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 IPR2017-01555
`U.S. Patent No. 8,923,941
`
`
`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
`
`
`
`

`

`
`Case IPR2017-01555
`U.S. Patent No. 8,923,941
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`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND OF PATENT OWNER AND TECHNOLOGY ................. 5
`
`III. OVERVIEW OF THE ’941 PATENT ............................................................ 6
`
`IV. OVERVIEW OF THE PETITION .................................................................. 9
`
`A. United States Patent Application Publication No. 2008/0200774 A1 to
`
`Luo .......................................................................................................10
`
`B.
`
`United States Patent Application Publication No. 2008/0133699 A1 to
`
`Craw ....................................................................................................11
`
`C.
`
`United States Patent No. 6,513,532 B2 to Mault ................................12
`
`D. United States Patent Application Publication No. 2003/0181798 A1 to
`
`Al-Ali ...................................................................................................13
`
`V.
`
`CLAIM CONSTRUCTION ..........................................................................13
`
`VI. LEGAL STANDARDS .................................................................................14
`
`A.
`
`B.
`
`Standard for Instituting Petition ..........................................................14
`
`Obviousness .........................................................................................16
`
`VII. PETITIONER FAILS TO ESTABLISH A REASONABLE LIKELIHOOD
`
`OF PROVING THE UNPATENTABILITY OF ANY CHALLENGED
`
`CLAIM...........................................................................................................20
`
`A.
`
`Petitioner Fails to Demonstrate that Any Reference Discloses a PPG
`
`Sensor that Collects Physiological Information from Which Heart Rate
`
`and Respiration Rate Can Be Extracted. .............................................23
`
`B.
`
`Petitioner Fails to Articulate Reasoning Supported by the Evidence for
`
`Multiple Claim Limitations. ................................................................27
`
`1.
`
`Ground 1: Petitioner fails to demonstrate that Luo discloses
`
`element [1.3] of claim 1. ...........................................................27
`
`ii
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`U.S. Patent No. 8,923,941
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`2.
`
`Ground 1: Petitioner fails to demonstrate that Luo discloses
`
`element [1.4] of claim 1. ...........................................................28
`
`3.
`
`Ground 1: Petitioner fails to demonstrate that Luo discloses
`
`elements [1.4]-[1.5] of claim 1. ................................................30
`
`4.
`
`Ground 6: Petitioner fails to demonstrate that Mault in view of
`
`Al-Ali discloses element [1.4] of claim 1. ................................30
`
`5.
`
`Ground 6: Petitioner fails to demonstrate that Mault in view of
`
`Al-Ali discloses element [1.4]-[1.5] .........................................33
`
`6.
`
`Ground 9: Petitioner fails to demonstrate that Han discloses
`
`reducing footstep noise artifacts from the pre-conditioned PPG
`
`signal. ........................................................................................35
`
`C.
`
`Petitioner Fails to Articulate Reasoning Supported by the Evidence that
`
`there are Sufficient Rationales to Combine the References. ...............35
`
`1.
`
`Ground 1: Insufficient rationale to combine Luo and Craw for
`
`claim 1. ......................................................................................36
`
`2.
`
`Ground 1: No rationale to combine Luo and Craw for dependent
`
`claims 2, 9, 11, and 12. .............................................................38
`
`3.
`
`Ground 1: Insufficient rationale to combine Luo with Craw for
`
`claims 3 and 13. ........................................................................39
`
`4.
`
`Ground 5: Insufficient rationale to combine Luo, Craw, and
`
`Aceti. .........................................................................................40
`
`5.
`
`Ground 6: Insufficient rationale to combine Mault and Al-Ali.
`
` ...................................................................................................41
`
`6.
`
`Ground 6: No motivation to combine Mault and Al-Ali for claims
`
`9, 11, and 12. .............................................................................42
`
`iii
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`U.S. Patent No. 8,923,941
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`7.
`
`Ground 6: Insufficient motivation to combine Mault and Al-Ali
`
`for claim 2. ................................................................................42
`
`8.
`
`Ground 9: Insufficient rationale to combine Mault, Al-Ali, and
`
`Han ............................................................................................43
`
`9.
`
`Ground 10: Insufficient rationale to combine Mault, Al-Ali, and
`
`Numaga. ....................................................................................44
`
`10. Ground 11: Insufficient rationale to combine Mault, Al-Ali, and
`
`Ali. .............................................................................................45
`
`D.
`
`Petitioner Fails to Adequately Address the Second Graham Factor for
`
`Each Ground. .......................................................................................46
`
`E.
`
`Petitioner Proposes Redundant Grounds for Challenging Each Claim.
`
` .............................................................................................................50
`
`VIII. CONCLUSION ..............................................................................................52
`
`
`
`
`
`
`
`
`iv
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`Case IPR2017-01555
`U.S. Patent No. 8,923,941
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`Exhibit No. Description
`
`TABLE OF EXHIBITS
`
`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
`
`Monitors During Interval Exercise Conditions
`
`Valencell website (http://valencell.com/customers/)
`
`CTA - It Is Innovation (i3) Magazine 2016 Innovation-
`
`Entrepreneur Awards
`
`2003
`
`2004
`
`
`
`
`
`
`
`v
`
`

`

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`Case IPR2017-01555
`U.S. Patent No. 8,923,941
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`
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`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.017, Patent Owner Valencell,
`
`Inc. (“Valencell” or “Patent Owner”) hereby files this preliminary response
`
`(“Preliminary Response”) to the Petition (Paper 2) (the “Petition”) for Inter Partes
`
`Review of U.S. Patent No. 8,923,941 (Ex. 1001) (the “’941 Patent”) in IPR2017-
`
`001555 filed by Fitbit, Inc. (“Fitbit” or “Petitioner”). The Board should deny
`
`institution because Petitioner has not established 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).
`
`This Response is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107(b), as
`
`it is filed within three months of 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). For purposes 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. Valencell submits this
`
`Preliminary Response subject and without prejudice to its opposition to Petitioner’s
`
`Motion for Joinder (Paper 7).
`
`I.
`
`INTRODUCTION
`
`The ’941 Patent is part of a family of patents directed to biometric sensor
`
`technology for wearables and hearables. Petitioner presents eleven Grounds
`
`1
`
`

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`U.S. Patent No. 8,923,941
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`challenging claims 1-13 of the ’941 Patent. The eleven grounds can be divided into
`
`two groups: those based on Luo as the primary reference (Grounds 1-5), and those
`
`based on Mault as the primary reference (Grounds 6-11). Notably, Petitioner uses
`
`Luo and Mault to challenge the same claims without identifying the differences
`
`between the primary references. Accordingly, the Mault grounds are redundant and
`
`cumulative.
`
`In order to include so many Grounds within the word limits, Petitioner skimps
`
`on substance. As is detailed below, Petitioner gives short shrift to most if not all of
`
`its assertions. Petitioner’s approach does not provide the requisite level of analysis
`
`to each Ground necessary to meet its burden of showing that there is a reasonable
`
`likelihood of prevailing on at least one claim. The Petition is rife with conclusory
`
`statements, long citations to the prior art, and citations to an expert Declaration
`
`(“Declaration”) (Ex. 1003) that lack evidentiary support. Petitioner’s failure to
`
`substantively analyze the claims violates numerous statutes and Board rules. Such
`
`conclusory analysis alone is sufficient to deny the Petition on all grounds. Petitioner
`
`has not articulated reasoning supported by evidence that the claims are rendered
`
`obvious by the proffered references. For example, Petitioner’s claims regarding
`
`motivations to combine generally lack any evidentiary basis and are sufficient reason
`
`alone to deny the Petition.
`
`2
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`Further, Petitioner’s conclusory claims do not withstand scrutiny. As detailed
`
`below, Petitioner’s references do not meet many of the limitations of the claims of
`
`the ’941 Patent. For example, Petitioner fails to show that the combinations offered
`
`in Grounds 1-11 disclose “processing … signals from the at least one PPG sensor
`
`… into a serial data output of physiological information … wherein the serial data
`
`output is configured such that a plurality of subject physiological parameters
`
`comprising subject heart rate and subject respiration rate can be extracted from
`
`the physiological information.” ’941 Patent, claim 1 (emphasis added). This
`
`limitation is present in all challenged claims. By failing to identify this element in
`
`the alleged prior art, Petitioner fails to satisfy its burden for Grounds 1-11.
`
`Moreover, Petitioner declines to provide any sort of rationale as to why a
`
`person of ordinary skill (“POSA”) in the art would make the combinations offered
`
`in Grounds 1-11. This failing also warrants denying institution as to all Grounds.
`
`Petitioner does not fully analyze each of the factors enumerated in Graham v.
`
`John Deere Co., 383 U.S. 1, 17-18 (1966), which are necessary to undertake a
`
`complete obviousness analysis. In particular, Petitioner does not meaningful address
`
`the differences between the prior art and claimed invention, leaving the Board and
`
`Patent Owner to guess. Absent this type of analysis, the Board has denied Petitions,
`
`and should do the same here. See Eizo Corp., Petitioner v. Barco N.V., No. IPR2014-
`
`3
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`U.S. Patent No. 8,923,941
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`00358, 2014 WL 3704253, at *16 (P.T.A.B. July 23, 2014) (denying petition on
`
`certain grounds: “In determining obviousness, the analysis must address the Graham
`
`factors. … Absent an analysis clearly distinguishing the limitations of claim 107
`
`from those of Greene, we are unable to determine the limitations of Kuratomi that
`
`Petitioner is relying on to disclose the disputed limitations of claim 107.”). Finally,
`
`Petitioner proposes horizontally redundant grounds in its Petition. The Board has
`
`found that, absent a meaningful analysis as to why certain Grounds are better than
`
`others, Petitions should not be instituted on such redundant grounds. See Oracle
`
`Corp. v. Clouding IP, LLC, No. IPR2013-00088, 2013 WL 5970180, at *2 (P.T.A.B.
`
`June 13, 2013).
`
`In sum, the Petition fails in numerous respects to provide the specificity
`
`necessary for institution. Instead Petitioner improperly leaves it to Patent Owner and
`
`the Board to sift through the record in an effort to discern why the claims it is making
`
`are to be taken seriously. A brief examination of Petition reveals that Petitioner
`
`offers no support for many of the blanket assertions that it makes. Petitioner cannot
`
`meet its burden with such a cursory, unsupported, and often incorrect analysis. As
`
`such, the Petition should be denied in full.
`
`4
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`Case IPR2017-01555
`U.S. Patent No. 8,923,941
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`II. BACKGROUND OF PATENT OWNER AND TECHNOLOGY
`
`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
`
`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:
`
`5
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`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
`
`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 U.S. Patent No. 8,923,941, 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.
`
`III. OVERVIEW OF THE ’941 PATENT
`
`The ’941 Patent, entitled “Method and Apparatus for Generating Data Output
`
`Containing Physiological and Motion-Related Information,” relates generally to
`
`6
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`“physiological monitoring” and apparatuses for accomplishing such monitoring. Ex.
`
`1001, 1:20-23. The ’941 Patent discloses a novel method for generating a serial data
`
`string containing both motion-based or physical activity information and
`
`physiological information. Id. at Abstract. The ’941 Patent discusses using a motion
`
`sensor to capture motion-based activity and a photoplethysmography (“PPG”)
`
`sensor to capture physiological information. Id. The PPG sensor uses an optical
`
`emitter to emit light into the body of the user via a light-guiding region and “light
`
`transmissive material.” Then, an optical detector detects the scattered light that is
`
`produced upon the emitted light penetrating the skin of the user. Id., 13:4-14; 14:40-
`
`49.
`
`The ’941 Patent discloses that multiple physical activity and physiological
`
`parameters can be determined based on data obtained from the respective sensors.
`
`Id. at Abstract. Once the serial data string is obtained, it is parsed such that an
`
`application-specific interface can use both sets of data to generate statistical
`
`relationships between the physiological parameters and the physical activity
`
`parameters. Id. The ’941 Patent also discloses a system consisting of said PPG
`
`sensor, motion sensor, and signal processor to enable the PPG sensor to reduce
`
`motion artifacts from the PPG signals. Id. at 32:1-15.
`
`7
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`The ’941 Patent further discloses novel methods for accurately measuring
`
`physiological information in the presence of signal noise. See id. at 3:45-55. The
`
`physiological information obtained by the PPG sensor can filter out the signal noise
`
`by using various signal processing techniques. See id. at 3:55-67. The ’941 Patent
`
`thus discloses methods and systems for removing motion-related noise artifacts,
`
`such as running or footstep noise artifacts, from the physiological measurements of
`
`properties such as heart rate and respiration rate measured by the PPG sensor. See
`
`id. at 3:65-4:5; 31:18-19. Once the physiological data is properly processed, the ’941
`
`patent discloses the sensor signals being processed into a digital data string. Id. at
`
`25:65-26:14.
`
`Certain elements of the above embodiments are claimed in claim 1 of the ’941
`
`Patent. Claim 1 recites the following elements (labelled using Petitioner’s
`
`annotations):
`
`1[P.] A method of generating data output containing
`
`physiological and motion-related information, the method
`
`comprising:
`
`[1.1] Sensing physical activity and physiological information
`
`from a subject via a single monitoring device attached to
`
`the subject,
`
`[1.2] wherein the monitoring device comprises at least one
`
`motion sensor for sensing the physical activity and
`
`8
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`[1.3] at least one photoplethysmography (PPG) sensor for
`
`sensing the physiological information; and
`
`[1.4] processing signals from the at least one motion sensor and
`
`signals from the at least one PPG sensor via a processor of
`
`the monitoring device into a serial data output of
`
`physiological information and motion-related information
`
`[1.5] wherein the serial data output is configured such that a
`
`plurality of subject physiological parameters comprising
`
`subject heart rate and subject respiration rate can be
`
`extracted from the physiological information and such that
`
`a plurality of subject physical activity parameters can be
`
`extracted from the motion-related information.
`
`IV. OVERVIEW OF THE PETITION
`
`Fitbit’s Petition requests review of claims 1, 2, and 6-13, which comprise the
`
`method claims of the ’941 Patent. Pet. 1. Claim 1 is the sole independent claim of
`
`these claims, with claims 2-13 depending in some way from claim 1. See Ex. 1001,
`
`30:35-31:41. Petitioner asserts eleven separate Grounds for review, all based on
`
`alleged obviousness under 35 U.S.C. § 103. Pet. 8-9. The following table
`
`summarizes the Grounds that Petitioner is asserting:
`
`Ground References Combined
`
`Basis Dependent
`Claims
`
`Independent
`Claim
`
`1
`
`Luo & Craw
`
`§ 103 2-3, 9, 11-13
`
`1
`
`9
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`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Omitted
`
`Luo, Craw & Fricke
`
`Luo, Craw, Fricke & Comtois
`
`Luo, Craw & Aceti
`
`Mault & Al-Ali
`
`Omitted
`
`Omitted
`
`Mault, Al-Ali & Han
`
`10 Mault, Al-Ali & Numaga
`
`11 Mault, Al-Ali, & Ali
`
`
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`
`
`
`
`§ 103
`
`§ 103
`
`§ 103
`
`
`
`6 & 8
`
`7
`
`10
`
`2, 9, 11-12
`
`
`
`
`
`6-8
`
`10
`
`13
`
`
`
`
`
`
`
`
`
`1
`
`
`
`
`
`
`
`
`
`
`
`The Grounds can be broken down into two groups. Grounds 1-5 rely on the
`
`combination of Luo (Ex. 1055) in view of Craw (Ex. 1056) for claim 1 among others,
`
`with other tertiary references added to this primary combination for certain
`
`dependent claims. See id. Grounds 6-11 rely on the combination of Mault (Ex. 1057)
`
`in view of Al-Ali (Ex. 1058) for claim 1 among others, with other tertiary references
`
`added to this primary combination for certain dependent claims. See id. Each of the
`
`references differs significantly from the claims of the ’941 Patent.
`
`A. United States Patent Application Publication No. 2008/0200774 A1
`to Luo
`
`Luo discloses a “wearable mini-size intelligent healthcare system for
`
`continuous monitoring and care of a subject.” Ex. 1055 ¶ 1. Unlike the ’941 Patent,
`
`however, Luo does not disclose obtaining physiological information from a PPG
`
`10
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`sensor wherein subject heart rate and subject respiration rate can be extracted from
`
`the physiological information. Instead, Luo focuses on the use of multiple sensors to
`
`separately obtain physiological information.
`
`Luo also does not disclose that both physiological and physical activity
`
`signals are processed into a serial data output. Luo merely discloses that
`
`physiological signals and physical activity signals are monitored, but not that either,
`
`let alone both, are output in a specific format. Ex. 1055 ¶¶ 28-29. Significantly, Luo
`
`lacks any discussion regarding a serial data string.
`
`B. United States Patent Application Publication No. 2008/0133699 A1
`to Craw
`
`Craw differs significantly from the claimed subject matter in the ’941 Patent.
`
`The field of invention in Craw “relates generally to methods, apparatus and systems
`
`for the communication of information among a plurality of network elements, and
`
`specifically to a dynamic medical object information base for interoperability of
`
`devices and systems.” Ex. 1056 ¶ 2. Unlike the ’941 Patent, Craw has nothing to do
`
`with physiological or physical activity monitoring of any kind. Craw is instead
`
`directed to solving the problem of “improved communications protocols for
`
`acquisition and communication of data between network elements,” id. ¶ 9,
`
`particularly across electronic medical systems. Craw purports to solve this problem
`
`by “providing methods including initiating a communication link with a network
`
`11
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`device, receiving standard device data from the network device comprising a global
`
`unique identifier, and requesting a self-describing data dictionary from the network
`
`device, wherein the self-describing data dictionary comprises one or more data
`
`definitions.” Id. ¶ 11. Craw thus generally discloses systems for “interoperability of
`
`medical devices on a network.” Id. ¶ 51. Once data has been communicated based
`
`on the disclosures of Craw, “the dictionary table may describe how to extract the
`
`information received.” Id. ¶ 148.
`
`C. United States Patent No. 6,513,532 B2 to Mault
`
`Although Mault discloses “activity monitoring,” its field relates “to a device
`
`that combines both diet and activity monitoring.” Ex. 1057, 1:23-25. Unlike the ’941
`
`Patent, Mault does not teach obtaining physiological information from a PPG sensor
`
`wherein subject heart rate and subject respiration rate can be extracted from the
`
`physiological information. Indeed, Mault focuses on using separate sensors to
`
`separately obtain physiological information.
`
` Mault also does not teach processing the signals into a serial data output.
`
`Mault further does not contemplate a plurality of physiological parameters and
`
`physical activity parameters being extracted from the data output, instead focusing
`
`on using any of the above monitors to output “a signal indicative of the body activity
`
`of the subject.” Id., 19:47-50.
`
`12
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`D. United States Patent Application Publication No. 2003/0181798 A1
`to Al-Ali
`
`Al-Ali is directed to “a communications adapter that is plug-compatible both
`
`with existing sensors and monitors and that implements a wireless link replacement
`
`for patient cable.” Ex. 1058 ¶ 51. Al-Ali focuses on improved communication
`
`between various monitors and other network or computer elements. In contrast, the
`
`’941 Patent is directed to the monitoring and creation of physiological and motion-
`
`related data itself, as opposed to improved communications between systems.
`
`V. CLAIM CONSTRUCTION
`
`In an inter partes review, “[a] claim in an unexpired patent … shall be given
`
`its broadest reasonable construction in light of the specification of the patent in
`
`which it appears.” 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136
`
`S. Ct. 2131, 2142 (2016). Under the broadest reasonable construction standard, claim
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`terms are given their ordinary and customary meaning, as would be understood by
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`one of ordinary skill in the art at the time of the invention. In re Translogic Tech.,
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`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Here, Petitioner proposes constructions
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`for three claim terms: “physiological information,” “application-specific interface
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`(API),” and “the application.” Pet. 13-14. Patent Owner disputes that the
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`constructions proposed by Petitioner are proper under the “broadest reasonable
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`interpretation” standard. Patent Owner believes, however, that claim construction is
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`not necessary to deny the Petition. Accordingly, Patent Owner will not address the
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`merits of Petitioner’s claim constructions at this time, but expressly reserves the right
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`to do so should the present Petition be instituted.
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`VI. LEGAL STANDARDS
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`A.
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`Standard for Instituting Petition
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`The Board may not grant a petition for inter partes review “unless the Director
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`determines that the information presented in the petition filed under section 311 and
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`any response filed under section 313 shows that there is a reasonable likelihood that
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`the petitioner would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314(a). “[I]t is the petitioner who bears the burden of
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`establishing a reasonable likelihood of unpatentability of one or more claims.” SAS
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`Inst., Inc. v. Complementsoft, LLC, No. IPR2013-00581, 2014 WL 977619, at *1
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`(P.T.A.B. Feb. 25, 2014) (citing 37 C.F.R. § 42.108(c)).
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`A petition for inter partes review may only be considered if “the petition
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`identifies, in writing and with particularity, each claim challenged, the Grounds on
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`which the challenge to each claim is based, and the evidence that supports the
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`Grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). Additional rules of
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`the Board, such as 37 C.F.R. 42.104, further specify the showing that must be made
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`in order for a petition to be granted. For instance, 37 C.F.R. § 42.104(b)(4) provides
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`that the petition must “specify where each element of the claim is found in the prior
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`art patents or printed publications relied upon.” Additionally, 37 C.F.R. §
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`42.104(b)(5) requires that the petition “identify[] specific portions of the evidence
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`that support the challenge.” Furthermore, 37 C.F.R. § 42.22(a)(2) provides that a
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`petition “must include . . . [a] full statement of the reasons for the relief requested,
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`including a detailed explanation of the significance of the evidence.” The Official
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`Trial Practice Guide of the Board further explains that the Board “may not authorize
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`a trial where the information presented in the petition, taking into account any patent
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`owner preliminary response, fails to meet the requisite standard for instituting the
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`trial.” 77 Fed. Reg. 48,756, 48,756 (Aug. 14, 2012).
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`Finally, the Board has concluded that “considering multiple rejections for the
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`same unpatentability issue would unnecessarily consume the time and resources of
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`all parties involved. As [Petitioner] did not provide a meaningful distinction between
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`the different, redundant rejections, we perceived no unfairness by not authorizing
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`what appeared to be redundant challenges because an inter partes review had been
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`instituted on the same factual basis.” Illumina, Inc. v. the Trustees of Columbia Univ.
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`in the City of New York, No. IPR2012-00006, 2013 WL 5653110, at *7 (P.T.A.B.
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`May 10, 2013). Thus, “in the absence of the Petitioner identifying meaningful
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`distinctions in terms of relative strengths and weaknesses of the different prior art
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`references, it is within the discretion of the Board to conclude that even with
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`different facts in different Grounds, multiple Grounds may nevertheless be
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`redundant.” Oracle Corp. v. Clouding IP, LLC, No. IPR2013-00088, 2013 WL
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`5970180, at *3 (P.T.A.B. June 13, 2013) (emphasis added). The Board has further
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`observed that “multiple Grounds, which are presented in a redundant manner by a
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`petitioner who makes no meaningful distinction between them, are contrary to the
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`regulatory and statutory mandates, and therefore are not all entitled to
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`consideration.” Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., No.
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`CBM2012-00003, Paper 7 at 2 (P.T.A.B. October 25, 2012) (emphasis added).
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`B. Obviousness
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`The standard for finding a claim to be obvious under 35 U.S.C. § 103(a) is
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`well-established:
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are
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`such that the subject matter, as a whole, would have been obvious at the
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`time the invention was made to a person having ordinary skill in the art
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`to which said subject matter pertains. KSR Int'l Co. v. Teleflex Inc., 550
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`U.S. 398, 406 (2007). The question of obviousness is resolved on the
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`basis of underlying factual determinations, including: (1) the scope and
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`content of the prior art, (2) any differences between the claimed subject
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`matter and the prior art, (3) the level of skill in the art, and (4) where in
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`evidence, so-called secondary considerations. Graham v. John Deere
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`Co., 383 U.S. 1, 17-18 (1966).1
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`Apple, Inc. v. ContentGuard Holdings, Inc., No. IPR2015-00357, 2015 WL
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`9899009, at *4 (P.T.A.B. June 29, 2015).
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`In making such factual determinations, “rejections on obviousness Grounds
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`cannot be sustained by mere conclusory statements; instead, there must be some
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`articulated reasoning with some rational underpinning to support the legal
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`conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
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`(emphasis added). See also In re Chaganti, 554 Fed. Appx. 917, 922 (Fed. Cir. 2014)
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`(“It is not enough to say that there would have been a reason to combine two
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`references because to do so would ‘have been obvious to one of ordinary skill.’ Such
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`circular reasoning is not sufficient—more is needed to sustain an obviousness
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`rejection.”)
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`Furthermore, the petition “must show some reason why a person of ordinary
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`skill in the art would have thought to combine particular available elements of
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`knowledge, as evidenced by the prior art, to reach the claimed invention.” Heart
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`Failure Tech. v. Cardiokinetix, Inc., No. IPR2013-00183, Paper 12 at 9 (P.T.A.B.
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`1 The factors discussed in the last sentence will be referred to as the “Graham
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`factors” or “Graham analysis.”
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`July 31, 2013) (emphasis added); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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`398, 418 (2007) (“[A] patent composed of several elements is not proved obvious
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`merely by demonstrating that each of its elements was, independently, known in the
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`prior art.”). Additionally, “[i]t is impermissible, however, simply to engage in a
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`hindsight reconstruction of the claimed invention, using the applicant's structure as
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`a template and selecting elements from references to fill the gaps.” In re
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`Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991) (citation omitted).
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`When combining references, a petitioner must provide a discussion “showing
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`how the prior art renders obvious any particular claim, as a whole, being
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`challenged.” Apple, Inc. v. ContentGuard Holdings, Inc., No. IPR2015-00358, 2015
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`WL 9899010, at *6 (P.T.A.B. July 2, 2015) (emphasis in original). See also
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`Vandenberg v. Dairy Equipment Co., 740 F.2d 1560, 1566 (Fed. Cir. 1984) (holding
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`that, to find a claim obvious, even if “all of the elements in the claimed invention are
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`disclosed in the prior art, . . . the invention as a whole must have been obvious to
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`one skilled in the art at the time it was made, and, in order to com