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

`

`TABLE OF CONTENTS
`
`
` 
`Introduction ....................................................................................................... 1
`I.
`II. Overview of the ’941 Patent ............................................................................. 3
`III. Claim Construction ........................................................................................... 7
`A.
`Legal Principles ..................................................................................... 7
`B.
`“PPG sensor” must be construed as “an optical sensor which obtains a
`plethysmogram that results from blood flow modulations caused by the
`subject’s heartbeat” ............................................................................... 9
`IV. Grounds 1 and 2 fail because Petitioner cannot meet its burden to establish that
`the combination of Kosuda and Maekawa renders claims 14, 15, and 17-21
`obvious. .......................................................................................................... 9
`A.
`An overview of the art shows that each piece of art lacks essential
`elements of claim 14 of the ’941 patent. ............................................. 11
`1. Kosuda does not disclose a device with a housing enclosing
`either a chipset with a PPG sensor or non-air light transmissive
`material. ................................................................................... 11
`2. Maekawa does not discuss reduction of motion noise. ........... 13
`Neither Kosuda nor Maekawa discloses a chipset within the housing
`that encloses a PPG sensor. ................................................................. 15
`A POSA would not have been motivated to combine Kosuda and
`Maekawa to meet element [14.7] because Maekawa would not solve
`the problem presented in Kosuda. ....................................................... 18
`V. Grounds 3 and 4 fail because Petitioner fails to meet its burden to establish that
`Aceti in view of Fricke renders claims 14-21 obvious. .................................. 25
`A.
`An overview of the asserted prior art shows that each piece of art lacks
`at least one essential element of claim 14. .......................................... 25
`
`B.
`
`C.
`
`
`
`ii
`
`

`

`B.
`
`1. Aceti discloses monitoring a physiological parameters from
`physiological characteristics present within an auditory canal
`using multiple housings. .......................................................... 25
`2. Fricke is directed to measurement of physiological signals, but
`not an apparatus containing a housing, window, or non-air light
`transmissive material. .............................................................. 28
`Neither Aceti nor Fricke discloses a window that optically exposes a
`PPG sensor to the body of a subject and a chipset in the same housing.
` ............................................................................................................. 29
`VI. The dependent claims fail because Petitioner has not met its burden of showing
`that the independent claim from which they depend is obvious. .................... 33
`VII. Patent Owner does not consent to the PTAB adjudicating the patentability or
`validity of the ’941 patent. .............................................................................. 33
`VIII. Conclusion ...................................................................................................... 34
`
`
`
`
`iii
`
`

`

`PATENT OWNER’S EXHIBIT LIST
`
`
`2002
`
`
`
`2003
`2004
`
`2005
`
`2006
`
`2007
`2008
`
`2009
`2010
`2011
`2012
`
`Exhibit No. Description
`2001
`Skip West, Valencell and RapidSOS Honored with CTA's
`2016 Innovation Entrepreneur Awards
`Biometrics Lab: Performance of Leading Optical Heart Rate
`Monitors During Interval Exercise Conditions
`Valencell website (http://valencell.com/customers/)
`Electrical (ECG) vs. Optical-based (PPG) Biosensors in
`Wearable Devices
`Estimating Respiratory and Heart Rates from the Correntropy
`Spectral Density of the Photoplethysmogram
`Continuous Blood Pressure Measurement by Using the Pulse
`Transit Time: Comparison to a Cuff-Based Method
`How an LDV/LDA works
`A New Look at the Essence of the Imaging
`Photoplethysmography
`Declaration of T. William Kennedy - PHV Motion
`Declaration of Luca Pollonini
`Deposition of Majid Sarrafzadeh
`the cutaneous
`Tur, Ethel, et al. “Basal perfusion of
`microcirculation: measurements as a function of anatomic
`position.” Journal of Investigative Dermistology 81.5 (1983): 442-
`446.
`Kamal, A. A. R., et al. “Skin Photoplethysmography—A
`Review.” Computer Methods and Programs in Biomedicine 28.4
`(1989): 257-269.
`Arimoto, Hidenobu, Mariko Egawa, and Yukio Yamada. “Depth
`
`Profile of Diffuse Reflectance Near‐Infrared Spectroscopy for
`
`Measurement of Water Content in Skin.” Skin Research and
`Technology 11.1 (2005): 27-35.
`Khalil, Omar S., et al. “Method For Modulating Light
`Penetration Depth In Tissue And Diagnostic Applications Using
`Same.” U.S. Patent No. 7,043,287. 9 May 2006.
`
`iv
`
`2013
`
`2014
`
`2015
`
`
`
`

`

`
`
`
`
`I.
`
`Introduction
`
`Valencell’s Patent No. 8,923,941 (the “’941 patent”) describes a novel
`
`wearable device for processing signals from both a photoplethysmographic (“PPG”)
`
`sensor and another physical or motion sensor. As particularly claimed in the
`
`apparatus claims 14-21 of the ’941 patent, the signal processor within the chipset of
`
`said device uses data from the PPG sensor and motion sensor to reduce the motion
`
`noise artifacts from the PPG signals. This, along with the use of a non-air light
`
`transmissive material, allows a user wearing the device to receive accurate data from
`
`a PPG sensor (such as a heart rate reading), regardless of the type of physical activity
`
`in which the user is engaged. These were novel advancements in the art, and
`
`Petitioner Apple Inc. (“Petitioner”) has not met its burden to prove that either of the
`
`two proposed primary combinations render the challenged claims obvious. Thus, all
`
`four instituted grounds fail.
`
`Grounds 1 and 2 fail because the proposed combination of U.S. Patent
`
`Application Publication 2004/0186387 (“Kosuda”) and Japanese Patent Application
`
`Publication No. 2005/270544 (“Maekawa”) suffers from at least two defects, each
`
`of which is fatal to Petitioner’s argument of unpatentability of claims 14 and all the
`
`claims that depend from it.
`
`1
`
`
`
`
`
`

`

`First, neither Kosuda nor Maekawa discloses a chipset enclosed within the
`
`housing that comprises at least one PPG sensor.
`
`Second, in light of the disclosures of Kosuda and Maekawa, a person of
`
`ordinary skill (“POSA”) would not have been motivated to combine the two
`
`references. In fact, the purported “solution” of adding Maekawa to Kosuda would
`
`actually worsen the problem of preventing noise from non-physiological factors
`
`from reaching the optical detector of the PPG sensor, thereby decreasing (i.e.,
`
`worsening) the signal to noise ratio of the pulse wave signal, particularly when the
`
`subject is moving.
`
`Grounds 3 and 4 fail because the combination of U.S. Patent Application
`
`Publication No. 2005/0059870 (“Aceti”) and U.S. Patent Application No.
`
`2009/0105556 (“Fricke”) does not disclose a window that optically exposes a PPG
`
`sensor to the body of a subject and a chipset enclosed within a single housing. Failure
`
`to disclose this essential element of claim 14 is fatal to Petitioner’s obviousness
`
`arguments relating to the combination of Aceti and Fricke for claim 14 and all claims
`
`which depend from it (i.e., claims 15-21).
`
`Because of these failings of the proposed combinations, Patent Owner submits
`
`that the Board should find that Petitioner has not satisfied its burden to demonstrate
`
`that the instituted claims of the ’941 patent are unpatentable as obvious over the
`
`asserted art.
`
`
`
`2
`
`

`

`II. Overview of the ’941 Patent
`
`The ’941 patent is generally directed to a novel method and system for
`
`generating data output containing both physiological and motion-related
`
`information. See, e.g., Ex. 1001 (the “’941 patent”), 30:35-37. The ’941 patent has
`
`both method claims 1-13 and apparatus claims 14-21. See id. at 30:35-32:40. Only
`
`the apparatus claims are at issue in this proceeding.
`
`The data output described and claimed by the ’941 patent is created first
`
`through a single monitoring device sensing physical activity through a motion sensor
`
`and physiological activity through a photoplethysmography (“PPG”) sensor. See id.,
`
`30:38-43. The signals obtained from these sensors are then processed into a serial
`
`data output. See id., 30:44-54. The serial data output is configured such that a
`
`plurality of both physical and physiological parameters, including at least heart rate
`
`and respiration rate, are capable of being extracted from the physiological and
`
`motion-related information obtained by the sensors. See id.
`
`An important limitation on the physiological data that can be extracted is that
`
`such data is capable of being processed from signals obtained by a PPG sensor. See
`
`id. (“processing signals … from the at least one PPG sensor … into a serial data
`
`output … wherein the serial data output is configured such that a plurality of subject
`
`physiological parameters comprising subject heart rate and subject respiration rate
`
`can be extracted …”). This language, combined with the language in the first element
`
`
`
`3
`
`

`

`of the claim (“at least one photoplethysmography (PPG) sensor for sensing the
`
`physiological information …”), makes clear that any signals that are processed to
`
`output “physiological parameters” must be sensed by at least one PPG sensor.
`
`The ’941 patent includes multiple inventive aspects related to its creation of a
`
`data output containing both physiological and motion-related information. For
`
`example, as shown in the annotations to Fig. 17 below, the ’941 patent teaches how
`
`to create a serial data string by pulling multiple metrics from the sensors by outside
`
`Application Programming Interfaces (“APIs”). See Exhibit 2010, Declaration of
`
`Luca Pollonini ¶ 40 (“Pollonini Decl.”).
`
`
`
`4
`
`

`

`
`
`’941 patent, Fig. 17.
`
`
`
`As the specification of the ’941 patent states, “FIG. 17 is a block diagram
`
`that illustrates sensor signals being processed into a digital data string including
`
`activity data and physiological data using the method 500 of FIG. 16 … .” ’941
`
`patent, 26:65-67. Figure 16 essentially shows the signal data being cleaned up to
`
`
`
`5
`
`

`

`produce more accurate parameters prior to being processed into the serial data
`
`output:
`
`
`
`’941 patent, Fig. 16.
`
`
`
`Furthermore, as shown in Figure 17 and explained in the specification,
`
`multiple data outputs can be generated through the processor: “Optical detectors 26
`
`and optical emitters 24 may include digitizing circuitry such that they may be
`
`connected serially to a digital bus 600. Data from the detectors 26 may be processed
`
`by a processor/multiplexer 602 to generate multiple data outputs 604 in a serial
`
`format at the output 606 of the processor 602.” ’941 patent, 26:2-14. “The processor
`
`602 may execute one or more serial processing methods, wherein the outputs of a
`
`plurality of processing steps may provide information that is fed into the multiplexed
`
`data outputs 604.” Id. All of this results in “a serial data string of activity and
`
`
`
`6
`
`

`

`physiological information 700 (FIG. 18) parsed out specifically such that an
`
`application-specific interface (API) can utilize the data as required for a particular
`
`application.” Id., 26:15-20, as shown above in the annotated Figure 18.
`
`Accordingly, the apparatus claims of the ’941 patent are directed to a wearable
`
`device comprising a housing, a chipset enclosed in said housing, with the chipset
`
`containing a PPG sensor, a motion sensor, and a signal processor to reduce motion
`
`artifacts from the PPG sensor. See id., 32:3-9. “According to some embodiments of
`
`the present invention, 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.” Id., 3:24-26. Additionally, 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.” Id., 32:9-15 (emphasis added).
`
`III. Claim Construction
`
`A. Legal Principles
`
`In an inter partes review, “[a] claim in an unexpired patent … shall be given
`
`its broadest reasonable construction in light of the specification of the patent in
`
`which it appears.” 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136
`
`S. Ct. 2131, 2142 (2016). “Under a broadest reasonable interpretation, words of the
`
`
`
`7
`
`

`

`claim must be given their plain meaning, unless such meaning is inconsistent with
`
`the specification and prosecution history.” Trivascular, Inc. v. Samuels, 812 F.3d
`
`1056, 1062 (Fed. Cir. 2016). “That is not to say, however, that the Board may
`
`construe claims during IPR so broadly that its constructions are unreasonable under
`
`general claim construction principles. … ‘[T]he protocol of giving claims their
`
`broadest reasonable interpretation ... does not include giving claims a legally
`
`incorrect interpretation.’” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
`
`(Fed. Cir. 2015) (internal citations omitted) (emphasis in original). “Even under the
`
`broadest reasonable interpretation, the Board's construction ‘cannot be divorced
`
`from the specification and the record evidence,’ and ‘must be consistent with the one
`
`that those skilled in the art would reach.’” Id. (internal citations omitted). “While the
`
`broadest reasonable interpretation standard is broad, it does not give the Board an
`
`unfettered license to interpret the words in a claim without regard for the full claim
`
`language and the written description.” Trivascular, Inc. v. Samuels, 812 F.3d 1056,
`
`1062 (Fed. Cir. 2016) (internal citations omitted) (emphasis added). “Construing
`
`individual words of a claim without considering the context in which those words
`
`appear is simply not ‘reasonable.’” Id.
`
`
`
`
`
`
`
`8
`
`

`

`B.
`
`“PPG sensor” must be construed as “an optical sensor which
`obtains a plethysmogram that results from blood flow modulations
`caused by the subject’s heartbeat.”
`
`
`The Board preliminarily adopted Patent Owner’s construction of “PPG
`
`sensor” as “an optically obtained plethysmogram that results from blood flow
`
`modulations caused by the subject’s heartbeat.” See Apple Inc. v. Valencell, Inc.,
`
`Case IPR2017-00321 (PTAB 2017) (Paper 11) (“Institution Decision”). Patent
`
`Owner submits that a slight amendment to the preliminary construction is required
`
`to reflect the fact that the sensor is the claim element in question, not the result it
`
`produces. Accordingly, Patent Owner requests that the construction of PPG sensor
`
`be amended to “an optical sensor which obtains a plethysmogram that results from
`
`blood flow modulations caused by the subject’s heartbeat.”
`
`IV. Grounds 1 and 2 fail because Petitioner cannot meet its burden to
`establish that the combination of Kosuda and Maekawa renders claims
`14, 15, and 17-21 obvious.
`
`Petitioner has failed to establish a prima facie case for the obviousness of
`
`claim 14 of the ’941 patent over Kosuda and Maekawa. See Intercontinental Great
`
`Brands LLC v. Kellogg N. Am. Co., 118 F. Supp. 3d 1022, 1028 (N.D. Ill. 2015),
`
`aff'd, No. 2015-2082, 2017 WL 3906853 (Fed. Cir. Sept. 7, 2017) (“A prima facie
`
`case of obviousness is established if the prior art references ‘[i]n combination ...
`
`teach all of the limitations of the claims’ and a person of ordinary skill in the art
`
`would combine the elements to create the invention.”) (quoting Transocean Offshore
`
`
`
`9
`
`

`

`Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1303–04
`
`(Fed. Cir. 2010)).
`
` Petitioner’s obviousness case fails because it cannot show that a key claim
`
`element of the ’941 patent is present in either Kosuda, Maekawa, or the combination
`
`of the two references. Namely, neither Kosuda nor Maekawa disclose a chipset
`
`within the housing that encloses a PPG sensor, as required by the claim elements
`
`identified by Petitioner as [14.2] and [14.3]. Additionally, even if the foregoing
`
`elements were disclosed, Petitioner has not shown that a POSA would have been
`
`motivated to combine the references because Maekawa would not solve the problem
`
`presented in Kosuda.
`
`A claim is obvious only 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 the invention was made to a person having ordinary
`
`skill in the art to which said subject matter pertains.” KSR Intern. Co. v. Teleflex Inc.,
`
`550 U.S. 398, 406 (2007). When combining references, a petitioner must meet its
`
`burden to “show[] how the prior art renders obvious any particular claim, as a whole,
`
`being challenged.” Apple, Inc. v. ContentGuard Holdings, Inc., No. IPR2015-00358,
`
`2015 WL 9899010, at *6 (PTAB July 2, 2015) (emphasis in original).
`
` Further, “Petitioner must show some reason why a person of ordinary skill in
`
`the art would have thought to combine particular available elements of knowledge,
`
`
`
`10
`
`

`

`as evidenced by the prior art, to reach the claimed invention.” Heart Failure Tech.
`
`v. Cardiokinetix, Inc., No. IPR2013-00183, Paper 12 at 9 (PTAB July 31, 2013)
`
`(emphasis added). Petitioner has not shown how or why a POSA would have thought
`
`to combine the prior art references, which are directed to different technology and
`
`solve different problems, with an “articulated reasoning with some rational
`
`underpinnings.” KSR, 550 U.S. at 418 (internal citation and quotation marks
`
`omitted).
`
`Accordingly, for at least these two reasons, Ground 1 of the Petition fails, and,
`
`because Ground 2 is directed to claims dependent on claim 14, Ground 2 also
`
`necessarily fails.
`
`A. An overview of the art shows that each piece of art lacks essential
`elements of claim 14 of the ’941 patent.
`
`
`
`1. Kosuda does not disclose a device with a housing enclosing
`either a chipset with a PPG sensor or non-air light
`transmissive material.
`
`
`Kosuda discloses a “pulse meter, method for controlling pulse meter,
`
`wristwatch-type information device, control program, storage medium, blood vessel
`
`simulation sensor, and living organism information measurement device.” Ex. 1027
`
`(“Kosuda”), Title. Specifically, Kosuda discloses:
`
`a pulse meter adapted to be attached to a human body to
`measure a pulse is provided that comprises a pulse wave
`detecting section, a body motion component removing
`section and a pulse rate calculating section. The pulse
`wave detecting section is configured and arranged to
`
`11
`
`
`
`

`

`detect a pulse wave based on a signal from a pulse wave
`sensor and output a pulse wave detection signal. The body
`motion component removing section is configured and
`arranged to remove a body motion component contained
`in the pulse wave detection signal based on a relative
`positional difference in a vertical direction between a
`position of a heart of the human body and a position where
`the pulse meter is attached. The pulse rate calculating
`section is configured and arranged to calculate a pulse rate
`based on the pulse wave detection signal from which the
`body motion component has been removed.
`
`Id., ¶ 12. The Institution Decision displays a sample embodiment of Kosuda’s
`
`invention (with annotations):
`
`
`Institution Decision at 16.
`
`
`
`From this diagram, it appears that the light emitting diode 13A and
`
`photodetector 13B comprise the pulse wave sensor and are attached to the outside of
`
`the housing (main body/watchcase 10A), with a transparent glass 13C attached to
`
`
`
`12
`
`

`

`the housing positioned between the wave sensor and wrist of the user. Pollonini
`
`Decl. ¶ 53. In fact, Petitioner specifically argues that the “housing” is watchcase 10A
`
`(see Petition at 20), and that the PPG sensor (or pulse wave sensor) is made up of
`
`light emitting diode 13A, Photodetector 13B, and Transparent Glass 13C (see
`
`Petition at 15). In light of this, there is no PPG sensor attached to a chipset that is
`
`“enclosed” by a housing, because elements 13A, 13B, and 13C are mounted onto
`
`part of the housing, rather than being enclosed by it. Additionally, as Petitioner also
`
`admits, Kosuda does not disclose “that a non-air light transmissive material exists
`
`between sensor 13 and transparent glass 13C.” Petition at 26.
`
`2. Maekawa does not discuss reduction of motion noise.
`
`Maekawa generally discloses “a physiological information measuring device
`
`that when mounted to the wrist (arm), measures physiological information such as
`
`pulse rate and the like.” Ex. 1030 (“Maekawa”), at ¶ 1. Maekawa’s invention
`
`generally seeks improvement in the reliability of measuring physiological
`
`information. See id ¶ 6. A pertinent example embodiment of Maekawa is contained
`
`in Figure 10, which describes:
`
`the PD 5 and cover glass 23 can be arranged separated and
`a bundle of optical fibers 40 provided with one end 40a
`arranged close to the cover glass 23 and the other end 40b
`close to the light receiving surface 5a of the PD 5. In the
`case of this configuration, optical fibers 40 are arranged in
`the gap between the PD 5 and cover glass 23 so light
`passing along the surface of the skin of the surface of the
`living body B is reflected by the outer circumferential
`
`13
`
`
`
`

`

`surface of the optical fibers 40. Light that only passes
`along the surface of the skin of the surface of the living
`body B does not contain very much physiological
`information so that blocking this light makes it so that
`most of the light that enters the optical fibers 40,
`propagates in the optical fibers 40, and is lead to the PD5
`is light that has passed deeply through the living body
`under the inner skin, in other words, light that contains a
`lot of physiological information.
`
`Id. ¶ 48. See also id., Fig. 10, below:
`
`
`
`Notably, Petitioner does not even argue that Maekawa appreciates the
`
`
`
`problems associated with motion noise. And, in fact, Maekawa contains no
`
`discussion of the impact that movement has on the system and does not provide a
`
`solution to any potential motion noise. Pollonini Decl. ¶ 55. This is a significant
`
`difference between Maekawa and the inventions of the ’941 patent.
`
`
`
`14
`
`

`

`B. Neither Kosuda nor Maekawa discloses a chipset within the
`housing that encloses a PPG sensor.
`
`Maekawa does not disclose, nor does Petitioner contend it discloses, the use
`
`of any PPG sensor that is part of a chipset enclosed within the housing. See generally
`
`Petition at 21-24 (discussing only Kosuda with respect to this limitation). Thus,
`
`Kosuda must disclose this feature, or Grounds 1 and 2 fail. See, e.g., Ferring B.V. v.
`
`Watson Labs., Inc.-Florida, 764 F.3d 1401, 1407 (Fed. Cir. 2014) (“In this case, the
`
`cited prior art references neither set forth the limitations required by the asserted
`
`claims, nor provided any reason or motivation to combine those teachings to derive
`
`the claimed formulations with specific dissolution profiles. Accordingly, the
`
`asserted claims have not been shown to be invalid under § 103.”); 37 C.F.R. §
`
`42.104(b)(4) (“The petition must specify where each element of the claim is found
`
`in the prior art patents or printed publications relied upon.”).
`
`As discussed in section II supra, claim 14 requires “a chipset enclosed within
`
`the housing, the chipset comprising at least one PPG sensor . . . .” ’941 patent, 32:1-
`
`15 (emphasis added). Petitioner only cursorily addresses limitation, concluding that
`
`“Kosuda discloses a PPG sensor … enclosed within the housing (i.e., main body
`
`watchcase 10A).” Petition at 23. However, Petitioner’s other arguments contradict
`
`this conclusory statement. In fact, Petitioner does not identify within Kosuda a
`
`housing that encloses a chipset including a PPG sensor. Pollonini Decl. ¶¶ 81-83.
`
`
`
`15
`
`

`

`The Board states that “Petitioner argues that Kosuda teaches housing 2
`
`encompassing pulse wave sensor 13, acceleration sensor 12, and processor 7.”
`
`Institution Decision at 17. However, Patent Owner is unable to find any “housing 2”
`
`identified in the Petition, or in Kosuda itself.
`
`Instead, Petitioner argues that the “housing” in Kosuda is the main body
`
`watchcase 10A and back lid 14, as shown in Figure 3 (with annotations from
`
`Petitioner):
`
`
`
`See Petition at 20-21; see also Deposition of Majid Sarrafzadeh (“Sarrafzadeh
`
`Dep.”), Ex. 2011, at 136:9-137:15. Watchcase 10A and back lid 14 clearly do not
`
`“enclose” light emitting diode 13A, photodetector 13B, and transparent glass 13C,
`
`which Petitioner argues collectively discloses the claimed PPG sensor. See Pollonini
`
`Decl. ¶ 82. Instead, as the Board states, “the reverse side of the main body 10A
`
`includes pulse wave sensor 13.” Institution Decision at 13. Thus, the PPG sensor is
`
`
`
`16
`
`

`

`merely mounted on the part of the apparatus that is claimed to be the housing, not
`
`enclosed within it. See Pollonini Decl. ¶¶ 81-83. Notably, Petitioner’s expert was
`
`unable to answer questions about whether transparent glass 13C encloses the light
`
`emitting diode and photodetector in Kosuda, evasively equivocating that “[I]’m
`
`uncomfortable with the word ‘enclosing’ here since you are not giving me a more
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`scientific technical definition.” Sarrafzadeh Dep. at 138:25-139:24. Thus, Dr.
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`Sarrafzadeh’s opinion in his prepared declaration that Kosuda discloses a housing
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`that encloses a chipset with a PPG sensor is unreliable and should be rejected.
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`Moreover, Petitioner does not argue that transparent glass 13C is part of the
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`housing in order to meet the limitation “chipset enclosed within the housing.” See
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`Sarrafzadeh Dep. at 138:7-12 (“I’m not claiming that transparent panel 13C is part
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`of the housing, that’s correct.”). Instead, Petitioner expressly argues that “Watchcase
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`10A encloses a pulse wave sensor made up of LED 13A, photodiode (PD) 13B, and
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`transparent glass 13C.” Petition at 15. Thus, Petitioner’s position on this limitation
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`is that transparent glass 13C is part of the claimed PPG sensor and not the housing
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`10A. Pollonini Decl. ¶ 83. “It is of the utmost importance that petitioners in the IPR
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`proceedings adhere to the requirement that the initial petition identify ‘with
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`particularity’ the ‘evidence that supports the grounds for the challenge to each
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`claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369
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`(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)) (emphasis added).
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`
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`17
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`

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`Thus, based on Petitioner’s own arguments, the PPG sensor is comprised of
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`LED 13A, photodiode (PD) 13B, and transparent glass 13C, which are clearly on the
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`housing 10A and back lid 14, and therefore not a part of a chipset enclosed within
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`the housing. See Pollonini Decl. ¶¶ 81-83. That the PPG sensor may be connected to
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`the mainboard 16, which is within the housing, is of no moment, because, to the
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`extent that it is argued that the PPG sensor being connected to the mainboard makes
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`up the “chipset,” then the chipset is no longer completely “enclosed” by the housing
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`10A and back lid 14. See id. ¶¶ 81-83. In sum, the components that Petitioner
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`contends form a housing do not enclose a PPG sensor. To the extent that the PPG
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`sensor is connected to anything that could be described as a “chipset” (which it must
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`be in order for the chipset to “comprise” a PPG sensor), then the chipset is no longer
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`“enclosed” by the housing, and Petitioner fails to show that Kosuda (or Maekawa)
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`meet the critical claim limitation of “a chipset enclosed with the housing, the chipset
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`comprising at least one PPG sensor … .” ’941 patent, 32:3-9. Therefore, Petitioner
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`has failed to show that the combination of Kosuda and Maekawa renders obvious
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`claim 14, and all claims depending from it.
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`C. A POSA would not have been motivated to combine Kosuda and
`Maekawa to meet element [14.7] because Maekawa would not solve
`the problem presented in Kosuda.
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`Additionally, claim 14 of the ’941 patent would not have been obvious to a
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`POSA because a POSA would not have had a particular rationale to combine Kosuda
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`
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`18
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`

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`with Maekawa. See Pollonini Decl. ¶ 84. Given the disclosures of Kosuda, Petitioner
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`has not shown why a POSA would have thought to combine the teachings of Kosuda
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`with Maekawa. See Heart Failure Tech. v. Cardiokinetix, Inc., No. IPR2013-00183,
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`Paper 12 at 9 (PTAB July 31, 2013). To the contrary, the disclosures of Maekawa
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`would not solve the problem of the susceptibility of PPG sensors “to interference
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`from light noise (e.g., light that is not scattered by arterial blood).” Petition at 26;
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`see Pollonini Decl. ¶ 87. In fact, the configuration of Maekawa proposed by
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`Petitioner would worsen the signal-to-noise ratio of the pulse signal. See Pollonini
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`Decl. ¶ 89. This being the case, Petitioner has not demonstrated the use of a known
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`technique in Maekawa’s device to improve Kosuda’s device, and Petitioner
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`therefore has not made out a prima facie case of obviousness with regard to the
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`combination of Kosuda and Maekawa. See, e.g., In re Efthymiopoulos, 839 F.3d
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`1375, 1381 (Fed. Cir. 2016) (“To make a prima facie case, the prior art must provide,
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`and the Board must identify, a reason or motivation to depart from the prior art; no
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`reference or combination of references has been so identified—even in hindsight.”).
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`Petitioner acknowledges that Kosuda “does not explicitly state that a non-air
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`light transmissive material exists between sensor 13 and transparent glass 13C,” as
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`required by element [14.7]. Petition at 26. Thus, Petitioner contends that a POSA
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`would look to Maekawa’s device:
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`Maekawa teaches a technique to reduce light noise from
`reaching
`the optical detector of
`the PPG sensor.
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`19
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`
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`

`

`Specifically, Maekawa teaches placing a non-air light
`transmissive material (i.e., optical fibers 40) in optical
`communication with the PPG sensor (i.e., pulse sensor 6)
`and the window (i.e., cover glass 23) so light passing along
`the surface of the skin is reflected by the outer
`circumferential surface of the optical fibers.
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`Petition at 26. Although Petitioner does not mention the specific embodiment of
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`Maekawa to which it is referring in this section of its Petition, it earlier points to
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`Maekawa Fig. 10, which purportedly describes a “bundle of optical fibers 40 …
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`provided in the gap between” the PD 5 and glass cover 26. Petition at 19. Fig. 10 of
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`Maekawa is reproduced below:
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`However, this configuration presents a number of practical problems that would not
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`
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`lead to an improved signal-to-noise ratio of the received pulse signal. Pollonini Decl.
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`¶ 87.
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`
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`First, Maekawa’s disclosure (and Dr. Sarrafzadeh’s adoption of it) that light
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`passing only superficially along the surface of the wrist does not contain “useful
`20
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`
`
`

`

`physiological information” is incorrect. See Pollonini Decl. ¶ 88. This statement does
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`not reflect the consensus view of the scientific community with respect to the signals
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`gathered from PPG sensors. See id. In fact, “useful physiological information” can
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`be obtained from light that only superficially enters the skin, because light that enters
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`the skin as little as 0.1 millimeters deep can reach capillary vessels in the dermal
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`layer of the skin. Id. If near-infrared light entered the dermal layer, it could receive
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`a pulsatile modulation in intensity in sync with cardiac pulsation, which comprises
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`physiological information. Id. Undermining