Filed on behalf of Apple Inc.
`By:
`Michelle K. Holoubek
`
`Michael D. Specht
`
`Mark J. Consilvio
`
`Sterne, Kessler, Goldstein & Fox PLLC
`
`1100 New York Avenue, NW
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`Washington, D.C.
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`Tel: (202) 371-2600
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`Fax: (202) 371-2540
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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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`APPLE INC.
`Petitioner
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`v.
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`VALENCELL, INC.
`Patent Owner
`_____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,923,941
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`Introduction ...................................................................................................... 1
`Identification of Challenge (37 C.F.R. § 42.104(b)) ....................................... 7
`A.
`Summary of the Grounds of Unpatentability ........................................ 7
`B.
`Citation of Prior Art .............................................................................. 8
`III. The ’941 Patent ................................................................................................ 9
`A. Overview ............................................................................................... 9
`B.
`Summary of the Prosecution History .................................................... 9
`C.
`Level of Ordinary Skill in the Art ....................................................... 11
`D.
`Claim Construction.............................................................................. 11
`1. “a body” .................................................................................................. 12
`
`2. “headset” ................................................................................................ 13
`
`3. “housing” ................................................................................................ 13
`
`4. “chipset” ................................................................................................. 14
`
`5. “window” ............................................................................................... 14
`
`IV. Ground 1: Claims 14–15 and 21 are unpatentable under pre-AIA 35
`U.S.C. § 103(a) over Kosuda in view of Maekawa. ...................................... 14
`A. Overview of Kosuda ............................................................................ 14
`B. Overview of Maekawa ........................................................................ 18
`C.
`Claim 14 .............................................................................................. 20
`[14.P] A wearable device ........................................................................... 20
`[14.1] a housing .......................................................................................... 20
`[14.2] a chipset enclosed within the housing ............................................. 21
`[14.3] at least one PPG sensor.................................................................... 23
`[14.4] at least one motion sensor................................................................ 24
`[14.5] 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 ........................................... 24
`[14.6] 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 ..... 25
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`[14.7] the housing comprises non-air light transmissive material in optical
`communication with the at least one PPG sensor and the window ........... 26
`D.
`Claim 15 .............................................................................................. 27
`E.
`Claim 21 .............................................................................................. 28
`V. Ground 2: Claims 18–20 are unpatentable under pre-AIA 35 U.S.C.
`§ 103(a) over Kosuda in view of Maekawa and Han. ................................... 28
`A. Overview of Han ................................................................................. 29
`B.
`Rationale to combine the teachings of Kosuda, Maekawa, and
`Han ...................................................................................................... 31
`VI. Ground 3: Claims 14–19 and 21 are unpatentable under pre-AIA 35
`U.S.C. § 103(a) over Aceti in view of Fricke. ............................................... 31
`A. Overview of Aceti ............................................................................... 32
`B. Overview of Fricke .............................................................................. 35
`C.
`Claim 14 .............................................................................................. 38
`[14.P] A wearable device ........................................................................... 38
`[14.1] a housing .......................................................................................... 38
`[14.2] a chipset enclosed within the housing ............................................. 38
`[14.3] at least one PPG sensor.................................................................... 40
`[14.4] at least one motion sensor................................................................ 41
`[14.5] 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 ........................................... 41
`[14.6] 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 ..... 43
`[14.7] the housing comprises non-air light transmissive material in optical
`communication with the at least one PPG sensor and the window ........... 44
`D.
`Claim 15 .............................................................................................. 44
`E.
`Claims 16 and 17 ................................................................................. 44
`F.
`Claims 18 and 19 ................................................................................. 45
`G.
`Claim 21 .............................................................................................. 47
`VII. Ground 4: Claim 20 is unpatentable under pre-AIA 35 U.S.C. § 103(a)
`over Aceti in view of Fricke and Comtois ..................................................... 47
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`A. Overview of Comtois .......................................................................... 47
`B.
`Rationale to combine the teachings of Aceti, Fricke, and
`Comtois................................................................................................ 50
`VIII. Conclusion ..................................................................................................... 50
`IX. Standing (37 C.F.R. § 42.104(a)) .................................................................. 52
`X. Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ................................................. 52
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`TABLE OF AUTHORITIES
`
`Cases
`
`Cuozzo Speed Techs., LLC v. Lee,
`__ US__, 136 S. Ct. 2131 (2016) ........................................................................... 12
`
`
`In re Am. Acad. Of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) .............................................................................. 12
`
`
`In re Nilssen,
`851 F.2d 1401 (Fed. Cir. 1988) ........................................................................ 27, 31
`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ....................................................................................... passim
`
`
`Statutes
`
`35 U.S.C. § 102(b) ....................................................................................................... 9
`
`35 U.S.C. § 102(e) ....................................................................................................... 9
`
`35 U.S.C. § 103 ............................................................................................................ 7
`
`35 U.S.C. § 112 ............................................................................................................ 8
`
`Regulations
`
`37 C.F.R. § 42.100(b) ................................................................................................ 12
`
`37 C.F.R. § 42.104(a) ................................................................................................. 52
`
`37 C.F.R. § 42.104(b) .................................................................................................. 7
`
`37 C.F.R. § 42.8(a)(1) ................................................................................................ 52
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`EXHIBIT LIST
`
`Description
`U.S. Patent No. 8,923,941 to LeBoeuf et al., issued December 30,
`2014
`U.S. Patent No. 8,923,941 File History
`Declaration of Dr. Majid Sarrafzadeh
`Curriculum Vitae of Dr. Majid Sarrafzadeh
`Valencell, Inc. v. Apple Inc., Case No. 5-16-cv-00010 (E.D.N.C),
`Complaint filed January 4, 2016
`U.S. Patent Application Publication No. 2005/0209516 to Fraden,
`published September 22, 2005
`Intentionally left blank
`U.S. Patent Application Publication No. 2008/0081972 to
`Debreczeny, published April 3, 2008
`Japanese Patent Application Publication No. 2005/040261 A to
`Numaga et al., published February 17, 2005
`Certified English-language translation of Japanese Patent
`Application Publication No. 2005/040261 A to Numaga et al.,
`published February 17, 2005
`U.S. Patent Application Publication No. 2003/0065269 to Vetter et
`al., published April 3, 2003
`Intentionally left blank
`U.S. Patent Application Publication No. 2009/0105556 to Fricke et
`al., published April 23, 2009
`Intentionally left blank
`U.S. Patent No. 3,704,706 to Herczfeld et al., issued December 5,
`1972
`U.S. Patent No. 5,297,548 to Pologe, issued March 29, 1994
`Med. Sci. Series, Int’l Fed’n for Med. and Biological Eng’g and the
`Int’l Org. for Med. Physics, Design of Pulse Oximeters (J.G.
`Webster ed., Inst. of Physics Publ’g 1997)
`John Allen, Photoplethysmography and its application in clinical
`physiological measurement, Physiological Measurement 28 (2007)
`U.S. Patent Application Publication No. 2008/0132798 to Hong et
`al., published June 5, 2008
`U.S. Patent Application Publication No. 2008/0177162 to Bae et
`al., published July 24, 2008
`
`
`
`Exhibit No.
`1001
`
`1002
`1003
`1004
`1005
`
`1006
`
`1007
`1008
`
`1009
`
`1010
`
`1011
`
`1012 – 1015
`1016
`
`1017
`1018
`
`1019
`1020
`
`1021
`
`1022
`
`1023
`
`
`
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`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`Description
`U.S. Patent No. 5,807,267 to Bryars et al. issued September 15,
`1998
`Hyonyoung Han et al., Development of a wearable health
`monitoring device with motion artifact reduced algorithm,
`International Conference on Control, Automation and Systems,
`IEEE (2007)
`Excerpts from Merriam Webster’s Collegiate Dictionary,
`Eleventh Edition, 2008; pp. 603 and 1434
`U.S. Patent Application Publication No. 2004/0186387 to Kosuda
`et al., published September 23, 2004
`U.S. Patent Application No. 2009/0287067 to Dorogusker et al.,
`published November 19, 2009
`Japanese Patent Application Publication No. 2005/270544 to
`Maekawa, published October 6, 2005
`Certified English-language translation of Japanese Patent
`Application Publication No. 2005/270544 to Maekawa, published
`October 6, 2005
`U.S. Patent Application No. 2005/059870 to Aceti, published
`March 17, 2005
`G. Comtois & Y. Mendelson, A Comparative Evaluation of
`Adaptive Noise Cancellation Algorithms for Minimizing Motion
`Artifacts in a Forehead-Mounted Wearable Pulse Oximeter, IEEE
`(2007)
`Declaration of Gerard P. Grenier in support of G. Comtois & Y.
`Mendelson, A Comparative Evaluation of Adaptive Noise
`Cancellation Algorithms for Minimizing Motion Artifacts in a
`Forehead-Mounted Wearable Pulse Oximeter, IEEE (2007) (Ex.
`1032)
`U.S. Patent Application Publication No. 2004/0059236 to
`Margulies et al., published March 25, 2004
`U.S. Patent Application Publication No. 2007/0016086 to Inukai et
`al., published January 18, 2007
`U.S. Patent Application Publication No. 2003/0236647 to Yoon et
`al., published December 25, 2003
`International Patent Application Publication No. 2007/013054 to
`Schwartz, published February 1, 2007
`U.S. Patent No. 5,575,284 to Athan et al., issued November 19,
`1996
`U.S. Patent No. 5,503,016 to Koen, issued April 2, 1996
`
`Exhibit No.
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
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`1034
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`1035
`
`1036
`
`1037
`
`1038
`
`1039
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`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`Description
`U.S. Patent Application Publication No. 2008/0154098 to Morris et
`al., published June 26, 2008
`U.S. Patent Application Publication No. 2007/0027367 to Oliver et
`al., published February 1, 2007
`U.S. Patent Application Publication No. 2007/0197881 to Wolf et
`al., published August 23, 2007
`U.S. Patent Application Publication No. 2005/0075542 to
`Goldreich, published April 7, 2005
`International Patent Application Publication No. WO2007/004089
`to Moroney et al., published January 11, 2007
`G. Sen Gupta et al., Design of a Low-cost Physiological Parameter
`Measurement and Monitoring Device, Instrumentation and
`Measurement Technology Conference, IEEE (2007)
`U.S. Patent Application Publication No. 2006/0084879 to Nazarian
`et al., published April 20, 2006
`U.S. Patent No. 5,243,992 to Eckerle et al., issued September 14,
`1993
`U.S. Patent No. 4,955,379 to Hall, issued September 11, 1990
`International Patent Application Publication No. WO 2007/122375
`to Crowe et al., published November 1, 2007
`Excerpt from Wiley Electrical and Electronics Engineering
`Dictionary, 2004; p. 110
`Excerpt from Dictionary of Computer and Internet Terms, 2009; p.
`90
`Declaration of Gerard P. Grenier in support of G. Sen Gupta et al.,
`Design of a Low-cost Physiological Parameter Measurement and
`Monitoring Device, Instrumentation and Measurement Technology
`Conference, IEEE (2007) (Ex. 1045) and Hyonyoung Han et al.,
`Development of a wearable health monitoring device with motion
`artifact reduced algorithm, International Conference on Control,
`Automation and Systems, IEEE (2007) (Ex. 1025)
`U.S. Patent No. 6,801,799 to Mendelson et al., issued October 5,
`2004
`U.S. Patent No. 6,898,451 to Wuori, issued May 24, 2005
`Intentionally Left Blank
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`- vii -
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`
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`Exhibit No.
`1040
`
`1041
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`1042
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`1043
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`1044
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`1045
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`1046
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`1047
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`1048
`1049
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`1050
`
`1051
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`1052
`
`1053
`
`1054
`1055-1066
`
`
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`Apple Inc. requests inter partes review of claims 14–21 of United States
`
`Patent No. 8,923,941 (“the ʼ941 Patent”) (Ex. 1001).
`
`I.
`
`Introduction
`Photoplethysmography (hereinafter also referred to as ‘PPG’)1 refers to the
`
`use of light to measure the changes in blood volume in the tissue of a living body.
`
`Ex. 1003, ¶ 26. The technique was introduced in 1937 and had become a
`
`ubiquitous part of physiological monitoring long before the ʼ941 Patent. Id. By
`
`2009, the earliest claimed priority date, PPG technology was widely available and
`
`was established as a simple, low-cost, readily-portable choice for both clinical and
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`non-clinical physiological measurements. Id.
`
`PPG is an optical technique whereby light is projected into living tissue, and
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`the reflected light is detected after its interaction with the skin, blood, and other
`
`tissue. Id. at ¶ 27. The intensity of the reflected light depends on the volume of
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`blood. Id. The volume of blood fluctuates proportionally with the cardiac cycle.
`
`As a result, a PPG sensor detects a time-varying pulsatile waveform, or pulse
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`wave, that is synchronized with each heartbeat. Id.
`
`
`1 Photoplethysmographic, photoplethysmogram, and photoplethysmography are all
`
`terms abbreviated PPG. Other abbreviations, however, such as PTG, are also
`
`occasionally used in the art. Ex. 1003, ¶ 26.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`A 1972 patent illustrates many of the conventional components of a PPG
`
`heart rate monitor using this optical technique to continuously measure the pulse
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`of a subject. Id.; Ex. 1018. As shown below, the small probe housing included a
`
`light source to emit light directly into the finger of a subject and a photodetector to
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`collect light directly from the finger. Ex. 1018, 2:60-3:22, Figure 1 (annotated and
`
`reproduced below).
`
`Ex. 2018, Fig. 1
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`
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`In operation, the probe was placed upon the patient’s finger such that blood
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`flowing in the finger’s capillaries reflected incident red light. Ex. 1003, ¶ 29. The
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`intensity of the reflected light was understood to be inversely proportional to the
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`amount of blood flowing in the finger. Id. For each heartbeat, blood pumped into
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`and out of the capillaries, thereby causing a periodic decrease and increase in the
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`reflected light intensity. Id. The detected periodic waveform was known to
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`represent a volume of the circulating blood synchronized to each heartbeat. Id.
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`This pulsatile waveform was known as a photoplethysmogram or pulse wave. Id.;
`
`Ex. 1020, Figure 4.4 (reproduced below illustrates an idealized transmission and
`
`absorption model).
`
`Ex. 1020, Fig. 4.4 Absorbed and transmitted light in living tissue.
`
`Hence, as of the earliest claimed priority date, photoplethysmography was a
`
`
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`known optical measurement technique used to detect blood volume changes in
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`living tissue.2 Ex. 1003, ¶ 30. The basic form of PPG technology requires only a
`
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`2 The idealized model of absorbed and transmitted light in living tissue (shown
`
`above) illustrates that pulsation of arterial blood can dominate the pulse wave
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`signal and the contribution from venous blood is therefore often ignored while the
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`subject is at rest. It was also known, however, that body movement (such as
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`walking, running, and the like) can significantly affect venous blood flow and
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`few opto-electronic components: a light source (typically red or near infrared) to
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`illuminate the tissue (commonly at the ear, wrist, or finger) and a photodetector to
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`measure a pulse wave due to the small variations in light intensity associated with
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`changes in blood volume. Id. A simple, appropriately programmed signal
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`processor can extract heart rate and a variety of other physiological parameters
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`from the pulse wave. Id. at ¶ 30-33.
`
`In recent decades, the desire for small, reliable, low-cost and simple-to-use
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`noninvasive (cardiovascular) assessment techniques were key factors that
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`propelled the use of PPG. Id. at ¶ 34. Advances in opto-electronics and clinical
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`instrumentation have also significantly contributed to its advancement. Id. The
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`developments in semiconductor technology (i.e. light emitting diodes (LEDs),
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`photodiodes, and phototransistors), have made considerable improvements in the
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`size, sensitivity, reliability and reproducibility of PPG probe design. Id. By the
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`earliest claimed priority date, there had also been considerable developments in
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`computer-based digital signal processing and pulse wave analysis. Id.
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`As this technology became ever smaller and more robust, PPG sensors were
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`integrated into wearable technology such as wristwatches, earphones, headsets,
`
`etc. Id. at ¶¶ 35-37. It was also well established that PPG measurements were quite
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`hence the PPG signal, which cannot be ignored. Ex. 1003, ¶ 39; Ex. 1027, ¶¶ 0230-
`
`0232, 0345-0347.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`sensitive to noise—and movement in particular, which would create motion
`
`artifacts in the PPG signal. Id. at ¶¶ 38-39. Motion artifacts could contribute a
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`significant error to PPG measurements if not mitigated. Id. at ¶ 39. Furthermore, if
`
`these artifacts mimic a heartbeat, the instrument may be unable to differentiate
`
`between the pulsations from motion artifacts and those from normal arterial
`
`pulsations, thereby causing erroneous readings. Id. As shown below, the PPG
`
`waveform obtained during exercise exhibits significant deviation from the period
`
`PPG waveform obtained while the subject was at rest. Id.
`
`
`
`The PPG Waveform
`Ex. 1020, Fig. 11.2
`These motion artifacts could be reduced by digital signal processing. Id. at ¶
`
`
`
`40. By the mid-2000’s, several motion artifact cancellation techniques had been
`
`developed, including the incorporation of motion sensors that could provide a
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`reference signal to the signal processor to cancel the motion contribution inherent
`
`in the sensed PPG signal. Id. One common cancellation technique was to employ
`
`frequency filtering. Id. at ¶¶ 41-49. Certain physiological parameters could be
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`expected to exhibit periodic behavior within a specific frequency range. Id. at ¶ 42.
`
`For example, heart rates are generally within the frequency range of 1-3 Hz. Id.
`
`Respiratory rates have their own identifiable range (approximately 0.17 Hz (10
`
`breaths per minute) to 0.5 Hz (30 breaths per minute)). Id. Thus a common
`
`technique was to digitally filter a sampled pulse wave to remove noise from the
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`pulse signal outside the expected range. Id. Simple low-pass filters were used to
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`pass signals with a frequency lower than a certain cutoff frequency and attenuate
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`signals with frequencies higher than the cutoff frequency. Id. at ¶¶ 43-44.
`
`Similarly, high-pass filters were used to pass signals with a frequency higher than
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`a certain cutoff frequency and attenuate signals with frequencies lower than the
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`cutoff frequency. Id. Both high-pass and low-pass filters were often used in series
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`to create a band-pass filter. The band-pass filter allows the selection of a particular
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`frequency range of interest by setting upper and lower frequency bounds. Id.
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`This simple frequency filtering technique worked reasonably well for
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`cancelling motion artifacts, so long as the frequency of the motion fell outside the
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`expected frequency range of the physiological parameter. Id. at ¶ 45. But, as noted
`
`above, certain types of activity may still fall with the expected range. For example,
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`walking (2 Hz) or running (3 Hz) could have a frequency range overlapping with
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`the desired physiological parameter, such as heart rate. Id. Thus, a simple
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`frequency filter was often insufficient to remove motion artifacts during exercise
`
`and other physical activity. Id.
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`To obtain accurate physiological measurements during exercise and other
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`physical activity, other noise cancelling techniques were developed. One type of
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`technique was an active noise cancelling technique based on a motion reference
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`signal obtained from a motion sensor. Id. at ¶¶ 46-49. The motion sensor was
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`placed with or near a PPG sensor to provide a motion reference signal. The sensed
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`PPG signal was understood to be a corrupted signal composed of the uncorrupted
`
`pulse wave and motion artifacts. A signal processor used the motion reference
`
`signal to extract motion artifacts from the sensed PPG signal. Id.
`
`II.
`
`Identification of Challenge (37 C.F.R. § 42.104(b))
`A.
`Apple requests review of claims 14–21 on the following four grounds:
`
`Summary of the Grounds of Unpatentability
`
`Ground
`
`References
`
`Basis
`
`Claims Challenged
`
`1
`
`2
`
`3
`
`4
`
`Kosuda & Maekawa
`
`§ 103 14, 15, 21
`
`Kosuda, Maekawa, & Han
`
`§ 103 18–20
`
`Aceti & Fricke
`
`§ 103 14-19, 21
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`Aceti, Fricke, & Comtois
`
`§ 103 20
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`B. Citation of Prior Art
`The ’941 Patent is a continuation of U.S. patent application Ser. No.
`
`12/691,388, filed Jan. 21, 2010, now U.S. Pat. No. 8,700,111, which claims the
`
`benefit of and priority to U.S. Provisional Patent Application No. 61/208,567 filed
`
`Feb. 25, 2009, U.S. Provisional Patent Application No. 61/208,574 filed Feb. 25,
`
`2009, U.S. Provisional Patent Application No. 61/212,444 filed Apr. 13, 2009, and
`
`U.S. Provisional Patent Application No. 61/274,191 filed Aug. 14, 2009. Each of
`
`the following prior art documents applied in the grounds of unpatentability qualify
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`as prior art before the earliest possible priority date, February 25, 2009.3
`
`In support of the grounds of unpatentability cited above, Apple relies on the
`
`following prior art references:
`
`• U.S. Patent Application Publication No. 2004/0186387 (“Kosuda”).
`
`• U.S. Patent Application Publication No. 2005/0059870 (“Aceti”).
`
`• U.S. Patent Application Publication No. 2009/0105556 (“Fricke”).
`
`
`3 Petitioner does not concede that any claim of the ’941 Patent has support under
`
`35 U.S.C. § 112 such that it is entitled to the benefit of priority of any earlier-filed
`
`application. Petitioner expressly reserves the right to challenge any benefit claim
`
`should patent owner attempt to antedate any art.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`• Comtois et al., A Comparative Evaluation of Adaptive Noise
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`Cancellation Algorithms for Minimizing Motion Artifacts in a
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`Forehead-Mounted Wearable Pulse Oximeter, IEEE (2007).
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`• Han et al., Development of a wearable health monitoring device with
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`motion artifact reduced algorithm, IEEE (2007).
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`• JP Patent App. Pub. No. 2005-270544 (“Maekawa”).
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`All references were published more than one year prior to the earliest
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`possible priority date (with the exception of Fricke) and therefore qualify as prior
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`art under 35 U.S.C. § 102(b). At a minimum, Fricke qualifies as prior art as of its
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`filing date under 35 U.S.C. § 102(e).
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`III. The ’941 Patent
`A. Overview
`Independent claim 14 of the ’941 Patent is directed to a wearable device
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`with a chipset comprising (1) at least one PPG sensor, (2) at least one motion
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`sensor, and (3) at least one signal processor configured to process signals from the
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`at least one motion sensor and signals from the at least one PPG sensor to reduce
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`motion artifacts from the PPG signals. Ex. 1001, 32:1-15; Ex. 1003, ¶ 50.
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`Summary of the Prosecution History
`
`B.
` The brief prosecution history of the ’941 Patent contains a single rejection
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`of claims 15-24 (now claims 14–21). Ex. 1003, ¶¶ 51-53. The examiner rejected
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`claims 15–24 as obvious over U.S. Patent Application No. 2009/0287067 (Ex.
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`1028, Dorogusker) and U.S. Patent Application No. 2008/0177162 (Bae).
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`Dorogusker described systems for integrating sensors for tracking a user’s
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`performance metrics into media devices and accessories. Ex. 1028, ¶ 0032. Bae
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`described a biosignal measurement apparatus including: a headset; a member being
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`detachable from the headset, and being attached onto an ear of a user; a PPG
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`sensor being attached onto the member to detect a PPG signal from the ear of the
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`user; and an acceleration sensor being attached onto the member to detect an
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`acceleration signal due to a motion of the user. Ex. 1023, Abstract.
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`The examiner found that Dorogusker had the signal processor located
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`outside of the housing and not on the chipset. Ex. 1002, p. 160. But the examiner
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`also found that “locating a signal processor inside the housing in the same area as
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`the sensors was well known in the art at the time the invention [as] was made as
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`evidence from the teaching of Bae.” Id. Thus, the examiner decided that it would
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`have been obvious to a person having ordinary skill in the art at the relevant time
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`(“POSA”) to “modify Dorogusker by including the signal processor inside the
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`housing on the chip set in order to make the device smaller and thus more
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`comfortable for the user.” Ex. Id.
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`In response, Valencell amended independent claim 15 (now claim 14) and
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`argued that Dorogusker and Bae failed to teach or suggest the new limitations:
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`“configured to process signals from the at least one motion sensor and signals from
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`the at least one PPG sensor to reduce motion artifacts from the PPG signals” and
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`“wherein the housing comprises non-air light transmissive material in optical
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`communication with the at least one PPG sensor and the window.” Id. at 182-83.
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`Valencell specifically pointed out that Dorogusker was “wholly silent as to the use
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`of the non-air light transmissive material in the disclosed sensor devices” and that a
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`POSA would not have been motivated to utilize non-air light transmissive material
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`between the sensors and the acoustical aperture as to not impede sound from the
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`speaker. Id. at 183. Valencell further argued that Bae failed to rectify this
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`deficiency as it also did not teach or suggest a light transmissive material in optical
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`communication with a PPG sensor and window. Id. at 183-84.
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`C. Level of Ordinary Skill in the Art
`Based on the disclosure of the ’941 Patent, a person having ordinary skill in
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`the art at the relevant time would have had at least a four-year degree in electrical
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`engineering, computer science, computer engineering, or related field of study, or
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`equivalent experience, and at least two years of experience in studying or
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`developing physiological sensors. Ex. 1003, ¶ 54. A person of ordinary skill in the
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`art would also be familiar with optical system design and signal processing. Id.
`
`D. Claim Construction
`Claim terms of the ʼ941 Patent are interpreted according to their broadest
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`reasonable interpretation (BRI) in light of the specification. 37 C.F.R. § 42.100(b);
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`Cuozzo Speed Techs., LLC v. Lee, __ US__, 136 S. Ct. 2131, 2142 (2016). Under
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`BRI, claim terms are given their ordinary and customary meaning as understood by
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`one of ordinary skill in the art, unless the patentee “demonstrate[s] an intent to
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`deviate from the ordinary and accustomed meaning of a claim term by including in
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`the specification expressions of manifest exclusion or restriction, representing a
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`clear disavowal of claim scope.” In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359,
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`1365 (Fed. Cir. 2004).4 The terms “body” (claim 14) and “headset” (claim 17)
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`were both provided with an explicit definition in the ʼ941 Patent specification.
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`“a body”
`
`1.
`According to the ‘941 Patent specification:
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`The term “body” refers to the body of a subject (human
`or animal) that may wear a headset incorporating one or
`more light-guiding earbuds, according to embodiments of
`the present invention.
`
`Ex. 1001, 10:19-22.
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`Accordingly, the term “body” should be construed as the portion of the body
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`of a human or animal that may wear a headset. Ex. 1003, ¶ 55.
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`4 Petitioner reserves the right to present different constructions in another
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`forum where a different claim construction standard applies.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`“headset”
`
`2.
`According to the ‘941 Patent specification:
`
`The term “headset”, as used herein, is intended to include
`any type of device or earpiece that may be attached to
`or near the ear (or ears) of a user and may have various
`configurations,
`without
`limitation.
`Headsets
`incorporating light-guiding earbuds, as well as light
`guides, as described herein may include mono headsets (a
`device having only one earbud, one earpiece, etc.) and
`stereo headsets (a device having two earbuds, two
`ear