IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Albert
`In re Patent of:
`U.S. Patent No.:
`9,649,042
`May 16, 2017
`Issue Date:
`Appl. Serial No.: 13/964,490
`Filing Date:
`August 12, 2013
`Title:
`HEART MONITORING SYSTEM USABLE WITH A
`SMARTPHONE OR COMPUTER
`
` Attorney Docket No.: 50095-0085IP1
`
`DECLARATION OF DR. MAJID SARRAFZADEH
`
`1
`
`APPLE 1003
`
`

`

`TABLE OF CONTENTS
`
`
`
`
`
`ASSIGNMENT ................................................................................................ 5
` QUALIFICATIONS ........................................................................................ 5
` SUMMARY OF CONCLUSIONS FORMED ................................................ 9
` BACKGROUND KNOWLEDGE ONE OF SKILL IN THE ART WOULD
`HAVE HAD PRIOR TO THE PRIORITY DATE OF THE ’042 PATENT10
`LEGAL PRINCIPLES ................................................................................... 11
`
`A. CLAIM CONSTRUCTION ................................................................................. 11
`B. PRIORITY ...................................................................................................... 12
`C. ANTICIPATION .............................................................................................. 12
`D. OBVIOUSNESS .............................................................................................. 13
` MATERIALS CONSIDERED ...................................................................... 14
` TECHNOLOGY OVERVIEW ...................................................................... 17
` OVERVIEW OF THE ’042 PATENT .......................................................... 19
` OVERVIEW OF THE PROSECUTION HISTORY .................................... 21
`SUMMARY OF THE PRIOR ART .............................................................. 22
`
`A. ALBERT ........................................................................................................ 22
`B. VYSHEDSKIY ................................................................................................ 25
`C. PLATT ........................................................................................................... 34
`D. ANNAVARAM ............................................................................................... 36
`E. BATKIN ........................................................................................................ 38
`F. BOSCHETTI ................................................................................................... 41
` ANALYSIS OF ALBERT IN VIEW OF VYSHEDSKIY ........................... 42
`A. THE COMBINATION OF ALBERT, VYSHEDSKIY AND PLATT .......................... 42
`1. Claim 1 ............................................................................................. 50
`2. Claim 2 ............................................................................................. 65
`3. Claim 3 ............................................................................................. 68
`
`2
`
`

`

`4. Claim 4 ............................................................................................. 69
`5. Claim 5 ............................................................................................. 70
`6. Claim 6 ............................................................................................. 72
`7. Claim 7 ............................................................................................. 74
`8. Claim 8 ............................................................................................. 76
`9. Claim 9 ............................................................................................. 79
`10. Claim 13 ....................................................................................... 80
`11. Claim 14 ....................................................................................... 81
` ANALYSIS OF ALBERT IN VIEW OF VYSHEDSKIY, PLATT AND
`ANNAVARAM ............................................................................................. 83
`A. THE ALBERT-VYSHEDSKIY-PLATT-ANNAVARAM COMBINATION ................. 83
`1. Claim 7 ............................................................................................. 86
`2. Claim 8 ............................................................................................. 87
`3. Claim 10 ........................................................................................... 88
`4. Claim 11 ........................................................................................... 88
`5. Claim 12 ........................................................................................... 90
` ANALYSIS OF BATKIN IN VIEW OF VYSHEDSKIY ............................ 91
`A. THE BATKIN-VYSHEDSKIY COMBINATION ................................................... 92
`1. Claim 1 ............................................................................................. 95
`2. Claim 2 ...........................................................................................109
`3. Claim 3 ...........................................................................................112
`4. Claim 4 ...........................................................................................114
`5. Claim 5 ...........................................................................................115
`6. Claim 6 ...........................................................................................116
`7. Claim 7 ...........................................................................................117
`8. Claim 8 ...........................................................................................118
`9. Claim 9 ...........................................................................................118
`10. Claim 13 .....................................................................................119
`11. Claim 14 .....................................................................................121
`
`3
`
`

`

` ANALYSIS OF BATKIN IN VIEW OF VYSHEDSKIY AND
`ANNAVARAM ...........................................................................................122
`A. THE BATKIN-VYSHEDSKIY-ANNAVARAM COMBINATION ..........................122
`1. Claim 7 ...........................................................................................125
`2. Claim 8 ...........................................................................................126
`3. Claim 10 .........................................................................................127
`4. Claim 11 .........................................................................................127
`5. Claim 12 .........................................................................................128
` ANALYSIS OF ALBERT IN VIEW OF VYSHEDSKIY, PLATT AND
`BATKIN ......................................................................................................130
`A. THE ALBERT-VYSHEDSKIY-PLATT-BATKIN COMBINATION .......................130
`1. Claim 8 ...........................................................................................132
` ANALYSIS OF ALBERT IN VIEW OF VYSHEDSKIY, PLATT AND
`BOSCHETTI ...............................................................................................133
`A. THE ALBERT-VYSHEDSKIY-PLATT-BOSCHETTI COMBINATION ..................133
`1. Claim 5 ...........................................................................................134
` ANALYSIS OF BATKIN IN VIEW OF VYSHEDSKIY AND
`BOSCHETTI ...............................................................................................134
`A. THE BATKIN-VYSHEDSKIY-BOSCHETTI COMBINATION ..............................135
`1. Claim 5 ...........................................................................................136
` CONCLUSION ..........................................................................................136
`
`
`
`
`
`
`4
`
`

`

`I, Dr. Majid Sarrafzadeh, declare that:
`
`
`1.
`
`ASSIGNMENT
`I have been retained on behalf of Apple Inc. (“Apple” or “Petitioner”)
`
`to offer technical opinions related to U.S. Patent No. 9,649,042 (“The ’042 patent”)
`
`(APPLE-1001). I understand that Apple is requesting that the Patent Trial and
`
`Appeal Board (“PTAB” or “Board”) to institute an inter partes review (“IPR”)
`
`proceeding of the ’042 patent.
`
`2.
`
`I have been asked to provide my independent analysis of the ’042
`
`patent in light of the prior art publications cited in this declaration.
`
`3.
`
`I am not and never have been, an employee of Apple. I received no
`
`compensation for this declaration beyond my normal hourly compensation based
`
`on my time actually spent analyzing the ’042 patent, the prior art publications cited
`
`below, and issues related thereto, and I will not receive any added compensation
`
`based on the outcome of any IPR or other proceeding involving the ’042 patent
`
` QUALIFICATIONS
`I am over the age of 18 and am competent to write this declaration. I
`
`4.
`
`have personal knowledge, or have developed knowledge of these technologies
`
`based upon education, training, or experience, of the matters set forth herein.
`
`5. My qualifications for forming the opinions in this report are
`
`summarized here and explained in more detail in my curriculum vitae, which I
`
`5
`
`

`

`understand is provided as an Exhibit to this declaration.
`
`6.
`
`I am currently a Distinguished Professor of computer science at
`
`UCLA and have been in that position for the last sixteen years. I am also the
`
`director of the UCLA Embedded and Reconfigurable Computing Laboratory (“ER
`
`Lab”), a co-founder of the UCLA Center for SMART Health, a co-director of the
`
`BRITE Center on Minority Health Disparities, and a co-founder of UCLA
`
`Wireless Health Institute.
`
`7.
`
`I earned Bachelor of Science, Master of Science, and Ph.D. degrees
`
`from the University of Illinois at Urbana-Champaign in Electrical and Computer
`
`Engineering in 1982, 1984, and 1987, respectively.
`
`8.
`
`I became an Assistant Professor of Electrical and Computer
`
`Engineering at Northwestern University in 1987, earned tenure in 1993, and
`
`became a Full Professor in 1997.
`
`9.
`
`In 2000, I joined the Computer Science Department at UCLA as a
`
`Full Professor. In 2008, I co-founded and became a director of the UCLA Wireless
`
`Health Institute. I currently teach two core undergraduate courses (involving
`
`implementing digital logic designs and advanced digital design techniques), a
`
`course on Algorithms and Complexity, and a series of graduate courses in the area
`
`of embedded systems and Wireless Health.
`
`10.
`
`I have experience as a system designer, circuit designer, and software
`
`6
`
`

`

`designer. This experience includes positions as a design engineer at IBM and
`
`Motorola and a test engineer at Central Data Corporation. I was the main architect
`
`of an Electronic Design Automation (“EDA”) software tool for Monterey Design
`
`Systems, Inc. (“Monterey”). I co-founded and managed the technical team at
`
`Hierarchical Design, Inc. (“Hier Design”), an EDA company that specialized in
`
`reconfigurable Field-Programmable Gate Array (FPGA) systems. Hier Design was
`
`acquired by Xilinx in 2004. I have cofounded MediSens Wireless, Bruin
`
`Biometrics, and WANDA Health.
`
`11. Before 1999, I was involved in the design of embedded systems and
`
`foundational work related to applications in healthcare, including classification of
`
`skin-related ulcers and laboratory automation systems.
`
`12.
`
`In the time frame between 2000 and 2004, I have worked on Remote
`
`Health Monitoring Systems such as Smart Assistive Devices, Personal Activity
`
`Monitor (PAM), and Smart Textiles for detecting pressure ulcer.
`
`13.
`
`I am a Fellow of the Institute of Electrical and Electronics Engineers,
`
`Inc. (“IEEE”). “IEEE Fellow is a distinction reserved for select IEEE members
`
`whose extraordinary accomplishments in any of the IEEE fields of interest
`
`are deemed fitting of this prestigious grade elevation.” I have received Time
`
`Magazine’s Best Inventions of 2020. Note that Time Magazine’s annual list
`
`highlights “game-changing innovations” in several categories, including design,
`
`7
`
`

`

`entertainment, consumer electronics and sustainability. Inventions were evaluated
`
`on their “originality, creativity, effectiveness, ambition and impact”. I was elected
`
`as a fellow in the National Academy of Inventors. The fellow award states that I
`
`have “demonstrated a highly prolific spirit of innovation in creating or facilitating
`
`outstanding inventions that have made a tangible impact on the quality of life,
`
`economic development, and welfare of society.” I have served on the technical
`
`program committees of numerous conferences in the area of system design. I
`
`cofounded the International conference on Wireless Health and have served in
`
`various committees of this conference.
`
`14.
`
`I have published approximately 550 papers, and have received a
`
`number of best paper and distinguished paper awards. I am a co-author of the book
`
`“Synthesis Techniques and Optimizations for Reconfigurable Systems” (2003 by
`
`Springer) and a co-author of papers such as:
`
` Adaptive Electrocardiogram Feature Extraction on Distributed Embedded
`
`Systems, IEEE Transactions on Parallel and Distributed Systems special
`
`issue on High Performance Computational Biology (2006);
`
` A Remote Patient Monitoring System for Congestive Heart Failure, Journal
`
`of Medical Systems (2011);
`
` SmartFall: An Automatic Fall Detection and Cause Identification System,
`
`IEEE Sensors Journal (2013); and
`
`8
`
`

`

` Designing a Robust Activity Recognition Framework for Health and
`
`Exergaming using Wearable Sensors, IEEE Journal of Biomedical and
`
`Health Informatics (2013).
`
` SUMMARY OF CONCLUSIONS FORMED
`15. This Declaration explains the conclusions that I have formed based on
`
`my analysis. To summarize those conclusions:
`
`
`
`Ground 1: Based upon my knowledge and experience and my review of the
`
`prior art publications in this declaration, I believe that claims 1-9 and 13-14
`
`of the ’042 patent are rendered obvious by Albert in view of Vyshedskiy.
`
`
`
`Ground 2: Based upon my knowledge and experience and my review of the
`
`prior art publications in this declaration, I believe that claims 10-12 of the
`
`’042 patent are rendered obvious by Albert in view of Vyshedskiy and
`
`Annavaram.
`
`
`
`Ground 3: Based upon my knowledge and experience and my review of the
`
`prior art publications in this declaration, I believe that claims 1-9 and 13-14
`
`of the ’042 patent are rendered obvious by Batkin in view of Vyshedskiy.
`
`
`
`Ground 4: Based upon my knowledge and experience and my review of the
`
`prior art publications in this declaration, I believe that claims 10-12 of the
`
`’042 patent are rendered obvious by Batkin in view of Vyshedskiy and
`
`Annavaram.
`
`9
`
`

`

` BACKGROUND KNOWLEDGE ONE OF SKILL IN THE ART
`WOULD HAVE HAD PRIOR TO THE PRIORITY DATE OF THE ’042
`PATENT
`16.
`
`I have been informed that a person of ordinary skill in the art is a
`
`hypothetical person who is presumed to have the skill and experience of an
`
`ordinary worker in the field at the time of the alleged invention. Based on my
`
`knowledge and experience in the field and my review of the ’042 patent and file
`
`history, I believe that a person of ordinary skill in the art in this matter would have
`
`had either (1) at least a bachelor of science in electrical engineering, mechanical
`
`engineering, or biomedical engineering, or a related discipline, with at least two
`
`years of relevant multidisciplinary work experience designing wearable devices
`
`and/or sensors for measuring physiological signals or parameters of mammals, or
`
`(2) a medical degree and at least five years of relevant work experience designing
`
`wearable devices and/or sensors for measuring physiological signals or parameters
`
`of mammals. A greater amount of education, i.e., a doctorate in electrical
`
`engineering, mechanical engineering, biomedical engineering, or a related
`
`discipline with a focus on designing wearable devices and/or sensors for measuring
`
`physiological signals or parameters of mammals would also qualify for the
`
`hypothetical person of ordinary skill in the art in lieu of fewer years of
`
`multidisciplinary work experience. Additional education or industry experience
`
`may compensate for a deficit in one of the other aspects of the requirements stated
`
`10
`
`

`

`above.
`
`17. My analysis and conclusions set forth in this declaration are based on
`
`the perspective of a person of ordinary skill in the art having this level of
`
`knowledge and skill as of the date of the alleged invention of the ’042 patent
`
`(“POSITA”). Based on instruction from Counsel, I have applied June 8, 2010
`
`(“Critical Date”), as the date of the alleged invention of the ’042 patent.
`
`18. Based on my experiences, I have a good understanding of the
`
`capabilities of a POSITA. Indeed, I have taught, mentored, advised, and
`
`collaborated closely with many such individuals over the course of my career.
`
` LEGAL PRINCIPLES
`19.
`I am not a lawyer and I will not provide any legal opinions in this IPR.
`
`Although I am not a lawyer, I have been advised that certain legal standards are to
`
`be applied by technical experts in forming opinions regarding the meaning and
`
`validity of patent claims.
`
`A. Claim construction
`I understand that claim terms are generally given their plain and
`
`20.
`
`ordinary meaning in light of the patent’s specification and file history as
`
`understood by a person of ordinary skill in the art at the time of the purported
`
`invention. In that regard, I understand that the best indicator of claim meaning is its
`
`usage in the context of the patent specification as understood by a POSITA. I
`
`11
`
`

`

`further understand that the words of the claims should be given their plain meaning
`
`unless that meaning is inconsistent with the patent specification or the patent’s
`
`history of examination before the Patent Office. I also understand that the words
`
`of the claims should be interpreted as they would have been interpreted by a
`
`POSITA at the time of the invention was made (not today).
`
`B.
`Priority
`I understand that a continuation application is a later-filed application
`
`21.
`
`that has the same disclosure (specification and figures) as an earlier filed
`
`application to which the later-filed application claims priority. A continuation is
`
`generally entitled to the same priority date as the later-filed application to which it
`
`claims priority.
`
`C. Anticipation
`I understand that a patent claim is invalid as anticipated if each and
`
`22.
`
`every element as set forth in the claim is found, either expressly or inherently
`
`described, in a single prior art reference. I also understand that, to anticipate, the
`
`reference must teach all of the limitations arranged or combined in the same way
`
`as recited in the claim. I do not rely on anticipation in this declaration.
`
`23. With respect to inherency, I understand that the fact that a certain
`
`result or characteristic may occur or be present in the prior art is not sufficient to
`
`establish the inherency of that result or characteristic. Instead, the inherent
`
`12
`
`

`

`characteristic must necessarily flow from the teaching of the prior art.
`
`D. Obviousness
`I understand that a patent claim is invalid if the claimed invention
`
`24.
`
`would have been obvious to a person of ordinary skill in the field at the time of the
`
`purported invention, which is often considered the time the application was filed.
`
`Thus, even if all of the claim limitations are not found in a single prior art
`
`reference that anticipates the claim, the claim can still be invalid.
`
`25. To obtain a patent, a claimed invention must have, as of the priority
`
`date, been nonobvious in view of the prior art in the field. I understand that an
`
`invention is obvious when the differences between the subject matter sought to be
`
`patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person having ordinary skill
`
`in the art.
`
`26.
`
`I understand that, to prove that prior art or a combination of prior art
`
`renders a patent obvious it is necessary to: (1) identify the particular references
`
`that, singly or in combination, make the patent obvious; (2) specifically identify
`
`which elements of the patent claim appear in each of the asserted references; and
`
`(3) explain a motivation, teaching, need, market pressure or other legitimate reason
`
`that would have inspired a person of ordinary skill in the art to combine prior art
`
`references to solve a problem.
`
`13
`
`

`

`27.
`
`I also understand that certain objective indicia can be important
`
`evidence regarding whether a patent is obvious or nonobvious. Such indicia
`
`include:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Commercial success of products covered by the patent claims;
`
`A long-felt need for the invention;
`
`Failed attempts by others to make the invention;
`
`Copying of the invention by others in the field;
`
`Unexpected results achieved by the invention as compared to the closest
`
`prior art;
`
`Praise of the invention by the infringer or others in the field;
`
`The taking of licenses under the patent by others;
`
`Expressions of surprise by experts and those skilled in the art at the making
`
`of the invention; and
`
`The patentee proceeded contrary to the accepted wisdom of the prior art.
`
`28. To the extent these factors have been brought to my attention, if at all,
`
`I have taken them into consideration in rendering my opinions and conclusions.
`
` MATERIALS CONSIDERED
`29. My analysis and conclusions set forth in this declaration are based on
`
`my educational background and experiences in the field (see Section II). Based on
`
`my above-described experience, I believe that I am considered to be an expert in
`
`14
`
`

`

`the field. Also, based on my experiences, I understand and know of the capabilities
`
`of persons of ordinary skill in the field during the early 1990s–2010s, and I taught,
`
`participated in organizations, and worked closely with many such persons in the
`
`field during that time frame.
`
`30. As part of my independent analysis for this declaration, I have
`
`considered the following: the background knowledge/technologies that were
`
`commonly known to persons of ordinary skill in this art during the time before the
`
`Critical Date; my own knowledge and experiences gained from my work
`
`experience in the field of the ’042 patent and related disciplines; and my
`
`experience in working with others involved in this field and related disciplines.
`
`31.
`
`In addition, I have analyzed the following publications and materials:
`
` U U.S. Patent No. 9,649,042 to Albert (“the ’042 patent”) (APPLE-1001)
`
` Excerpts from the Prosecution History of the ’042 patent (“the Prosecution
`
`History”) (APPLE-1002)
`
` Excerpts from the Prosecution History of European Patent Application No.
`
`11/793,020 (“the Prosecution History of EP11793020”) (APPLE-1004)
`
` U.S. Patent Publication No. 2004/0220488 (“Vyshedskiy”) (APPLE-1005)
`
` U.S. Patent No. 6,485,416 (“Platt”) (APPLE-1006)
`
` Annavaram, Murali, et al. “Multimodal sensing for pediatric obesity
`
`applications.” UrbanSense08 (2008): 21(“Annavaram”) (APPLE-1007)
`
`15
`
`

`

` U.S. Patent Publication No. 2005/0239493 (“Batkin”) (APPLE-1008)
`
` Lin, Feida, et al. “Operating system battle in the ecosystem of smartphone
`
`industry.” 2009 international symposium on information engineering and
`
`electronic commerce. IEEE, 2009 (“Lin”) (APPLE-1009)
`
` Kobelev, Alexander V., et al. “Smartphone-based Mobile Solutions for
`
`Health Control in Humans.” Russian-Bavarian Conference on Bio-Medical
`
`Engineering. 2007 (“Kobelev”) (APPLE-1010)
`
` Krejcar, Ondrej, et al. “Smartphone, PDA and Embedded Devices as mobile
`
`monitoring stations of Biotelemetric System.” 2009 5th IEEE GCC
`
`Conference & Exhibition. IEEE, 2009 (“Krejcar”) (APPLE-1011)
`
` U.S. Provisional Application No. 60/466,242 (“Vyshedskiy Provisional”)
`
`(APPLE-1012)
`
` U.S. Patent No. 8,273,053 to Saltzstein (“Saltzstein”) (APPLE-1013)
`
` Lessing, Lawrence. “Man of high fidelity.” Edwin Howard Armstrong
`
`(1956) (“Lessing”) (APPLE-1014)
`
` Mendoza, Elvira, et al. “Differences in voice quality between men and
`
`women: Use of the long-term average spectrum (LTAS).” Journal of voice
`
`10.1 (1996): 59-66 (“Mendoza”) (APPLE-1015)
`
` U.S. Patent No. 4,409,984 to Dick (“Dick”) (APPLE-1016)
`
` Ikonen, A. N. T. T. I. “Acoustic ecology in the digital era.” (2017) (APPLE-
`
`16
`
`

`

`1018)
`
` U.S. Patent Publication No. 20090149767 to Rossetti (“Rossetti”) (APPLE-
`
`1019)
`
` U.S. Patent No. 7,859,222 to Woud (“Woud”) (APPLE-1020)
`
` U.S. Patent No. 7,394,899 to Sacco Boschetti (“Boschetti”) (APPLE-1021)
`
` U.S. Patent No. 5,735,285 (“Albert”) (APPLE-1022)
`
` Mathie, M. J., J. Basilakis, and B. G. Celler. “A system for monitoring
`
`posture and physical activity using accelerometers.” 2001 Conference
`
`Proceedings of the 23rd Annual International Conference of the IEEE
`
`Engineering in Medicine and Biology Society. Vol. 4. IEEE, 2001 (APPLE-
`
`1023)
`
` TECHNOLOGY OVERVIEW
`32. The ’042 patent generally relates to using a personal ECG monitoring
`
`device (e.g., a cell phone case) to monitor the health of a patient from a remote
`
`location. APPLE-1001, Abstract. I provide below some background regarding the
`
`technologies and concepts that were known to those of ordinary skill in the art at or
`
`before the time of the alleged invention for the ’042 patent. In my opinion, the
`
`features I explain below would have been known and appreciated by one of
`
`ordinary skill in the art at that time. I rely on the disclosures, teachings, and
`
`suggestions I discuss below to demonstrate the state of the art known by such a
`
`17
`
`

`

`skilled person at that time to support my opinions regarding the ’042 patent and my
`
`opinions in Sections X-XV.
`
`33. By the Critical Date of June 8, 2010, remote health monitoring
`
`systems and processes were well-known. For example, Albert discloses a monitor
`
`that detects ECG signals and transmits ECG signals as audio signals to a
`
`computing device. APPLE-1022, Abstract and Fig. 1. Vyshedskiy discloses a
`
`monitor that detects ECG signals and transmits ECG signals as audio signals to a
`
`computing device. APPLE-1005, Abstract and Fig. 1. Batkin discloses a monitor
`
`(in the form of a cell phone case) that monitors ECG signals and transmits ECG
`
`signals as audio signals to a computing device. APPLE-1008, Abstract and Fig. 1.
`
`34. There are two fundamental ways to transmit modulated audio signals:
`
`amplitude modulation (AM) and frequency modulation (FM). AM method of audio
`
`transmission was first successfully carried out in the mid 1870s to produce quality
`
`radio over telephone lines and the original method used for audio radio
`
`transmissions. FM radio was developed in the United states mainly by Edwin
`
`Armstrong in the 1930s. A POSITA would have understood that AM and FM are
`
`largely interchangeable technologies. For example, Saltzstein discloses
`
`transmitting ECG audio signals using either AM or FM. APPLE-1013, 11:30-51.
`
`FM is a newer technology comparing to AM. Also, FM is immune to static.
`
`APPLE-1014, 59-60 (“Most static is an amplitude phenomenon”).
`
`18
`
`

`

` OVERVIEW OF THE ’042 PATENT
`35. The ’042 patent relates to a personal monitoring device that senses an
`
`ECG electric signal, converts the ECG electric signal into a modulated ECG audio
`
`signal, and transmits the modulated ECG audio signal to a computing device for
`
`demodulation, storage, transmission, display, and analysis. APPLE-1001, Abstract
`
`and 7:25-34.
`
`36. Specifically, Fig. 4 of the ’042 patent illustrates an example where the
`
`personal monitoring device is a cell phone case (converter assembly 14) that is
`
`configured to convert the electrical signals from the ECG electrodes (sensor
`
`assembly 12) to a frequency modulated physiological audio signal which is
`
`transmitted by an audio cable (cable 26) to a smartphone (3.5 mm headphone jack
`
`28 on smartphone 30). APPLE-1001, 5:49-54.
`
`19
`
`

`

`APPLE-1001, Fig. 4 (annotated).
`
`
`
`37. The ’042 patent also discloses that using a high carrier frequency of
`
`around 10 kHz, or in the 6 kHz to 20 kHz range, allows simultaneous recording of
`
`voice (e.g., spoken messages) and physiological (e.g., ECG) signals over a single
`
`audio channel, where the voice and the frequency modulated physiological signals
`
`are in different frequency bands that can be readily filtered and separated. APPLE-
`
`1001, 6:3-8.
`
`38. The ’042 patent further discloses that the computing device (e.g., a
`
`smartphone) can be programed to digitize and demodulate the frequency
`
`modulated ECG audio signal (having a carrier frequency in the range of from about
`
`6 kHz to about 20 kHz) to produce real time demodulated digital ECG data, and to
`
`20
`
`

`

`display the ECG data on a display screen of the computing device. APPLE-1001,
`
`3:19-28.
`
` OVERVIEW OF THE PROSECUTION HISTORY
`39. During prosecution, the claims were rejected as obvious over LeBouf
`
`(US2010/0217100A1) and Goeltz (US3779237), in view of Amitai
`
`(US2010/0042008) or Sherman (US2011/0015496). APPLE-1002, 265
`
`(12/21/2015 non-final rejection).
`
`40.
`
`In response, Applicant amended claim 9 to recite “a frequency
`
`modulated ECG audio signal having a carrier frequency in the range of from about
`
`6 kHz to about 20 kHz” and argued that this limitation was not suggested by any of
`
`the cited references. APPLE-1002, 162 (6/21/2016 response, page 10). Applicant
`
`argued that the claimed carrier frequency range provides three advantages: (1) it
`
`provides communication that is immune to ambient and voice noise contamination;
`
`(2) it creates both a lower noise and a silent communication between ECG
`
`acquisition electronics and the mobile computing device; (3) it allows
`
`simultaneous recording of voice and physiological signals over a single audio
`
`channel, where voice and the FM signal are in different frequency bands. APPLE-
`
`1002, 163 (6/21/2016 response, page 11).
`
`41. The Examiner conceded that the cited references did not disclose this
`
`frequency range of from about 6 kHz to about 20 kHz (7/18/2016 Interview
`
`21
`
`

`

`Summary) and issued a Notice of Allowance (1/6/2017 Notice of Allowance).
`
`42. The Examiner did not use Vyshedskiy in any rejection during
`
`prosecution. Different from the references cited by the Examiner (Leboeuf, Goeltz
`
`Amitai and Sherman), Vyshedskiy discloses the claimed frequency range.
`
`43. During the prosecution of European Patent Application No.
`
`11793020.6, a sister application of the ’042 patent, the Examiner rejected claims
`
`similar to the Challenged Claims over US20050239493A1 (Batkin),
`
`US20080146892A1 (Leboeuf), US20040220488A1 (Vyshedskiy), US3779237
`
`(Roth), US3042277 (Depedro), US5321618 (Gessman), and US5735285 (Albert).
`
`See APPLE-1004, 17 (Amended Claims dated October 12, 2020) and 23-35
`
`(Grounds for Decision dated October 12, 2020). AliveCor withdrew this European
`
`application. APPLE-1004, 1-3. The prosecution in Europe is relevant because the
`
`specific references and combinations of references considered in Europe have not
`
`been considered in the United States against the ’042 patent and were used to
`
`prevent issuance of highly similar claims. These references and the combinations
`
`advanced in this petition—not previously considered in the United States--
`
`demonstrate that, as in Europe, the ’042 patent never should have issued and all
`
`claims of the ’042 patent should be cancelled as obvious.
`
`
`
`SUMMARY OF THE PRIOR ART
`A. Albert
`
`22
`
`

`

`44. Albert (US5735285) is a patent titled “Method and hand-held
`
`apparatus for demodulating and viewing frequency modulated biomedical signals.”
`
`45. Similar to the ’042 patent, Albert discloses a method and apparatus for
`
`physiological data acquisition via the sound input of a computing device. APPLE-
`
`1022, Abstract. Specifically, as shown below in Fig. 1 of APPLE-1022, a Heart
`
`Card 12 monitors an ECG electric signal and converts the ECG electric signal into
`
`a frequency modulated ECG sound signal 14. APPLE-1022, Fig. 1 and 3:10-24.
`
`This frequency modulated ECG sound signal 14 can be transmitted via a speaker
`
`(and a telephone system) to a microphone of a computing device 16, which
`
`“includes resident software that processes the biomedical data contained in the
`
`frequency modulated audio signal and displays the data on the computer screen
`
`18.” APPLE-1022, 3:25-31.
`
`
`
`
`
`APPLE-