`
`
`
`
`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
`REPLY TO PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`IPR2017-00321
`U.S. Patent No. 8,923,941
`
`III. 
`
`I. 
`II. 
`
`Introduction ...................................................................................................... 1 
`Kosuda suggests a chipset comprising at least one PPG sensor
`enclosed within a housing. ............................................................................... 1 
`Petitioner provided a proper rationale for combining the teachings of
`Kosuda and Maekawa. ..................................................................................... 4 
`IV.  Aceti discloses a housing enclosing a chipset and comprising a
`window............................................................................................................. 9 
`PO waived arguments specific to the dependent claims. .............................. 12 
`V. 
`VI.  PO’s contention of unconstitutionality is not a proper request for
`relief. .............................................................................................................. 12 
`VII.  Conclusion ..................................................................................................... 13 
`
`
`
`
`- i -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`
`
`
`Exhibit No.
`1001
`
`1002
`1003
`1004
`1005
`
`1006
`
`1007
`1008
`
`1009
`
`1010
`
`1011
`
`1012 – 1015
`1016
`
`1017
`1018
`
`1019
`1020
`
`1021
`
`1022
`
`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 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
`
`
`
`- ii -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`
`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 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
`
`Exhibit No.
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`
`
`- iii -
`
`

`

`Exhibit No.
`1040
`
`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. 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 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 -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`
`I.
`
`Introduction
`
`The Board instituted trial because Petitioner established a reasonable
`
`likelihood of prevailing on its assertions that claims 14-21 of U.S. Patent No.
`
`8,923,941 (the ’941 Patent) are obvious. Inst. Decision, Paper 11, p. 40. In
`
`response Patent Owner, Valencell Inc., (PO) has only submitted flawed, meritless
`
`argument and little objective evidence of any kind. The testimony of PO’s expert is
`
`similarly flawed and conclusory—often contradictory to PO’s positions. As
`
`thoroughly explained in the originally filed Petitions and below, claims 14-21 are
`
`unpatentable as obvious under pre-AIA 35 U.S.C. § 103.
`
`II. Kosuda suggests a chipset comprising at least one PPG sensor enclosed
`within a housing.
`
`PO argues that Kosuda does not disclose a housing enclosing a chipset and
`
`non-air light transmissive material, alleging that 13A-13C are only mounted onto a
`
`part of the housing, rather than being enclosed by it. PO’s argument is based on a
`
`misunderstanding of Petitioner’s position and a mistaken view of Kosuda’s
`
`teachings.
`
`First, PO mistakes FIG. 3 of Kosuda, arguing that it shows “light emitting
`
`diode 13A and photodetector 13B … attached to the outside of the housing (main
`
`body/watchcase 10A).” POR, Paper 23, p. 12. But that is simply not the case. As
`
`shown below, main body/watchcase 10A extends around and—along with
`
`- 1 -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`transparent glass 13C—surrounds both light emitting diode 13A and photodetector
`
`13B.
`
`
`
`Kosuda confirms that main body/watchcase 10A refers to the entire housing
`
`(including back lid 14 and transparent glass 13C)—and not just the top piece of the
`
`watchcase. Specifically, Kosuda states that “[t]he back surface of the device main
`
`body 10A is pressed against the back of the wrist.” Ex. 1027, Kosuda, ¶0140,
`
`(emphasis added). Kosuda further teaches that “transparent glass 13C is fixed by
`
`means of a back lid 14 as a component of the device main body 10A.” Id. at 0141
`
`(emphasis added). Thus, contrary to PO’s view, back lid 14 (which presses against
`
`the wrist) and transparent glass 13C are a part of the housing and, as shown,
`
`enclose light emitting diode 13A and photodetector 13B.
`
`- 2 -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`Second, PO incorrectly contends that “Petitioner does not argue that
`
`transparent glass 13C is part of the housing.” POR, p. 17 (citing the deposition of
`
`Dr. Sarrafzadeh).1 In reference to the window feature, the Petition explicitly states
`
`that “Kosuda discloses that the housing (i.e., main body/watchcase 10A) comprises
`
`a window (i.e., transparent glass 13C in the opening in back lid 14).” Petition,
`
`Paper 2, p. 25; see also Ex. 1003, Sarrafzadeh Decl., ¶¶80, 86. Thus, Petitioner’s
`
`position is and has been consistent and clear—Kosuda suggests that main
`
`body/watchcase 10A is a housing that encloses a chipset and that the watchcase
`
`comprises a transparent glass 13C which functions as a window. Petition, pp. 20-
`
`25. Claim 14 does not require that the window enclose the chipset and so it was
`
`unnecessary for Petitioner or Dr. Sarrafzadeh to address such a feature. PO’s
`
`expert concedes that the claimed PPG sensor does not require a transparent glass to
`
`be a part of the PPG sensor. See Ex. 2010, Pollonini Decl., ¶53 (“In my opinion,
`
`the components making up any pulse wave sensor or PPG sensor would consist of
`
`Light Emitting Diode 13A and Photodetector 13B….Additionally, there is a piece
`
`of transparent glass 13C which is also attached to to [sic] the back lid 14 and sits
`
`between the PPG sensor and wrist of the user of the invention.”). Instead of
`
`1 It is worth noting that PO failed to consider that Dr. Sarrafzadeh’s statement was
`
`in specific reference to the testimony in paragraph 74 of his declaration and does
`
`not change the position of Petitioner.
`
`- 3 -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`actually distinguishing claim 14 from the teachings of Kosuda and Meakawa, PO
`
`merely attempts to create confusion around the Petition where none exists.
`
`III. Petitioner provided a proper rationale for combining the teachings of
`Kosuda and Maekawa.
`
`PO argues that a POSA would not have been motivated to combine Kosuda
`
`and Maekawa to suggest a non-air light transmissive material because “Maekawa
`
`would not solve the problem of the susceptibility of PPG sensors ‘to interference
`
`from light noise (e.g., light that is not scattered by arterial blood).’” POR, p. 19
`
`(quoting Petitioner’s identification of a known problem). PO makes four assertions
`
`with respect to this argument: (1) virtually all light scattered from the skin, even
`
`superficially, contains “useful physiological information” (Id. at 20-21); (2) use of
`
`Maekawa’s glass 23 would actually increase the signal-to-noise ratio Maekawa
`
`seeks to improve; (3) use of Maekawa’s fiber optic cables would not reduce motion
`
`artifacts; (4) a “simpler” alternative solution existed at the time as a way to
`
`improve the signal-to-noise ratio. Yet none of these assertions actually constitutes
`
`a teaching away from the proposed combination or evidence that the combination
`
`would not yield predictable results.
`
`“[I]f a technique has been used to improve one device, and a person of
`
`ordinary skill in the art would recognize that it would improve similar devices in
`
`the same way, using the technique is obvious unless its actual application is
`
`beyond his or her skill…. [The adjudicator] must ask whether the improvement is
`
`- 4 -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`more than the predictable use of prior art elements according to their established
`
`functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Accordingly,
`
`because PO did not actually present any objective evidence establishing that the
`
`proposed combination would be beyond the skill of an ordinary artisan or that
`
`proposed improvement would be more than a predictable use of the teachings of
`
`the prior art, PO’s assertions are largely irrelevant to the obviousness inquiry.
`
`Nevertheless, we address each of PO’s assertions in turn.
`
`First, regarding PO’s assertion that “useful physiological information can be
`
`obtained from light that only superficially enters the skin,” (POR, p. 21) PO’s
`
`reliance on its argument is misplaced. Maekawa is explicit in indicating the
`
`desirability to obtain a reflected signal that more deeply penetrates the skin for
`
`measuring pulse rate. Ex. 1030, ¶0009. Kosuda likewise describes a device for
`
`measuring pulse rate. Ex. 1027, ¶0002. Therefore, “useful” physiological
`
`information in the context of the Kosuda/Maekawa combination is physiological
`
`information that is “useful” for measuring a significant heart rate signal—and not
`
`just any physiological information. Specifically, Maekawa teaches that:
`
`Light that only passes along the surface of the skin of the
`living body does not contain very much physiological in-
`formation whereby blocking this light makes it so that
`most of the light that enters the optical fiber, propagates
`in the optical fiber, and is [led] to the light receiving part
`
`- 5 -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`is light that has passed deeply through the living body
`under the inner skin, in other words, light that contains a
`lot of physiological information. Id. at 0015.
`
`Ex. 1030, ¶0048. Thus, Maekawa recognizes that there may be some modicum of
`
`physiological information in the light that passes along the surface of the skin. But
`
`according to Maekawa, such superficial light is simply not as useful in measuring
`
`pulse rate.2
`
`Second, PO’s contention that the introduction of Maekawa’s glass plate 23
`
`“would worsen the signal-to-noise ratio of the pulse signal” (POR, p. 19) is
`
`unfounded. The proposed Kosuda/Maekawa combination does not rely on the
`
`addition of Maekawa’s glass 23. Rather, the combination is based on the
`
`suggestion of adding a non-air light transmissive material (such as Maekawa’s
`
`
`2 Nothing in PO’s purported evidence indicates anything to the contrary. See, e.g.,
`
`Ex. 2012, Tur, p. 2 (“PPG is believed to monitor the microcirculation to a depth of
`
`1-2 mm”), see also Ex. 1070, Pollonini Tr., 145:8-148:14 (testifying that his origi-
`
`nal testimony was inaccurate and deferring to his cited papers for accurate infor-
`
`mation). In fact, penetration into the skin is more complicated than PO’s expert
`
`would lead one to believe. See Ex. 2015, Khalil, 3:20-58 (indicating that penetra-
`
`tion depth depends at least on temperature, wavelength of emitted light, and skin
`
`pigmentation).
`
`- 6 -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`bundle of optical fibers 40) and arranging it between Kosuda’s optical detector and
`
`transparent glass. See Petition, pp. 26-27. But even assuming that light traveling
`
`within Kosuda’s transparent glass was a problem, it was a problem recognized in
`
`the prior art to which there were known solutions as taught by Maekawa and
`
`admitted to by PO. POR, pp. 21-23 (recognizing Maekawa’s solution illustrated in
`
`FIG. 9). The disclosure of a problem to which there was a known solution is not
`
`clear discouragement of the proposed combination. See In re Ethicon, Inc., 844
`
`F.3d 1344, 1351 (Fed. Cir. 2017); see also In re Applied Materials, Inc., 692 F.3d
`
`1289, 1298 (Fed. Cir. 2012) (“A reference must be considered for everything that it
`
`teaches, not simply the described invention or a preferred embodiment.”).
`
`Third, regarding PO’s contention that “using Maekawa’s ‘fiber optic cables’
`
`in Kosuda’s device would not reduce motion artifacts,” (POR, p. 23) Petitioner
`
`does not rely reduction of motion artifacts as a rationale for the proposed
`
`combination and it is unclear why PO or its expert addressed a contention that was
`
`never made. To the extent that PO was attempting to argue that the proposed
`
`combination would not have been operable or lacked a reasonable expectation of
`
`success, PO has failed to present any evidence to support such a contention. PO
`
`baldly asserts that fiber optic cables were “extremely susceptible to motion noise
`
`when moved in space.” Id. PO failed to provide any objective evidence or
`
`reasoning for this assertion. Accordingly, it is not entitled to any weight. In
`
`- 7 -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`addition, Kosuda recognizes and provides a solution to the problem of motion
`
`noise. PO’s arguments fail to address or account for the fact that Kosuda’s motion
`
`sensor, if configured, reduced motion artifacts. So even if the alleged susceptibility
`
`to motion artifacts had been proven, it is unclear why that would lead an artisan
`
`away from the proposed combination, since Kosuda provides a solution for such an
`
`alleged problem.
`
`Fourth, regarding PO’s argument that a simpler alternative solution existed
`
`to the signal-to-noise problem (Id. at 24), such an argument is not germane to the
`
`obviousness inquiry. This argument fails because the law does not require that a
`
`particular combination be the preferred, or the most desirable, combination
`
`described in the prior art in order to provide motivation for the claimed invention.
`
`In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). “The question is whether there
`
`is something in the prior art as a whole to suggest the desirability, and thus the
`
`obviousness, of making the combination, not whether there is something in the
`
`prior art as a whole to suggest that the combination is the most desirable
`
`combination available.” Id. at 1200 (emphasis added). Moreover, PO has not
`
`established the superiority of increasing the separation distance as a solution. For
`
`example, PO’s expert admits that there may be mitigating factors when
`
`implementing such a technique, such as consideration of the increase to the form
`
`factor of the device. Ex 1070, 158:7-159:12. Thus, given that Kosuda’s watchcase
`
`- 8 -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`must enclose many electronic components and in consideration of the general
`
`desirability to limit form factor size for a wearable device, PO has not sufficiently
`
`established that separation of Kosuda’s emitter and detector was even a practical
`
`solution.
`
`
`
`Thus, PO has not identified any problem in implementing the proposed
`
`combination of Kosuda and Maekawa that would have exceeded the abilities of a
`
`POSA nor any teachings that discredit, disparage, or otherwise teach away from
`
`the proposed combination.
`
`IV. Aceti discloses a housing enclosing a chipset and comprising a window.
`PO’s argues that Aceti and Fricke do not disclose “a window that optically
`
`exposes a PPG sensor to the body of a subject and a chipset in the same housing.”
`
`POR, p. 29 (emphasis original). But PO misreads claim 14. Though claim 14
`
`recites “a chipset enclosed within the housing,” it does not require a window and a
`
`non-air light transmission material “in the same housing” as alleged. Rather, claim
`
`14 merely states that the housing “comprises” a window and non-air material.
`
`A housing that comprises a window does not necessitate that the window be
`
`in the housing. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
`
`1997) (“‘Comprising’ is a term of art used in claim language which means that the
`
`named elements are essential, but other elements may be added and still form a
`
`construct within the scope of the claim.”); see also Mars, Inc. v. H.J. Heinz Co.,
`
`- 9 -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`L.P., 377 F.3d 1369, 1376 (Fed. Cir. 2004) (“[T]he transitional term ‘comprising,’
`
`is synonymous with ‘including,’ ‘containing,’ or ‘characterized by,’ and is open-
`
`ended and does not exclude additional, unrecited elements.”) (quoting MPEP, 8th
`
`ed., rev. 1 § 2111.03 (2003)). Thus, the PO misreads claim 14 as the claim only
`
`requires that the window be included as a portion or part of the housing.
`
`PO also misapplies the Board’s construction of the term “housing” as it
`
`pertains to Aceti. The Board construed “housing” to be “one or more parts that
`
`covers, encloses, supports, or protects; casing.” Inst. Decision, p. 9 (emphasis
`
`added). PO does not dispute this construction of “housing” (POR, p. 29), which
`
`was specifically proposed to clarify that the housing may consist of separate (i.e.,
`
`distinct) parts or portions. Petition, p. 13. PO’s own expert confirms similar usage
`
`of the term “housing” in the ’941 Patent consistent with this construction. Ex.
`
`1070, 131:6-134: (describing FIG. 1 of the ’941 Patent as having multiple, distinct
`
`housing components). Thus, neither the construction of the term “housing” nor the
`
`claim itself supports PO’s argument that “separate” components implies different
`
`housings.
`
`As a result, PO is inconsistent when comparing Aceti to the claim. PO
`
`contends that Aceti’s optically transparent elastomer 408 (i.e., a window to the
`
`fiber optic cable 402) is not “in the same housing” as Aceti’s chipset because
`
`Aceti’s processor portion 102 (i.e., housing 106 and cover 108) is one housing, and
`
`- 10 -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`the conductor portion 104 with end 112 is “a separate piece.” POR, pp. 30-33. But
`
`any distinction between the components does not imply physical separation
`
`between the parts. To the contrary, Aceti expressly teaches that conductor portion
`
`104 is coupled to processor portion 102. Ex. 1031, Aceti, ¶0016.
`
`Further, PO misunderstands the Board’s “housing” construction to imply
`
`that Aceti’s optically transparent elastomer 408 must individually “cover, enclose,
`
`support or protect any of the electronic components” and be “made of the same
`
`material as conductor 104 and case 106.” POR, p. 31. Neither the term “housing”
`
`nor the claim requires that all parts of the housing be made of the same material or
`
`that all parts perform exactly the same function. See Ex. 1070, 159:19-160:2
`
`(statement by PO’s expert agreeing that the term “housing” in claim 14 does not
`
`require that all parts be made of the same material). Rather, parts of a housing may
`
`collectively perform a function (such as two halves of a casing enclosing
`
`components) or may simply perform its own function (such as integral fasteners
`
`that holds a casing together). In the case of Aceti, optically transparent elastomer
`
`408 resides at the end of fiber optic 402 and thus inherently provides a measure of
`
`protection for the fiber optic from debris and (being an elastomer) damage. In
`
`addition, elastomer 408 is a part of conductor portion 104, which provides support
`
`for thermistor 348, electrical wires 406, acoustic tube 400, and fiber optic cables
`
`402. Ex. 1031, ¶0034. Thus, Aceti’s processor portion 102 and conductor portion
`
`- 11 -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`104 collectively function as a housing enclosing a chipset and comprising a
`
`window (i.e., elastomer 408).
`
`V.
`
`PO waived arguments specific to the dependent claims.
`
` PO failed to present any arguments for the challenged dependent claims
`
`separate from its arguments for independent claim 14. POR, p. 33. Thus, PO
`
`waived any other arguments for the challenged dependent claims 15-21. See
`
`Scheduling Order, Paper 12, p. 3 (“The patent owner is cautioned that any
`
`arguments for patentability not raised in the response will be deemed waived.”);
`
`see also In re Nuvasive, Inc., 842 F.3d 1376, 1380 (Fed. Cir. 2016) (“[A] party
`
`waives an argument that it failed to present to the PTAB because it deprives the
`
`court of the benefit of the PTAB’s informed judgment.”). Accordingly, PO’s
`
`arguments in support of patentability of claims 15-21 fail for the same reasons
`
`discussed above.
`
`VI. PO’s contention of unconstitutionality is not a proper request for relief.
`PO contends inter partes review proceedings are unconstitutional. POR, p.
`
`33. PO, however, does not ask the Board to make any finding based on the
`
`contention. Id. “Constitutional questions obviously are unsuited to resolution in
`
`administrative hearing procedures.” Califano v. Sanders, 430 U.S. 99, 109 (1977).
`
`Accordingly, the Board should decline to make a finding on the constitutionality of
`
`inter partes review proceedings.
`
`- 12 -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`
`VII. Conclusion
`PO’s arguments in support of patentability do not refute Petitioner’s strong
`
`showing of obviousness in the Petition. Claims 14-21 are therefore unpatentable.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michelle K. Holoubek, Reg. # 54,179/
`
`Michelle K. Holoubek
`Registration No. 54,179
`Attorney for Petitioner Apple Inc.
`
`Date: December 5, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`- 13 -
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`CERTIFICATION OF SERVICE (37 C.F.R. §§42.6(e))
`
`The undersigned hereby certifies that true and correct copies of the above-
`
`captioned PETITIONER APPLE INC.’S REPLY TO PATENT OWNER
`
`RESPONSE and Exhibits 1070-1072 were served electronically via email in their
`
`entirety on December 5, 2017, on counsel of record for Patent Owner:
`
`Justin B. Kimble (Lead Counsel)
`Jeffrey R. Bragalone (Back-up Counsel)
`Nicholas C. Kliewer (Back-up Counsel)
`T. William Kennedy (Back-up Counsel)
`Jonathan H. Rastegar (Back-up Counsel)
`Brian P. Herrmann (Back-up Counsel)
`Marcus Benavides (Back-up Counsel)
`R. Scott Rhoades (Back-up Counsel)
`Sanford E. Warren, Jr. (Back-up Counsel)
`
`
`
`
`JKimble-IPR@bcpc-law.com
`jbragalone@bcpc-law.com
`nkliewer@bcpc-law.com
`bkennedy@bcpc-law.com
`jrastegar@bcpc-law.com
`bherrmann@bcpc-law.com
`mbenavides@bcpc-law.com
`srhoades@wriplaw.com
`swarren@wriplaw.com
`
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michelle K. Holoubek, Reg. # 54,179/
`
`Michelle K. Holoubek
`Registration No. 54,179
`Attorney for Petitioner Apple Inc.
`
`
`
`
`
`
`
`
`
`Date: December 5, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`

`

`IPR2017-00321
`U.S. Patent No. 8,923,941
`CERTIFICATION OF WORD COUNT
`
`The undersigned hereby certifies that the portions of the above-captioned
`
`PETITIONER APPLE INC.’S REPLY TO PATENT OWNER RESPONSE
`
`specified in 37 C.F.R. § 42.24 has 2,790 words, in compliance with the 5,600 word
`
`limit set forth in 37 C.F.R. § 42.24. This word count was prepared using Microsoft
`
`Word 2010.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: December 5, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michelle K. Holoubek, Reg. # 54,179/
`
`Michelle K. Holoubek
`Registration No. 54,179
`Attorney for Petitioner Apple Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`