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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DECLARATION OF DR. MAJID SARRAFZADEH
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 9,289,135
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`Apple Inc.
`APL1003
`U.S. Patent No. 9,289,135
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`In Support of Inter Partes Review
`of U.S. Patent No. 9,289,135
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`V.
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`I.
`II. Qualifications ................................................................................................... 3
`III. Legal Principles ............................................................................................... 5
`IV. Background and State of the Art ...................................................................10
`A. Wearable Technology ............................................................................19
`B. Communication ......................................................................................20
`C. Noise Artifacts .......................................................................................21
`D. Adaptive Filtering Techniques ...............................................................25
`The ’135 Patent ..............................................................................................27
`A. Summary of the Prosecution History .....................................................28
`B. Level of Ordinary Skill of a Person in the Art.......................................32
`C. Claim Construction ................................................................................32
`1. “a body” ........................................................................................32
`2. “headset” .......................................................................................32
`3. “housing” ......................................................................................33
`4. “electronic module” ......................................................................34
`5. “window” ......................................................................................38
`VI. Ground 1: Claims 23, 24, 30, and 31 are unpatentable under pre-AIA 35
`U.S.C. § 103(a) over Kosuda in view of Maekawa. ......................................39
`A. Overview of Kosuda ..............................................................................39
`B. Overview of Maekawa ...........................................................................44
`C. Claim 23 .................................................................................................47
`[23.P] A wearable device ....................................................................48
`[23.1] a housing comprising at least one window ...............................48
`[23.2] an electronic module supported by the housing .......................50
`[23.3] the electronic module comprising at least one PPG sensor ......53
`[23.4] [the electronic module comprising] at least one motion sensor
` .......................................................................................................55
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`[23.5] [the electronic module comprising] 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 ......................................................55
`[23.6] a non-air light transmissive material in optical communication
`with the at least one PPG sensor ...................................................58
`[23.7] the at least one window optically exposes the at least one PPG
`sensor to a body of a subject wearing the device via the non-air
`transmissive material ....................................................................62
`D. Claim 24 .................................................................................................63
`The device of claim 23, wherein the non-air light transmissive
`material comprises at least one light guide in optical
`communication with the at least one PPG sensor and the window.
` .......................................................................................................63
`E. Claim 30 .................................................................................................64
`The device of claim 23, wherein the at least one motion sensor
`comprises at least one of the following: an optical sensor, an
`inertial sensor, an electrically conductive sensor, a capacitive
`sensor, an inductive sensor, an accelerometer, and a blocked
`channel sensor. ..............................................................................64
`F. Claim 31 .................................................................................................65
`The device of claim 23, wherein the wearable device is configured to
`be worn at one or more of the following locations of the body of
`the subject: head, ear, limb, nose, and digit. .................................65
`VII. Ground 2: Claims 27-29 are unpatentable under pre-AIA 35 U.S.C. § 103(a)
`over Kosuda in view of Maekawa and Han. ..................................................66
`A. Claims 27-29 ..........................................................................................66
`1. Overview of Han ...........................................................................68
`B. Rationale to Combine the Teachings of Kosuda, Maekawa, and Han ..72
`VIII. Ground 3: Claims 23-28, 30, and 31 are unpatentable under pre-AIA 35
`U.S.C. § 103(a) over Aceti in view of Fricke. ...............................................73
`A. Overview of Aceti ..................................................................................73
`B. Overview of Fricke ................................................................................77
`C. Claim 23 .................................................................................................83
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`[23.P] A wearable device ....................................................................83
`[23.1] a housing comprising at least one window ...............................83
`[23.2] an electronic module supported by the housing .......................85
`[23.3] the electronic module comprising at least one PPG sensor ......86
`[23.4] [the electronic module comprising] at least one motion sensor
` .......................................................................................................87
`[23.5] [the electronic module comprising] 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 ......................................................87
`[23.6] [the housing comprises] non-air light transmissive material in
`optical communication with the at least one PPG sensor .............90
`[23.7] the at least one window [that] optically exposes the at least one
`PPG sensor to a body of a subject wearing the device via the non-
`air light transmissive material .......................................................90
`D. Claim 24 .................................................................................................92
`The device of claim 23, wherein the non-air light transmissive
`material comprises at least one light guide in optical
`communication with the at least one PPG sensor and the window.
` .......................................................................................................92
`E. Claim 25 .................................................................................................92
`The device of claim 23, wherein the wearable device is an earbud. ...92
`F. Claim 26 .................................................................................................92
`The device of claim 23, wherein the wearable device is a headset. ....92
`G. Claims 27 and 28 ...................................................................................93
`27. The device of claim 23, wherein the at least one processor is
`configured to reduce motion artifacts by removing frequency
`bands from the signals that are outside of a range of interest using
`at least one band-pass filter to produce pre-conditioned signals. .93
`28. The device of claim 23, wherein the at least one processor is
`configured to filter the preconditioned signals via at least one of
`the following: FIR (Finite Impulse Response) filtering, IIR
`(Infinite Impulse Response) filtering, adaptive filtering, phase
`filtering, and frequency filtering. ..................................................93
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`H. Claim 30 .................................................................................................98
`The device of claim 23, wherein the at least one motion sensor
`comprises at least one of the following: an optical sensor, an
`inertial sensor, an electrically conductive sensor, a capacitive
`sensor, an inductive sensor, an accelerometer, and a blocked
`channel sensor. ..............................................................................98
`I. Claim 31 .................................................................................................98
`The device of claim 23, wherein the wearable device is configured to
`be worn at one or more of the following locations of the body of
`the subject: head, ear, limb, nose, and digit. .................................98
`IX. Ground 4: Claim 29 is unpatentable under pre-AIA 35 U.S.C. § 103(a) over
`Aceti in view of Fricke and Comtois. ............................................................98
`A. Claim 29 .................................................................................................99
`The device of claim 23, wherein the subject motion artifacts
`comprises subject footstep-related motion artifacts. ....................99
`B. Overview of Comtois .............................................................................99
`C. Rationale to Combine the Teachings of Aceti, Fricke, and Comtois ..102
`Conclusion ...................................................................................................102
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`X.
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`In Support of Inter Partes Review
`of U.S. Patent No. 9,289,135
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`EXHIBIT LIST
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`Exhibit No.
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`Description
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`1001
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`1002
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`1003
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`1004
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`U.S. Patent No. 9,289,135 to LeBoeuf et al., issued March 22,
`2016
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`U.S. Patent No. 9,289,135 File History
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`Declaration of Dr. Majid Sarrafzadeh
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`Curriculum Vitae of Dr. Majid Sarrafzadeh
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`1005-1011
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`Intentionally left blank
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
`
`John Allen, “Photoplethysmography and its application in clinical
`physiological measurement,” Physiological Measurement 28
`(2007); pp. R1-R39
`
`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 Inukai
`et al., published January 18, 2007
`
`U.S. Patent Application Publication No. 2003/0236647 to Yoon
`et al., published December 25, 2003
`
`U.S. Patent No. 3,704,706 to Herczfeld et al., issued December 5,
`1972
`
`J.G. Webster, “Design of Pulse Oximeters,” Institute of Physics
`Publishing (1997)
`
`International Patent Application Publication No. 2007/013054 to
`Schwartz, published February 1, 2007
`
`U.S. Patent Application Publication No. 2004/0186387 to Kosuda
`et al., published September 23, 2004
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`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
`
`U.S. Patent No. 5,297,548 to Pologe, issued March 29, 1994
`
`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. 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
`
`1027
`
`Intentionally left blank
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`1028
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`U.S. Patent Application Publication No. 2005/0209516 to Fraden,
`published September 22, 2005
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`1029
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`Intentionally left blank
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`1031
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`1032
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`1033
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`U.S. Patent Application Publication No. 2008/0081972 to
`Debreczeny, published April 3, 2008
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`U.S. Patent Application Publication No. 2006/0084879 to
`Nazarian et al., published April 20, 2006
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`U.S. Patent Application Publication No. 2003/0065269 to Vetter
`et al., published April 3, 2003
`
`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); pp. 1581-1584
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`1035
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`1036
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`1037
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`1038
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`U.S. Patent No. 5,243,992 to Eckerle et al., issued September 14,
`1993
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`U.S. Patent Application Publication No. 2009/0105556 to Fricke
`et al., published April 23, 2009
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`U.S. Patent No. 4,955,379 to Hall, issued September 11, 1990
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`International Patent Application Publication No. WO
`2007/122375 to Crowe et al., published November 1, 2007
`
`Excerpts from Merriam Webster’s Collegiate Dictionary,
`Eleventh Edition, 2008; p. 5 pages
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`1039-1046
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`Intentionally left blank
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`1047
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`U.S. Patent Application Publication No. 2005/0059870 to Aceti,
`published March 17, 2005
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`1048-1150
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`Intentionally left blank
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`1151
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`1152
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`Japanese Patent Application Publication No. 2005040261, to
`Numaga, published February 17, 2005
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`English-language translation of Japanese Patent Application
`Publication No. 2005040261 to Numaga, published February 17,
`2005
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`1153-1191
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`Intentionally left blank
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`1192
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`1193
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`Gary Comtois et al., “A Comparative Evaluation of Adaptive
`Noise Cancellation Algorithms for Minimizing Motion Artifacts
`in a Forehead-Mounted Wearable Pulse Oximeter,” IEEE, August
`2007; pp. 1528-1531
`
`Japanese Patent Application Publication No. 2005/270544 to
`Maekawa, published October 6, 2005
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`1195
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`1196
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`1198
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`1199
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`Certified English-language translation of Japanese Patent
`Application Publication No. 2005/270544 to Maekawa, published
`October 6, 2005
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`U.S. Patent No. 7,175,601 to Verjus et al., issued February 13,
`2007
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`U.S. Patent Application Publication No. 2007/0265533 to Tran,
`published November 15, 2007
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`U.S. Patent No. 7,403,629 to Aceti et al., issued July 22, 2008
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`U.S. Patent No. 6,654,621 to Palatnik et al., issued November 25,
`2003
`
`Institution Decision, IPR2017-00321, Paper 11, filed June 6,
`2017
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`1200-1202
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`Intentionally Left Blank
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`U.S. Patent No. 6,801,799 to Mendelson, issued October 5, 2004
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`U.S. Patent No. 5,490,523 to Isaacson et al., issued February 13,
`1996
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`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
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`U.S. Patent Application Publication No. 2005/0075542 to
`Goldreich, published April 7, 2005
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`International Patent Application Publication No. WO
`2007/004089 to Nielsen et al., published January 11, 2007
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`G. Gupta et al., “Design of a Low-cost Physiological Parameter
`Measurement and Monitoring Device,” Instrument and
`Measurement, IMTC, 2007; pp.1-6
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`U.S. Patent No. 6,898,451 to Wuori, issued May 24, 2005
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`Collins English Dictionary, Tenth Edition, 2009
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`I.
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`In Support of Inter Partes Review
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`Introduction
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`I, Dr. Majid Sarrafzadeh, declare as follows:
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`1.
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`I am currently a distinguished professor of computer science at the
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`University of California at Los Angeles (“UCLA”), director of the UCLA
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`Embedded and Reconfigurable Computing Laboratory (“ER Lab”). I have been
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`actively engaged in research of Wearable Systems for 17 years and Embedded
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`Systems, Design and Analysis of Algorithms, and Health Analytics for about 30
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`years.
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`2.
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`I have been retained on behalf of Apple Inc. to provide expert
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`opinions in connection with a petition for inter partes review before the United
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`States Patent and Trademark Office (PTO). I understand that this declaration
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`involves my expert opinions and expert knowledge related to U.S. Patent No.
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`9,289,135 (“the ’135 Patent”), titled “Physiological Monitoring Methods and
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`Apparatus,” and its field of endeavor.
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`3.
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`In preparing this declaration, I have reviewed and am familiar with the
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`’135 Patent (APL1001) and its file history (APL1002). The ’135 Patent relates to
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`headsets and describes methods of monitoring a subject wearing a monitoring
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`device. APL1001, 1:23-24, Abstract. I am familiar with the technology and state of
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`the art described in the ’135 Patent as of its November 13, 2014 filing date, as well
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`as the technology and state of the art as of its claimed February 25, 2009 priority
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`date.
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`4.
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`I have reviewed and am familiar with each exhibit cited herein. I
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`confirm that to the best of my knowledge that the accompanying exhibits are true
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`and accurate copies of what they purport to be, and that an expert in the field
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`would reasonably rely on them to formulate opinions such as those set forth in this
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`declaration.
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`5.
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`I have been asked to provide my independent technical review,
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`analysis, insights, and opinions regarding the ’135 Patent and the references that
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`form the basis for the four grounds of unpatentability set forth in the Petition for
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`Inter Partes Review of the ’135 Patent.
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`Ground
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`References
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`Basis
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`Claims Challenged
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`1
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`2
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`3
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`Kosuda & Maekawa
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`§ 103 23, 24, 30, & 31
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`Kosuda, Maekawa, & Han
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`§ 103 27-29
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`Aceti & Fricke
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`§ 103 23-28, 30, & 31
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`Aceti, Fricke, & Comtois
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`§ 103 29
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`II. Qualifications
`As indicated in my curriculum vitae (filed as APL1004), I am
`6.
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`currently a professor of computer science at UCLA and have been in that position
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`for the last sixteen years. I am also the director of the UCLA Embedded and
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`Reconfigurable Computing Laboratory (“ER Lab”), a co-director of the BRITE
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`Center on Minority Health Disparities, and a co-founder of UCLA Wireless Health
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`Institute and Center for SMART Health.
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`7.
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`I earned a Bachelor of Science, Master of Science, and Ph.D. degrees
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`from the University of Illinois at Urbana-Champaign in Electrical and Computer
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`Engineering in 1982, 1984, and 1987, respectively.
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`8.
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`I became an Assistant Professor of Electrical and Computer
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`Engineering at Northwestern University in 1987, earned tenure in 1993, and
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`became a Full Professor in 1997.
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`9.
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`In 2000, I joined the Computer Science Department at UCLA as a
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`Full Professor. In 2008, I co-founded and became a director of the UCLA Wireless
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`Health Institute. I currently teach two core undergraduate courses (involving
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`implementing digital logic designs and advanced digital design techniques), a
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`course on Algorithms and Complexity, and a series of graduate courses in the area
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`of embedded systems and Wireless Health.
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`10.
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`I have experience as a system designer, circuit designer, and software
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`designer. This experience includes positions as a design engineer at IBM and
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`Motorola and a test engineer at Central Data Corporation. I was the main architect
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`of an Electronic Design Automation (“EDA”) software tool for Monterey Design
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`Systems, Inc. (“Monterey”). I co-founded and managed the technical team at
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`Hierarchical Design, Inc. (“Hier Design”), an EDA company that specialized in
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`reconfigurable field-programmable gate array (FPGA) systems. Hier Design was
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`acquired by Xilinx in 2004. I have co-founded MediSens Wireless, Bruin
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`Biometrics, and WANDA Health.
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`11.
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`I am a Fellow of the Institute of Electrical and Electronics Engineers,
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`Inc. (“IEEE”) for my contributions to “Theory and Practice of VLSI Design.” I
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`have served on the technical program committees for numerous conferences in the
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`area of system design. I co-founded the International conference on Wireless
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`Health and have served in various committees for this conference.
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`12.
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`I have published approximately 550 papers, and have received a
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`number of best paper and distinguished paper awards. I am a co-author of the book
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`“Synthesis Techniques and Optimizations for Reconfigurable Systems” (2003 by
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`Springer) and a co-author of the papers:
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`• Adaptive Electrocardiogram Feature Extraction on Distributed
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`Embedded Systems, IEEE Transactions on Parallel and Distributed
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`Systems special issue on High Performance Computational Biology
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`(2006);
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`• A Remote Patient Monitoring System for Congestive Heart Failure,
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`Journal of Medical Systems (2011);
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`• SmartFall: An Automatic Fall Detection and Cause Identification
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`System, IEEE Sensors Journal (2013); and
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`• Designing a Robust Activity Recognition Framework for Health and
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`Exergaming using Wearable Sensors, IEEE Journal of Biomedical
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`and Health Informatics (2013).
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`13. A more detailed account of my work experience and qualifications,
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`including a list of all publications authored in the previous 10 years, can be found
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`in my curriculum vitae, which is identified as APL1004.
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`14.
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`I am being compensated at my standard rate of $650 per hour for my
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`work on this case. My compensation is not dependent upon my opinions or
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`testimony or the outcome of this case.
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`III. Legal Principles
`I understand that my analysis requires an understanding of the scope
`15.
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`of the ’135 Patent claims. I understand that the disclosures of the ’135 Patent and
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`the prior art are judged from the perspective of a person of ordinary skill in the art
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`at the time of the purported invention. For the purposes of this declaration, I have
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`been instructed to consider the time of the purported invention of the ’135 Patent to
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`be February 25, 2009 for each challenged claim unless noted otherwise. I will note,
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`however, that my opinions would not change even if all the relevant disclosures
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`were judged from a later time period.
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`16.
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`I understand that terms of the ’135 Patent claims are, by rule, given
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`the broadest reasonable construction in light of its specification. Unless otherwise
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`noted, I have generally given the claim terms their plain and ordinary meaning as
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`understood by a person of ordinary skill in the art at the time of the purported
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`invention.
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`17.
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`I understand that a claim is invalid if it is anticipated or obvious. My
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`opinions here relate to both anticipation and obviousness as detailed below.
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`18.
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`I understand that anticipation of a claim requires that every element of
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`a claim is expressly or inherently disclosed in a single prior art reference. I
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`understand that an anticipating reference need not use the exact terms of the
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`claims, but must describe the patented subject matter with sufficient clarity and
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`detail to establish that the claimed subject matter existed in the prior art and that
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`such existence would be recognized by persons of ordinary skill in the field of the
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`purported invention. I also understand that an anticipating reference must enable
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`one of ordinary skill in the art to reduce the purported invention to practice without
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`undue experimentation.
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`19.
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`I understand that an obviousness analysis involves comparing a claim
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`to the prior art to determine whether the claimed invention would have been
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`obvious to a person of ordinary skill in the art at the time of the invention in view
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`of the prior art and in light of the general knowledge in the art as a whole. I also
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`understand that obviousness is ultimately a legal conclusion based on underlying
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`facts of four general types, all of which must be considered: (1) the scope and
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`content of the prior art; (2) the level of ordinary skill in the art; (3) the differences
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`between the claimed invention and the prior art; and (4) any objective indicia of
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`nonobviousness.
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`20.
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`I also understand that obviousness may be established by combining
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`or modifying the teachings of the prior art. Specific teachings, suggestions, or
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`motivations to combine any first prior art reference with a second prior art
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`reference can be explicit or implicit, but must have existed before the date of
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`invention. I understand that prior art references themselves may be one source of a
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`specific teaching or suggestion to combine features of the prior art, but that such
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`suggestions or motivations to combine art may come from the knowledge of a
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`person of ordinary skill in the art. Specifically, a rationale to combine the teachings
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`of references may include logic or common sense available to a person of ordinary
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`skill in the art.
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`21.
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`I understand that a reference may be relied upon for all that it teaches,
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`including uses beyond its primary purpose. I understand that though a reference
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`may be said to teach away when a person of ordinary skill, upon reading the
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`reference, would be discouraged from following the path set out in the reference,
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`the mere disclosure of alternative designs does not teach away.
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`22.
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`I further understand that whether there is a reasonable expectation of
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`success from combining references in a particular way is also relevant to the
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`analysis. I understand there may be a number of rationales that may support a
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`conclusion of obviousness, including:
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`• Combining prior art elements according to known methods to yield
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`predictable results;
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`• Substitution of one known element for another to obtain predictable
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`results;
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`• Use of a known technique to improve similar devices (methods, or
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`products) in the same way;
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`• Applying a known technique to a known device (method, or product)
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`ready for improvement to yield predictable results;
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`• “Obvious to try” – choosing from a finite number of identified,
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`predictable solutions, with a reasonable expectation of success;
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`• Known work in one field of endeavor may prompt variations of it for use
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`in either the same field or a different one based on design incentives or
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`other market forces if the variations are predictable to one of ordinary
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`skill in the art; or
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`• Some teaching, suggestion, or motivation in the prior art that would have
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`led one of ordinary skill to modify the prior art reference or to combine
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`prior art teachings to arrive at the claimed invention.
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`23.
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`I understand that it is not proper to use hindsight to combine
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`references or elements of references to reconstruct the invention using the claims
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`as a guide. My analysis of the prior art is made from the perspective of a person of
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`ordinary skill in the art at the time of the purported invention.
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`24.
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`I understand that so-called objective considerations may be relevant to
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`the determination of whether a claim is obvious should the Patent Owner allege
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`such evidence. Such objective considerations can include evidence of commercial
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`success caused by an invention, evidence of a long-felt need that was solved by an
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`invention, evidence that others copied an invention, or evidence that an invention
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`achieved a surprising result. I understand that such evidence must have a nexus, or
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`causal relationship to the elements of a claim, in order to be relevant to the
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`obviousness or non-obviousness of the claim. I am unaware of any such objective
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`considerations having a nexus to the claims at issue in this proceeding.
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`25.
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`I understand that for a reference to be used to show that a claim is
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`obvious, the reference must be analogous art to the claimed invention. I understand
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`that a reference is analogous to the claimed invention if the reference is from the
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`same field of endeavor as the claimed invention, even if it addresses a different
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`problem, or if the reference is reasonably pertinent to the problem faced by the
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`inventor, even if it is not in the same field of endeavor as the claimed invention. I
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`understand that a reference is reasonably pertinent based on the problem faced by
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`the inventor as reflected in the specification, either explicitly or implicitly.
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`IV. Background and State of the Art
`26. Photoplethysmography (hereinafter also referred to as “PPG”) 1 refers
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`to the use of light to measure the changes in blood volume in the tissue of a living
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`1 Photoplethysmographic, photoplethysmogram, and photoplethysmography are all
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`terms abbreviated as PPG. Other abbreviations, however, such as PTG, are also
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`occasionally used in the art. APL1013 (Margulies – US 2004/0059236), ¶ 0054;
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`APL1014 (Inukai – US 2007/0016086), ¶ 0027; APL1015 (Yoon – US
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`2003/0236647), ¶ 0052.
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`body. APL1012 (Allen – Photoplethysmography and its application in clinical
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`physiological measurement), § 1. The technique was introduced in 1937 and had
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`become a ubiquitous part of physiological monitoring long before the ʼ135 Patent
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`was filed. APL1012, § 2.3. By 2009, the earliest claimed priority date, PPG
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`technology was in widespread use and established as a simple, low-cost, readily-
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`portable choice for both clinical and non-clinical physiological measurements. Id.
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`27. PPG is an optical technique whereby light is projected into living
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`tissue, and the reflected light is detected after its interaction with the skin, blood,
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`and other tissue. Id., § 1. The intensity of the reflected light depends on the volume
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`of blood. Id. The volume of blood fluctuates proportionally with the cardiac cycle.
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`Id. As a result, a PPG sensor detects a time-varying pulsatile waveform, or pulse
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`wave, that is synchronized with each heartbeat. Id.
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`28. A 1972 patent illustrates many of the conventional components of a
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`PPG heart rate monitor using an optical technique to continuously measure the
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`pulse of a subject. APL1016 (Herczfeld – US 3,704,706). As shown below, the
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`small probe housing included a light source to emit light directly into the finger of
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`a subject and a photodetector to collect light directly from the finger. APL1016,
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`2:60-3:22, FIG. 1 (annotated and reproduced below).
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`Light source
`Housing
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`Incident
`light
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`Photodetector
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`Reflected
`light
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`APL1016, FIG. 1 (annotations added).
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`29.
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`In operation, the probe was placed upon the patient’s finger such that
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`blood flowing in the finger’s capillaries reflected incident red light. Id., 3:39-41,
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`FIG. 1; APL1017 (Webster – Design of Pulse Oximeters), pp. 51-53. The intensity
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`of the reflected light was understood to be inversely proportional to the amount of
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`blood flowing in the finger. APL1016, 3:41-55; APL1017, pp. 57-66. For each
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`heartbeat, blood pumped into and out of the capillaries, thereby causing a periodic
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`decrease and increase in the reflected light intensity. APL1016, 3:41-55; Ex.
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`APL1017, pp. 57-66. The detected periodi