others to make the
`
`invention; copying of the invention by others in the field; unexpected results
`
`achieved by the invention; praise of the invention by the infringer or others in the
`
`field; the taking of licenses under the patent by others; expressions of surprise by
`
`experts and those skilled in the art at the making of the invention; and the patentee
`
`proceeded contrary to the accepted wisdom of the prior art.
`
`29.
`
`I understand the combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable results.
`
`I also understand that an example of a solution in one field of endeavor may make
`
`that solution obvious in another related field. I also understand that market demands
`
`or design considerations may prompt variations of a prior art system or process,
`
`either in the same field or a different one, and that these variations will ordinarily be
`
`considered obvious variations of what has been described in the prior art.
`
`30.
`
`I also understand that if a person of ordinary skill can implement a
`
`predictable variation, that variation would have been considered obvious. I
`
`understand that for similar reasons, if a technique has been used to improve one
`
`device, and a person of ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way, using that technique to improve the other
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`device would have been obvious unless its actual application yields unexpected
`
`results or challenges in implementation.
`
`31.
`
`I understand that the obviousness analysis need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, but instead
`
`can take account of the “ordinary innovation” and experimentation that does no more
`
`than yield predictable results, which are inferences and creative steps that a person
`
`of ordinary skill in the art would employ.
`
`32.
`
`I understand that sometimes it will be necessary to look to interrelated
`
`teachings of multiple patents; the effects of demands known to the design
`
`community or present in the marketplace; and the background knowledge possessed
`
`by a person having ordinary skill in the art. I understand that all these issues may be
`
`considered to determine whether there was an apparent reason to combine the known
`
`elements in the fashion claimed by the patent at issue.
`
`33.
`
`I understand that the obviousness analysis cannot be confined by a
`
`formalistic conception of the words “teaching, suggestion, and motivation.” I
`
`understand that in 2007, the Supreme Court issued its decision in KSR Int’l Co. v.
`
`Teleflex, Inc. where the Court rejected the previous requirement of a “teaching,
`
`suggestion, or motivation to combine” known elements of prior art for purposes of
`
`an obviousness analysis as a precondition for finding obviousness. It is my
`
`understanding that KSR confirms that any motivation that would have been known
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`to a person of skill in the art, including common sense, or derived from the nature of
`
`the problem to be solved, is sufficient to explain why references would have been
`
`combined.
`
`34.
`
`I understand that a person of ordinary skill attempting to solve a
`
`problem will not be led only to those elements of prior art designed to solve the same
`
`problem. I understand that under KSR standard, steps suggested by common sense
`
`are important and should be considered. Common sense teaches that familiar items
`
`may have obvious uses beyond the particular application being described in a
`
`reference, that if something can be done once it is obvious to do it multiple times,
`
`and in many cases a person of ordinary skill will be able to fit the teachings of
`
`multiple patents together like pieces of a puzzle. As such, the prior art considered
`
`can be directed to any need or problem known in the field of endeavor at the time of
`
`invention and can provide a reason for combining the elements of the prior art in the
`
`manner claimed. In other words, the prior art does not need to be directed towards
`
`solving the same problem that is addressed in the patent. Further, the individual prior
`
`art references themselves need not all be directed towards solving the same problem.
`
`35.
`
`I understand that an invention that might be considered an obvious
`
`variation or modification of the prior art may be considered non-obvious if one or
`
`more prior art references discourages or lead away from the line of inquiry disclosed
`
`in the reference(s). A reference does not “teach away” from an invention simply
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`because the reference suggests that another embodiment of the invention is better or
`
`preferred. My understanding of the doctrine of teaching away requires a clear
`
`indication that the combination should not be attempted (e.g., because it would not
`
`work or explicit statements saying the combination should not be made). I
`
`understand that a person of ordinary skill is also a person of ordinary creativity.
`
`36.
`
`I further understand that in many fields, it may be that there is little
`
`discussion of obvious techniques or combinations, and it often may be the case that
`
`market demand, rather than scientific literature or knowledge, will drive design
`
`trends. Where there is such a design need or market pressure to solve a problem and
`
`there are a finite number of identified, predictable solutions, a person of ordinary
`
`skill has good reason to pursue the known options within their technical grasp. If
`
`this leads to the anticipated success, it is likely the product not of innovation but of
`
`ordinary skill and common sense. In that instance, the fact that a combination was
`
`obvious to try might show that it was obvious. The fact that a particular combination
`
`of prior art elements was “obvious to try” may indicate that the combination was
`
`obvious even if no one attempted the combination. If the combination was obvious
`
`to try (regardless of whether it was actually tried) or leads to anticipated success,
`
`then it is likely the result of ordinary skill and common sense rather than innovation.
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`III. THE ’941 PATENT
`
`A. Effective Filing Date of the ’941 Patent Claims
`
`37. The ’941 patent issued from U.S. Application No. 14/184,396 (the
`
`“’396 application”), which was filed on February 19, 2014. The ’396 application is
`
`a continuation of application No. 12/691,388, filed on January 21, 2010, now Pat.
`
`No. 8,700,111. The ’396 application further claims priority to provisional
`
`application No. 61/208,567, filed on February 25, 2009, provisional application No.
`
`61/208,574, filed on February 25, 2009, provisional application No. 61/212,444,
`
`filed on April 13, 2009, and provisional application No. 61/274,191, filed on August
`
`14, 2009. For the purpose of this Response, I will assume that the priority date for
`
`the ‘941 patent is February 25, 2009.
`
`B. Overview of the ’941 Patent
`
`38. At the time of the invention, the ‘941 patent discloses that there was a
`
`“growing market demand for personal health and environmental monitors, for
`
`example, for gauging overall health and metabolism during exercise, athletic
`
`training, dieting, daily life activities, sickness, and physical therapy.” ’941 patent at
`
`column 1, lines 27-30. There was also a “growing interest in generating and
`
`comparing health and environmental exposure statistics of the general public and
`
`particular demographic groups.” ’941 patent at column 1, lines 33-36. But “methods
`
`of collecting these statistics may be expensive and laborious, often utilizing human-
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`based recording/analysis steps at multiple sites.” ’941 patent at column 1, lines 40-
`
`41.
`
`39. The ’941 patent discloses that “improved ways of collecting, storing
`
`and analyzing physiological information are needed.” ’941 patent at column 1, lines
`
`42-43. Furthermore, “improved ways of seamlessly extracting physiological
`
`information from a person during everyday life activities, especially during high
`
`activity levels, may be important for enhancing fitness training and healthcare
`
`quality, promoting and facilitating prevention, and reducing healthcare costs.” ’941
`
`patent at column 1, lines 43-48.
`
`40. To address these needs, the ’941 patent teaches a method and system of
`
`“generating a data string containing physiological and motion-related information”
`
`which “includes sensing physical activity of a subject via at least one motion sensor
`
`attached to the subject, sensing physiological information from the subject via at
`
`least one photoplethysmography (PPG) sensor attached to the subject, and
`
`processing signals from the at least one motion sensor and signals from the at least
`
`one PPG sensor into a serial data string of physiological information and motion-
`
`related information.” ’941 patent, Abstract. In my opinion, this serial data string can
`
`be created by pulling multiple metrics from at least one motion sensor and at least
`
`one PPG sensor and would allow for easy use of the information by outside
`
`Application Programming Interfaces (“APIs”).
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`41. The apparatus claims at issue in the ’941 patent are thus directed to,
`
`among other things, an earbud for a headset that includes “a light-guiding earbud for
`
`a headset includes light transmissive material that is in optical communication with
`
`an optical emitter and optical detector associated with the headset.” ’941 patent at
`
`column 3, lines 24-26.
`
`42. The ’941 patent apparatus claim thus are directed to a wearable device
`
`comprising a headset and “a chipset enclosed within the housing, the chipset
`
`comprising at least one PPG sensor, at least one motion sensor, and at least one
`
`signal processor configured to process signals from the at least one motion sensor
`
`and signals from the at least one PPG sensor to reduce motion artifacts from the PPG
`
`signals … .” ’941 patent at column 3, lines 24-26
`
`43. The housing associated with the apparatus “comprises at least one
`
`window that optically exposes the at least one PPG sensor to a body of a subject
`
`wearing the device, and wherein the housing comprises non-air light transmissive
`
`material in optical communication with the at least one PPG sensor and the window.”
`
`’941 patent at column 32, lines 9-15.
`
`44.
`
`In certain embodiments, “a housing is secured to and overlies the base
`
`so as to enclose and protect the speaker, optical emitter and optical detector, as well
`
`as other electronic components secured to the base (e.g., sensors, processor,
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`transmitter etc.).” ’941 patent at column 2, lines 9-15.
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`45. A sample embodiment of claim 14 can be seen in Figure 1 of the ’941
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`patent:
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`46.
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`In Figure 1, “a headset 10 according to some embodiments of the
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`present invention is illustrated. The illustrated headset 10 includes a base 12, a
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`headset housing 14, an earbud housing 16, and a cover 18 that surrounds the earbud
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`housing 16. The base 12 includes a main circuit board 20 that supports and/or is
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`connected to various electronic components. In the illustrated embodiment, a
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`speaker 22, optical emitter 24, optical detectors 26, and thermopile 28 (described
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`below) are mounted onto a secondary circuit board 32 which is secured to the main
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`circuit board 20. The earbud housing surrounds the speaker 22, optical emitter 24,
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`optical detectors 26, and thermopile 28. Collectively, the earbud housing 16, cover
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`18, and various electronic components (e.g., speaker 22, optical emitter 24, optical
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`detectors 26, thermopile 28) located within the earbud housing 16 of the illustrated
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`headset 10 may be referred to as an earbud 30. The headset housing 14 is secured to
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`the base 12 and is configured to enclose and protect the various electronic
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`components mounted to the base (e.g., main circuit board 20 and components
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`secured thereto, etc.) from ambient interference (air, humidity, particulates,
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`electromagnetic interference, etc).” ’941 patent, column 11, line 69 to column 12,
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`line 12.
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`47. The cover 18 from figure 1 serves a specific purpose: “The cover 18
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`includes light transmissive material in a portion 19 thereof that is referred to as a
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`light-guiding region. The light transmissive material in light-guiding region 19 is in
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`optical communication with the optical emitter 24 and detectors 26. The light
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`transmissive material in light-guiding region 19 is configured to deliver light from
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`the optical emitter 24 into an ear canal of the subject at one or more predetermined
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`locations and to collect light external to the earbud 30 and deliver the collected light
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`to the optical detectors 26. As such, the earbud 30 of the illustrated headset 10 is
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`referred to as a ‘light-guiding earbud 30.” ’941 patent, column 13, lines 4-14.
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`48. Finally, “[i]n some embodiments, a light-guiding cover 18 is formed
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`from a soft, resilient material, such as silicone, which deforms when inserted within
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`an ear canal of a subject. However, various materials may be utilized for light-
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`guiding covers 18 and for serving as light guides depending on the type of earbud
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`desired for a particular use case, according to embodiments of the present invention.
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`For example, in some embodiments, a light-guiding cover 18 may be formed from a
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`substantially rigid material such that the light-guiding earbud 30 is substantially
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`rigid. For example, for a running use case, the runner may wish to have firm but soft
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`earbuds, such that the earbud may deform to some extent when inserted into the ear.
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`In such case, the light-guiding region may be silicone or other soft material and the
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`outer cladding may be air, a polymer, plastic, or a soft material having a lower index
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`of refraction than silicone.” ’941 patent, column 13, lines 39-54.
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`49. Claim 14 of the ’941 patent is an illustrative system claim. Any
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`differences pertinent to the patentability of the claims will be addressed individually
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`in my analysis. Claim 14 is reproduced below:
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`1. A wearable device, comprising:
`a housing; and;
`a chipset enclosed within the housing, the chipset
`comprising at least one PPG sensor, at least one
`motion sensor, and at least one signal processor
`configured to process signals from the at least one
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`motion sensor and signals from the at least one PPG
`sensor to reduce motion artifacts from the PPG
`signals;
`wherein the housing comprises at least one window that
`optically exposes the at least one PPG sensor to a
`body of a subject wearing the device, and wherein
`the housing comprises non-air light transmissive
`material in optical communication with the at least
`one PPG sensor and the window.
` ’941 patent at column 32 lines 1-14.
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`C. Grounds in the Petition
`50.
`I understand
`that Petitioner asserts four grounds of alleged
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`unpatentability against the ’941 patent. Grounds 1 and 2 rely on Kosuda (U.S. Patent
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`Application Publication No. 2004/0186387, Petitioner’s Exhibit 1027) and
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`Maekawa (purportedly a translation of JP Patent App. Pub. No. 2005-270544,
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`Petitioner’s Exhibit 1030) as the primary references. Grounds 3 and 4 rely on Aceti
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`(U.S. Patent Application Publication No. 2005/0059870, Petitioner’s Exhibit 1031)
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`and Fricke (U.S. Patent Application Publication No. 2009/0105556, Petitioner’s
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`Exhibit 1016) as the primary references. Ground 1 relies on Kosuda and Maekawa
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`for allegedly rendering obvious independent claim 14 and dependent claims 15 and
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`21 obvious under 35 U.S.C. § 103. Ground 3