throbber
Filed on behalf of Valencell, Inc.
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`Jonathan H. Rastegar (jrastegar@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`
`
`Case IPR2017-01553
`U.S. Patent No. 8,989,830
`
`
`PATENT OWNER PRELIMINARY RESPONSE PURSUANT TO
`35 U.S.C. § 313 and 37 C.F.R. § 42.107
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`

`

`IPR2017-01553
`Patent 8,989,830
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`Table of Contents
`INTRODUCTION ............................................................................................. 5
`
`I.
`
`A. Grounds in the Petition .................................................................................. 7
`
`B. Background.................................................................................................... 7
`
`C. Overview of the Technology ......................................................................... 9
`
`D. Legal Standards for Instituting an Inter Partes Review .............................12
`
`1.
`
`Inter Partes Review .................................................................................12
`
`2. Obviousness .............................................................................................13
`
`II. OVERVIEW OF THE ’830 PATENT .............................................................15
`
`III. SUMMARY OF REFERENCES ASSERTED ..............................................20
`
`A. Goodman .....................................................................................................20
`
`B. Asada ...........................................................................................................22
`
`C. Delonzor ......................................................................................................23
`
`IV. CLAIM CONSTRUCTION ...........................................................................24
`
`A. Petitioner’s Proposed Construction of “Cladding Material” (Claims 1 and
`
`11) Is Unreasonably Broad. .................................................................................25
`
`B. Petitioner Fails to Provide a Construction for “Light-Guiding Interface”
`
`(Claims 1 and 11). ................................................................................................27
`
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`C. Construction of the Term “Near” (Claims 1 and 11) Is Not Necessary at This
`
`Time. ....................................................................................................................29
`
`V. PETITIONER FAILS TO SHOW A REASONABLE LIKELIHOOD OF
`
`SUCCESS ON THE PETITIONED GROUNDS. ...................................................29
`
`A. Ground 1: Even if Modified, the Light Delivered from the Emitter in
`
`Goodman Is Not Substantially Parallel to the Light Delivered to the Detector. .29
`
`B. The Petition Fails to Comply with 35 U.S.C. § 312(a)(3) and 37 C.F.R. §§
`
`42.22(a)(2) and 42.104(b)(4). ..............................................................................34
`
`1. Petitioner Misapplies the Term “Cladding Material.” .............................36
`
`2. Petitioner’s Expert Merely Parrots Attorney Argument from the Petition
`
`and Places into the Declaration. .......................................................................36
`
`3. The Inconsistencies Between the Assertions of the Petition and the Prior
`
`Art Demonstrate that Petitioner Failed to Provide Sufficient Notice to the Patent
`
`Owner of the Grounds for Unpatentability. .....................................................39
`
`C. Ground 3: Persons of Ordinary Skill Would Not Have Been Motivated to
`
`Combine Goodman, Hannula, and Asada under Ground 3. ................................40
`
`D. Ground 4: Persons of Ordinary Skill Would Not Have Been Motivated to
`
`Combine Goodman and Asada under Ground 4. .................................................43
`
`VI. CONCLUSION ..............................................................................................48
`
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`IPR2017-01553
`Patent 8,989,830
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`TABLE OF EXHIBITS
`
`Exhibit No. Description
`
`2001
`
`S. LeBoeuf, et al., Earbud-Based Sensor for the Assessment of
`
`Energy Expenditure, HR, and VO2max, OFFICIAL J. AM. C.
`
`SPORTS M., 2014, 1046–1052
`
`2002
`
`Biometrics Lab: Performance of Leading Optical Heart Rate
`
`2003
`
`2004
`
`Monitors During Interval Exercise Conditions
`
`Valencell website (http://valencell.com/customers/)
`
`CTA - It Is Innovation (i3) Magazine 2016 Innovation-
`
`Entrepreneur Awards
`
`
`
`
`
`
`
`
`
`
`
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`IPR2017-01553
`Patent 8,989,830
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`I.
`
`INTRODUCTION
`
`Patent Owner Valencell, Inc. (“Patent Owner” or “Valencell”) respectfully
`
`submits this Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R.
`
`§ 42.107, responding to the Petition for Inter Partes Review (the “Petition”) filed by
`
`Fitbit, Inc. (“Petitioner” or “Fitbit”) regarding the claims of U.S. Patent No.
`
`8,989,830 (the “’830 patent”) to LeBoeuf et. al, provided as Petitioner’s Exhibit
`
`1001.
`
`The Board has discretion to “deny some or all grounds for unpatentability for
`
`some or all of the challenged claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a).
`
`Petitioner bears the burden of demonstrating that there is a reasonable likelihood that
`
`at least one of the claims challenged in the petition is unpatentable. 37 C.F.R. §
`
`42.108(c). Although Patent Owner is not required to file a Preliminary Response to
`
`the Petition (37 C.F.R. § 42.107(a)), Valencell takes this opportunity to point out
`
`substantive and procedural reasons for denying institution of trial. Valencell submits
`
`this Preliminary Response subject and without prejudice to its opposition to
`
`Petitioner’s Motion for Joinder (Paper 7).
`
`This Preliminary Response is timely under 35 U.S.C. § 313 and 37 C.F.R. §§
`
`1.7, 42.107(b), as it is filed on or before the next business day following three months
`
`from the June 16, 2017 mailing date of the Notice of Filing Date Accorded to Petition
`
`and Time for Filing Patent Owner Preliminary Response. Paper 4 at 1. For purposes
`
`
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`of this Preliminary Response, Patent Owner has limited its identification of
`
`deficiencies in the Petition and does not intend to waive any arguments not addressed
`
`in this Preliminary Response.
`
`The Board should reject the Petition because it fails to sufficiently identify
`
`and explain its precise invalidity theories and supporting evidence, in violation of
`
`the particularity required by governing statutes and regulations. Among other things,
`
`the Petition fails to demonstrate that its alleged obviousness combinations disclose
`
`each element of the challenged claims. As discussed in detail below, Petitioner fails
`
`to show that Goodman discloses limitations in the independent claims 1 and 11,
`
`including a “light transmissive material is configured to deliver light from the at least
`
`one optical emitter to the body of the subject along a first direction and to collect
`
`light from the body of the subject and deliver the collected light in a second direction
`
`to the least one optical detector, wherein the first and second directions are
`
`substantially parallel.” ’830 patent, 30:47-55 (emphasis added). Moreover, the
`
`requirement that the first and second directions be substantially parallel is not trivial.
`
`Rather, this requirement helps minimize the signal noise by reducing the amount of
`
`bad light (i.e., light that is not associated with the subject’s heart rate) that the optical
`
`detector receives. The “substantially parallel” limitation is essential to all
`
`challenged claims, and without it, Petitioner cannot satisfy its burden for any of
`
`Grounds 1-5.
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`A. Grounds in the Petition
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`The Petition challenges the patentability of claims 1-20 of the ’830 patent on
`
`five grounds. Grounds 1-5 all rely on the same reference, Goodman, as allegedly
`
`disclosing or rendering obvious all limitations of claims 1 and 11 under 35 U.S.C. §
`
`103. Thus, if the Board finds that Goodman does not disclose or render obvious all
`
`limitations of claims 1 and 11, then Grounds 1-5 must fail. Petitioner’s grounds for
`
`unpatentability are summarized in the following table:
`
`Ground References
`
`1
`
`2
`
`3
`
`4
`
`5
`
`Goodman
`
`Goodman in view of Hicks
`Goodman in view of Hannula and
`in further view of Asada
`
`Goodman in view of Asada
`
`Goodman in view of Delonzor
`
`Basis Dependent
`Claims
`2-4, and
`12-14,
`5, 15
`
`103
`
`103
`
`103
`
`6, 16
`
`103
`
`103
`
`8, 9, 18,
`and 19
`10, 20
`
`Independent
`Claims
`
`1, 11
`
`
`
`
`
`
`
`
`
`As can be readily seen above, Petitioner relies on a separate secondary reference for
`
`nearly every dependent claim in its challenge of the ’830 patent. This is a strong
`
`indication that the Petition is wrought with improper hindsight bias.
`
`B.
`
`Background
`
`Valencell was founded in 2006 by three Ph.D. electrical engineers with more
`
`than 50 years of combined experience in research and development. Since its
`
`founding, Valencell has steadily grown to roughly 30 employees and has become a
`
`leading innovator in biometric wearables. Valencell’s technology is used to power
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`the most accurate wearable biometric heart rate sensors on the market. For example,
`
`when benchmarked against a chest strap, Valencell’s sensors were far more accurate
`
`than the leading industry competitors’ products:
`
`
`
`See Ex. 2002. Valencell-powered products have received industry praise and won
`
`numerous awards from CES, Red Dot, Stuff TV, and more. See e.g., Ex. 2004 at 2-
`
`3. Valencell’s ground-breaking technology has served and continues to serve as an
`
`industry benchmark and has been independently validated by the Center for Living
`
`of Duke University, North Carolina State University, the Human Performance
`
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`Laboratory, and a fellow of the American College of Sports Medicine. See Ex. 2001.
`
`As a result of its unparalleled accuracy, Valencell powers more biometrics
`
`wearables than any other company in the world. Valencell’s innovations have
`
`resulted in industry recognition, numerous awards, and dozens of U.S. patents,
`
`including the ’830 patent, the patent at issue in this proceeding. Valencell also
`
`licenses its patent portfolio to consumer electronics manufacturers, mobile device
`
`and accessory makers, sports and fitness brands, gaming companies, and military
`
`suppliers for integration into their products. Numerous consumer electronics
`
`manufacturers have recognized the need for this patented technology and partnered
`
`with Valencell. Such partners include major technology companies like: Samsung,
`
`LG, Sony, Bose, and Intel. See, e.g., Ex. 2003.
`
`C. Overview of the Technology
`
`The objective of the ’830 patent is to provide an improved heart rate monitor
`
`that delivers more accurate results. While heart rate monitors, such as PPG
`
`(photoplethysmography) sensors, existed prior to the invention of the ’830 patent,
`
`they generally struggled with providing accurate results when the subject was
`
`moving. In short, such heart rate monitors could not accurately extract the subject’s
`
`heart rate signal from the surrounding noise. The following visual showing the
`
`output of the optical detector in a PPG sensor illustrates how much noise is
`
`associated with an unfiltered signal:
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`As can be seen, noise permeates the sensor output such that the heart rate is
`
`completely concealed. But the heart rate signal can still be extracted through proper
`
`filtering techniques. To that end, the following is an image of the processed signal
`
`after filtering out the noise:
`
`
`
`Put simply, the less noise in the signal, the more accurate the heart rate reading.
`
`But noise removal is not limited to the digital layer. Rather, as Valencell’s
`
`engineers discovered and as disclosed and claimed in the ’830 patent, the physical
`
`configuration and attributes of the sensor can also reduce noise. Moreover, reducing
`
`noise at the physical layer (as opposed to the digital layer) is highly desirable in
`
`wearable devices as it does not require battery power and reduces the need for further
`
`digital processing.
`
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`A significant issue with wearable heart rate monitors is managing the signal-
`
`to-noise ratio. Prior to Valencell’s invention, the industry focused on designs
`
`measuring as much light as possible during PPG. The reasoning was simple: the
`
`more light you collect, the more signal you collect. But while this observation was
`
`true, the reasoning was ultimately flawed because it failed to appreciate the impact
`
`of motion. Valencell recognized this flawed reasoning, realizing that if you deliver
`
`light to the wrong places (i.e., places that have a lot of motion noise) and if you
`
`collect light from the wrong places (i.e., places that have a lot of motion noise), then
`
`the signal-to-noise ratio (S/N) becomes high. In short, the increased motion noise
`
`offset any gains from increased light collection.
`
`One technique the ’830 patent uses for improving the signal-to-noise ratio at
`
`the physical layer is to configure cladding material and light-transmissive material
`
`relative to the optical emitter and optical detector such that light is delivered to the
`
`body and delivered back to the detector in directions that are substantially parallel.
`
`This approach helps minimize the noise by focusing collection on light that is more
`
`likely to be of use in the measurement. This sets the ’830 patent apart from prior art
`
`solutions like Goodman, which did not contemplate configurations that maximize
`
`the reception of useful light. The ’830 patent and its claims are directed to
`
`configuring heart rate sensors that use cladding material and substantially parallel
`
`optical emission and detection to generate an accurate heart rate measurement.
`
`
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`D. Legal Standards for Instituting an Inter Partes Review
`
`1.
`
`Inter Partes Review
`
`Institution of an inter partes review is improper unless “the information
`
`presented in the petition . . . shows that there is a reasonable likelihood that the
`
`petitioner would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” 35 U.S.C. § 314(a). The Petitioner has “the burden of proving a proposition
`
`of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). If the
`
`Petition does not demonstrate a likelihood of success, the Board must deny
`
`institution. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380-81 (Fed. Cir.
`
`2016) (“[T]he Board must base its decision on arguments that were advanced by a
`
`party, and to which the opposing party was given a chance to respond.”). Further,
`
`the “petition must specify where each element of the claim is found in the prior art
`
`patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4) (emphasis
`
`added). If Petitioner fails to specify where each element is purportedly found, the
`
`Board should decline the Petition.
`
`Under the IPR statute 35 U.S.C. § 312(a)(3), any petition for inter partes
`
`review must “identif[y] . . . with particularity . . . the grounds on which the challenge
`
`to each claim is based.” Petitioner has the burden of proof to establish that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). The petition must therefore
`
`include a full statement of the reasons for the relief requested, including a detailed
`
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`explanation of the significance of the evidence. Id. § 42.22(a). The petition must
`
`include a statement of the relevance of the evidence to the challenge raised. Id. §
`
`104(b)(5). “The Board may exclude or give no weight to the evidence where a party
`
`has failed to state its relevance or to identify specific portions of the evidence that
`
`support the challenge.” Id. “Thus, we will address only the basis, rationale, and
`
`reasoning put forth by the Petitioner in the petition, and resolve all vagueness and
`
`ambiguity in Petitioner’s arguments against the Petitioner.” Liberty Mutual Ins.
`
`Co. v. Progressive Casualty Ins. Co., CBM-2012-00003, Paper 8 at 10 (PTAB Oct.
`
`25, 2012) (emphasis added). It is Petitioner’s responsibility “to explain specific
`
`evidence that support its arguments, not the Board’s responsibility to search the
`
`record and piece together what may support Petitioner’s arguments.” Dominion
`
`Dealer Solutions, LLC v. Autoalert, Inc., IPR2013-00225, Paper 15 at 4 (PTAB Oct.
`
`10, 2013).
`
`2. Obviousness
`
`Grounds 1-5 are based on obviousness allegations. Under 35 U.S.C. § 103(a)
`
`a patent may only be held obvious when “the differences between the subject matter
`
`sought to be patented and the prior art are such that the subject matter as a whole
`
`would have been obvious at the time the invention was made to a person having
`
`ordinary skill in the art to which said subject matter pertains.” In Graham v. John
`
`Deere Co. of Kansas City, 383 U.S. 1 (1966), the Court set out a specific framework
`
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`for applying the statutory language of § 103:
`
`Under § 103, the scope and content of the prior art are to be determined;
`
`differences between the prior art and the claims at issue are to be
`
`ascertained; and the level of ordinary skill in the pertinent art resolved.
`
`Against this background, the obviousness or nonobviousness of the
`
`subject matter is determined.
`
`Id. at 17–18 (emphasis added). “While the sequence of these questions might be
`
`reordered in any particular case, the factors continue to define the inquiry that
`
`controls.” KSR Int’l. v. Teleflex Inc., 550 U.S. 398, 407 (2007).
`
`The Supreme Court has held that whether a patent claiming the combination
`
`of prior art elements would have been obvious is determined by whether the
`
`improvement is more than the predictable use of prior art elements according to their
`
`established functions. Id. at 417. To reach this conclusion, however, requires more
`
`than a mere showing that the prior art includes separate references covering each
`
`separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex,
`
`Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the
`
`additional showing that a person of ordinary skill at the time of the invention would
`
`have selected and combined those prior art elements in the normal course of research
`
`and development to yield the claimed invention. Id; KSR, 550 U.S. at 418.
`
`As discussed in detail below, Petitioner fails to show that Goodman discloses
`
`limitations in the independent claims 1 and 11, including a “light transmissive
`
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`material is configured to deliver light from the at least one optical emitter to the body
`
`of the subject along a first direction and to collect light from the body of the subject
`
`and deliver the collected light in a second direction to the least one optical detector,
`
`wherein the first and second directions are substantially parallel.” ’830 patent,
`
`30:47-55 (emphasis added). Advantageously, the ’830 patent provides improved
`
`signal-to-noise ratio and reduced noise at the physical layer by configuring cladding
`
`material and light-transmissive material relative to the optical emitter and optical
`
`detector such that they emit and receive light in directions that are substantially
`
`parallel. This sets the ’830 patent apart from prior art solutions like Goodman, which
`
`did not contemplate configurations that maximize the reception of useful light.
`
`II. OVERVIEW OF THE ’830 PATENT
`
`The ’830 patent discloses that “improved ways of collecting, storing and
`
`analyzing physiological information are needed.” ’830 patent, 1:42-43. To address
`
`this need, the ’830 patent discloses a “monitoring device configured to be attached
`
`to the body of a subject.” Id. at Abstract. The ’830 patent discloses various
`
`embodiments of such a monitoring device. One such embodiment is shown in
`
`Figures 22A and 22B:
`
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`Id., Figs. 22A and 22B (showing monitoring device attached to a finger). As shown
`
`in Figures 22A and 22B, the monitoring device “may be configured to be attached
`
`to earlobes, fingers, toes, other digits, etc.” ’830 patent, 27:62-63.
`
`One of the techniques discussed in the ’830 patent pertains to the orientation
`
`of the optical emitter and the optical detector. For example, the ’830 patent explains
`
`that the “optical emitter 24 and optical detector 26 are each oriented such that their
`
`respective primary emitting and detecting planes P1, P2 are each facing a respective
`
`direction A3, A2 that is substantially parallel with direction A1.” Id. at 14:52-59.
`
`Figure 3 illustrates such a configuration:
`
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`Id., Fig. 3 (coloring added to highlight relevant features, with cladding 21 in red and
`
`light guiding region 19 in yellow).
`
`The ’830 patent further discloses a “layer of cladding material [that] is applied
`
`to (or near) the outer surface 74a of the inner body portion 74 and a layer of
`
`cladding material 21 is applied to (or near) the inner surface 74b of the inner body
`
`portion 74, as illustrated, to define [the] light-guiding region 19.” ’830 patent,
`
`28:30-34 (emphasis added). The cladding material is annotated in the following
`
`image:
`
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`
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`Id. at Fig. 3 (highlighting and annotations added showing the light-guiding region in
`
`yellow and cladding material in red). The inner body portion 74 “serves as a light
`
`guide that delivers light from the optical emitter 24 to the finger F of a subject at one
`
`or more predetermined locations and that collects light from the finger F and delivers
`
`the collected light to the optical detectors 26, 26’.” Id., 28:35-38. Figure 22B also
`
`shows windows 74w “formed in the cladding material21 and serve as light-guiding
`
`interfaces to the finger F.” Id., 28:44-46.
`
`Importantly, the cladding material surrounds the optical emitter and optical
`
`detector, such that light is emitted and delivered to the body through the light-
`
`guiding region 19. And light returns and is delivered to the optical detector through
`
`the light-guiding region. The cladding material, thus, “confines light within the light-
`
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`guiding region 19,” to deliver light in a direction substantially parallel to the
`
`direction it was delivered to the body. Id., 14:60-63.
`
`The elements of the above embodiments are claimed in claims 1 and 11 of the
`
`’830 patent. Claim 1, which is illustrative of the other independent claim 11, recites
`
`the following elements, (labelled using Petitioner’s annotations):
`
`1[.P]. A monitoring device configured to be attached to the body
`
`of a subject, comprising:
`
`[1.1] an outer layer and an inner layer secured together,
`
`[1.2] the inner layer comprising light transmissive material, and
`
`having inner and outer surfaces;
`
`[1.3] a base secured to at least one of the outer and inner layers
`
`and comprising at least one optical emitter and at least one
`
`optical detector;
`
`[1.4] a layer of cladding material near the outer surface of the
`
`inner layer; and
`
`[1.5] at least one window formed in the layer of cladding material
`
`that serves as a light-guiding interface to the body of the
`
`subject,
`
`[1.6] wherein the light transmissive material is in optical
`
`communication with the at least one optical emitter and
`
`the at least one optical detector, wherein the light
`
`transmissive material is configured to deliver light from
`
`the at least one optical emitter to the body of the subject
`
`along a first direction and to collect light from the body of
`
`the subject and deliver the collected light in a second
`
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`19
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`direction to the at least one optical detector, wherein the
`
`first and second directions are substantially parallel.
`
`’830 patent, 30:35-55.
`
`The Petition attempts to characterize the ’830 patent as “nothing more than
`
`what was already known in the prior art.” Petition, 2. But this superficial
`
`characterization fails to consider all elements of the claims. As discussed above and
`
`further analyzed below, Petitioner fails to recognize that Goodman is not configured
`
`with cladding material and light-transmissive material positioned relative to the
`
`optical emitter and optical detector such that light is delivered to the body and
`
`delivered back to the detector in directions that are substantially parallel which
`
`advantageously minimizes the noise in the signal by focusing collection on light
`
`that is more likely to be of use in the measurement.
`
`III. SUMMARY OF REFERENCES ASSERTED
`
`A. Goodman
`
`Goodman pertains to a “sensor for trans-illumination of a blood perfused
`
`portion of flesh to measure light extinction during transillumination.” Goodman at
`
`Abstract. Unlike the ’830 patent, however, Goodman does not disclose a cladding
`
`material having windows that operate with a transmissive material to confine light
`
`within a region, such that the direction that light is delivered to the photodiode is
`
`substantially parallel to the direction at which the light was delivered to the body by
`
`
`
`20
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`IPR2017-01553
`Patent 8,989,830
`
`an emitter. Instead, Goodman merely describes a strip 37, which is a layer of the
`
`sensor to which photo-active elements are attached.
`
`
`
`Goodman, Fig. 2C.
`
`The strip 37 “is apertured at respective apertures 40, 41,” which “allow light
`
`to pass.” Goodman, 9:38. Importantly, Goodman adds that the apertures “conform
`
`the thickness of the photo-active substrates to the overall thickness of the flexible
`
`adhesive strip,” so that the substrates “are ideally indistinguishable in the tactile
`
`sense from the flexible adhesive strip itself. Id., 9:39-45 (emphasis added). Thus,
`
`Goodman does not disclose that the apertures serve as a light-guide or that the strip
`
`37 confines light for delivery to body and back to a photosensor. Most importantly,
`
`there is no explanation or illustration regarding the direction of light delivered to the
`
`body or received or the relative angle between the two, when the sensor device is in
`
`use. And there is no basis for Petitioner to argue that the relative angle would,
`
`necessarily, have been substantially parallel.
`
`
`
`21
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`

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`IPR2017-01553
`Patent 8,989,830
`
`B. Asada
`
`Asada pertains to a wearable biosensor (“WBS”) as “a ring sensor for
`
`ambulatory, telemetric, [and] continuous health monitoring.” Asada, 28. The
`
`disclosed WBS “combines miniaturized data acquisition features with advanced
`
`photophlethysmographic (PPG) techniques to acquire data related to the patient’s
`
`cardiovascular state using a method that is far superior to existing fingertip PPG
`
`sensors.” Id., 28. Asada does not disclose a processing function for light detected by
`
`a second optical detector, as a motion noise reference for attenuating motion noise
`
`that would have been utilized in Goodman. Instead, Asada describes a configuration
`
`for a “locally pressurized sensor band” shown in Figure 6, below.
`
`
`
`Id., Fig. 6.
`
`“The dual photodetector design shown in Figure 6 provides both main signal
`
`and noise reference that are distinct [which] allows us to implement noise-canceling
`
`filters effectively despite complex motion artifact.” Asada, 34. In the prototype,
`
`
`
`22
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`

`IPR2017-01553
`Patent 8,989,830
`
`“[b]oth transmittal (PD-A) and reflective (PD-B) were mounted on the sensor band.”
`
`Id., 36. Asada does not disclose that this configuration utilizing a reflective
`
`photodiode (PD-B) would have been used in a sensor where a transmittal photodiode
`
`is adhered directly to the skin (such as in Goodman).
`
`C. Delonzor
`
`Delonzor pertains to a pulse oximeter sensor “having an emitter(s) and a
`
`detector, with a layer having a first portion over the emitter and a second portion of
`
`layer over the detector.” Delonzor, Abstract. Delonzor does not teach a light
`
`blocking material that is positioned between an optical emitter and an optical
`
`detector such that the emitter and detector are not in direct optical communication
`
`with each other. Instead, Delonzor includes a “shunt barrier…between the first and
`
`second portions of the overlying layer to substantially block transmission of
`
`radiation of the wavelengths emitted by the emitter(s).” Id., 3:9-12.
`
`
`
`23
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`

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`IPR2017-01553
`Patent 8,989,830
`
`Id., Fig. 9 (showing layer 94 that “prevent[s] the shunting of light if the material is
`
`made of substantially opaque material,” 6:32-41). But Delonzor also indicates that
`
`“layers placed over the emitter and detector [including] a clear layer which isolates
`
`them from the patient, but allows light to transmit through [which] provide a wave
`
`guide effect to shunt light around the finger to the detector.” Thus, Delonzor does
`
`not disclose sensors that utilize layering over the emitter and detector (such as in
`
`Goodman) would still be in direct optical communication even with the “shunt
`
`barrier” of Delonzor installed.
`
`IV. CLAIM CONSTRUCTION
`
`Because the ’830 Patent is an unexpired patent, the Board gives the claim
`
`terms their broadest reasonable interpretation (“BRI”) in the instant proceeding. See,
`
`37 C.F.R. § 42.100(b). Although claim terms are given their BRI, claims are not
`
`interpreted in a vacuum but are part of and read in light of the specification. Slimfold
`
`Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987). The terms
`
`are also given their ordinary and customary meaning, as would be understood by one
`
`of ordinary skill in the art in the context of the specification. In re Translogic Tech.,
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The construction that stays true to the
`
`claim language and most naturally aligns with the inventor’s description is likely the
`
`correct interpretation. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`
`1250 (Fed. Cir. 1998).
`
`
`
`24
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`

`IPR2017-01553
`Patent 8,989,830
`
`A claim term is presumed to be given its ordinary and customary meaning
`
`absent the patent clearly setting forth a different definition of the term in the
`
`specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Patent Owner
`
`proposes the construction of four claim terms:
`
`A.
`
`Petitioner’s Proposed Construction of “Cladding Material”
`(Claims 1 and 11) Is Unreasonably Broad.
`
`The broadest reasonable interpretation of the term “cladding material” is “a
`
`material that confines light within a region.” The specification states that “[t]he light
`
`guiding region 19 of the light guide 18 in the illustrated embodiment of FIG. 3 is
`
`defined by cladding material 21 that helps confine light within the light guiding
`
`region 19.” ’830 patent, 14:62-64 (emphasis added); see also id., 29:46-50 (“A layer
`
`of cladding material 21 is applied to (or near) the outer surface 74a of the inner body
`
`portion 74 and a layer of cladding material 21 is applied to (or near) the inner surface
`
`74b of the inner body portion 74, as illustrated, to define a light-guiding region 19.”);
`
`see also id. at 16:16-25; 16:66-17:12; 18:46-48; 18:60-19:4; 28:30-43. The ’830
`
`patent also includes numerous illustrations that demonstrate that the “cladding
`
`material” is understood to confine light within a region. For example, in Figure 3,
`
`shown below, the cladding material 21 defines the region 19 that confines the light
`
`111 and 110:
`
`
`
`25
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`IPR2017-01553
`Patent 8,989,830
`
`
`
`’830 patent, Fig. 3 (coloring added to highlight relevant features, with cladding 21
`
`in red and light guiding region 19 in yellow). Similarly, Figure 22B illustrates that
`
`cladding material 21 confines the light that defines a light-guiding region 19
`
`(highlighted yellow).
`
`
`
`
`
`26
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`

`

`IPR2017-01553
`Patent 8,989,830
`
`’830 patent, Fig. 22B (highlighted).
`
`Nevertheless, Petitioner proposes that the “cladding material” be construed as
`
`“a material that blocks or reflects at least some light.” While it is true that cladding
`
`material may block or reflect light,

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