UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable Cameron R. Elliot
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN WEARABLE ELECTRONIC
`DEVICES WITH ECG FUNCTIONALITY
`AND COMPONENTS THEREOF
`
`Inv. No. 337-TA-1266
`
`APPLE’S REBUTTAL MARKMAN BRIEF
`
`1
`
`APPLE 1056
`Apple v. AliveCor
`IPR2021-00972
`
`

`

`TABLE OF CONTENTS
`
`
`
`I.
`
`INTRODUCTION ............................................................................................................................. 1
`
`II.
`
`ARGUMENT ....................................................................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`Level of Ordinary Skill in the Art ......................................................................................... 1
`
`Preambles of Claims 1 and 11 (’499 patent) ....................................................................... 3
`
`“alerting said first user to sense an electrocardiogram” (’499 patent claim 1) /
`“alert” (’499 patent claim 11)” .............................................................................................. 5
`
`D.
`
`“heart rate sensor” (’499 patent claim 1 & 11) ................................................................... 8
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`Order of steps (’499 patent claim 1) ..................................................................................10
`
`“confirm the presence of the arrhythmia based on the ECG data” (’731
`patent claim 1 & 15) and “confirming the presence of the arrhythmia based
`on the ECG data” (’731 patent, claim 17) ........................................................................12
`
`Order of steps (’731 patent, claim 17) ...............................................................................14
`
`“to confirm a presence of arrhythmia” (’941 patent, claim 1) / “to confirm
`the presence of arrhythmia” (’941 patent, claim 12) .......................................................15
`
`“when the activity level is resting” (’941 patent, claim 1 / “when the activity
`level value is resting” (’941 patent, claim 12) ....................................................................17
`
`“discordance” (’941 patent, claims 1 & 12) ......................................................................19
`
`K.
`
`Order of steps (’941 patent, claim 1) .................................................................................21
`
`III.
`
`CONCLUSION .................................................................................................................................23
`
`
`
`
`
`
`
`
`
`
`ii
`
`2
`
`

`

`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
`239 F.3d 1343 (Fed. Cir. 2001)................................................................................................................ 21
`
`Bicon Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) .................................................................................................................... 4
`
`Boehringer Ingelheim Vetmedia, Inc. v. Schering-Plough Corp.,
`320 F.3d 1339 (Fed. Cir. 2003).................................................................................................................. 4
`
`CreAgri v. Pinnaclife,
`2013 WL 1663611 (N.D. Cal. Apr. 16, 2013) ......................................................................................... 3
`
`Eli Lilly & Co. v. Teva Pharms. Int’l GmbH,
`8 F.4th 1331 (Fed. Cir. 2021) .................................................................................................................... 5
`
`Funai Elec. Co., v. Daewoo Elecs. Corp.,
`616 F.3d 1357 (Fed. Cir. 2010).................................................................................................................. 6
`
`Intell. Ventures I LLC v. T-Mobile USA, Inc.,
`902 F.3d 1372 (Fed. Cir. 2018)................................................................................................................ 18
`
`Jansen v. Rexall Sundown, Inc.,
`342 F.3d 1329 (Fed. Cir. 2003).................................................................................................................. 5
`
`Oxygenator Water Technologies, Inc. v. Tennant Co.,
`2021 WL 3661587 (D. Minn. 2021)........................................................................................................ 21
`
`Pacing Technologies v. Garmin International,
`778 F.3d 1021, 1024 (Fed. Cir. 2015) ................................................................................................... 3, 4
`
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) .................................................................................................................... 5
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .............................................................................................. 13
`
`TQ Delta, LLC v. 2wire, Inc.,
`2018 WL 4062617 (D. Del. Aug. 24, 2018) ............................................................................................. 3
`
`Trustees in Bankr. of N. Am. Rubber Thread Co. v. United States,
`593 F.3d 1346 (Fed. Cir. 2010)................................................................................................................ 21
`
`
`
`
`iii
`
`3
`
`

`

`Zimmer Surgical, Inc. v. Stryker Corp.,
`2018 WL 3038515 (D. Del. June 19, 2018) ............................................................................................. 4
`
`
`
`
`
`
`
`
`iv
`
`4
`
`

`

`Table of Exhibits
`
`
`
`Description
`
`Respondent’s
`Exhibit No.
`
`A.
`
`LinkedIn Profile of David Albert, M.D.
`
`
`
`v
`
`
`
`
`5
`
`

`

`I.
`
`INTRODUCTION
`
`Respondent Apple Inc. respectfully submits this reply brief in support of its proposed claims
`
`constructions for the disputed terms from U.S. Patent Nos. 9,572,499 (the ’499 patent), 10,595,731
`
`(the ’731 patent), and 10,638,941 (the ’941 patent) (collectively, the “Asserted Patents”).
`
`As detailed in the specific term sections below, AliveCor—and in some instances, Staff—
`
`misinterpret the specification and/or prosecution histories in arguing against Apple’s proposed
`
`constructions. AliveCor (and Staff at times) is wrong in arguing that Apple is improperly attempting
`
`to import limitations into the Asserted Claims or reading out preferred embodiments. Apple is
`
`merely providing the proper scope of the claim terms based on the claim language itself, the
`
`disclosures in the specifications and prosecution histories (where applicable), and in light of the
`
`knowledge of a person having ordinary skill in the art (PHOSITA) at the time of the alleged
`
`inventions. Apple’s proposals are further supported by the declaration of a PHOSITA, Dr. Collin
`
`Stultz, and by other extrinsic evidence, which is all consistent with the specifications of the Asserted
`
`Patents, and thus can and should be considered by the Court in its analysis.
`
`Accordingly, for the reasons stated in its opening claim construction brief and further
`
`explained below, Apple submits that the Court should adopt Apple’s proposed constructions for the
`
`disputed terms from the claims of the Asserted Patents.
`
`II.
`
`ARGUMENT
`
`A. Level of Ordinary Skill in the Art
`
`The parties generally agree on the level of ordinary skill in the art, with one exception—
`
`Apple’s alternative definition that a person of ordinary skill in the art could also be a person with a
`
`medical degree (M.D. or D.O.) and with at least two years of work experience using biomedical
`
`sensors and/or analyzing their data (in the context of industry, in biomedical academic research, or
`
`in practice treating patients). See Apple’s Opening Claim Construction Br. (Apple Op. Br.) at 3. In
`
`
`
`1
`
`6
`
`

`

`objecting to Apple’s definition, AliveCor argues that a person of ordinary skill would need to
`
`understand “the specific aspects of design, configuration, and operation of these wearable devices,
`
`which requires specialized engineering skills that a person with a medical degree (MD or DO) likely
`
`would not possess in the absence of additional” qualifications. Complainant’s Opening Claim
`
`Construction Brief (AliveCor Op. Br.) at 6. Not so. For example, claim 17 of the ’731 patent reads:
`
`17. A method to detect the presence of an arrhythmia of the user on a smart
`watch, comprising:
`
`receiving PPG data from a PPG sensor of the smartwatch;
`
`detecting by a processing device, based on the PPG data, the presence of an
`arrhythmia;
`
`receiving ECG data from an ECG sensor of the smartwatch; and
`
`confirming the presence of the arrhythmia based on the ECG data.
`
`’731 patent, claim 17 (AliveCor Op. Br., Exh. 2). There is no specialized engineering knowledge that
`
`a medical doctor would need to know to perform this method. Under AliveCor’s construction of
`
`this claim, medical doctors have been performing the equivalent of this method for decades, and
`
`continue to do so on a regular basis today, entirely in the absence of Apple’s accused products.1
`
`Notably, by excluding Apple’s alternate definition of a medical doctor from the level of
`
`ordinary skill in the art, AliveCor is arguably excluding its founder, and a named inventor on all three
`
`patents, David Albert, M.D. Dr. Albert received his undergraduate degree in Government, and
`
`
`1 AliveCor’s example (at page 6 of its opening brief) of a doctor whose patients use continuous
`glucose monitoring (CGM) is factually incorrect. CGM is primarily used for diabetics to monitor
`their blood glucose levels. See Luijf Langendam, et al., Continuous glucose monitoring systems for type 1
`diabetes mellitus, COCHRANE DATABASE SYST REV. (Jan. 18, 2012),
`https://pubmed.ncbi.nlm.nih.gov/22258980/. Diabetics often suffer from severe cardiac
`conditions, including degenerative heart disease and all kinds of arrhythmias, including atrial
`fibrillation. See Sun Y, Hu D. The link between diabetes and atrial fibrillation: cause or correlation?, J
`CARDIOVASC. DIS. RES., (2010), https://www.ncbi.nlm.nih.gov/pmc/articles/PMC3004163/. As
`such, a doctor whose patients are on CGM monitors are likely to understand cardiac conditions,
`particularly those relevant to the Asserted Patents.
`
`
`
`2
`
`7
`
`

`

`subsequently received his medical degree, but appears to have no undergraduate degree or other
`
`formal education in an engineering science. Exh. A (Albert LinkedIn Profile) at 3. Dr. Albert would
`
`fit Apple’s definition of a PHOSITA, but not AliveCor’s.
`
`In an effort to best capture a PHOSITA as of December 2013, Apple therefore believes that
`
`its inclusion of a person with a medical degree (M.D. or D.O.) and with at least two years of work
`
`experience using biomedical sensors and/or analyzing their data (in the context of industry, in
`
`biomedical academic research, or in practice treating patients) as an alternative to the level of
`
`ordinary skill in the art is appropriate and correct.
`
`B. Preambles of Claims 1 and 11 (’499 patent)
`
`Proposed Construction of
`Complainant
`Preambles are not limiting.
`
`Proposed Construction of
`Staff
`The preambles of the asserted
`claims are limiting.
`
`Proposed Construction
`of Respondent
`The preambles of claims 1
`and 11 are limiting.
`
`
`
`The preambles of claims 1 and 11 of the ’499 patent must be limiting in order provide
`
`context for the remainder of the claims—particularly the “said arrhythmia” of dependent claims 7-9
`
`and 17-19. Complainants argue that the Court should follow the general rule of not treating the
`
`preamble language as limiting, particularly because it only serves as antecedent basis for some of the
`
`dependent claims. AliveCor Op. Br. at 9. In support of those arguments, AliveCor cites outdated
`
`and non-binding authority on this Court, and ignores binding Federal Circuit authority that
`
`necessitates finding the preambles as limiting. See Claim Construction Brief of the Commission
`
`Investigative Staff (“Staff Br.”) at 9-10 (distinguishing the TQ Delta, LLC v. 2wire, Inc., 2018 WL
`
`4062617, at *4 (D. Del. Aug. 24, 2018) and CreAgri v. Pinnaclife, 2013 WL 1663611, at *5-10 (N.D.
`
`Cal. Apr. 16, 2013) district court Markman orders).
`
`Staff rightfully points out that Pacing Technologies v. Garmin International is controlling. And
`
`AliveCor agrees that when “limitations in the body of the claim rely upon and derive antecedent
`
`
`
`3
`
`8
`
`

`

`basis from the preamble, then the preamble may act as a necessary component of the claimed
`
`invention.” 778 F.3d 1021, 1024 (Fed. Cir. 2015)(citations omitted) (“Because the preamble terms
`
`“user” and “repetitive motion pacing system” provide antecedent basis for and are necessary to
`
`understand positive limitations in the body of claims in the ′ 843 patent, we hold that the preamble
`
`to claim 25 is limiting”).
`
`Here, in claims 1 and 11 of the ’499 patent, “an arrhythmia” in the preamble provides
`
`necessary antecedent basis to understand the “the arrhythmia” limitations in dependent claims of the
`
`’499 patent. See e.g., AliveCor Op. Brief, Exh. 1, ’499 Patent, claim 1 and claim 7. Unlike in Zimmer
`
`Surgical, Inc. v. Stryker Corp., 2018 WL 3038515, at *5 (D. Del. June 19, 2018), an unreported District
`
`of Delaware case on which AliveCor relies, the Federal Circuit has held preambles limiting where
`
`they provide essential context to the understanding of later claim terms, including in dependent
`
`claims. See Pacing Techs, 778 F.3d at 1024. Zimmer is distinguishable as the district court found that
`
`the preamble, the “patient” recited in the preamble, was not “necessary to understand” the later
`
`reference to “the patient” in the claim body. Zimmer, 2018 WL 3038515 at *5.
`
`The Federal Circuit has also held—contrary to AliveCor’s contention—that even where a
`
`statement of intended purpose is in the preamble, it can be limiting where it “recites essential
`
`elements of the invention” pertaining to the claimed method or structure. Bicon Inc. v. Straumann Co.,
`
`441 F.3d 945, 952 (Fed. Cir. 2006). “[P]reamble language will limit the claim if it recites not merely a
`
`context in which the invention may be used, but the essence of the invention without which
`
`performance of the recited steps is nothing but an academic exercise.” Boehringer Ingelheim Vetmedia,
`
`Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
`
`“A method of determining the presence of an arrhythmia” in claim 1 and the almost
`
`identical system in claim 11 of the ’499 patent are “not merely a statement of effect that may or may
`
`not be desired or appreciated. Rather, it is a statement of the intentional purpose” for which the
`
`
`
`4
`
`9
`
`

`

`method must be performed and for which the system exists. Jansen v. Rexall Sundown, Inc., 342 F.3d
`
`1329, 1332-33 (Fed. Cir. 2003). Here, the determination of whether “an arrhythmia” exists is central
`
`to the purported invention of the ’499 patent. The title of the patent itself, “Methods and Systems
`
`for Arrhythmia Tracking and Scoring” and the Abstract—“a dashboard centered around arrhythmia or
`
`atrial fibrillation tracking”—emphasize that even if the claims reference “an arrhythmia” in the
`
`preambles, they are the portions of the claims that embody the essence of the claimed invention. In
`
`other words, they undoubtedly “breathe[] life and meaning into the claim[s].” In re Paulsen, 30 F.3d
`
`1475, 1479 (Fed. Cir. 1994). If the preambles were found not limiting, as AliveCor suggests, the
`
`claims would read on other steps doctors would perform to understand a patients general health. See
`
`Apple Op. Br. at 12 (citing Exh. 1 (Stultz Decl.) at ¶¶ 38, 54, 59, 60).
`
`Under these circumstances, the preambles do more than merely state an intended purpose
`
`that need not be performed in order to practice the claims. The recite the very essence of the
`
`alleged invention, and thus, should be construed as limiting. See also Eli Lilly & Co. v. Teva Pharms.
`
`Int’l GmbH, 8 F.4th 1331, 1340-43 (Fed. Cir. 2021)(finding language of intended purpose in the
`
`preamble limiting where it is central to purpose of claimed invention).
`
`C. “alerting said first user to sense an electrocardiogram” (’499 patent claim 1) /
`“alert” (’499 patent claim 11)”
`
`
`
`Apple’s Proposed
`Construction
`“informing the first user to take an
`electrocardiogram” (claim 1) /
`“inform” (claim 11)
`
`AliveCor’s Proposed
`Construction
`No construction required.
`
`Alternatively: “notifying said
`first user to sense an
`electrocardiogram” (claim 1) /
`“notify” (claim 11)
`
`Staff’s Proposed
`Construction
`No construction necessary.
`
`However, if construed:
`“informing the first user to
`take an electrocardiogram”
`(claim 1)
`/ “inform” (claim 11)
`
`
`The correct construction of the phrase “alerting said first user to sense an
`
`electrocardiogram” in claim 1 of the ’499 patent is “informing the first user to take an
`
`
`
`5
`
`10
`
`

`

`electrocardiogram.” The correct construction of “alert” in claim 11 of the ’499 patent is “inform.”
`
`Staff agrees that these are the correct constructions if the Court construes the phrases in dispute.
`
`The operative question, thus, is whether the Court should construe the terms. It should.
`
`One criterion for seeking to construe a claim term is if the construction “aids the court and
`
`the jury in understanding the term as it is used in the claimed invention.”2 Funai Elec. Co., v. Daewoo
`
`Elecs. Corp., 616 F.3d 1357, 1366 (Fed. Cir. 2010). Here, Apple’s proposed construction does exactly
`
`that in serving to make more clear what is the scope of the alleged invention.
`
`With respect to the phrase from claim 1, AliveCor does not and cannot dispute that “to take
`
`an electrocardiogram” is a correct construction of “to sense an electrocardiogram.” The
`
`specification of the ’499 patent itself uses those words: “Alternatively or in combination, the
`
`instructions to the user may be to take a further step such as to take an electrocardiogram (e.g. to
`
`verify the presence of an arrhythmia) ….” (id. at col. 20:64-66 (emphasis added)); “the handheld
`
`ECG monitor 103 may be used by user to take an ECG measurement which the handheld ECG
`
`monitor 103 may send to the local computing device by connection 103a” (id. at col. 6:63-66
`
`(emphasis added)); and “Subject takes detailed ECG with ambulatory monitor” (id. at Fig. 10, Step
`
`1008 (emphasis added)). See also Staff Br. at 13-14. And AliveCor’s criticism that Apple did not seek
`
`to construe “sensing” in claim 1 of the ’499 patent is not only unavailing to AliveCor’s position, it
`
`actually serves to support Apple’s proposed construction.
`
`Claim 1 only uses the words “to sense” in the context of a taking an electrocardiogram.
`
`Claim 1 does include the phrase “sensing a heart rate of said first user with a heart rate sensor.”
`
`However, the difference in “sensing a heart rate” and “to sense an electrocardiogram” presents an
`
`important distinction in the context of the claim. As Apple explained in its opening brief, there are
`
`
`2 Apple recognizes that this case will not be tried to a jury. Nonetheless, Apple believes that the
`construction will undoubtedly aid the Court in deciding this case.
`
`
`
`6
`
`11
`
`

`

`certain types of sensors that can continually monitor a patient’s status and can operate entirely in the
`
`background without user involvement. Apple Op. Br. at 5. By comparison, for a user to measure
`
`an ECG, the sensor has to measure the electrical activity across the heart, and thus, must “close the
`
`loop” to measure the ECG. Id. at 6. Thus, while “sensing” and “to sense” may be related concepts,
`
`in the context of claim 1, they are actually conveying different ideas, i.e., that the claimed method
`
`using the heart rate sensor is measuring a heart rate, including in the background, while there needs
`
`to be some action by the user to take an ECG.3 Thus, “to sense an electrocardiogram” is properly
`
`construed as “to take an electrocardiogram” and makes clearer the requirements of claim 1.
`
`The same is true of the “alerting said first user” portion of the disputed phrase from claim 1.
`
`As Apple and Staff both explained in their respective opening briefs, “alerting” in the context of the
`
`’499 patent means “informing.” Indeed, the embodiment that both Apple and Staff point to
`
`expressly informs the user to take and record an ECG by displaying a message to the user: “Alert!
`
`Record ECG.” ’499 Patent, col. 23:12-22; Fig. 10; see also Apple Op. Br. at 15-16; Staff Br. at 12-13.
`
`AliveCor cites no embodiment where a “trigger message” is not required as an alert to the user to
`
`take an ECG. Indeed, as Apple referenced in its opening brief, the specification of the ’499 patent
`
`clearly contemplates a trigger message to inform the user to take the ECG. Apple. Op. Br. at 14-15.
`
`And the prosecution history further supports Apple’s proposed construction. Id. at 16-17. This
`
`same analysis applies to “alert” in claim 11.
`
`Not only are Apple’s proposed constructions how a person of ordinary skill in the art in
`
`December 2013 would have understood the phrases “alerting said first user to sense an
`
`
`3 To the extent the Court believes that “sensing” and “to sense” should be construed consistently,
`Apple is willing to agree that “sensing” in the context of the claim 1 should be construed as
`“taking.” Separately, in the context of claim 11, “sense” is used only in the context of “activity
`level,” whereas “to receive” is used in the context of heart rate from the “heart rate sensor” and “to
`record” is used in the context of an ECG.
`
`
`
`7
`
`12
`
`

`

`electrocardiogram” and “alert,” they also aid the Court in understanding the proper scope of
`
`AliveCor’s claims, and prevent AliveCor from overreaching in making its infringement allegations
`
`against Apple.
`
`As such, the Court should adopt Apple’s proposed constructions.
`
`D. “heart rate sensor” (’499 patent claim 1 & 11)
`
`Apple’s Proposed
`Construction
`“A sensor that directly measures
`heart rate”
`
`AliveCor’s Proposed
`Construction
`No construction necessary.
`
`Alternatively: “a sensor for
`measuring heart rate”
`
`Staff’s Proposed
`Construction
`No construction necessary.
`Alternatively: “a sensor for
`measuring heart rate”
`
`
`
`
`
`The Court should construe “heart rate sensor” to mean “a sensor that directly measures
`
`heart rate” as this construction best captures the description of heart rate sensor disclosed in the
`
`specification of the ’499 patent, and the inventors’ disclaimer during prosecution.
`
`
`
`First, AliveCor is wrong that Apple’s proposed construction would read out every
`
`embodiment disclosed in the ’499 patent. The ’499 patent makes reference to tools and methods
`
`that measure heart rate directly (e.g., a digital; stethoscope or electronic stethoscope) by citing to and
`
`incorporating-by-reference U.S. Patent Appl. No. 13/964,490 (Apple Op. Br., Exh. 3), now the ’042
`
`patent at 4:33-36 (“Heart beat and heart rate can be detected as well using a conventional
`
`microphone assisted stethoscope 16 ….”).
`
`
`
`In applying the plain and ordinary meaning, or AliveCor’s alternative construction, “a sensor
`
`for measuring heart rate,” AliveCor ignores the fact that the patentee differentiated a “heart rate
`
`sensor” from other types of sensors that are capable of measuring heart rate, including a PPG sensor
`
`and an ECG sensor. See, e.g., ’499 patent, 8:41-45 (“the raw heart rate signals may be provided using
`
`an onboard heart rate sensor of the portable computing device or by using photoplethysmography
`
`implemented by an imaging source and light source of the portable computing device.”) (emphasis
`
`
`
`8
`
`13
`
`

`

`added). This point is further supported by the patentee’s choice in claiming a PPG sensor in the
`
`’731 patent, which has the same specification of the ’499 patent. See ’731 patent, cl. 1 (“receive PPG
`
`data from PPG sensor.”). AliveCor ignores these instructive distinctions made in the ’499 patent.4
`
`
`
`Second, AliveCor fails to address the prosecution history where the patentee clearly and
`
`unambiguously disclaimed an ECG as the claimed “heart rate sensor.” Specifically, as explained in
`
`Apple’s opening brief, the inventors disclaimed that the claimed “heart rate sensor” could include
`
`ECG data in overcoming the Patent Office’s rejection of the alleged invention in light of Levitan.
`
`See Apple Op. Br. at 18-19; see also id., Exh. 4 (11/14/2016 Response to Office Action) at 6-8.
`
`
`
`Staff’s arguments against Apple’s proposed construction fail for similar reasons. First, the
`
`primary example that Staff references in support of a plain and ordinary meaning is a citation to a
`
`“heart rate monitor,” and not the claimed “heart rate sensor” of the ’499 patent. See Staff Br. at 15
`
`(citing ’499 patent at 25:12-16) (emphasis added). Moreover, Staff’s reading of the prosecution
`
`history ignores the fact that Levitan was classified as a “generic sensor type” capable of sensing
`
`ECG. As referenced in the preceding paragraph, the patentee specifically distinguished generic
`
`sensor types, such as Levitan, in the prior art, from “the use of a heart rate sensor in determining
`
`an HRV.” Apple Op. Br., Exh. 4 (11/14/2016 Response to Office Action) at 6-8. Thus, there can
`
`be no doubt that the patentee clearly and unambiguously distinguished a heart rate sensor capable of
`
`determining an HRV from other generic sensors, including those capable of sensing an ECG and a
`
`PPG. Accordingly, Apple’s proposed construction should be adopted.
`
`
`4 AliveCor argues that Apple’s proposed construction would eliminate every device that constitutes a
`wristband, armband, and even potentially a patch. AliveCor Op. Br. at 16. However, AliveCor fails
`to provide any evidence that a digital stethoscope could not take form of a patch or other wearable
`device, such as a wristband and armband, as described in claim 2 of the ’499 patent. See, e.g., Kai
`Yang, et al., Heart Sound Denoising Using Computational Auditory Scene Analysis for a Wearable Stethoscope,
`IEEE 56TH INTERNATIONAL MIDWEST SYMPOSIUM ON CIRCUITS AND SYSTEMS (MWSCAS) (2013),
`https://ieeexplore.ieee.org/document/6674874.
`
`
`
`9
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`14
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`

`

`E. Order of steps (’499 patent claim 1)
`
`Apple’s Proposed
`Construction
`Should be performed in the order
`listed.
`
`AliveCor’s Proposed
`Construction
`While some ordering is dictated
`by logic, the limitations of the
`claim may be performed in
`different order than recited.
`
`Staff’s Proposed
`Construction
`While some ordering is
`dictated by logic, the
`limitations of the claim
`may be performed in
`different order than
`recited.
`
`
`The parties are generally in agreement that five of the six limitations of claim 1 of the ’499
`
`patent must be performed in order. AliveCor and Staff agree that limitations 1[A]-1[C] must be
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`performed in order, and that 1[E]-[F] must be performed in order. See AliveCor Op. Br. at 18-19;
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`Staff Br. at 19. The crux of the dispute is only whether step 1[D], the “sensing an activity level of
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`said first user with a motion sensor,” must come after steps 1[A]-[C] and before steps 1[E]-[F].
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`Logic, grammar, and even the evidence AliveCor cites, all support that the step of “sensing an
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`activity level . . .” must come in the order contemplated by and listed in the claim.
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`The grammar of the claim directs that a person of ordinary skill in the art would first look to
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`heart rate, as step 1[E] requires comparing the first measurement, “heart rate variability,” to the
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`second measurement, “activity level.” See ’499 patent claim 1; Apple Op. Br. at 22. Indeed, the
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`very evidence AliveCor cites in support of its position actually supports that step 1[D] should
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`similarly be performed in order. The portion of the specification cited by AliveCor in its opening
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`brief discloses steps where an ECG waveform is obtained and arrhythmia detection is assessed first.
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`There, the specification specifically notes that “[i]n addition to the parameters which may be derived
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`from the heart rate data described above, the heart health score may also be generated in response to
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`further physiological parameters.” ’499 patent at 19:42-46 (emphasis added). Figure 6 cited by
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`AliveCor specifically shows steps 602 and 608 taking place before “other sensor data” is assessed in
`
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`10
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`15
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`

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`steps 603 and 610. See Fig. 6. Indeed, the “RR interval extraction” of Step 610 requires a measured
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`heart rate:
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`’499 patent, Fig. 6 (annotated).
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`
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`The portion of the specification cited by AliveCor, claiming that activity and exercise level “may be
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`measured over time such as over substantially the same time scale or length,” only means that the
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`activity level may be measured over the same amount of time, not that activity level should be
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`measured first.5, 6 See AliveCor Op. Br. at 19; ’499 patent at 19:52-60.
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`The other passage of the specification AliveCor cites, explaining that “[a]n advisory
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`condition for recording an ECG can also occur when a measured heart rate increases rapidly without
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`
`5 Apple’s discussion here of the portions of the specification AliveCor cites does not undermine its
`arguments related to AliveCor’s prosecution disclaimer of “heart rate sensor” addressed in the
`preceding section. The ’499 patent’s specification was drafted before AliveCor disclaimed that a
`“heart rate sensor” could not be an ECG in prosecuting the ’499 patent’s claims. This merely
`illustrates that even AliveCor’s citations to the specification show that activity is measured after a
`heart rate parameter.
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`6 At best, the passages cited by AliveCor suggest that activity level could be measured at the same
`time as the heart rate parameter, but not before.
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`11
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`16
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`

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`a corresponding increase in activity monitored by, for example, an accelerometer” would not inform
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`a person of ordinary skill in the art that the system would track activity level before and during “a
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`measured heart rate increase.” Id. at 25:19-22. Again, the ’499 specification is silent on an
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`embodiment where a PHOSITA would first look to activity level before heart rate. And that is
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`intentional—that purported invention is claimed in the ’941 patent, which is based on a separate
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`disclosure. See ’941 Patent at claim 1. Accordingly, the steps of claim 1 of the ’499 patent must be
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`construed to be performed in their intended order.
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`F. “confirm the presence of the arrhythmia based on the ECG data” (’731 patent
`claim 1 & 15) and “confirming the presence of the arrhythmia based on the
`ECG data” (’731 patent, claim 17)
`
`AliveCor’s Proposed
`Apple’s Proposed
`Construction
`Construction
`No construction required.
`“verify the arrhythmia by
`
`comparing the ECG sensor data
`Alternatively: “identify[ing]
`to the PPG sensor data”
`the occurrence of the
`(Claims 1 & 25)
`arrhythmia based on the
`
`ECG data.”
`“verifying the arrhythmia by
`comparing the ECG sensor data
`to the PPG sensor data”
`(Claim 17)
`
`Staff’s Proposed
`Construction
`No construction necessary.
`
`These claims do not require
`verifying an arrhythmia by
`comparing ECG sensor data to
`PPG sensor data
`
`If, however, these claims are
`construed, they mean: “verify the
`presence of the arrhythmia based
`on the ECG data” (claims 1 &
`25)
`
`No construction necessary.
`
`This claims does not require
`verifying an arrhythmia by
`comparing ECG sensor data to
`PPG sensor data
`
`If, however, this claim is
`construed: “verifying the presence
`of the arrhythmia based on the
`ECG data” (claim 17)
`
`
`
`
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`12
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`17
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`

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`In arguing against Apple’s proposed constructions for the phrases “confirm the presence of
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`the arrhythmia based on the ECG data” from claims 1 and 25 and “confirming the presence of the
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`arrhythmia based on the ECG data” from claim 17, AliveCor ignores the cardinal rule of claim
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`construction to start with the claim language. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
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`Cir. 2005) (en banc) (“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the
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`invention to which the patentee is entitled the right to exclude.’” (citations omitted)). Specifically,
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`AliveCor wrongly and repeatedly argues that:
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`[T]he claims of the ’731 Patent recite confirming the presence of an
`arrhythmia based on ECG data alone …
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`Indeed, if one has clean ECG data, nothing else is required to identify an
`arrhythmia. …
`
`In particular, neither