`
`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 DR. MAJID SARRAFZADEH
`IN SUPPORT OF PETITIONER APPLE INC.’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`APL1072
`Apple v. Valencell
`IPR2017-00321
`
`

`

`
`
`
`
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`I.
`II. Qualifications ................................................................................................... 2
`III. Legal Principles ............................................................................................... 5
`IV. Valencell’s Conditional Motion to Amend ................................................... 10
`A. Overview ................................................................................................ 10
`B. Level of Ordinary Skill of a Person in the Art ....................................... 12
`C. Claim Construction ................................................................................ 12
`1. “application-specific interface (API)” .......................................... 12
`V. Ground 1: Substitute claims 22–23 and 29 are unpatentable under pre-AIA
`35 U.S.C. § 103(a) over Kosuda in view of Gupta and Maekawa. ............... 16
`A. Overview of Kosuda .............................................................................. 16
`B. Overview of Maekawa ........................................................................... 21
`C. Overview of Gupta ................................................................................. 24
`D. Substitute claim 22 ................................................................................. 27
`[22.P] A wearable device .................................................................... 27
`[22.1] a housing ................................................................................... 28
`[22.2] a chipset enclosed within the housing ...................................... 28
`[22.3] at least one PPG sensor ............................................................. 30
`[22.4] at least one motion sensor ......................................................... 32
`[22.5.1] 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
`and to extract physiological and motion parameters; ................... 32
`wherein the at least one signal processor configured to process data to
`be output, wherein the output data comprises physiological
`information and motion-related information; ............................... 32
`wherein the output data is parsed out such that an application-specific
`interface (API) can utilize the physiological information and
`motion-related information for an application .............................. 32
`
`
`
`- i -
`
`

`

`[22.8] 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 ...................................................................................... 37
`[22.9] the housing comprises non-air light transmissive material in
`optical communication with the at least one PPG sensor and the
`window .......................................................................................... 38
`E. Substitute claim 23 ................................................................................. 41
`F. Substitute claim 29 ................................................................................. 42
`VI. Ground 2: Claims 26–28 are unpatentable under pre-AIA 35 U.S.C. § 103(a)
`over Kosuda in view of Gupta, Maekawa, and Han. ..................................... 43
`A. Overview of Han .................................................................................... 45
`B. Rationale to Combine the Teachings of Kosuda, Gupta, Maekawa, and
`Han ......................................................................................................... 50
`VII. Ground 3: Substitute claims 22-27 and 29 are unpatentable under pre-AIA
`35 U.S.C. § 103(a) over Aceti in view of Craw and Fricke. ......................... 50
`A. Overview of Aceti .................................................................................. 51
`B. Overview of Fricke ................................................................................ 54
`C. Overview of Craw .................................................................................. 59
`D. Substitute claim 22 ................................................................................. 63
`[22.P] A wearable device .................................................................... 63
`[22.1] a housing ................................................................................... 63
`[22.2] a chipset enclosed within the housing ...................................... 64
`[22.3] at least one PPG sensor ............................................................. 66
`[22.4] at least one motion sensor ......................................................... 67
`[22.5.1] 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
`and to extract physiological and motion parameters .................... 67
`[22.5.2] the at least one signal processor configured to process data to
`be output, the output data comprises physiological information
`and motion-related information .................................................... 70
`[22.5.3] the output data is parsed out such that an application-specific
`interface (API) can utilize the physiological information and
`motion-related information for an application .............................. 70
`
`
`
`- ii -
`
`

`

`[22.8] 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 ...................................................................................... 74
`[22.9] the housing comprises non-air light transmissive material in
`optical communication with the at least one PPG sensor and the
`window .......................................................................................... 75
`E. Substitute claim 23 ................................................................................. 75
`F. Substitute claims 24 and 25 ................................................................... 75
`G. Substitute claims 26 and 27 ................................................................... 76
`H. Substitute claim 29 ................................................................................. 84
`VIII. Ground 4: Substitute claim 28 is unpatentable under pre-AIA 35 U.S.C.
`§ 103(a) over Aceti in view of Craw, Fricke and Comtois. .......................... 84
`A. Overview of Comtois ............................................................................. 85
`B. Rationale to Combine the Teachings of Aceti, Craw, Fricke, and
`Comtois .................................................................................................. 88
`IX. Conclusion ..................................................................................................... 88
`
`
`
`
`
`
`
`
`- iii -
`
`

`

`PETITIONER’S UPDATED 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
`
`Exhibit No.
`1001
`
`1002
`1003
`1004
`1005
`
`1006
`
`1007
`1008
`
`1009
`
`1010
`
`1011
`
`1012 – 1015
`1016
`
`1017
`1018
`
`1019
`1020
`
`1021
`
`1022
`
`
`
`- iv -
`
`

`

`Exhibit No.
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`Description
`U.S. Patent Application Publication No. 2008/0177162 to Bae et
`al., published July 24, 2008
`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
`
`
`
`- v -
`
`

`

`Exhibit No.
`1038
`
`1039
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`1049
`
`1050
`
`1051
`
`1052
`
`1053
`
`1054
`1055-1066
`
`
`
`Description
`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
`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
`
`- vi -
`
`

`

`Exhibit No.
`1067
`
`1068
`
`1069
`
`1070
`
`1071
`1072
`
`Description
`Transcript of teleconference among Board and Parties held on April
`5, 2017, Apple Inc. v. Valencell, Inc., Case Nos. IPR2017-00315,
`IPR2017-00319, and IPR2017-00321.
`Transcript of teleconference among Board and Parties held on
`August 28, 2017, Apple Inc. v. Valencell, Inc., Case Nos. IPR2017-
`00315 and IPR2017-00321.
`Transcript of teleconference among Board and Parties held on
`October 13, 2017, Apple Inc. v. Valencell, Inc., Case Nos.
`IPR2017-00315, IPR2017-00317, IPR2017-00318, IPR2017-
`00319, and IPR2017-00321.
`Transcript of Deposition of Dr. Luca Pollonini, November 9, 2017,
`Apple Inc. v. Valencell, Inc., Case Nos. IPR2017-00319 and
`IPR2017-00321.
`U.S. Patent No. 6,401,138 to Judge et al., issued June 4, 2002
`Declaration of Dr. Majid Sarrafzadeh in Support of Petitioner’s
`Opposition to Patent Owner’s Conditional Motion to Amend
`
`
`
`- vii -
`
`

`

`I.
`
`Introduction
`
`I, Dr. Majid Sarrafzadeh, declare as follows:
`
`1.
`
`I am currently a distinguished professor of computer science at the
`
`University of California at Los Angeles (“UCLA”), director of the UCLA
`
`Embedded and Reconfigurable Computing Laboratory (“ER Lab”), and a co-
`
`director of the UCLA Center for SMART Health. I have been actively engaged in
`
`research of Wearable Systems for 16 years and Embedded Systems, Design and
`
`Analysis of Algorithms, and Health Analytics for about 29 years.
`
`2.
`
`I have been retained on behalf of Apple Inc. to provide expert
`
`opinions in connection with an Opposition to Valencell’s Motion to Amend in
`
`inter partes review proceeding IPR2017-00321. I understand that this declaration
`
`involves my expert opinions and expert knowledge related to U.S. Patent No.
`
`8,923,941 (“the ’941 patent”), titled “Methods and Apparatus for Generating Data
`
`Output Containing Physiological and Motion-Related Information,” and its field of
`
`endeavor.
`
`3.
`
`In preparing this declaration, I have reviewed and am familiar with
`
`Valencell’s Motion to Amend dated September 22, 2017, the ’941 Patent (Ex.
`
`1001) and its file history (Ex. 1002). The ’941 Patent relates to a “physiological
`
`monitoring apparatus” and describes “a method of generating a data string
`
`containing physiological and motion-related information.” Ex. 1001, ’941 Patent,
`
`
`
`
`- 1 -
`
`

`

`1:21-23, Abstract. I am familiar with the technology and state of the art described
`
`in the ’941 Patent as of its February 19, 2014 filing date, as well as the technology
`
`and state of the art as of its claimed February 25, 2009 priority date.
`
`4.
`
`I have reviewed and am familiar with each exhibit cited herein. I
`
`confirm that to the best of my knowledge that the accompanying exhibits are true
`
`and accurate copies of what they purport to be, and that an expert in the field
`
`would reasonably rely on them to formulate opinions such as those set forth in this
`
`declaration.
`
`5.
`
`I have been asked to provide my independent technical review,
`
`analysis, insights, and opinions regarding Valencell’s Motion to Amend and the
`
`references that form the basis for the grounds of unpatentability set forth in
`
`Apple’s Opposition to Patent Owner’s Motion to Amend.
`
`II. Qualifications
`6.
`As indicated in my curriculum vitae (filed as Ex. 1004), I am
`
`currently a professor of computer science at UCLA and have been in that position
`
`for the last sixteen years. I am also the director of the UCLA Embedded and
`
`Reconfigurable Computing Laboratory (“ER Lab”), a co-director of the UCLA
`
`Center for SMART Health, a co-director of the BRITE Center on Minority Health
`
`Disparities, and a co-founder of UCLA Wireless Health Institute.
`
`
`
`
`- 2 -
`
`

`

`7.
`
`I earned a Bachelor of Science, Master of Science, and Ph.D. degrees
`
`from the University of Illinois at Urbana-Champaign in Electrical and Computer
`
`Engineering in 1982, 1984, and 1987, respectively.
`
`8.
`
`I became an Assistant Professor of Electrical and Computer
`
`Engineering at Northwestern University in 1987, earned tenure in 1993, and
`
`became a Full Professor in 1997.
`
`9.
`
`In 2000, I joined the Computer Science Department at UCLA as a
`
`Full Professor. In 2008, I co-founded and became a director of the UCLA Wireless
`
`Health Institute. I currently teach two core undergraduate courses (involving
`
`implementing digital logic designs and advanced digital design techniques), a
`
`course on Algorithms and Complexity, and a series of graduate courses in the area
`
`of embedded systems and Wireless Health.
`
`10.
`
`I have experience as a system designer, circuit designer, and software
`
`designer. This experience includes positions as a design engineer at IBM and
`
`Motorola and a test engineer at Central Data Corporation. I was the main architect
`
`of an Electronic Design Automation (“EDA”) software tool for Monterey Design
`
`Systems, Inc. (“Monterey”). I co-founded and managed the technical team at
`
`Hierarchical Design, Inc. (“Hier Design”), an EDA company that specialized in
`
`reconfigurable field-programmable gate array (FPGA) systems. Hier Design was
`
`
`
`
`- 3 -
`
`

`

`acquired by Xilinx in 2004. I have cofounded MediSens Wireless, Bruin
`
`Biometrics, and WANDA Health.
`
`11.
`
`I am a Fellow of the Institute of Electrical and Electronics Engineers,
`
`Inc. (“IEEE”) for my contributions to “Theory and Practice of VLSI Design.” I
`
`have served on the technical program committees of numerous conferences in the
`
`area of system design. I cofounded the International conference on Wireless Health
`
`and have served in various committees of this conference.
`
`12.
`
`I have published approximately 500 papers, and have received a
`
`number of best paper and distinguished paper awards. I am a co-author of the book
`
`“Synthesis Techniques and Optimizations for Reconfigurable Systems” (2003 by
`
`Springer) and a co-author of the papers such as:
`
` Adaptive Electrocardiogram Feature Extraction on Distributed
`
`Embedded Systems, IEEE Transactions on Parallel and Distributed
`
`Systems special issue on High Performance Computational Biology
`
`(2006);
`
` A Remote Patient Monitoring System for Congestive Heart Failure,
`
`Journal of Medical Systems (2011);
`
` SmartFall: An Automatic Fall Detection and Cause Identification
`
`System, IEEE Sensors Journal (2013); and
`
`
`
`
`- 4 -
`
`

`

` Designing a Robust Activity Recognition Framework for Health and
`
`Exergaming using Wearable Sensors, IEEE Journal of Biomedical
`
`and Health Informatics (2013).
`
`13. A more detailed account of my work experience and qualifications,
`
`including a list of all publications authored in the previous 10 years, can be found
`
`in my curriculum vitae, which is identified as Ex. 1004.
`
`14.
`
`I am being compensated at my standard rate of $650 per hour for my
`
`work on this case. My compensation is not dependent upon my opinions or
`
`testimony or the outcome of this case.
`
`III. Legal Principles
`15.
`I understand that my analysis requires an understanding of the scope
`
`of the ’941 Patent claims. I understand that the disclosures of the ’941 Patent and
`
`the prior art are judged from the perspective of a person of ordinary skill in the art
`
`at the time of the purported invention. For the purposes of this declaration, I have
`
`been instructed to consider the time of the purported invention of the ’941 Patent to
`
`be February 25, 2009 for each challenged claim unless noted otherwise. I will note,
`
`however, that my opinions would not change even if all the relevant disclosures
`
`were judged from a later time period.
`
`16.
`
`I understand that terms of the ’941 Patent claims are, by rule, given
`
`the broadest reasonable construction in light of its specification. Unless otherwise
`
`
`
`
`- 5 -
`
`

`

`noted, I have generally given the claim terms their plain and ordinary meaning as
`
`understood by a person of ordinary skill in the art at the time of purported
`
`invention.
`
`17.
`
`I understand that a claim is invalid if it is anticipated or obvious. My
`
`opinions here relate to both anticipation and obviousness as detailed below.
`
`18.
`
`I understand that anticipation of a claim requires that every element of
`
`a claim is expressly or inherently disclosed in a single prior art reference. I
`
`understand that an anticipating reference need not use the exact terms of the
`
`claims, but must describe the patented subject matter with sufficient clarity and
`
`detail to establish that the claimed subject matter existed in the prior art and that
`
`such existence would be recognized by persons of ordinary skill in the field of the
`
`purported invention. I also understand that an anticipating reference must enable
`
`one of ordinary skill in the art to reduce the purported invention to practice without
`
`undue experimentation.
`
`19.
`
`I understand that an obviousness analysis involves comparing a claim
`
`to the prior art to determine whether the claimed invention would have been
`
`obvious to a person of ordinary skill in the art at the time of the invention in view
`
`of the prior art and in light of the general knowledge in the art as a whole. I also
`
`understand that obviousness is ultimately a legal conclusion based on underlying
`
`facts of four general types, all of which must be considered: (1) the scope and
`
`
`
`
`- 6 -
`
`

`

`content of the prior art; (2) the level of ordinary skill in the art; (3) the differences
`
`between the claimed invention and the prior art; and (4) any objective indicia of
`
`nonobviousness.
`
`20.
`
`I also understand that obviousness may be established by combining
`
`or modifying the teachings of the prior art. Specific teachings, suggestions, or
`
`motivations to combine any first prior art reference with a second prior art
`
`reference can be explicit or implicit, but must have existed before the date of
`
`invention. I understand that prior art references themselves may be one source of a
`
`specific teaching or suggestion to combine features of the prior art, but that such
`
`suggestions or motivations to combine art may come from the knowledge of a
`
`person of ordinary skill in the art. Specifically, a rationale to combine the teachings
`
`of references may include logic or common sense available to a person of ordinary
`
`skill in the art.
`
`21.
`
`I understand that a reference may be relied upon for all that it teaches,
`
`including uses beyond its primary purpose. I understand that though a reference
`
`may be said to teach away when a person of ordinary skill, upon reading the
`
`reference, would be discouraged from following the path set out in the reference,
`
`the mere disclosure of alternative designs does not teach away.
`
`22.
`
`I further understand that whether there is a reasonable expectation of
`
`success from combining references in a particular way is also relevant to the
`
`
`
`
`- 7 -
`
`

`

`analysis. I understand there may be a number of rationales that may support a
`
`conclusion of obviousness, including:
`
` Combining prior art elements according to known methods to yield
`
`predictable results;
`
` Substitution of one known element for another to obtain predictable
`
`results;
`
` Use of known technique to improve similar devices (methods, or
`
`products) in the same way;
`
` Applying a known technique to a known device (method, or product)
`
`ready for improvement to yield predictable results;
`
` “Obvious to try” – choosing from a finite number of identified,
`
`predictable solutions, with a reasonable expectation of success;
`
` Known work in one field of endeavor may prompt variations of it for use
`
`in either the same field or a different one based on design incentives or
`
`other market forces if the variations are predictable to one of ordinary
`
`skill in the art; or
`
` Some teaching, suggestion, or motivation in the prior art that would have
`
`led one of ordinary skill to modify the prior art reference or to combine
`
`prior art teachings to arrive at the claimed invention.
`
`
`
`
`- 8 -
`
`

`

`23.
`
`I understand that it is not proper to use hindsight to combine
`
`references or elements of references to reconstruct the invention using the claims
`
`as a guide. My analysis of the prior art is made from the perspective of a person of
`
`ordinary skill in the art at the time of the purported invention.
`
`24.
`
`I understand that so-called objective considerations may be relevant to
`
`the determination of whether a claim is obvious should the Patent Owner allege
`
`such evidence. Such objective considerations can include evidence of commercial
`
`success caused by an invention, evidence of a long-felt need that was solved by an
`
`invention, evidence that others copied an invention, or evidence that an invention
`
`achieved a surprising result. I understand that such evidence must have a nexus, or
`
`causal relationship to the elements of a claim, in order to be relevant to the
`
`obviousness or non-obviousness of the claim. I am unaware of any such objective
`
`considerations having a nexus to the claims at issue in this proceeding.
`
`25.
`
`I understand that for a reference to be used to show that a claim is
`
`obvious, the reference must be analogous art to the claimed invention. I understand
`
`that a reference is analogous to the claimed invention if the reference is from the
`
`same field of endeavor as the claimed invention, even if it addresses a different
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`problem, or if the reference is reasonably pertinent to the problem faced by the
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`inventor, even if it is not in the same field of endeavor as the claimed invention.
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`I understand that a reference is reasonably pertinent based on the problem faced by
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`the inventor as reflected in the specification, either explicitly or implicitly.
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`IV. Valencell’s Conditional Motion to Amend
`A. Overview
`26. According to Valencell, Substitute claim 22 retains or narrows all the
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`limitations of original claim 14, as shown below (with proposed amendments
`
`identified):
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`22. (Substitute for original claim 14) A wearable device, comprising:
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`a housing; and
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`a chipset enclosed within the housing, the chipset comprising at
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`least one PPG sensor, at least one motion sensor, and at least one
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`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
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`motion artifacts from the PPG signals and to extract physiological
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`and motion parameters;
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`wherein the at least one signal processor configured to process
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`data to be output, wherein the output data comprises physiological
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`information and motion-related information, and wherein the output
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`data is parsed out such that an application-specific interface (API)
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`can utilize the physiological information and motion-related
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`information for an application;
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`wherein the housing comprises at least one window that
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`optically exposes the at least one PPG sensor to a body of a subject
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`wearing the device, and wherein the housing comprises non-air light
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`transmissive material in optical communication with the at least one
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`PPG sensor and the window.
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`27. According to Valencell, Substitute claim 26 retains or narrows all the
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`limitations of original claim 18, as shown below (with proposed amendments
`
`identified):
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`26. (Substitute for original claim 18) The device of claim 14 22,
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`wherein the at least one processor is configured to (i) reduce motion
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`artifacts by removing frequency bands from the signals that are
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`outside of a range of interest using at least one band-pass filter to
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`produce preconditioned signals and (ii) to generate the parsed output
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`data by executing one or more processing methods to provide
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`information that is fed into a multiplexed output serial data string of
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`motion-related and physiological information.
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`28.
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`I understand that in the Patent Owner’s conditional motion to amend,
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`Valencell proposed substitute claims 22-29 to replace claims 14-21, as shown
`
`above and in Appendix A of Patent Owner’s Conditional Motion to Amend.
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`B.
`Level of Ordinary Skill of a Person in the Art
`29. Based on the disclosure of the ’941 Patent, a person having ordinary
`
`skill in the art at the relevant time would have had at least a four-year degree in
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`electrical engineering, 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. A person of ordinary skill in the art would also
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`be familiar with optical system design and signal processing.
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`C. Claim Construction
`30. Other than the exceptions noted in my previous Declaration (Ex.
`
`1003) and the construction provided below, I have given the terms of the substitute
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`claims their plain and ordinary meaning as would have been understood by a
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`person of ordinary skill in the art.
`
`1.
`“application-specific interface (API)”
`31. The term “application-specific interface (API)” appears twice in the
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`’941 Patent—once in the detailed description (26:17-18) and once in claim 3
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`(surrounded by similar language). In the fuller context of the written description
`
`and with reference to FIGs. 17 and 18, 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, according to some embodiments of the
`present invention. Optical detectors 26 and optical
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`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. … The multiple data outputs 604 may be
`generated by the processor/multiplexer 602 by time
`division multiplexing or the like. 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.
`
`The multiplexed data outputs 604 may be a serial data
`string of activity and 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. The
`applications may use this data to generate high-level
`assessments, such as overall fitness or overall health.
`Furthermore, the individual data elements of the data
`string can be used to facilitate better assessments of other
`individual data elements of the data string.
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`Ex. 1001, 25:65-26:33.
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`32. A POSA would have understood the preceding passage to illustrate
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`how data may be formatted into a serial data string. As illustrated by FIG. 18, the
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`’941 Patent teaches that the various physiological and motion-related parameters
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`may simply be arranged serially in a data string or packet. As long as an
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`application interface is capable of understanding the content of the data received,
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`an application may utilize the data. Applications that utilize a particular data type
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`must use that data in a common format (unless the format i