`
`By: Sanford E. Warren Jr. (SWarren@wriplaw.com)
`
`R. Scott Rhoades (SRhoades@wriplaw.com)
`
`Warren Rhoades LLP
`
`1212 Corporate Drive, Suite 250
`
`Irving, Texas 75038
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`Telephone: 972-550-2955
`
`Fax: 469-442-0091
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC. and FITBIT, INC.
`Petitioners
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`
`
`Case IPR2017-003211
`U.S. Patent No. 8,923,941
`
`
`
`
`
`REPLY TO PATENT OWNER’S CONDITIONAL
`MOTION TO AMEND UNDER 37 C.F.R. § 42.121
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`1 IPR2017-01556 has been joined to this current proceeding.
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`
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`i
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`Case IPR2017-00321
`U.S. Patent No. 8,923,941
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`
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`TABLE OF CONTENTS
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`I. INTRODUCTION ...................................................................................... 1
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`II. PETITIONERS DESPERATE ATTEMPT TO CHANGE THE CLAIM
`
`CONSTRUCTION FOR APPLICATION-SPECIFIC INTERFACE
`
`(API). .......................................................................................................... 1
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`III. THE SUBSTITUTE CLAIMS ARE NOT OBVIOUS IN VIEW OF THE
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`CITED PRIOR ART................................................................................... 4
`
`IV. THE SPECIFICATION SUPPORTS THE NEW LIMITATIONS OF
`
`THE SUBSTITUTE CLAIMS ................................................................. 10
`
`V. THE PATENT OWNER HAS DEMONSTRATED PROPER
`
`INSTITUTED GROUNDS ...................................................................... 11
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`VI. CONCLUSION ........................................................................................ 12
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`ii
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`
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`TABLE OF AUTHORITIES
`
`Cases
`
`Google Inc. v. B.E. Tech. L.L.C., IPR2014-00038, Final Written
`Decision, Paper 36, at 27 (P.T.A.B. March 31, 2015) ....................... 11
`
`Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Final
`Written Decision, Paper 26 (P.T.A.B. June 11, 2013) ....................... 12
`
`Int’l Flavors & Fragrances Inc. v. U.S., IPR2013-00124, Final
`Written Decision, Paper 12 (P.T.A.B. May 20, 2014) ....................... 10
`
`Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1350-51 (Fed. Cir. 2016) ............... 1
`
`Respironics, Inc. v. Zoll Med. Corp., IPR2013-00322, Final Written
`Decision, Paper 46, (P.T.A.B September 17, 2014) ........................... 11
`
`Shinn Fu Co. of Am., Inc. and. Shinn Fu Corp. v. The Tire Hanger
`Corp., IPR2015-00208, Final Written Decision, Paper 24,
`(P.T.A.B. April 22, 2016) ................................................................... 10
`
`Rules
`
`37 C.F.R. § 42.121(a)(2) ................................................................................. 12
`
`
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`U.S. Patent No. 8,923,941
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`TABLE OF EXHIBITS
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`Description
`
`U.S. Patent Application No. 12/691,388, now U.S. Patent No.
`8,700,111, original specification, claims, and figures.
`
`Provisional Application No. 61/274,191, filed on August 14,
`2009, original specification, claims, and figures.
`
`U.S. Patent No. 8,923,941 to LeBoeuf et al., issued December
`30, 2014
`
`U.S. Patent Application No. 14/184,396, now U.S. Patent No.
`8,923,941, original specification, claims, and figures.
`
`U.S. Patent Application Publication No. 2008/0200774 to Luo,
`published August 21, 2008
`
`U.S. Patent Application Publication No. 2008/0133699 to Craw
`et al., published June 5, 2008
`
`U.S. Patent No. 6,513,532 to Mault et al., issued February 4,
`2003
`
`U.S. Patent Application Publication No. 2003/0181798 to Al-
`Ali, published September 25, 2003
`
`R.G. Lee et al. “A Mobile Care System With Alert
`Mechanism” IEEE Transactions on Information Technology in
`Biomedicine, Vol. 11, Issue 5, September 2007
`
`iv
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`Exhibit
`No.
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`2108
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`2109
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`2115
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`2116
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`2126
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`2127
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`2136
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`2137
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`2138
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`I.
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`INTRODUCTION
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`Petitioners Apple, Inc. (“Apple”) and FitBit, Inc. (“FitBit”) (collectively,
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`“Petitioners”) have chosen to ignore the claim construction of the Patent Trial and
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`Appeal Board (“the Board”) in their opposition to Patent Owner’s, Valencell, Inc.
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`(“Valencell” or “Patent Owner”) Conditional Motion to Amend. Instead, the
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`Petitioners developed their own construction and applied that construction to the
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`prior art. Petitioners make no attempt and do not apply the Board’s construction for
`
`the claim term “application-specific interface (API)” in its opposition; instead
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`Petitioners repeatedly disregarded or attempted to modify the construction set forth
`
`by the Board. Accordingly the references asserted in Petitioners’ opposition fail to
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`anticipate or render the substitute claims obvious. See Nike, Inc. v. Adidas AG, 812
`
`F.3d 1326, 1350-51 (Fed. Cir. 2016).
`
`PETITIONERS DESPERATE ATTEMPT TO CHANGE THE CLAIM
`II.
`CONSTRUCTION FOR APPLICATION-SPECIFIC INTERFACE (API).
`
`Petitioners set forth a variety of arguments in their desperate attempt to change
`
`the construction for the claim term “application-specific interface (API).”
`
`Specifically, Petitioners set forth EACH of the following arguments:
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`1.
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`“PO did not present any specific construction for the term “application-
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`specific interface (API).” See Petitioner’s Opposition (“Opp.”) at pgs. 2-3. Patent
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`Owner discussed the Board’s construction of this term for the ‘941 patent at length
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`in the Motion to Amend (see pgs. 7-10). As the Board has already construed this
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`1
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`term for the ‘941 patent, Patent Owner submits no further construction is necessary
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`and asks the Board to take notice of the prior construction in co-pending IPR2017-
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`00319, Institution of Inter Partes Review, Paper 10 at p. 12 which references the
`
`plain meaning provided in the specification. Petitioners’ arguments based upon the
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`presentation of the claim construction are not persuasive and should be dismissed.
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`2.
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`“PO now takes a position contrary to its previous position and the
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`position of the Board.” Opp. at pg. 3. The only position taken by the Patent Owner
`
`in the Motion to Amend was a direct reference to the Board’s claim construction of
`
`the term in co-pending IPR2017-00319. Patent Owner has not taken claim
`
`construction positions contrary to this construction. Petitioners’ arguments based
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`upon the contrary positions taken in the IPRs are not persuasive and should be
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`dismissed.
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`3.
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`Petitioners maintain that its previously rejected claim construction is
`
`appropriate. Opp. at pgs. 8 – 9. Petitioners ultimately recognize that the Board has
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`previously construed this term, but request reconsideration based upon expert
`
`testimony. In essence, Petitioners are requesting that the specific definition set forth
`
`in the specification be ignored in favor of extrinsic evidence in the form of expert
`
`testimony. However, this request is in direct contradiction to the rules for construing
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`claims identified by this Board in its prior construction of this term. Specifically,
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`the Board has stated:
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`2
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`“[W]hen construing a claim term under the broadest reasonable
`interpretation standard, we begin with the words of the term as it
`appears in the claims and, if the ordinary and customary meaning is not
`plain, we look to the specification to glean the meaning of the term. . .
`. We also may look to the prosecution history to try to discern a claim
`term’s meaning. . . . When we are unable to construe the claim term
`from such intrinsic evidence, we may turn to extrinsic evidence to aid
`in construing the claim term.”). See IPR2017-00319, Institution of Inter
`Partes Review, Paper 10 at pgs. 10-11.
`
`
` The Board did not need to “turn” to extrinsic evidence when the intrinsic evidence
`
`was sufficient to construe the term. Nothing has changed; there is still no need for
`
`extrinsic evidence to construe “application-specific interface (API).” Accordingly,
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`Petitioner’s request should be denied as improper.
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`4.
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`“Because the asserted art in the grounds below teaches this specific
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`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.” Opp. at pg. 9. (Emphasis added). Petitioners are arguing that the
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`construction of a claim term is “irrelevant” as the prior art teaches an example from
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`the ‘941 patent. Patent Owner is not aware of any claim construction case law or
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`statute stating a claim term is “irrelevant” if there are examples in the patent and is
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`further unaware that a claim term can be ignored when determining patentability.
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`Petitioners’ arguments are not persuasive and should be dismissed.
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`5.
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`“The phrase ‘wherein the output data is parsed out such that an
`
`application-specific interface (API) can utilize the physiological information and
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`3
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`motion-related information for an application’ simply indicates that the data is
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`delineated in some manner.” Opp. at 10. Petitioners have genericized the claim
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`construction of application-specific interface (API) to mean “simply indicates that
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`the data is delineated in some manner” while ignoring the Board’s construction
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`stating that the “application-specific interface (API)” is directed to a “particular
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`application.” Petitioners incorrectly use their claim construction in their analysis of
`
`the prior art instead of using the claim construction set forth by the Board. For this
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`reason alone, Petitioners’ arguments regarding the obviousness of the substitute
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`claims fail and their opposition to these claims should be denied.
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`Petitioners various arguments and ultimately flawed and unsupported claim
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`construction are not persuasive. The Board has already construed this claim stating
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`the “‘application-specific interface (API)’ is directed to a ‘particular application.”
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`The construction was based upon the specific definition set forth in the specification.
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`III. THE SUBSTITUTE CLAIMS ARE NOT OBVIOUS IN VIEW OF
`THE CITED PRIOR ART
`
`Petitioners have failed to show that any combination of art discloses the
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`claimed invention as set forth in the substitute claims. Petitioners repeatedly applied
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`the incorrect claim term construction of “simply indicates that the data is delineated
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`in some manner” for “application-specific interface (API).” Petitioners have failed
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`to identify any combination of prior art that discloses an “application-specific
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`interface (API) directed to a particular application.”
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`Petitioners have stated that “parsing data for a particular application is not a
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`meaningful limitation as one cannot prevent another different application from
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`similarly decoding the output data.” Opp. at 8. Petitioners then choose to ignore
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`this claim element in its evaluation of the prior art. Petitioners’ positions fail in two
`
`regards. First, a claim element cannot just be ignored as “not meaningful.” Second,
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`the proposition is nonsensical. Data transmitted to a “particular application” is in a
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`form only understandable by that application. When the data is parsed for a
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`particular application, only that particular application can use the parsed data.
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`In another example, the Petitioners apply their genericized construction to
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`Figure 17 of the ‘941 Patent before applying this genericized construction to the
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`prior art. Petitioners conveniently ignore the “directed to a particular application”
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`limitation in their analysis. Petitioners compound their errors by claiming that
`
`Figure 17 embodies the “application-specific interface” element. Figure 17 may be
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`a component of the “application-specific interface,” but it does not embody the
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`entirety of the claim term. The ‘941 Patent provides as follows: “FIG. 17 is a block
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`diagram that illustrates sensor signals being processed into a digital data string
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`including activity data and physiological data using the method 500 of FIG. 16,
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`according to some embodiments of the present invention” and “[t]he multiplexed
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`data outputs 604 may be a serial data string of activity and physiological information
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`700 (FIG.18) parsed out specifically such that an application-specific interface (API)
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`5
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`can utilize the data as required for a particular application.” ‘941 Patent, Col. 25, ln.
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`65 – Col. 26, ln. 1 and Col. 26, lns. 15-19. (Emphasis Added). Figure 17 discloses
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`sensor signals being processed into a digital data string according to some
`
`embodiments of the present invention. The data output may be for a particular
`
`application or it may be for a generic application. Figure 17 does not make a
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`distinction between general applications and particular applications which are a
`
`separate embodiment. The ‘941 Patent specification states these data outputs MAY
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`be parsed out specifically such that an application-specific interface (API) can utilize
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`the data as required for a particular application. Processing the data string may be
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`accomplished without parsing out the data specifically for a particular application.
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`To meet the substitute claims, the output data must be parsed out such that an
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`application-specific interface (API) can utilize the physiological information and
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`motion-related information for a particular application. It is this additional claim
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`element limitation that Petitioners continually ignore and fail to address in their
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`analysis. Practicing Figure 17 without parsing out data as required for a particular
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`application does not meet the claim limitations of the substitute claims.
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`Patent Owner submits that none of the cited prior art, alone or in combination,
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`discloses ALL of the elements of the substitute claims, including “wherein the
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`output data is parsed out such that an application-specific interface (API) can utilize
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`the physiological information and motion-related information for an application”
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`and therefore Petitioners opposition should be denied and the substitute claims
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`should be entered and allowed.
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`A. The Combination of Kosuda2, Maekawa, and Gupta fail to render the
`Substitute Claims obvious.
`
`Substitute Claim 12 and its dependent claims are not obvious in view of
`
`Kosuda, Maekawa, and Gupta. In its Opposition, Petitioners admit that “Kosuda
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`does not expressly disclose that the data includes motion-related information or that
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`the output data is parsed out such that an application-specific interface (API) can
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`utilize the physiological information and motion-related information for an
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`application.” Opp. at pg. 13. To cure this defect, Petitioners attempt to rely upon
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`Gupta. This attempt fails, however, as Gupta fails to disclose the application-
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`specific interface (API) claim element. Petitioners, through their expert, Dr.
`
`Anthony, demonstrate the flawed application of Petitioners’ own construction,
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`arguing as follows: “As discussed above, Gupta’s system receives the pulse signal
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`and accelerometer data from the sensors in a time-division multiplexed manner, and
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`processes 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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`
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`2 Patent Owner acknowledges that if the Board is considering the Conditional
`Motion to Amend, the Board must have concluded that the original claims of ‘941
`were invalid under the asserted prior art. As such, Patent Owner will limit its
`arguments to the newly added elements in its analysis.
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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.” Opp. at pg. 14. Dr. Anthony provides evidence
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`of a data packet being disclosed in Gupta, with a direct reference to Gupta, and then
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`makes the leap that the creation of this data packet arranges the data “such that an
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`application specific interface can decode the packet and a particular application can
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`display the information from the packet.” Opp. at 14. Dr. Anthony provides no
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`citation to Gupta showing “the output data is parsed out such that an application-
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`specific interface (API) can utilize the physiological information and motion-related
`
`information for an application.” Dr. Anthony and the Petitioners are just applying
`
`their “simply indicates that the data is delineated in some manner” construction to
`
`the application-specific interface (API) claim element. Accordingly, Gupta
`
`combined with Kosuda and Maekawa, fails to render the substitute claims obvious
`
`and therefore, Petitioners opposition based upon Gupta, Kosuda, and Maekawa
`
`should be denied and the substitute claims should be entered and allowed.
`
`B. The Combination of Aceti, Fricke, and Craw fail to render the Substitute
`Claims obvious.
`
`Substitute Claim 12 and its dependent claims are not obvious in view of Aceti,
`
`Fricke, and Craw. Similar to their Gupta arguments, Petitioners admit that “Aceti
`
`does not explicitly disclose that the data is parsed out such that an application-
`
`specific interface (API) can utilize the physiological information and motion-related
`
`information application.” Opp. at pg. 21. For this argument, Petitioners attempt to
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`rely upon Craw. But once again, this attempt fails as Craw fails to disclose the
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`application-specific interface (API) element. Petitioners, relying upon the
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`Declaration of Dr. Anthony, argue as follows: “Craw suggests a serial data format
`
`(e.g., “string data”) to enable extraction of multiple physiological parameters and
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`motion-related information for display of the extracted information. Ex. 2127, ¶¶
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`0200-0216; Ex. 1072, ¶123,” Opp. at 21, and “[i]n light of Aceti’s teaching of the
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`desirability to output physiological and motion-related information to remote
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`devices, and Craw’s teachings of a scheme to do just that, it would have been obvious
`
`to a POSA to modify Aceti’s processor based on Craw’s teachings, so that Aceti’s
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`output data is parsed out such that an application-specific interface (API) can utilize
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`the physiological information and motion-related information for an application. Id.
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`at ¶¶124-126.” Opp. at pgs. 21 – 22. Once again, the Petitioners use evidence of a
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`serial data packet being disclosed in the prior art, this time Craw, and then make the
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`leap that the serial data packet meets the application-specific interface (API) claim
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`element. The Petitioners and Dr. Anthony refer to no disclosure of Craw that shows
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`“the output data is parsed out such that an application-specific interface (API) can
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`utilize the physiological information and motion-related information for an
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`application.” As repeated throughout this reply, Dr. Anthony and the Petitioners are
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`just applying their “simply indicates that the data is delineated in some manner”
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`construction to the claim term. Accordingly, Craw combined with Aceti and Fricke
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`fails to render the substitute claims obvious and therefore, Petitioners opposition
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`should be denied and the substitute claims should be entered and allowed.
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`As Dependent Claims 23 – 29 all depend from Substitute Claim 22,
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`Dependent Claims 23 – 29 should also be entered and allowed.
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`IV. THE SPECIFICATION SUPPORTS THE NEW LIMITATIONS OF
`
`THE SUBSTITUTE CLAIMS
`
`Vallencell’s listing of specification support for each individual claim
`
`limitation satisfies its burden under 37 C.F.R. § 42.121(b). See Shinn Fu Co. of Am.,
`
`Inc. and. Shinn Fu Corp. v. The Tire Hanger Corp., IPR2015-00208, Final Written
`
`Decision, Paper 24, (P.T.A.B. April 22, 2016) (granting patent owner’s motion to
`
`amend supported with a table listing each limitation and its corresponding
`
`specification citation); Int’l Flavors & Fragrances Inc. v. U.S., IPR2013-00124,
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`Final Written Decision, Paper 12 (P.T.A.B. May 20, 2014) (same).
`
`Petitioners, however, erroneously contend that string citations for each
`
`individual claim limitation are wholly insufficient to establish written description
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`support. See Opp. at p. 2. Petitioners mischaracterize Valencell’s listing of
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`specification support for each individual claim limitation by analogizing the instant
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`matter to Respironics and Google, in which the patent owners merely provided a
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`single list of string citations associated to an substitute claim in general, without
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`providing any cites specifying where support for each and every individual
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`limitation of the substitute claim could be found. See Respironics, Inc. v. Zoll Med.
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`10
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`Corp., IPR2013-00322, Final Written Decision, Paper 46, (P.T.A.B September 17,
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`2014) (concluding that patent owner’s extensive modification— adding hundreds of
`
`words to the amended claim, more than tripling its length of a claim—required a
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`more detailed showing with respect to the individual claim limitations); See Google
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`Inc. v. B.E. Tech. L.L.C., IPR2014-00038, Final Written Decision, Paper 36, at 27
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`(P.T.A.B. March 31, 2015) (concluding the patent owner had not met its burden as
`
`the Board was unable to readily discern where support for specific limitations could
`
`be found from a single list of string citations associated to an amended claim in
`
`general). Petitioners’ reliance on Respironics and Google is unavailing.
`
`In stark contrast to Respironics and Google, Valencell did not seek to make
`
`extensive modifications nor did Valencell simply provide a single list of string
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`citations associated to an substitute claim in general. Quite to the contrary,
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`Valencell’s listing of specification support specified exactly where each and every
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`individual limitation of each substitute claim is found within the original
`
`specifications. See Motion at pp. 4 - 7. Thus Respironics and Google are inapposite
`
`and Petitioners’ argument that Valencell failed to establish written description
`
`support for its substitute claims is without merit.
`
`THE PATENT OWNER HAS DEMONSTRATED PROPER
`V.
`INSTITUTED GROUNDS
`
`Petitioners argue that Vallencell’s Motion to Amend should be denied because
`
`it “does not respond to a ground of unpatentability involved in the trial.” Pet.’s Opp
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`11
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`at p. 7 (citing 37 C.F.R. § 42.121(a)(2)). However, 37 C.F.R. § 42.121(a)(2)
`
`explicitly provides “a motion to amend may be denied where the amendment does
`
`not respond to a ground of unpatentability involved in the trial.” The Patent Trial
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`and Appeal Board in Idle Free clarified this requirement stating, “[a] proposed
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`substitute claim is not responsive to an alleged ground of unpatentability of a
`
`challenged claim if it does not either include or narrow each feature of the challenged
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`claim being replaced.” Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027,
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`Final Written Decision, Paper 26 (P.T.A.B. June 11, 2013). As explained in the
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`Motion to Amend, the proposed amendments set forth in substitute claim 22 serves
`
`to narrow original claim 14. Likewise, the proposed amendment set forth in
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`substitute claim 26 narrows its scope beyond its dependence from substitute claim
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`22. See Motion at pgs. 1 - 4. Accordingly, Valencell’s substitute claims are
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`responsive to a ground of unpatentability because the substitute claims narrow the
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`challenged claims being replaced.
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`VI. CONCLUSION
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`
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` In light of the foregoing, Valencell’s motion to amend should be granted.
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`Petitioners have failed to demonstrate that the references identified by Petitioners
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`disclose the limitations of the substitute claims and therefore the references
`
`identified by Petitioners do not render the Substitute Claims 22-29 obvious.
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`
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`12
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`Date: December 22, 2017
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`
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`Respectfully submitted,
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`Case IPR2017-00321
`U.S. Patent No. 8,923,941
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`
`
`/s/ Sanford E. Warren, Jr.
`Sanford E. Warren, Jr.
`Reg. No. 33,219
`Warren Rhoades LLP
`1212 Corporate Drive, Suite 250
`Irving, Texas 75038
`Email: swarren@wriplaw.com
`Telephone: 972-550-2955
`
`R. Scott Rhoades
`Reg. No. 44,300
`Warren Rhoades LLP
`1212 Corporate Drive, Suite 250
`Irving, Texas 75038
`Email: srhoades@wriplaw.com
`Telephone: 972-550-2997
`
`Attorneys for Patent Owner
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`CERTIFICATE OF SERVICE
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`I certify
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`that
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`the
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`foregoing REPLY TO PATENT OWNERS
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`CONDITIONAL MOTION TO AMEND UNDER 37 C.F.R. § 42.121 was
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`served on the Petitioners by electronic mail on December 22, 2017:
`
`Michael D. Specht, Reg. No. 54,463 (mspecht-PTAB@skgf.com)
`Michelle K. Holoubek, Reg. No. 54,179 (holoubek-PTAB@skgf.com)
`Jason A. Fitzsimmons, Reg. No. 65,367 (jfitzsimmons-PTAB@skgf.com)
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C., (PTAB@skgf.com)
`1100 New York Avenue, N.W.,
`Washington, D.C., 20005
`
`Harper Batts (harper.batts@bakerbotts.com)
`Jeremy Taylor (jeremy.taylor@bakerbotts.com)
`(dlfitbitvalencell@bakerbotts.com)
`BAKER BOTTS L.L.P.
`1001 Page Mill Road, Bldg. One, Suite 200
`Palo Alto, CA 94304
`
`
`
`/s/ Sanford E. Warren, Jr.
`Sanford E. Warren, Jr.
`Reg. No. 33,219
`R. Scott Rhoades
`Reg. No. 44,300
`Warren Rhoades LLP
`1212 Corporate Drive, Suite 250
`Irving, Texas 75038
`Email: swarren@wriplaw.com
`Telephone: 972-550-2955
`
`
`
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`14
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`