`
`
`
`Filed on behalf of Apple Inc.
`By:
`Michael D. Specht
`
`Michelle K. Holoubek
`
`Jason A. Fitzsimmons
`
`Mark J. Consilvio
`
`Sterne, Kessler, Goldstein & Fox PLLC
`
`1100 New York Avenue, NW
`
`
`Washington, D.C.
`
`
`Tel: (202) 371-2600
`
`
`Fax: (202) 371-2540
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`_____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,289,135
`
`
`
`
`
`
`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. 9,289,135
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`Background of the Technology ......................................................................... 1
`Identification of Challenge (37 C.F.R. § 42.104(b)) ......................................... 6
`A.
`Summary of the Grounds of Unpatentability .......................................... 6
`B.
`Citation of Prior Art ................................................................................ 7
`III. The ’135 Patent .................................................................................................. 8
`A. Overview ................................................................................................. 8
`B.
`Summary of the Prosecution History ...................................................... 9
`C.
`Level of Ordinary Skill in the Art .........................................................11
`D.
`Claim Construction................................................................................11
`1.
`“a body” .................................................................................... 12
`2.
`“headset” ................................................................................... 12
`3.
`“housing” .................................................................................. 12
`4.
`“electronic module” .................................................................. 12
`5.
`“window” .................................................................................. 15
`IV. Ground 1: Claims 23–28, 30, and 31 are unpatentable under pre-AIA
`35 U.S.C. § 103(a) over Aceti in view of Fricke. ............................................ 15
`A. Overview of Aceti .................................................................................15
`B.
`Overview of Fricke ................................................................................18
`C.
`Rationale to Combine the Teachings of Aceti and Fricke ....................21
`D.
`Claim 23 ................................................................................................22
`[23.P] A wearable device .................................................................... 22
`[23.1] a housing comprising at least one window ............................... 22
`[23.2] an electronic module supported by the housing ....................... 23
`[23.3] the electronic module comprising at least one PPG sensor ...... 24
`[23.4] at least one motion sensor ......................................................... 24
`[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 ...................................... 25
`
`
`
`- i -
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`[23.6] non-air light transmissive material in optical communication
`with the at least one PPG sensor ............................................... 26
`[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
`light transmissive material ........................................................ 26
`Claim 24 ................................................................................................27
`E.
`Claims 25 and 26 ...................................................................................27
`F.
`Claims 27 and 28 ...................................................................................28
`G.
`Claim 30 ................................................................................................29
`H.
`Claim 31 ................................................................................................29
`I.
`V. Ground 2: Claim 29 is unpatentable under pre-AIA 35 U.S.C. § 103(a)
`over Aceti in view of Fricke and Comtois....................................................... 29
`A. Overview of Comtois ............................................................................30
`B.
`Rationale to Combine the Teachings of Aceti, Fricke, and
`Comtois..................................................................................................32
`VI. Ground 3: Claims 23, 24, 30, and 31 are unpatentable under pre-AIA
`35 U.S.C. § 103(a) over Kosuda in view of Maekawa. ................................... 33
`A. Overview of Kosuda ..............................................................................33
`B.
`Overview of Maekawa ..........................................................................36
`C.
`Rationale to Combine the Teachings of Kosuda and Maekawa ...........38
`D.
`Claim 23 ................................................................................................39
`[23.P] A wearable device .................................................................... 40
`[23.1] a housing comprising at least one window ............................... 40
`[23.2] an electronic module supported by the housing ....................... 41
`[23.3] the electronic module comprising at least one PPG sensor ...... 43
`[23.4] at least one motion sensor ......................................................... 44
`[23.5] 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 ... 44
`[23.6] non-air light transmissive material in optical communication
`with the at least one PPG sensor ............................................... 45
`
`
`
`- ii -
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`[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
`light transmissive material ........................................................ 48
`Claim 24 ................................................................................................49
`E.
`Claim 30 ................................................................................................50
`F.
`Claim 31 ................................................................................................50
`G.
`VII. Ground 4: Claims 27–29 are unpatentable under pre-AIA 35 U.S.C.
`§ 103(a) over Kosuda in view of Maekawa and Han. ..................................... 51
`A. Overview of Han ...................................................................................51
`B.
`Rationale to Combine the Teachings of Kosuda, Maekawa, and
`Han ........................................................................................................53
`Claim 27 ................................................................................................54
`C.
`Claim 28 ................................................................................................55
`D.
`Claim 29 ................................................................................................55
`E.
`VIII. Conclusion ....................................................................................................... 55
`IX. Standing (37 C.F.R. § 42.104(a)) .................................................................... 57
`X. Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ................................................... 57
`
`
`
`- iii -
`
`
`
`

`

`
`
`Exhibit No.
`
`EXHIBIT LIST
`
`Description
`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`
`1001
`
`1002
`
`1003
`
`1004
`
`U.S. Patent No. 9,289,135 to LeBoeuf et al., issued March 22,
`2016
`
`U.S. Patent No. 9,289,135 File History
`
`Declaration of Dr. Majid Sarrafzadeh
`
`Curriculum Vitae of Dr. Majid Sarrafzadeh
`
`1005-1011
`
`Intentionally left blank
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`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
`
`
`
`- iv -
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`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
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`Intentionally left blank
`
`1028
`
`U.S. Patent Application Publication No. 2005/0209516 to Fraden,
`published September 22, 2005
`
`1029
`
`Intentionally left blank
`
`1030
`
`1031
`
`1032
`
`1033
`
`U.S. Patent Application Publication No. 2008/0081972 to
`Debreczeny, published April 3, 2008
`
`U.S. Patent Application Publication No. 2006/0084879 to
`Nazarian et al., published April 20, 2006
`
`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
`
`
`
`- v -
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`U.S. Patent No. 5,243,992 to Eckerle et al., issued September 14,
`1993
`
`U.S. Patent Application Publication No. 2009/0105556 to Fricke
`et al., published April 23, 2009
`
`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
`
`Excerpts from Merriam Webster’s Collegiate Dictionary,
`Eleventh Edition, 2008; p. 5 pages
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039-1046
`
`Intentionally left blank
`
`1047
`
`U.S. Patent Application Publication No. 2005/0059870 to Aceti,
`published March 17, 2005
`
`1048-1150
`
`Intentionally left blank
`
`1151
`
`1152
`
`Japanese Patent Application Publication No. 2005040261, to
`Numaga, published February 17, 2005
`
`English-language translation of Japanese Patent Application
`Publication No. 2005040261 to Numaga, published February 17,
`2005
`
`1153-1191
`
`Intentionally left blank
`
`1192
`
`1193
`
`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
`
`
`
`- vi -
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`Certified English-language translation of Japanese Patent
`Application Publication No. 2005/270544 to Maekawa, published
`October 6, 2005
`
`U.S. Patent No. 7,175,601 to Verjus et al., issued February 13,
`2007
`
`U.S. Patent Application Publication No. 2007/0265533 to Tran,
`published November 15, 2007
`
`U.S. Patent No. 7,403,629 to Aceti et al., issued July 22, 2008
`
`U.S. Patent No. 6,654,621 to Palatnik et al., issued November 25,
`2003
`
`1194
`
`1195
`
`1196
`
`1197
`
`1198
`
`1199-1202
`
`Intentionally left blank
`
`1203
`
`1204
`
`1205
`
`1206
`
`1207
`
`1208
`
`1209
`
`U.S. Patent No. 6,801,799 to Mendelson, issued October 5, 2004
`
`U.S. Patent No. 5,490,523 to Isaacson et al., issued February 13,
`1996
`
`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
`
`International Patent Application Publication No. WO
`2007/004089 to Nielsen et al., published January 11, 2007
`
`G. Gupta et al., “Design of a Low-cost Physiological Parameter
`Measurement and Monitoring Device,” Instrument and
`Measurement, IMTC, 2007; pp.1-6
`
`1210
`
`U.S. Patent No. 6,898,451 to Wuori, issued May 24, 2005
`
`
`
`- vii -
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`Collins English Dictionary, Tenth Edition, 2009
`
`1211
`
`
`
`- viii -
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`
`
`
`Apple Inc. (“Apple”) petitions for inter partes review of claims 23-31 of
`
`U.S. Patent No. 9,289,135 to LeBoeuf et al. (“the ʼ135 Patent”) (APL1001). Apple
`
`demonstrates herein that a reasonable likelihood exists that all challenged claims
`
`of the ’135 Patent are unpatentable.
`
`I.
`
`Background of the Technology
`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.
`
`APL1003, Sarrafzadeh Dec., ¶¶26-30. The technique was introduced in 1937 and
`
`had become a ubiquitous part of physiological monitoring long before the ʼ135
`
`Patent. Id. at ¶¶26-34. By 2009, the earliest claimed priority date of the ’135
`
`Patent, PPG technology was widely available and well 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
`
`
`1 Photoplethysmographic, photoplethysmogram, and photoplethysmography are all
`
`terms abbreviated PPG. Other abbreviations, however, such as PTG, are also
`
`occasionally used in the art. APL1003, ¶26.
`
`
`
`- 1 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`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.
`
`As exemplified by the probe shown below, conventional PPG sensors included a
`
`light source to emit light directly into a subject and a photodetector to collect light
`
`directly from the subject. Id. at ¶¶26-29; APL1016, Herczfeld, 2:60-3:22, FIG. 1
`
`(annotated and reproduced below). In operation, the probe was placed upon the
`
`APL1016, FIG. 1
`
`patient’s skin such that blood flowing in capillaries reflected incident light.
`
`APL1003, ¶¶26-29. 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 is pumped into and out of the capillaries, thereby causing a
`
`
`
`- 2 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`periodic decrease and increase in the reflected light intensity. Id. The detected
`
`periodic waveform was known to represent a volume of the circulating blood
`
`synchronized to each heartbeat. Id. This pulsatile waveform was known as a
`
`photoplethysmogram or pulse wave. Id.; APL1017, Webster, p. 64, FIG. 4.4
`
`(reproduced below, illustrates an idealized transmission and absorption model.)
`
`
`
`
`
`APL1017, FIG. 4.4 (Absorbed and transmitted light in living tissue.)
`
`Hence, as of—and, indeed, well before—the earliest claimed priority date of
`
`the ’135 Patent, photoplethysmography was a known optical measurement
`
`technique used to detect blood volume changes in living tissue.2 APL1003, ¶¶26-
`
`
`2 The 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
`
`
`
`
`
`- 3 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`29. A simple, appropriately programmed signal processor would extract heart rate
`
`and a variety of other physiological parameters from the pulse wave. Id. at ¶¶30-
`
`34. As this technology became ever smaller and more robust, PPG sensors were
`
`integrated into wearable technology. Id. at ¶¶34-36. Optoelectronic sensors were
`
`combined with corresponding circuitry needed to perform PPG monitoring
`
`electronic modules. Id. at ¶¶33-36; see also APL1198, Palatnik, 3:64-4:15, FIG. 4;
`
`APL1196, Tran, ¶¶0278-0279.
`
`PPG measurements were known to be quite sensitive to noise from
`
`movement, which would create motion artifacts in the PPG signal. APL1003,
`
`¶¶38-45. These artifacts could mask or mimic a heartbeat, leaving the instrument
`
`unable to differentiate between motion artifacts and arterial pulsations. 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.
`
`
`subject is at rest. It was also known, however, that body movement (such as
`
`walking, running, and the like) would significantly affect venous blood flow and
`
`hence the PPG signal, which could not be ignored. APL1003, ¶¶38-45; APL1019,
`
`Kosuda, ¶¶0230-0232, 0345-0347.
`
`
`
`- 4 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`
`The PPG
`Waveform
`
`
`
`APL1017,
`FIG. 11.2
`
`
`
`These motion artifacts could be reduced by digital signal processing. Id. By
`
`the mid-2000’s, several motion artifact cancellation techniques utilized motion
`
`sensors to provide a reference signal input to a signal processor, which would
`
`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
`
`
`
`- 5 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`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.
`
`This simple frequency filtering technique worked reasonably well for
`
`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 within 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 ¶¶40-49. A signal processor then
`
`calculates physiological parameters from the improved PPG signal. Id.
`
`II.
`
`
`
`Identification of Challenge (37 C.F.R. § 42.104(b))
`A.
`Apple requests review of claims 23–31 on the following four grounds:
`
`Summary of the Grounds of Unpatentability
`
`- 6 -
`
`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`
`Ground
`
`References
`
`Basis
`
`Claims Challenged
`
`1
`
`2
`
`3
`
`4
`
`Aceti & Fricke
`
`§ 103 23–28, 30, & 31
`
`Aceti, Fricke, & Comtois
`
`§ 103 29
`
`Kosuda & Maekawa
`
`§ 103 23, 24, 30, & 31
`
`Kosuda, Maekawa, & Han
`
`§ 103 27–29
`
`B. Citation of Prior Art
`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
`
`In support of the grounds of unpatentability cited above, Apple relies on the
`
`following prior art references:
`
`• U.S. Patent Application Publication No. 2005/0059870 (“Aceti”);
`
`3 Petitioner does not concede that any claim of the ’135 Patent has support under
`
`35 U.S.C. § 112 such that it is entitled to the benefit of priority of any earlier-filed
`
`application. Petitioner expressly reserves the right to challenge any benefit claim
`
`should Patent Owner attempt to antedate any prior art.
`
`
`
`- 7 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`• 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)
`
`(“Comtois”);
`
`• U.S. Patent Application Publication No. 2004/0186387 (“Kosuda”);
`
`• Han et al., Development of a wearable health monitoring device with
`
`motion artifact reduced algorithm, IEEE (2007) (“Han”); and
`
`• 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 ’135 Patent
`A. Overview
`Independent claim 23 of the ’135 Patent is directed to a wearable device
`
`with a housing having at least one window and an electronic module supported by
`
`the housing 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 at least
`
`one motion sensor and signals from the at least one PPG sensor to reduce motion
`
`
`
`- 8 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`artifacts from the PPG signals. APL1001, 32:62-33:8; APL1003, ¶¶46-49. A non-
`
`air light transmissive material is in optical communication with the at least one
`
`PPG sensor such that the window optically exposes the at least one PPG sensor to
`
`a subject’s body via the non-air light transmissive material. APL1001, 33:4-33:8.
`
`Summary of the Prosecution History
`
`B.
` Claims 23-31 were added prior to examination of the application
`
`(APL1002, ’135 File History, pp. 494-501) and rejected as being anticipated by
`
`U.S. Patent No. 7,175,601. (APL1195, “Verjus”). Verjus discloses a portable
`
`device including a heart rate measurement unit (A) and an audio unit (B).
`
`APL1195, 3:33-42. The heart rate measurement unit (A) includes a casing (2) that
`
`is placed inside the ear and a horn (4) that hooks behind the ear. Id. at 3:47-57. An
`
`optical emitter (5) in the horn (4) directs radiation through the ear and toward an
`
`optical receiver (6) disposed in the casing (2). Id. at 3:57-65. An accelerometer (8)
`
`and a processing unit (9) are also included in the horn (4). Id. at 4:9-11, 4:36-40,
`
`FIG. 1. Signal processing, for example, using a band-pass filter, is performed “to
`
`eliminate artifacts due to movements of the wearer of the equipment by using the
`
`signals delivered by the accelerometric device (8)….” Id. at 4:44-5:1; APL1003,
`
`¶50.
`
`
`
`- 9 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`
`
`
`APL1195, FIG. 1
`
`In response to the rejection, Valencell amended independent claim 23—
`
`changing the term “chipset” to “electronic module.” Valencell alleged that Verjus
`
`failed to teach the amended claim because:
`
`the emitter 5 and detector 6 are physically separate from each other,
`as illustrated in Fig. 1 of Verjus. The emitter is on the horn 4 that
`hooks behind an ear, and the detector is on the casing 2 that fits within
`an ear. In addition, the processing unit 9 and accelerometric device 8
`are illustrated as separate elements in Fig. 1 of Verjus. As such, the
`emitter 5, detector 6, processing unit 9, and accelerometric device 8
`are not part of a single electronic module. In fact, they cannot be
`within the same electronic module because of the requirement to have
`the emitter 5 on one side of an ear and the detector on the other side of
`the ear.
`
`APL1002 at pp. 577-578 (emphasis original). Thus, Valencell’s alleged point of
`
`novelty is merely co-locating the PPG sensor, motion sensor, and signal
`
`
`
`- 10 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`processor—i.e., the previously claimed chipset—as one “electronic module.”
`
`APL1003, ¶52. Valencell failed to mention that the location and integration of
`
`such components was regarded to be a matter of design choice. Id. Thereafter, the
`
`Office allowed the claims without comment. APL1002, pp. 1278-1282.
`
`C. Level of Ordinary Skill in the Art
`Based on the disclosure of the ’135 Patent, a person having ordinary skill in
`
`the art (“POSA”) 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 equivalent experience, and at least two years of experience in studying or
`
`developing physiological sensors. APL1003, ¶53. A person of ordinary skill in the
`
`art would also have been familiar with optical system design and signal
`
`processing. Id.
`
`D. Claim Construction
`The ʼ135 Patent is unexpired and therefore its claim terms are interpreted
`
`according to their broadest reasonable interpretation in light of the specification.
`
`37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
`
`(2016).4 The terms “body” (claim 23) and “headset” (claim 26) are both expressly
`
`
`4 Petitioner reserves the right to present different constructions in another
`
`forum where a different claim construction standard applies.
`
`
`
`- 11 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`defined in the ʼ135 Patent specification. All claim terms not provided with a
`
`construction herein should be given their plain and ordinary meaning.
`
`“a body”
`
`1.
`The term “body” should be construed as the body of a human or animal that
`
`may wear a headset. APL1003, ¶54.
`
`“headset”
`
`2.
`The term “headset” as used in the ’135 Patent claims should be broadly
`
`construed as “any type of device or earpiece that may be attached to or near the ear
`
`of a user, including peripheral devices.” APL1003, ¶55.
`
`“housing”
`
`3.
`The term “housing” should be broadly construed as “one or more parts that
`
`covers, encloses, supports, or protects; casing.” This construction clarifies that the
`
`term is not limited to a single monolithic structure but may be made of several
`
`constituent parts, for example, that collectively “houses” components. APL1003,
`
`¶56.
`
` “electronic module”
`
`4.
`The ’135 Patent uses the term “electronic module” once in the specification,
`
`stating:
`
`A specific embodiment of a chipset 800 for a stereo headset … is
`illustrated in FIG. 21. This stereo chipset 800 may be integrated into
`an electronic module that may be attached to a printed circuit board.
`
`
`
`- 12 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`In another configuration, this stereo chipset 800 may be integrated
`into 3 modules, wherein the right and left earbud sensors comprise
`two separate modules, embedded
`in right and
`left earbuds
`respectively, and wherein the remaining circuit elements comprise the
`main module.
`APL1001, 27:53-61 (emphasis added). The ’135 Patent thus describes that the
`
`chipset 800 may be integrated into a single or multiple electronic modules. As
`
`noted in the Summary of the Prosecution History Section above, Valencell argued
`
`that the term “electronic module” precludes “physically separate” electronic
`
`components. APL1002, pp. 577-578. Thus, in light of Valencell’s arguments, a
`
`POSA would have understood the term “electronic module” to refer to an
`
`assembly of co-located electronic components. APL1003, ¶57.
`
`The term “module” is used in various contexts in the ’135 Patent. See, e.g.,
`
`APL1001, 3:51-54, 4:22-36, 7:58-61, 12:27-32, 21:13-23:2 (sensor module),
`
`12:32-39 (wireless module), 24:51-61 (optical emitter-detector module), 27:55-61
`
`(main module). For example, the term “sensor module” in the ’135 Patent is
`
`described as:
`
`include[ing] a number of electronic components capable of converting
`various forms of energy into an electrical signal and digitizing the
`signal. For example, the sensor module 70 may include light-emitting
`diodes, optical sensors, accelerometers, capacitive sensors, inertial
`sensors, mechanical sensors, electromagnetic sensors, thermal sensors,
`nuclear radiation sensors, biological sensors, and the like.
`
`
`
`- 13 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`APL1001, 21:49-56. Thus, the ’135 Patent describes a “module” simply as a
`
`group of components. APL1003, ¶58. In view of the intrinsic evidence (the ’135
`
`Patent disclosure and prosecution history), a POSA would have understood the
`
`broadest reasonable interpretation of an “electronic module” to be a co-located
`
`chipset—i.e., an assembly of one or more co-located chips or integrated circuits
`
`that perform one or more functions. Id. at ¶¶57-60.
`
`A dictionary definition of “electronic module” is consistent with this
`
`construction. Extrinsic evidence illustrates the term being used to refer to an
`
`assembly of electronic components and associated wiring, which work together to
`
`perform one or more defined tasks. Id. at ¶59. Accordingly, both the intrinsic and
`
`extrinsic evidence is consistent with the proposed construction here.
`
`Notably, the construction is presented to assist the Board in understanding
`
`the claimed terminology, but the construction is not a dispositive issue of
`
`unpatentability. The references below should be viewed for all that they teach,
`
`including additional teachings related to the electronic module feature. Id. at ¶60.
`
`Thus, even if the Board were to adopt a broader or narrower construction than the
`
`one presented here, Petitioner requests that the Board nevertheless consider the
`
`more detailed descriptions of the prior art as discussed below.
`
`
`
`- 14 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,289,135
`
`“window”
`
`5.
`The term “window” should be broadly construed as “an aperture or opening;
`
`the framework enclosing such an opening or aperture; or a transmissive pane
`
`within such an aperture or op