`
`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
`__________________
`
`
`PETITIONER APPLE INC.’S OPPOSITION TO
`PATENT OWNER’S CONDITIONAL 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
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`
`TABLE OF CONTENTS
`
`
`I. 
`II. 
`
`Introduction ...................................................................................................... 1 
`Patent Owner Failed To Establish Written Description Support For Its
`Substitute Claims ............................................................................................. 1 
`III.  The Motion Should Be Denied As Nonresponsive ......................................... 4 
`A. 
`Patent owner failed to respond to any instituted ground. ...................... 4 
`B. 
`Patent owner failed to meaningfully address substitute claim 26. ........ 5 
`IV.  Substitute claims 22 and 26 are unpatentable under 35 U.S.C. § 103(a) ........ 6 
`A. 
`Claim Construction ............................................................................... 7 
`1. 
`“application-specific interface (API)” ................................................... 7 
`A.  Overview of Gupta .............................................................................. 10 
`B. 
`The combined teachings of Kosuda, Maekawa, and Gupta render
`substitute claim 22 obvious. ................................................................ 12 
`Rationale to Combine the Teachings of Kosuda and Gupta ............... 15 
`The combined teachings of Kosuda, Maekawa, Han, and Gupta
`renders substitute claim 26 obvious. ................................................... 15 
`Substitute claims 22 and 26 are unpatentable as being obvious over Aceti in
`view of Fricke and Craw ............................................................................... 16 
`A.  Overview of Craw ............................................................................... 16 
`B. 
`The combined teachings of Aceti, Fricke, and Craw render substitute
`claim 26 obvious. ................................................................................ 23 
`VI.  Conclusion ..................................................................................................... 25 
`
`
`
`C. 
`D. 
`
`V. 
`
`
`
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`- i -
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`

`

`UPDATED EXHIBIT LIST
`
`IPR2017-00321
`U.S. Patent No. 8,923,941
`
`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 Debrec-
`zeny, 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 Applica-
`tion 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. Web-
`ster 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
`
`
`
`- ii -
`
`

`

`Exhibit No.
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`1040
`
`IPR2017-00321
`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 monitor-
`ing 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 Applica-
`tion 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 Adap-
`tive 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 Cancella-
`tion 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 Margu-
`lies 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
`U.S. Patent Application Publication No. 2008/0154098 to Morris et
`al., published June 26, 2008
`
`
`
`- iii -
`
`

`

`Exhibit No.
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`1049
`
`1050
`
`1051
`
`1052
`
`1053
`
`1054
`1055-1066
`1067
`
`IPR2017-00321
`U.S. Patent No. 8,923,941
`
`Description
`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 Meas-
`urement 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 Dic-
`tionary, 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
`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.
`
`
`
`- iv -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`
`Exhibit No.
`1068
`
`1069
`
`1070
`
`1071
`1072
`
`Description
`Transcript of teleconference among Board and Parties held on Au-
`gust 28, 2017, Apple Inc. v. Valencell, Inc., Case Nos. IPR2017-
`00315 and IPR2017-00321.
`Transcript of teleconference among Board and Parties held on Oc-
`tober 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
`
`
`
`- v -
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`
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`Petitioner Apple Inc. hereby opposes the Patent Owner’s Conditional
`
`Motion to Amend (“MTA”) (Paper 24).
`
`I.
`
`INTRODUCTION
`
`Valencell (“Patent Owner” or “PO”) asks the Board to substitute claims 22-
`
`29 in place of original claims 14-21 of U.S. Patent No. 8,923,941 (the ’941 patent)
`
`if each of original claims 14-21 are found unpatentable. MTA, Paper 24, p. 1. But
`
`PO’s Motion does not comply with the requirements for entry of a motion to
`
`amend, and thus PO has not met its burden of production1 under 37 C.F.R. §§
`
`42.121(a)(2), 42.121(b). Accordingly, Patent Owner’s MTA should be denied. In
`
`addition, even if the substitute claims were entered into the proceeding, the
`
`substitute claims fail to meet the statutory requirements of patentability under 35
`
`U.S.C. §103(a).
`
`II.
`
`PATENT OWNER FAILED TO ESTABLISH WRITTEN DESCRIP-
`TION SUPPORT FOR ITS SUBSTITUTE CLAIMS
`
`Patent Owner bears the burden of identifying written description support
`
`under 37 C.F.R. § 42.121(b) (A “motion to amend claims must ... set forth: (1) The
`
`support in the original disclosure of the patent for each claim that is added or
`
`amended”) ; see also Memorandum from David P. Ruschke, Chief Administrative
`
`
`1 Petitioner recognizes that the burden of persuasion still rests with Petitioner
`
`after Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
`
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`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`Patent Judge, Guidance on Motions to Amend in view of Aqua Products, p. 2 (Nov.
`
`21, 2017) (“Aqua Products Memo”). PO, however, only listed a string of citations
`
`to the original disclosure without explaining how those various pages supported
`
`each of the proposed substitute limitations. See MTA, pp. 4-7. The Board has
`
`repeatedly held that a string citation is insufficient to establish written description
`
`support. B.E. Tech., L.L.C. v. Google, Inc., No. 2015-1827, 2016 WL 6803057, at
`
`*7 (Fed. Cir. Nov. 17, 2016); Respironics, Inc. v. Zoll Med. Corp., No. IPR2013-
`
`00322, 2014 WL 4715644, at *13 (P.T.A.B. Sept. 17, 2014) (“Zoll’s string
`
`citations amount to little more than an invitation to us (and to Respironics, and to
`
`the public) to peruse the cited evidence and piece together a coherent argument for
`
`them. This we will not do; it is the province of advocacy.”), vacated and remanded
`
`on other grounds, No. 2015-1485, 2016 WL 4056094, at *1 (Fed. Cir. July 29,
`
`2016).
`
`Other portions of the MTA purport to summarize and distinguish the text of
`
`the issued ’941 Patent—not the original disclosure of the underlying application.
`
`Notably, the summary of the ’941 Patent (MTA, pp. 7-10) does not fully address
`
`how each added limitation finds support in the original disclosure in manner
`
`sufficient to show that the inventors possessed the substitute claims’ subject matter
`
`upon filing.
`
`Further, PO did not present any specific construction for the term
`
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`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`“application-specific interface (API).” The same term is recited in claim 3 of the
`
`’941 Patent and was construed by the Board and Petitioner in IPR2017-00319. See
`
`Apple Inc. v. Valencell, Inc., IPR2017-00319, Pet., Paper 2, pp. 14-15 (construing
`
`term as an “Application Programming Interface”); POPR, Paper 6, p. 13 (disputing
`
`Petitioner’s construction); Inst. Dec., Paper 10, pp. 8-12 (rejecting Petitioner’s
`
`construction); Rehearing Decision (Paper 15) (same).
`
`Not only did PO ignore the record with respect to this term, PO now takes a
`
`position contrary to its previous position and the position of the Board. See POR,
`
`Paper 23, pp. 4, 7 (equating the term to “Application Programming Interface”); Ex.
`
`2009, ¶40 (same); Ex. 1070, Pollonini Tr., 125:3-128:24. PO’s MTA should not be
`
`treated as responsive given the inconsistency in PO’s positions. See New
`
`Hampshire v. Maine, 532 U.S. 742, 749 (2001) (“[W]here a party assumes a
`
`certain position in a legal proceeding, and succeeds in maintaining that position, he
`
`may not thereafter, simply because his interests have changed, assume a contrary
`
`position, especially if it be to the prejudice of the party who has acquiesced in the
`
`position formerly taken by him.”)
`
`Accordingly, PO has failed to meet its burden of production and PO’s facial-
`
`ly deficient MTA should be denied.
`
`
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`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`III. THE MOTION SHOULD BE DENIED AS NONRESPONSIVE
`A.
`Patent owner failed to respond to any instituted ground.
`The MTA did not did not address how the proposed amendments overcome
`
`the instituted grounds and thus “does not respond to a ground of unpatentability in-
`
`volved in the trial.” 37 C.F.R. § 42.121(a)(2); ; see also Aqua Products Memo, p.
`
`2. “The structure of an IPR does not allow the patent owner to inject a wholly new
`
`proposition of unpatentability into the IPR by proposing an amended claim.” Aqua
`
`Prod., Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017) (en banc). “[T]he patent
`
`owner must include … a detailed explanation of the significance of the amended
`
`claims (e.g., a statement that clearly points out the patentably distinct features for
`
`the proposed new or amended claims).” Id. at 1341 (Reyna concurring) (quoting 77
`
`Fed. Reg. at 48,626). PO’s cursory statement that the “references asserted … fail to
`
`anticipate or render the substitute claims obvious” or that “prior art” in general
`
`does not disclose a particular limitation is not a detailed explanation. See MTA,
`
`pp. 1-2, 12-20.
`
`The PO alleges it provided a discussion of “what the Patent Owner believes
`
`to be the most relevant prior art” (Id. at 12-20), yet did not discuss the Kosuda,
`
`Maekawa, Aceti, or Fricke references—the actual prior art references on which tri-
`
`al was instituted. The MTA does address several hand-picked prior art references
`
`in some detail (none of which were involved in this proceeding), but does not
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`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`meaningfully address the instituted grounds. Indeed, PO did not propose to amend
`
`any limitations of original claim 14 that are actually in dispute—choosing instead
`
`to add completely unrelated details. Because it did not address any of the grounds
`
`upon which trial was instituted, PO failed to demonstrate how the proposed
`
`amendments are responsive to a ground of rejection.
`
`With respect to the art that was identified by PO, no meaningful discussion
`
`was included. PO recognized that the proposed amendments are similar to limita-
`
`tions recited in claims 1 and 3 of the ’941 Patent. Those claims were substantively
`
`challenged as unpatentable in a related proceeding between the same parties. See
`
`IPR2017-00319 Pet. At least two references (Craw and Lee) were asserted as
`
`teaching limitations similar to in the substitute claims. Yet PO made no substantive
`
`attempt to explain in detail how the proposed amendment is nevertheless respon-
`
`sive, choosing instead to ignore this evidence.
`
`B.
`Patent owner failed to meaningfully address substitute claim 26.
`In addition to not responding to any of the instituted grounds, PO failed to
`
`present any meaningful reason for the proposed amendment in substitute claim 26.
`
`“Even in the case of proposing only one substitute claim for a particular challenged
`
`claim, if the substitute claim is presented as patentable over prior art on the same
`
`basis that another substitute claim on which it depends is patentable over prior art,
`
`then the patent owner should provide meaningful reasons for making the additional
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`- 5 -
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`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`changes effected by that dependent claim.” Idle Free Sys., Inc. v. Bergstrom, Inc.,
`
`No. IPR2012-00027, 2013 WL 5947697, at *5–6 (P.T.A.B. June 11, 2013) (in-
`
`formative).
`
`Regarding substitute claim 26, PO merely asserted that the added limitation
`
`was not disclosed by the prior art. See MTA, p. 12. “Without any explanation, at
`
`least facially the insertion of those additional features [is not] responsive to an al-
`
`leged ground of unpatentability.” See 37 C.F.R. §§ 42.121(a)(2) and (a)(3); Idle
`
`Free Sys., Inc., IPR2012-00027, 2013 WL 5947697, at *5–6 (informative). Patent
`
`Owner made no specific assertions as to its distinguishing features as compared to
`
`the teachings of the prior art. Accordingly, for this additional reason, the MTA did
`
`not respond to grounds of unpatentability involved in this trial.
`
`IV. SUBSTITUTE CLAIMS 22 AND 26 ARE UNPATENTABLE UNDER
`35 U.S.C. § 103(A)
`
`Patent Owner’s MTA is conditional upon a finding that claims 14-21 are un-
`
`patentable. The first ground below relies on the combined teachings of Kosuda,
`
`Maekawa, and Han in the same manner as set forth in the Petition. See Pet., pp. 14-
`
`28. A second ground relies on the combined teachings of Aceti, Fricke, and
`
`Comtois as set forth in the Petition. See id. at 31-50. Only substitute claim 26 of
`
`the dependent substitute claims has been separately amended. As noted in Aqua
`
`Products, the entirety of the record is to be considered when assessing the patenta-
`
`bility of the amended claims. Aqua Prod., 872 F.3d at 1296. The USPTO has is-
`
`- 6 -
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`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`sued similar guidance indicating that the entirety of the record, including any op-
`
`position, will be considered. See Aqua Products Memo, p. 2. Accordingly, in the
`
`interest of brevity and clarity, Petitioner only addresses herein the added limita-
`
`tions presented by proposed substitute claims 22 and 26.2
`
`A. Claim Construction
`Other than the exceptions noted in the Petition and the construction provided
`
`below, the terms of the substitute claims are construed based on their plain and or-
`
`dinary meaning as understood by a person of ordinary skill in the art.
`
`1.
`
`“application-specific interface (API)”
`
`Other than its recitation in claim 3, the term “application-specific interface
`
`(API)” appears once in the ’941 Patent. Ex. 1001, 26:15-19. 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 activi-
`ty data and physiological data … Data from the detectors
`26 may be processed by a processor/multiplexer 602 to
`
`2The Kosuda-Maekawa combination is equally applicable to dependent sub-
`
`stitute claims 23-25 and 27-29 as set forth in the Petition with respect to claims 15-
`
`17 and 27-29. Thus, substitute claims 23-25 and 27-29 are unpatentable for the
`
`same reasons and will not be addressed here. See Pet., pp. 27-31 (Grounds 1-2);
`
`Ex. 1072, ¶¶36-47, 53-63, 73-81, 86-99, 105-113, 127-130, 145-151.
`
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`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`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 proces-
`sor/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. Id. at 25:65-26:33.
`
`A POSA would have understood from the preceding passage to illustrate
`
`how data may be formatted into a serial data string. Ex. 1072, Sarrafzadeh Opposi-
`
`tion Decl., ¶¶31-35. As illustrated by FIG. 18, the ’941 Patent teaches that the vari-
`
`ous physiological and motion-related parameters may simply be arranged serially
`
`in a data string. But parsing data for a particular application is not a meaningful
`
`limitation as one cannot prevent another different application from similarly de-
`
`coding the output data. Id. at ¶32; see also Ex. 1070, 125:3-128:24.
`
`Based on the admissions of PO’s own expert (see Ex. 1070, 1253:-128:24;
`
`Ex. 2010, ¶40), Petitioner maintains that the appropriate construction for the term
`
`“application specific interface (API)” is that which was proposed in IPR2017-
`
`- 8 -
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`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`00319: “an application interface that specifies how some software components
`
`should interact with each other.” IPR2017-00319 Pet., pp. 14-15. Nevertheless, Pe-
`
`titioner recognizes that the Board previously disagreed, stating that “the ‘applica-
`
`tion-specific interface (API)’ is directed to a ‘particular application,’ rather than
`
`broadly to different applications.” IPR2017-00319 Inst. Dec., pp. 12 (though Peti-
`
`tioner notes that the Board’s prior construction was made without the benefit of the
`
`PO’s own expert’s admission (Ex. 1070, Pollonini Tr., 125:3-128:24)). The claim
`
`is equally unpatentable under either construction. For example, the ’941 Patent
`
`does provide an example of how the output data may be formatted such that an ap-
`
`plication-specific interface may utilize the information contained therein for a par-
`
`ticular application—namely, the data may be in the form of a serial data string of
`
`physiological and motion-related information. Because the asserted art in the
`
`grounds below teaches this specific example from the ’941 Patent, the precise
`
`scope of the term “application-specific interface” is irrelevant for the purposes of
`
`determining unpatentability based on obviousness.
`
`The proposed amendments, including the term application-specific interface
`
`(API), modify the “at least one signal processor” in two respects. First, in addition
`
`to being configured to process signals from at least one PPG sensor and at least one
`
`motion sensor, the processor must also be configured to extract physiological and
`
`motion parameters. Second, the signal processor must be configured to process da-
`
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`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`ta. Though not entirely clear, the term “the output data” may be intended to refer to
`
`the term “data” in the phrase that precedes it—namely, “at least one signal proces-
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`sor configured to process data to be output.” The phrase “wherein the output data
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`is parsed out such that an application-specific interface (API) can utilize the physi-
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`ological information and motion-related information for an application” simply in-
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`dicates that the data is delineated in some manner. For example, FIG. 17 illustrates
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`sensor signals being processed into “a digital data string including activity data and
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`physiological data.” Ex. 1001, 25:65-26:33. Signals from various sensors are “pro-
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`cessed by a processor/multiplexer 602 to generate multiple data outputs 604 in a
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`serial format at the output 606.” Id. Accordingly, this example from the ’941 Pa-
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`tent would have been understood to be within the scope of the substitute claim 22.
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`Ex. 1072, ¶¶33-35.
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`A. Overview of Gupta
`Gupta discloses a monitoring device used to measure physiological parame-
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`ters, such as motion (impact) and heart rate, of a human subject. Ex. 1045, Gupta,
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`Abstract. Gupta’s physiological parameter measurement and monitoring device is
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`illustrated below. Id. at FIG. 1; Ex. 1072, ¶48.
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`IPR2017-00321
`U.S. Patent No. 8,923,941
`
`Ex. 1045, FIG. 1.
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`
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`The inputs from a temperature sensor, a heart rate sensor, and an impact
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`senor (accelerometer) are processed by a microcontroller, and the results are
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`transmitted to a receiver unit. Id. at Section II. The sensors’ signals are time-
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`multiplexed and sampled at predetermined rates. Id. at 2-3; Ex. 1072, ¶¶49-51. The
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`sensor data is gathered every 3 seconds from the sensors and then encoded by the
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`micro-controller to generate a packet of heart rate, skin temperature, and impact
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`information. Ex. 1072, ¶51; Ex. 1045, Section IV.
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`IPR2017-00321
`U.S. Patent No. 8,923,941
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`
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`Ex. 1045, FIG. 5.
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`The data packets are sent to the receiving unit, which is connected to a per-
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`sonal computer (PC) and is constantly receiving the data packets. Ex. 1072, ¶52.
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`“A program, running on the PC, receives the packetized information from [a] serial
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`port, decodes the packet and then displays this information on the PC monitor.”
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`Ex. 1045, p. 4. When the readings from the patient exceed a threshold, an alarm is
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`raised. Id. at 4; Ex. 1072, ¶52.
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`B.
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`The combined teachings of Kosuda, Maekawa, and Gupta render
`substitute claim 22 obvious.
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`[22.5] at least one signal processor configured to pro-
`cess 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;
`
`wherein the at least one signal processor configured to
`process data to be output, the output data comprises
`physiological information and motion-related infor-
`mation;
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`IPR2017-00321
`U.S. Patent No. 8,923,941
`and wherein the output data is parsed out such that
`an application-specific interface (API) can utilize the
`physiological information and motion-related infor-
`mation for an application
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`As discussed in the Petition, Kosuda discloses at least one signal processor
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`(MPU 24/signal processing circuit 17) configured to process signals from the triax-
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`ial acceleration sensor 12 and from the pulse wave sensor 13 in order to reduce
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`motion artifacts from the PPG signals. See Pet., p. 24.
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`The MPU 24/signal processing circuit 17 performs a Fast Fourier Transfor-
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`mation (a type of frequency analysis) on the residual data, extracts the harmonic
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`components of the pulse wave, and calculates the pulse rate from the frequency.
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`Ex. 1027, ¶¶0151-0152. Thus, MPU 24 is configured to extract pulse rate (i.e., a
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`physiological parameter) from its pulse wave (PPG) signal. Ex. 1072, ¶¶64-67.
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`Though MPU 24 monitors the motion signal from the motion sensor to re-
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`duce motion artifacts, Kosuda does not expressly disclose that the MPU 24 is con-
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`figured to extract a particular motion parameter. And while Kosuda discloses that
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`the MPU 24 is configured to process data to be output, and that the output data
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`comprises physiological information, Kosuda does not expressly disclose that the
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`data includes motion-related information or that the output data is parsed out such
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`that an application-specific interface (API) can utilize the physiological infor-
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`mation and motion-related information for an application. Id. at ¶68.
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`Gupta, however, teaches a similar wrist-worn pulse monitoring device that
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`IPR2017-00321
`U.S. Patent No. 8,923,941
`includes a heart rate (PPG) sensor, a temperature sensor, and an accelerometer
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`(motion sensor) to monitor impacts. Ex. 1045, p. 2. Like Kosuda’s pulse monitor-
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`ing device, Gupta’s monitoring device also uses optical sensing of changes in
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`blood volume (i.e., photoplethysmography) to measure heart rate. Id.; Ex. 1072,
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`¶69. In addition, Gupta’s processor is configured to process signals from the mo-
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`tion sensor to determine a fall detection parameter (i.e., a motion parameter) for
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`transmission to a remote computer. Ex. 1045, p. 2; Ex. 1072, ¶¶69-71.
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`As discussed above, Gupta’s system receives the pulse signal and accel-
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`erometer data from the sensors in a time-division multiplexed manner, and pro-
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`cesses the data to provide a data packet (serial data string) of heart rate and impact
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`(motion) information. Ex. 1045, pp. 2-4, FIG. 5; Ex. 1072, ¶70. The data is output
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`to a receiving unit. Ex. 1072, ¶70. The data is arranged such that an application
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`specific interface can decode the packet and a particular application can display the
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`information from the packet. Id. The application program may also raise an alarm
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`when the readings exceed a threshold. Id.
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`Thus, a person of ordinary skill in the art would have recognized that Gup-
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`ta’s processor outputs physiological information and motion-related information
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`parsed out in a specific data format, such that a specific application interface is
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`able to utilize the physiological information and motion-related information for an
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`application. Id. at ¶71.
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`IPR2017-00321
`U.S. Patent No. 8,923,941
`C. Rationale to Combine the Teachings of Kosuda and Gupta
`In light of the teachings of Gupta, a person of ordinary skill in the art would
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`have found it obvious to configure the device of Kosuda to add the functionality of
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`impact detection (a motion-related parameter) and transmission to remote devices,
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`in the same way as Gupta (i.e., by configuring Kosuda’s processor to process sig-
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`nals from an accelerometer using Gupta’s impact detection algorithm, to output a
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`serial data string of physiological information and motion-related information
`
`parsed out such that an specific application interface is able to utilize the physio-
`
`logical information and motion-related information for a particular application). Id.
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`at ¶72. Thus, combining Gupta’s processing techniques (suited for a wearable de-
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`vice) with a wearable device like that of Kosuda would have amounted to an obvi-
`
`ous use of a known processing technique to improve a similar wearable device in
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`the same way (i.e., by adding desirable functions of impact detection and remoting
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`monitoring). Id.
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`D. The combined teachings of Kosuda, Maekawa, Han, and Gupta
`renders substitute claim 26 obvious.
`Claim 26 recites, inter alia,
`
`wherein the at least one processor is configured … (ii) to
`generate the parsed output data by executing one or more
`processing methods to provide information that is fed in-
`to a multiplexed output serial data string of motion-
`related and physiological information.
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`IPR2017-00321
`U.S. Patent No. 8,923,941
`As discussed in the Petition, the combination of Kosuda, Maekawa, and Han
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`teaches element 26(i). See Pet., pp. 28-31. Further, as discussed in the preceding
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`subsection, Gupta teaches that its processor is configured to generate the parsed
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`output data by processing sensor signals to provide information that is fed into a
`
`multiplexed output serial data string of motion-related and physiological infor-
`
`mation. Ex. 1072, ¶84. Gupta states that
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`“all the sensor circuitries used in the design generate ana-
`log voltages which are fed to the ADC (Analog-to-
`Digital) inputs of the microcontroller. The ADC inputs
`are time-multiplexed and sampled at different rates. …
`This takes inputs from the sensor circuits in the form of
`analog voltages. Each sensor has a dedicated ADC chan-
`nel which is multiplexed by the microcontroller.” Ex.
`1045, Sections III and IV.
`
`For the same reasons as discussed regarding substitute claim 22, it would
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`have been obvious to modify Kosuda’s processor and configure it to be capable of
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`generating parsed output data to provide information that is fed into a multiplexed
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`output serial data string of motion-related and physiological information. Ex. 1072,
`
`¶¶69-72, 85.
`
`V.
`
`SUBSTITUTE CLAIMS 22 AND 26 ARE UNPATENTABLE AS BE-
`ING OBVIOUS