`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`FITBIT, INC.
`Petitioner
`
`v.
`VALENCELL, INC.
`Patent Owner
`
`––––––––––
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,923,941
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`II.
`
`
`Introduction ...................................................................................................... 1
`Identification of Challenge (37 C.F.R. § 42.104(b)) ....................................... 7
`Summary of the Grounds of Unpatentability ........................................ 7
`A.
`
`Citation of Prior Art .............................................................................. 8
`B.
`
`III. The ’941 Patent ................................................................................................ 9
` Overview ............................................................................................... 9
`A.
`Summary of the Prosecution History .................................................. 10
`B.
`
`Level of Ordinary Skill in the Art ....................................................... 11
`C.
`
`Claim Construction ............................................................................. 12
`D.
`1.
`“a body” .................................................................................... 12
`2.
`“headset” ................................................................................... 13
`3.
`“housing” .................................................................................. 14
`4.
`“chipset” .................................................................................... 14
`5.
`“window” .................................................................................. 14
`IV. Ground 1: Claims 14–15 and 21 are unpatentable under pre-AIA 35
`U.S.C. § 103(a) over Kosuda in view of Maekawa. ...................................... 15
` Overview of Kosuda ............................................................................ 15
`A.
`Overview of Maekawa ........................................................................ 18
`B.
`
`Claim 14 .............................................................................................. 20
`C.
`[14.P] A wearable device .................................................................... 20
`[14.1] a housing ................................................................................... 20
`[14.2] a chipset enclosed within the housing ...................................... 21
`[14.3] at least one PPG sensor ............................................................. 23
`[14.4] at least one motion sensor ......................................................... 24
`
`
`
`
`
`
`
`i
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`[14.5] at least one signal processor configured to process signals
`from the at least one motion sensor and signals from the at
`least one PPG sensor to reduce motion artifacts from the
`PPG signals ............................................................................... 24
`[14.6] the housing comprises at least one window that optically
`exposes the at least one PPG sensor to a body of a subject
`wearing the device .................................................................... 25
`[14.7] the housing comprises non-air light transmissive material in
`optical communication with the at least one PPG sensor and
`the window ................................................................................ 26
`Claim 15 .............................................................................................. 27
`D.
`Claim 21 .............................................................................................. 28
`E.
`
`V. Ground 2: Claims 18–20 are unpatentable under pre-AIA 35 U.S.C. §
`103(a) over Kosuda in view of Maekawa and Han. ...................................... 28
` Overview of Han ................................................................................. 29
`A.
`Rationale to combine the teachings of Kosuda, Maekawa, and
`B.
`
`Han ...................................................................................................... 31
`VI. Ground 3: Claims 14–19 and 21 are unpatentable under pre-AIA 35
`U.S.C. § 103(a) over Aceti in view of Fricke. ............................................... 31
` Overview of Aceti ............................................................................... 31
`A.
`Overview of Fricke .............................................................................. 35
`B.
`
`Claim 14 .............................................................................................. 38
`C.
`[14.P] A wearable device .................................................................... 38
`[14.1] a housing ................................................................................... 38
`[14.2] a chipset enclosed within the housing ...................................... 39
`[14.3] at least one PPG sensor ............................................................. 40
`[14.4] at least one motion sensor ......................................................... 41
`[14.5] at least one signal processor configured to process signals
`from the at least one motion sensor and signals from the at
`least one PPG sensor to reduce motion artifacts from the
`PPG signals ............................................................................... 41
`
`
`
`
`
`
`
`ii
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`
`
`[14.6] the housing comprises at least one window that optically
`exposes the at least one PPG sensor to a body of a subject
`wearing the device .................................................................... 43
`[14.7] the housing comprises non-air light transmissive material in
`optical communication with the at least one PPG sensor and
`the window ................................................................................ 44
`D.
`Claim 15 .............................................................................................. 45
`E.
`Claims 16 and 17 ................................................................................. 45
`
`F.
`Claims 18 and 19 ................................................................................. 45
`
`G.
`Claim 21 .............................................................................................. 47
`
`VII. Ground 4: Claim 20 is unpatentable under pre-AIA 35 U.S.C. § 103(a)
`over Aceti in view of Fricke and Comtois ..................................................... 48
` Overview of Comtois .......................................................................... 48
`A.
`Rationale to combine the teachings of Aceti, Fricke, and
`B.
`
`Comtois ............................................................................................... 51
`VIII. Conclusion ..................................................................................................... 51
`IX. Grounds for Standing (37 C.F.R. § 42.104(a)) .............................................. 53
`X. Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ................................................. 53
`
`
`
`iii
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`TABLE OF AUTHORITIES
`
`Page No.
`
`CASES
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2142 (2016) .............................................................................. 12
`
`In re Am. Acad. Of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) .......................................................................... 12
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`
`STATUTES
`
`35 U.S.C. § 102(b) ............................................................................................... 9, 18
`
`35 U.S.C. § 102(e) ..................................................................................................... 9
`
`35 U.S.C. § 103 .............................................................................................. 8, 50, 51
`
`35 U.S.C. § 112 .......................................................................................................... 8
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100(b) .............................................................................................. 12
`
`37 C.F.R. § 42.104(b) ................................................................................................ 7
`
`
`
`
`
`iv
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`EXHIBIT LIST
`
`Description
`U.S. Patent No. 8,923,941 to LeBoeuf et al., issued December 30,
`2014
`U.S. Patent No. 8,923,941 File History
`Declaration of Dr. Majid Sarrafzadeh
`Curriculum Vitae of Dr. Majid Sarrafzadeh
`Valencell, Inc. v. Apple Inc., Case No. 5-16-cv-00010 (E.D.N.C),
`Complaint filed January 4, 2016
`U.S. Patent Application Publication No. 2005/0209516 to Fraden,
`published September 22, 2005
`Intentionally left blank
`U.S. Patent Application Publication No. 2008/0081972 to
`Debreczeny, published April 3, 2008
`Japanese Patent Application Publication No. 2005/040261 A to
`Numaga et al., published February 17, 2005
`Certified English-language translation of Japanese Patent
`Application Publication No. 2005/040261 A to Numaga et al.,
`published February 17, 2005
`U.S. Patent Application Publication No. 2003/0065269 to Vetter
`et al., published April 3, 2003
`Intentionally left blank
`U.S. Patent Application Publication No. 2009/0105556 to Fricke
`et al., published April 23, 2009
`Intentionally left blank
`U.S. Patent No. 3,704,706 to Herczfeld et al., issued December 5,
`1972
`
`
`
`Exhibit No.
`1001
`
`1002
`1003
`1004
`1005
`
`1006
`
`1007
`1008
`
`1009
`
`1010
`
`1011
`
`1012 -1015
`1016
`
`1017
`1018
`
`
`
`v
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`Description
`U.S. Patent No. 5,297,548 to Pologe, issued March 29, 1994
`Med. Sci. Series, lnt’l Fed’n for Med. and Biological Eng’g and
`the Int’l Org. for Med. Physics, Design of Pulse Oximeters (J.G.
`Webster ed., Inst. of Physics Publ’g 1997)
`John Allen, Photoplethysmography and its application in clinical
`physiological measurement, Physiological Measurement 28
`(2007)
`U.S. Patent Application Publication No. 2008/0132798 to Hong et
`al., published June 5, 2008
`U.S. Patent Application Publication No. 2008/0177162 to Bae et
`al., published July 24, 2008
`U.S. Patent No. 5,807,267 to Bryars et al. issued September 15,
`1998
`Hyonyoung Han et al., Development of a wearable health
`monitoring device with motion artifact reduced algorithm,
`International Conference on Control, Automation and Systems,
`IEEE (2007)
`Excerpts from Merriam Webster’s Collegiate Dictionary,
`Eleventh Edition, 2008; pp. 603 and 1434
`U.S. Patent Application Publication No. 2004/0186387 to Kosuda
`et al., published September 23, 2004
`U.S. Patent Application No. 2009/0287067 to Dorogusker et
`al.,published November 19, 2009
`Japanese Patent Application Publication No. 2005/270544 to
`Maekawa, published October 6, 2005
`Certified English-language translation of Japanese Patent
`Application Publication No. 2005/270544 to Maekawa, published
`October 6, 2005
`U.S. Patent Application No. 2005/059870 to Aceti, published
`
`Exhibit No.
`1019
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`
`
`vi
`
`

`

`Exhibit No.
`
`Description
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`1040
`
`1041
`
`1042
`
`1043
`
`March 17, 2005
`G. Comtois & Y. Mendelson, A Comparative Evaluation of
`Adaptive Noise Cancellation Algorithms for Minimizing Motion
`Artifacts in a Forehead-Mounted Wearable Pulse Oximeter ,
`IEEE (2007)
`Declaration of Gerard P. Grenier in support of G. Comtois & Y.
`Mendelson, A Comparative Evaluation of Adaptive Noise
`Cancellation Algorithms for Minimizing Motion Artifacts in a
`Forehead -Mounted Wearable Pulse Oximeter , IEEE (2007) (Ex.
`1032)
`U.S. Patent Application Publication No. 2004/0059236 to
`Margulies et al., published March 25, 2004
`U.S. Patent Application Publication No. 2007/0016086 to lnukai
`et al., published January 18, 2007
`U.S. Patent Application Publication No. 2003/0236647 to Yoon et
`al., published December 25, 2003
`International Patent Application Publication No. 2007/013054 to
`Schwartz, published February 1, 2007
`U.S. Patent No. 5,575,284 to Athan et al., issued November 19,
`1996
`U.S. Patent No. 5,503,016 to Koen, issued April 2, 1996
`U.S. Patent Application Publication No. 2008/0154098 to Morris
`et al., published June 26, 2008
`U.S. Patent Application Publication No. 2007/0027367 to Oliver
`et al., published February 1, 2007
`U.S. Patent Application Publication No. 2007/0197881 to Wolf et
`al., published August 23, 2007
`U.S. Patent Application Publication No. 2005/0075542 to
`Goldreich, published April 7, 2005
`
`
`
`vii
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`Description
`International Patent Application Publication No. W02007/004089
`to Moroney et al., published January 11, 2007
`G. Sen Gupta et al., Design of a Low-cost Physiological
`Parameter Measurement and Monitoring Device, Instrumentation
`and Measurement Technology Conference, IEEE (2007)
`U.S. Patent Application Publication No. 2006/0084879 to
`Nazarian et al., published April 20, 2006
`U.S. Patent No. 5,243,992 to Eckerle et al., issued September 14,
`1993
`U.S. Patent No. 4,955,379 to Hall, issued September 11, 1990
`International Patent Application Publication No. WO
`2007/122375 to Crowe et al., published November 1, 2007
`Excerpt from Wiley Electrical and Electronics Engineering
`Dictionary, 2004; p. 110
`Excerpt from Dictionary of Computer and Internet Terms, 2009;
`p. 90
`Declaration of Gerard P. Grenier in support of G. Sen Gupta et al.,
`Design of a Low-cost Physiological Parameter Measurement and
`Monitoring Device, Instrumentation and Measurement
`Technology Conference, IEEE (2007) (Ex. 1045) and Hyonyoung
`Han et al., Development of a wearable health monitoring device
`with motion artifact reduced algorithm, International Conference
`on Control, Automation and Systems, IEEE (2007) (Ex. 1025)
`U.S. Patent No. 6,801,799 to Mendelson et al., issued October 5,
`2004
`U.S. Patent No. 6,898,451 to Wuori, issued May 24, 2005
`Intentionally Left Blank
`
`Exhibit No.
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`1049
`
`1050
`
`1051
`
`1052
`
`1053
`
`1054
`1055-1066
`
`
`
`viii
`
`

`

`Fitbit, Inc. requests inter partes review of claims 14–21 of United States
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`Patent No. 8,923,941 (“the ʼ941 Patent”) (Ex. 1001).
`
`I.
`
`Introduction
`Photoplethysmography (hereinafter also referred to as ‘PPG’)1 refers to the
`
`use of light to measure the changes in blood volume in the tissue of a living body.
`
`Ex. 1003, ¶ 26. The technique was introduced in 1937 and had become a
`
`ubiquitous part of physiological monitoring long before the ʼ941 Patent. Id. By
`
`2009, the earliest claimed priority date, PPG technology was widely available and
`
`was established as a simple, low-cost, readily-portable choice for both clinical and
`
`non-clinical physiological measurements. Id.
`
`PPG is an optical technique whereby light is projected into living tissue, and
`
`the reflected light is detected after its interaction with the skin, blood, and other
`
`tissue. Id. at ¶ 27. The intensity of the reflected light depends on the volume of
`
`blood. Id. The volume of blood fluctuates proportionally with the cardiac cycle.
`
`As a result, a PPG sensor detects a time-varying pulsatile waveform, or pulse
`
`wave, that is synchronized with each heartbeat. Id.
`
`
`1Photoplethysmographic, photoplethysmogram, and photoplethysmography are all
`
`terms abbreviated PPG. Other abbreviations, however, such as PTG, are also
`
`occasionally used in the art. Ex. 1003, ¶ 26.
`
`
`
`1
`
`

`

`A 1972 patent illustrates many of the conventional components of a PPG
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`heart rate monitor using this optical technique to continuously measure the pulse of
`
`a subject. Id. Ex. 1018. As shown below , the small probe housing included a
`
`light source to emit light directly into the finger of a subject and a photodetector to
`
`collect light directly from the finger. Ex. 1018, 2:60-3:22, Figure 1 (annotated and
`
`reproduced below).
`
`Ex. 1018, Fig. 1
`
`
`
`In operation, the probe was placed upon the patient’s finger such that blood
`
`flowing in the finger’s capillaries reflected incident red light. Ex. 1003, ¶ 29. The
`
`intensity of the reflected light was understood to be inversely proportional to the
`
`amount of blood flowing in the finger. Id. For each heartbeat, blood pumped into
`
`and out of the capillaries, thereby causing a periodic decrease and increase in the
`
`reflected light intensity. Id. The detected periodic waveform was known to
`
`
`
`2
`
`

`

`represent a volume of the circulating blood synchronized to each heartbeat. Id.
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`This pulsatile waveform was known as a photoplethysmogram or pulse wave. Id.
`
`Ex. 1020, Figure 4.4 (reproduced below illustrates an idealized transmission and
`
`absorption model).
`
`Ex. 1020, Fig. 4.4 Absorbed and transmitted light in living tissue.
`
`
`
`Hence, as of the earliest claimed priority date, photoplethysmography was
`
`a known optical measurement technique used to detect blood volume changes in
`living tissue.2 Ex. 1003, ¶ 30. The basic form of PPG technology requires only
`
`
`2The idealized model of absorbed and transmitted light in living tissue (shown
`
`above) illustrates that pulsation of arterial blood can dominate the pulse wave
`
`signal and the contribution from venous blood is therefore often ignored while the
`
`subject is at rest. It was also known, however, that body movement (such as
`
`walking, running, and the like) can significantly affect venous blood flow and
`
`
`
`3
`
`

`

`a few opto-electronic components: a light source (typically red or near infrared)
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`to illuminate the tissue (commonly at the ear, wrist, or finger) and a
`
`photodetector to measure a pulse wave due to the small variations in light
`
`intensity associated with changes in blood volume. Id. A simple, appropriately
`
`programmed signal processor can extract heart rate and a variety of other
`
`physiological parameters from the pulse wave. Id. at ¶ 30-33.
`
`In recent decades, the desire for small, reliable, low-cost and simple-to-
`
`use noninvasive (cardiovascular) assessment techniques were key factors that
`
`propelled the use of PPG. Id. at ¶ 34. Advances in opto-electronics and
`
`clinical instrumentation have also significantly contributed to its advancement.
`
`Id. The developments in semiconductor technology (i.e. light emitting diodes
`
`(LEDs), photodiodes, and phototransistors), have made considerable
`
`improvements in the size, sensitivity, reliability and reproducibility of PPG
`
`probe design. Id. By the earliest claimed priority date, there had also been
`
`considerable developments in computer-based digital signal processing and
`
`pulse wave analysis. Id.
`
`
`hence the PPG signal, which cannot be ignored. Ex. 1003, ¶ 39; Ex. 1027, ¶¶ 0230-
`
`0232, 0345-0347.
`
`
`
`4
`
`

`

`As this technology became ever smaller and more robust, PPG sensors
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`were integrated into wearable technology such as wristwatches, earphones,
`
`headsets, etc. Id. at ¶¶ 35-37. It was also well established that PPG
`
`measurements were quite sensitive to noise—and movement in particular, which
`
`would create motion artifacts in the PPG signal. Id. at ¶¶ 38-39. Motion
`
`artifacts could contribute a significant error to PPG measurements if not
`
`mitigated. Id. at ¶ 39. Furthermore, if these artifacts mimic a heartbeat, the
`
`instrument may be unable to differentiate between the pulsations from motion
`
`artifacts and those from normal arterial pulsations, thereby causing erroneous
`
`readings. Id. As shown below, the PPG waveform obtained during exercise
`
`exhibits significant deviation from the period PPG waveform obtained while the
`
`subject was at rest. Id.
`
`
`
`The PPG Waveform
`Ex. 1020, Fig. 11.2
`
`
`
`
`5
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`These motion artifacts could be reduced by digital signal processing. Id. at ¶
`
`40. By the mid-2000’s, several motion artifact cancellation techniques had been
`
`developed, including the incorporation of motion sensors that could provide a
`
`reference signal to the signal processor to cancel the motion contribution inherent
`
`in the sensed PPG signal. Id. One common cancellation technique was to employ
`
`frequency filtering. Id. at ¶¶ 41-49. Certain physiological parameters could be
`
`expected to exhibit periodic behavior within a specific frequency range. Id. at ¶
`
`42. For example, heart rates are generally within the frequency range of 1-3 Hz.
`
`Id. Respiratory rates have their own identifiable range (approximately 0.17 Hz (10
`
`breaths per minute) to 0.5 Hz (30 breaths per minute)). Id. Thus a common
`
`technique was to digitally filter a sampled pulse wave to remove noise from the
`
`pulse signal outside the expected range. Id. Simple low-pass filters were used to
`
`pass signals with a frequency lower than a certain cutoff frequency and attenuate
`
`signals with frequencies higher than the cutoff frequency. Id. at ¶¶ 43-44.
`
`Similarly, high-pass filters were used to pass signals with a frequency higher than a
`
`certain cutoff frequency and attenuate signals with frequencies lower than the
`
`cutoff frequency. Id. Both high-pass and low-pass filters were often used in series
`
`to create a band-pass filter. The band-pass filter allows the selection of a particular
`
`frequency range of interest by setting upper and lower frequency bounds. Id.
`
`
`
`6
`
`

`

`This simple frequency filtering technique worked reasonably well for
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`cancelling motion artifacts, so long as the frequency of the motion fell outside the
`
`expected frequency range of the physiological parameter. Id. at ¶ 45. But, as
`
`noted above, certain types of activity may still fall with the expected range. For
`
`example, walking (2 Hz) or running (3 Hz) could have a frequency range
`
`overlapping with the desired physiological parameter, such as heart rate. Id. Thus,
`
`a simple frequency filter was often insufficient to remove motion artifacts during
`
`exercise and other physical activity. Id.
`
`To obtain accurate physiological measurements during exercise and other
`
`physical activity, other noise cancelling techniques were developed. One type of
`
`technique was an active noise cancelling technique based on a motion reference
`
`signal obtained from a motion sensor. Id. at ¶¶ 46-49. The motion sensor was
`
`placed with or near a PPG sensor to provide a motion reference signal. The sensed
`
`PPG signal was understood to be a corrupted signal composed of the uncorrupted
`
`pulse wave and motion artifacts. A signal processor used the motion reference
`
`signal to extract motion artifacts from the sensed PPG signal. Id.
`
`II.
`
`
`
`Identification of Challenge (37 C.F.R. § 42.104(b))
`
`Fitbit requests review of claims 14-21 on the following four grounds:
`
`Summary of the Grounds of Unpatentability
`
`A.
`
`7
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`Ground
`
`References
`
`Basis
`
`Claims Challenged
`
`Kosuda & Maekawa
`
`§ 103
`
`14, 15, 21
`
`Kosuda, Maekawa, & Han
`
`§ 103
`
`18-20
`
`Aceti & Fricke
`
`§ 103
`
`14-19, 21
`
`Aceti, Fricke, & Comtois
`
`§ 103
`
`20
`
`1
`
`2
`
`3
`
`4
`
`
`
`B.
`
` Citation of Prior Art
`The ’941 Patent is a continuation of U.S. patent application Ser. No.
`
`12/691,388, filed Jan. 21, 2010, now U.S. Pat. No. 8,700,111, which claims the
`
`benefit of and priority to U.S. Provisional Patent Application No. 61/208,567 filed
`
`Feb. 25, 2009, U.S. Provisional Patent Application No. 61/208,574 filed Feb. 25,
`
`2009, U.S. Provisional Patent Application No. 61/212,444 filed Apr. 13, 2009, and
`
`U.S. Provisional Patent Application No. 61/274,191 filed Aug. 14, 2009. Each of
`
`the following prior art documents applied in the grounds of unpatentability qualify
`
`as prior art before the earliest possible priority date, February 25, 2009.3
`
`
`3Petitioner does not concede that any claim of the ’941 Patent has support under 35
`
`U.S.C. § 112 such that it is entitled to the benefit of priority of any earlier-filed
`
`
`
`8
`
`

`

`In support of the grounds of unpatentability cited above, Fitbit relies on the
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`following prior art references:
`
`
`
`
`
`
`
`
`
`
`
`
`
`U.S. Patent Application Publication No. 2004/0186387 (“Kosuda”).
`
`U.S. Patent Application Publication No. 2005/0059870 (“Aceti”).
`
`U.S. Patent Application Publication No. 2009/0105556 (“Fricke”).
`
`Comtois et al., A Comparative Evaluation of Adaptive Noise
`Cancellation Algorithms for Minimizing Motion Artifacts in a
`Forehead-Mounted Wearable Pulse Oximeter, IEEE (2007).
`
`Han et al., Development of a wearable health monitoring device with
`motion artifact reduced algorithm, IEEE (2007).
`
`JP Patent App. Pub. No. 2005-270544 (“Maekawa”).
`
`All references were published more than one year prior to the earliest
`
`possible priority date (with the exception of Fricke) and therefore qualify as prior
`
`art under 35 U.S.C. § 102(b). At a minimum, Fricke qualifies as prior art as of its
`
`filing date under 35 U.S.C. § 102(e).
`
`III. The ’941 Patent
` Overview
`A.
`Independent claim 14 of the ’941 Patent is directed to a wearable device
`
`with a chipset comprising (1) at least one PPG sensor, (2) at least one motion
`
`sensor, and (3) at least one signal processor configured to process signals from the
`
`application. Petitioner expressly reserves the right to challenge any benefit claim
`
`should patent owner attempt to antedate any art.
`
`
`
`9
`
`

`

`at least one motion sensor and signals from the at least one PPG sensor to reduce
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`motion artifacts from the PPG signals. Ex. 1001, 32:1-15; Ex. 1003, ¶ 50.
`
`B.
`
`Summary of the Prosecution History
`
`
`The brief prosecution history of the ’941 Patent contains a single rejection of
`
`claims 15-24 (now claims 14–21). Ex. 1003, ¶¶ 51-53. The examiner rejected
`
`claims 15–24 as obvious over U.S. Patent Application No. 2009/0287067 (Ex.
`
`1028, Dorogusker) and U.S. Patent Application No. 2008/0177162 (Bae).
`
`Dorogusker described systems for integrating sensors for tracking a user’s
`
`performance metrics into media devices and accessories. Ex. 1028, ¶ 0032. Bae
`
`described a biosignal measurement apparatus including: a headset; a member
`
`being detachable from the headset, and being attached onto an ear of a user; a PPG
`
`sensor being attached onto the member to detect a PPG signal from the ear of the
`
`user; and an acceleration sensor being attached onto the member to detect an
`
`acceleration signal due to a motion of the user. Ex. 1023, Abstract.
`
`The examiner found that Dorogusker had the signal processor located
`
`outside of the housing and not on the chipset. Ex. 1002, p. 160. But the examiner
`
`also found that “locating a signal processor inside the housing in the same area as
`
`the sensors was well known in the art at the time the invention [as] was made as
`
`evidence from the teaching of Bae.” Id. Thus, the examiner decided that it would
`
`have been obvious to a person having ordinary skill in the art at the relevant time
`
`
`
`10
`
`

`

`(“POSA”) to “modify Dorogusker by including the signal processor inside the
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`housing on the chip set in order to make the device smaller and thus more
`
`comfortable for the user.” Ex. Id.
`
`In response, Valencell amended independent claim 15 (now claim 14) and
`
`argued that Dorogusker and Bae failed to teach or suggest the new limitations:
`
`“configured to process signals from the at least one motion sensor and signals from
`
`the at least one PPG sensor to reduce motion artifacts from the PPG signals” and
`
`“wherein the housing comprises non-air light transmissive material in optical
`
`communication with the at least one PPG sensor and the window.” Id. at 182-83.
`
`Valencell specifically pointed out that Dorogusker was “wholly silent as to the use
`
`of the non-air light transmissive material in the disclosed sensor devices” and that a
`
`POSA would not have been motivated to utilize non-air light transmissive material
`
`between the sensors and the acoustical aperture as to not impede sound from the
`
`speaker. Id. at 183. Valencell further argued that Bae failed to rectify this
`
`deficiency as it also did not teach or suggest a light transmissive material in optical
`
`communication with a PPG sensor and window. Id. at 183-84.
`
`C.
`
` Level of Ordinary Skill in the Art
`Based on the disclosure of the ’941 Patent, a person having ordinary skill in
`
`the art at the relevant time would have had at least a four-year degree in electrical
`
`engineering, computer science, computer engineering, or related field of study, or
`
`
`
`11
`
`

`

`equivalent experience, and at least two years of experience in studying or
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`developing physiological sensors. Ex. 1003, ¶ 54. A person of ordinary skill in the
`
`art would also be familiar with optical system design and signal processing. Id.
`
`D.
`
` Claim Construction
`Claim terms of the ʼ941 Patent are interpreted according to their broadest
`
`reasonable interpretation (BRI) in light of the specification. 37 C.F.R. § 42.100(b);
`
`Cuozzo Speed Techs., LLC v. Lee,
`
`US
`
`, 136 S. Ct. 2131, 2142 (2016). Under
`
`BRI, claim terms are given their ordinary and customary meaning as understood by
`
`one of ordinary skill in the art, unless the patentee “demonstrate[s] an intent to
`
`deviate from the ordinary and accustomed meaning of a claim term by including in
`
`the specification expressions of manifest exclusion or restriction, representing a
`
`clear disavowal of claim scope.” In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359,
`1365 (Fed. Cir. 2004).4 The terms “body” (claim 14) and “headset” (claim 17)
`
`were both provided with an explicit definition in the ʼ941 Patent specification.
`
`“a body”
`
`1.
`According to the ’941 Patent specification:
`
`The term “body” refers to the body of a subject (human
`or animal) that may wear a headset incorporating one or
`
`4 Petitioner reserves the right to present different constructions in another forum
`
`where a different claim construction standard applies.
`
`
`
`12
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,923,941
`
`
`more light-guiding earbuds, according to embodiments of
`the present invention.
`
`Ex. 1001, 10:19-22.
`
`Accordingly, the term “body” should be construed as the portion of the body
`
`of a human or animal that may wear a headset. Ex. 1003, ¶ 55.
`
`
`
` “headset”
`
`2.
`According to the ’941 Patent specification:
`
`The term “headset”, as used herein, is intended to include
`any type of device or earpiece that may be attached to
`or near the ear (or ears) of a user and may have various
`configurations, without
`limitation.
` Headsets
`incorporating light-guiding earbuds, as well as light
`guides, as described herein may include mono headsets (a
`device having only one earbud, one earpiece, etc.) and
`stereo headsets (a device having two earbuds, two
`earpieces, etc.), earbuds, hearing aids, ear jewelry, face
`masks, headbands, and the like.
`Ex. 1001, 9:49-55.
`
`Accordingly, the term “headset” as used in the ’94