`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALIVECOR, INC.,
`Petitioner
`
`v.
`
`APPLE INC.,
`Patent Owner
`____________
`
`Case No. IPR2024-00169
`U.S. Patent No. 10,076,257 B2
`____________
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §312 AND 37 C.F.R. §42.104
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`

`

`
`
`II.
`
`TABLE OF CONTENTS
`LIST OF EXHIBITS .............................................................................................. vi
`I.
`STANDING; FEES ....................................................................................... 1
`A.
`STANDING UNDER 37 C.F.R. §42.104(A) ................................................ 1
`B.
`PAYMENT OF FEES ................................................................................... 2
`BACKGROUND ........................................................................................... 2
`A. RELIANCE ON EXPERT ANALYSIS AND TESTIMONY ................................. 2
`B. OVERVIEW OF THE ’257 PATENT .............................................................. 2
`C.
`PROSECUTION HISTORY OF THE ’257 PATENT .......................................... 5
`D.
`PRIORITY OF THE ’257 PATENT ................................................................ 5
`E.
`LEVEL OF ORDINARY SKILL IN THE ART .................................................. 5
`F. CLAIM CONSTRUCTION ............................................................................ 6
`III. STATEMENT OF PRECISE RELIEF REQUESTED .......................... 11
`A.
`STATUTORY GROUNDS FOR CANCELLATION .......................................... 11
`B.
`STATUS OF REFERENCES AS PRIOR ART ................................................. 12
`IV. SPECIFIC PROPOSED GROUNDS FOR UNPATENTABILITY ...... 13
`A. OVERVIEW OF KEY PRIOR ART .............................................................. 13
`B. GROUND 1: CLAIMS 1-4, 8, 10, 11, AND 14 ARE UNPATENTABLE AS
`ANTICIPATED BY MILLS ......................................................................... 15
`C. GROUND 2: CLAIMS 1-4 AND 8-22 ARE UNPATENTABLE AS OBVIOUS
`IN VIEW OF MARKEL IN COMBINATION WITH MILLS. .............................. 39
`SECONDARY CONSIDERATIONS ....................................................... 82
`V.
`VI. DISCRETION SHOULD NOT PRECLUDE INSTITUTION .............. 82
`A. THE GENERAL PLASTIC FACTORS FAVOR INSTITUTION §314(A) ............. 84
`B. THE FINTIV FACTORS FAVOR INSTITUTION §314(A) .............................. 87
`
`ii
`
`

`

`
`
`VII. PETITIONER’S RANKING OF PETITIONS ........................................ 89
`VIII. CONCLUSION ........................................................................................... 90
`IX. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 .............................. 91
`A. REAL PARTY IN INTEREST UNDER 37 C.F.R. §42.8(B)(1) ...................... 91
`C. RELATED MATTERS UNDER 37 C.F.R. §42.8(B)(2) ............................... 91
`D. DESIGNATION OF COUNSEL UNDER 37 C.F.R. §42.8(B)(3) .................... 91
`E.
`SERVICE INFORMATION .......................................................................... 93
`
`
`
`
`
`
`iii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`
`
`CASES PAGE(S)
`AliveCor, Inc. v. Apple Inc.,
`IPR2023-00948 (PTAB) ..................................................................................... 87
`AliveCor, Inc. v. Apple Inc.,
`IPR2023-00949 (PTAB) ..................................................................................... 87
`AliveCor, Inc. v. Apple Inc.,
`IPR2023-00950 (PTAB) ..............................................................................passim
`AliveCor, Inc. v. Apple Inc.,
`IPR2023-01434 (PTAB) ..................................................................................... 87
`AliveCor, Inc. v. Apple Inc.,
`IPR2024-00095 (PTAB) ..................................................................................... 87
`Apple Inc. v. AliveCor, Inc.,
`Case 4:22-cv-07608-HSG (N.D. Cal.) .................................................... 82, 88, 91
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) ............................................. 87
`Apple Inc. v. Speir Techs. Ltd.,
`IPR2023-00305, Paper 2 (PTAB Dec. 9, 2022) ................................................... 1
`Apple Inc. v. Speir Techs. Ltd.,
`IPR2023-00305, Paper 9 (PTAB May 15, 2023) ......................................... 83, 90
`Apple Inc. v. Uniloc 2017 LLC,
`IPR2020-00854, Paper 9 (PTAB Oct. 28. 2020) ................................................ 84
`Code200, UAB v. Bright Data Ltd.,
`IPR2022-00861, Paper 18 (PTAB Aug. 23, 2022) ............................................. 84
`CommScope Technologies LLC v. Dali Wireless, Inc.,
`IPR2022-01242, Paper 23 (PTAB Feb. 27, 2023) .............................................. 89
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016- 01357 ...................................................................................... 84, 85, 86
`
`iv
`
`

`

`
`
`In re Nilssen,
`851 F.2d 1401 (Fed. Cir. 1988) .......................................................................... 12
`Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
`485 F.3d 1157 (Fed. Cir. 2007) .......................................................................... 82
`Masimo Corp. v. Apple Inc.,
`IPR2023-00745, Paper 8 (PTAB Oct. 16, 2023) ........................................ 1, 6, 84
`OpenSky Industries, LLC v. VLSI Tech. LLC.,
`IPR2021-01064, Paper 102 (PTAB Oct. 17, 2022) ............................................ 86
`Unwired Planet, LLC v. Google Inc.,
`841 F.3d 995 (Fed. Cir. 2016) ............................................................................ 12
`STATUTES
`35 U.S.C. § 102 ........................................................................................................ 11
`35 U.S.C. § 103 ........................................................................................................ 12
`35 U.S.C. §315(c) .................................................................................................... 86
`OTHER AUTHORITIES
`37 C.F.R. §42.8 ........................................................................................................ 91
`37 C.F.R. §42.8(b)(1) ............................................................................................... 91
`37 C.F.R. §42.8(b)(2) ............................................................................................... 91
`37 C.F.R. §42.8(b)(3) ............................................................................................... 91
`37 C.F.R §42.10(b) .................................................................................................. 93
`37 C.F.R. §42.104(a) .................................................................................................. 1
`
`
`
`v
`
`

`

`
`
`Exhibit
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`LIST OF EXHIBITS
`
`Short Name
`’257 Patent
`
`Description
`U.S. Patent No. 10,076,257
`
`’257 File History Prosecution History of U.S. Patent No.
`10,076,257 B2
`
`Oslan
`Declaration
`
`Declaration of Alan L. Oslan
`
`Oslan CV
`
`Curriculum Vitae of Alan L. Oslan
`
`Markel
`
`Mills
`
`--
`
`U.S. Pat. Pub. No. 2007/0021677, published
`January 25, 2007
`
`U.S. Pat. No. 5,351,695
`
`Reserved
`
`Cromwell
`
`Leslie Cromwell et al., Biomedical
`Instrumentation and Measurements (1973)
`
`--
`
`--
`
`--
`
`Reserved
`
`Reserved
`
`Reserved
`
`Schlub
`
`Hooven
`
`ABS Plastic
`
`U.S. Pat. Pub. No. 2008/015063
`
`U.S. Pat. Pub. No. 2005/0033284
`
`ABS Plastic Properties, ADECRO PLASTICS
`(last visited March 13, 2023),
`www.adrecoplastics.co.uk/abs-plastic-
`properties/#:~:text=Finally%2C%20ABS%2
`0has%20low%20heat,absorb%20shock%20e
`ffectively%20and%20reliably
`
`vi
`
`

`

`Ex. 1016
`
`Ex. 1017
`
`Ex. 1018
`
`Ex. 1019
`
`American
`Heritage
`
`Wiley
`
`Ex. 1020
`
`Stedman
`
`Ex. 1021
`
`National Judicial
`Caseload Profile
`
`Ex. 1022
`
`AliveCor’s
`Motion to Stay
`
`
`
`Exhibit
`Ex. 1015
`
`Short Name
`Nave
`
`Description
`Carl R. Nave, Conductors and Insulators,
`HYPERPHYSICS (last visited March 13, 2023),
`http://hyperphysics.phy-
`astr.gsu.edu/hbase/electric/conins.html#c1
`
`Merriam-
`Webster’s
`
`Merriam-Webster’s Collegiate Dictionary
`(11th ed. 2004)
`
`Random House Random House Unabridged Dictionary (2nd
`ed. 1993)
`
`The American Heritage Dictionary of the
`English Language (4th ed. 2000)
`
`Steven M. Kaplan, Wiley Electrical and
`Electronics Engineering Dictionary (2004)
`
`Stedman’s Medical Dictionary (28th ed.
`2006)
`
`U.S. District Courts – National Judicial
`Caseload Profile (accessed via
`https://www.uscourts.gov/sites/default/files/f
`cms_na_distprofile0331.2022.pdf)
`
`AliveCor’s Motion to Stay Pending IPRs in
`Apple Inc. v. AliveCor, Inc., 4:22-cv-07608-
`HSG, filed October 23, 2023.
`
`vii
`
`

`

`
`
`AliveCor, Inc. (“Petitioner”) requests inter partes review of Claims 1-4 and
`
`8-22 of U.S. Patent No. 10,076,257 (“the ’257 patent”). The patentability analysis
`
`of this Petition mirrors the petition filed on March 22, 2023, by Massimo
`
`Corporation (“Masimo”) in Case No. IPR2023-00745 (the “Masimo Proceeding”)
`
`and is submitted herein for the purposes of joinder. The Board instituted review in
`
`the Masimo Proceeding on October 16, 2023, finding that Masimo “demonstrated a
`
`reasonable likelihood of success in proving that at least one claim of the ’257 patent
`
`is unpatentable.” Masimo Corp. v. Apple Inc., IPR2023-00745, Paper 8 at 44 (PTAB
`
`Oct. 16, 2023). So too does this mirror-image Petition.
`
`Concurrently with this Petition, Petitioner conditionally moves for joinder
`
`with the Masimo Proceeding if, and only if, the Board denies institution of
`
`Petitioner’s Original Petition in Case No. IPR2023-00950 (the “AliveCor
`
`Proceeding”). As discussed below in Sections VI and VII, Petitioner submits this
`
`Petition and seeks conditional joinder with the intent to participate in a single inter
`
`partes review, preferably the AliveCor Proceeding. See Apple Inc. v. Speir Techs.
`
`Ltd., IPR2023-00305, Paper 2 (PTAB Dec. 9, 2022).
`
`I.
`
`STANDING; FEES
`
`A. Standing Under 37 C.F.R. §42.104(a)
`
`Petitioner certifies that the ’257 Patent is available for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR.
`
`- 1 -
`
`

`

`
`
`B. Payment of Fees
`
`Petitioner authorizes Account No. 16-0605 to be charged.
`
`II. BACKGROUND
`
`A. Reliance on Expert Analysis and Testimony
`
`The predominant issues in this Petition, as in most patentability challenges,
`
`are technical issues for which expert analysis is relevant, particularly with respect to
`
`what would have been known or understood by a person of ordinary skill in the art
`
`(“POSITA”). Accordingly, this Petition largely adopts the expert analysis and
`
`testimony of Mr. Alan L. Oslan. EX1003 ¶¶ 1-135; EX1004.1
`
`B. Overview of the ’257 Patent
`
`The ’257 patent is directed to an electronic device, such as a mobile phone,
`
`that includes “a heart sensor having several leads for detecting a user’s cardiac
`
`signals.” EX1001, Abstract. Fig. 3 (reproduced below)2 depicts a mobile phone 300
`
`including a bezel 310, leads 322, 324 and embedded lead 326. EX1003, ¶39.
`
`
`
` In general, herein, a single citation to Mr. Oslan expert declaration is provided at
`
` 1
`
`the end of each paragraph that is supported by Mr. Oslan’s testimony.
`
`2 All reproduced figures herein are annotated unless otherwise stated.
`
`- 2 -
`
`

`

`
`
`
`The ’257 patent admits electronic devices incorporating leads for detecting
`
`cardiac signals are not innovative. The ’257 patent explains existing electronic
`
`devices can detect a user’s cardiac signals by providing “at least two leads that the
`
`user contacts.” EX1001 at 1:57-58. Instead, the ’257 patent alleges novelty in the
`
`improvement of the aesthetic qualities of the electronic device with respect to the
`
`positioning of the leads. As stated in the background section, the approach of prior
`
`art devices placing “the leads … on the exterior surface” of the housing (or
`
`enclosure) of the electronic device “is not aesthetically pleasing.” Id. at 1:58-63.
`
`EX1003, ¶40.
`
`By their own admission, the inventors of the ’257 patent did not invent a heart
`
`sensor having leads for detecting a user’s cardiac signals nor incorporation of a heart
`
`- 3 -
`
`

`

`
`
`sensor into an electronic device. EX1001 at 1:57-58. They did not invent
`
`incorporation of a heart sensor into an electronic device. Id. Rather, the inventors
`
`merely expressed an opinion that embedding the leads in an enclosure allegedly
`
`results in aesthetically pleasing qualities. Id. at 1:58-63; EX1003, ¶40. Such
`
`embedding, however, is also not inventive. As evidenced herein, multiple prior art
`
`references recognized and expressly teach concealing leads by embedding them into
`
`an enclosure of an electronic device.
`
`For example, both prior art references Mills and Markel disclose embedded
`
`ECG leads in electronic devices with aesthetic considerations:
`
`Mills teaches electrodes 14 and 16 are formed as an “integral part” of
`
`housing 12. EX1006, 3:47-51. Mills provides a metal-plating composition to its
`
`electrodes for “aesthetic reasons.” Id., 5:37-40. Similarly, Markel teaches electrodes
`
`that are “integrated into various molded components” of the device and
`
`
`
`- 4 -
`
`

`

`
`
`“substantially concealed (or hidden) from a user … with little or no visible indication
`
`of the electrode presence.” EX1005, [0040].
`
`C. Prosecution History of the ’257 Patent
`
`The examiner rejected the claims several times before allowing them after
`
`Patent Owner made several narrowing amendments to the independent claims.
`
`Specifically, Patent Owner added the limitation of an embedded “pad” to claim 1
`
`and the limitation of an electrode embedded in a “display” for Claim 15. EX1002,
`
`p77, 80. However, the applicant did not submit, and the examiner did not consider,
`
`any of the prior art references that Petitioner relies on in this Petition. See generally
`
`EX1002.
`
`D. Priority of the ’257 Patent
`
`The ’257 patent is a continuation of U.S. App. No. 12/358,905, filed January
`
`23, 2009 (now U.S. Pat. No. 8,615,290), which in turn claims priority to U.S. Prov.
`
`App. No. 61/111,498, filed November 5, 2008. Thus, its earliest possible priority
`
`date is November 5, 2008. EX1001, cover.
`
`E. Level of Ordinary Skill in the Art
`
`A POSITA of the ’257 patent would have at least a B.S. degree in electrical
`
`or biomedical engineering or a related field, with at least two years of experience
`
`designing patient monitoring or similar systems. A higher level of education may
`
`compensate for less work experience and vice versa. EX1003, ¶38.
`
`- 5 -
`
`

`

`
`
`F. Claim Construction
`
`In the Institution Decision for the Masimo Proceeding, the Board found “no
`
`need for express construction of any term at this stage of the proceeding.” Masimo
`
`Corp. v. Apple Inc., IPR2023-00745, Paper 8 at 14 (PTAB October 16, 2023).
`
`AliveCor includes Masimo’s discussion of claim construction so that this Petition is
`
`substantially the same as the original Masimo Petition.
`
`1. Embedded
`
`Independent Claim 1 recites “embedded” first and second pads of respective
`
`first and second leads. Dependent Claim 9 recites a third lead “embedded” with a
`
`display. Independent Claim 15 recites “embedded” first and second leads. The ‘257
`
`patent does not provide a definition of “embedded.”
`
`The ‘275 patent discloses two examples of leads 422, 472 “embedded” into
`
`portions of the housing or enclosure 410, 460. EX1001 at 9:19-20, 22-24. Fig. 4A
`
`shows embedded lead 422 “along the outer surface of the bezel 410” and “exposed
`
`to the user during use.” Id. at 9:22-24. In contrast, Fig. 4B shows embedded lead 472
`
`“positioned against the back surface of the bezel 460” Id. at 9:34-45. EX1003, ¶44.
`
`- 6 -
`
`

`

`
`
`
`
`The ‘257 patent also explains that a lead can be embedded if it is “placed within the
`
`thickness of bezel … but underneath the outer surface of the bezel.” EX1001, 9:45-
`
`48, EX1003, ¶44.
`
`Appropriate dictionary definitions of embedded as used in the ‘257 patent
`
`include “to make something an integral part of” (EX1016, 406); “to be or become
`
`fixed or incorporated, as into a surrounding mass” (EX1017, 635); “to cause to be
`
`an integral part of a surrounding whole” (EX1018, 583). EX1003, ¶45.
`
`A POSITA would understand at the time of the ‘257 patent disclosure based
`
`on its usage in the specification, the claim term “embedded” means “an integral part
`
`of” such as, by “being placed in the thickness of a surrounding material including
`
`forming an outer and/or inner surface” or “placed underneath an exterior surface
`
`and against an inner surface.” EX1003, ¶46; EX1001, 9:34-48.
`
`- 7 -
`
`

`

`
`
`2. Lead
`
`A POSITA would have understood that a common definition of a lead is a
`
`“conductor, usually a wire, by which circuit elements or points are connected to
`
`components, devices, equipment, systems, points or materials. Also called a lead
`
`wire.” EX1019, 414. Another technical dictionary defines a lead as an
`
`“electrocardiographic cable with connections within the electronics of the machine
`
`designated for an electrode placed at a particular point on the body surface.”
`
`EX1020, 10162; EX1003, ¶47.
`
`A POSITA would understand a common basic electrocardiogram (ECG)3
`
`system to include a number of “leads” typically formed from an “electrode” in
`
`contact with the user’s skin (sometimes referred to as a “pad”) and may include a
`
`“lead wire”, one or more connectors, and other components to electrically couple a
`
`body electrical signal at the electrode to processing circuitry. For example, a typical
`
`ECG lead can be graphically illustrated as follows:
`
`
`
` Electrocardiogram is abbreviated as both ECG and EKG. EX1008, 31.
`
` 3
`
`- 8 -
`
`

`

`
`
`
`Electric potentials measured by each lead are compared to other electrodes to
`
`determine a voltage (e.g., a difference between two electrical potentials). The
`
`measured voltage is the ECG signal. EX1003, ¶48.
`
`The ’257 describes an electronic device with a sensor such that “electrical
`
`signals generated by the user can be transmitted from the user’s skin through the
`
`electronic device housing to the leads.” EX1001, Abstract. Accordingly, this device
`
`is a type of electrocardiogram (ECG). In the context of an ECG system, an
`
`“electrode” is a well-known term of art that a POSITA understands to mean a
`
`structure, such as a pad, that contacts the user’s skin to detect the user’s ECG.
`
`EX1003, ¶49.
`
`The ‘257 patent does not explicitly use the term “electrode,” but does describe
`
`a structure a POSITA would understand to mean an electrode, including a “pad.”
`
`EX1001, 6:28-33. For example, the ‘257 patent explains: “to detect a user’s
`
`heartbeat or heart rhythm, however, the electronic device must provide at least two
`
`- 9 -
`
`

`

`
`
`leads that the user contacts to detect the user’s cardiac signals” and “contact is made
`
`between the user (e.g., the user’s hand or finger) and the leads for cardiac signals to
`
`be detected.” EX1001, 1:56-58, 6:27-28; EX1003, ¶50.
`
`The ’257 patent states that to “provide an electrical signal from the user to the
`
`processing circuitry, the leads can be exposed such that the user may directly contact
`
`the leads, or may instead or in addition be coupled to an electrically conductive
`
`portion of the device enclosure (e.g., a metallic bezel or housing forming the exterior
`
`of the device).” EX1001, 2:44-50. Consistent with its ordinary meaning as shown
`
`in dictionary definitions and based on the claims and disclosure of the ‘257 patent,
`
`a POSITA would understand a “lead” in context of the ‘257 patent to mean “one or
`
`more conductive components that form at least a part of an electrical path from the
`
`user’s skin to the processor.” EX1003, ¶51.
`
`3. Pad
`
`The term “pad” is recited in independent Claim 1 and a number of its
`
`dependent claims. The ’257 patent states that a “lead can include a pad … placed on
`
`the outer or inner surface of an electronic device bezel or housing [which] can then
`
`be coupled to a wire or other connector for providing cardiac signals to a processor
`
`for processing.” EX1001, 6:28-33. An electrode is often a conductive pad. The
`
`dictionary meaning of pad is “a thin flat mat or cushion.” EX1016, 890. The ‘257
`
`patent states a “pad” as “an extended area placed on the outer or inner surface of an
`
`- 10 -
`
`

`

`
`
`electronic device bezel or housing” and which can then be “coupled to a wire or
`
`other connector for providing cardiac signals to a processor for processing.”
`
`EX1001, 6:29-33. Consistent with its ordinary meaning to a POSITA, a “pad” in
`
`the context of the ‘257 patent means “a thin mat that may be part of the electrical
`
`path of a lead, such as an electrode or a connection that is part of the lead.” EX1003,
`
`¶52.
`
`4. Pocket
`
`The term “pocket” which is recited in dependent Claim 8. The ’257 patent
`
`specification does not define the term pocket nor are there any drawings that
`
`illustrate what is meant by a pocket. Pocket is defined in the dictionary to be: “any
`
`pouchlike receptacle, compartment, hollow or cavity.” EX1017. Consistent with this
`
`definition, a POSITA would understand the term pocket in the context of the ’257
`
`patent disclosure to be “any pouchlike receptacle, compartment, hollow or cavity.”
`
`EX1003, ¶53.
`
`III. STATEMENT OF PRECISE RELIEF REQUESTED
`
`A. Statutory Grounds for Cancellation
`
`Ground 1: Petitioner requests that the Board cancel claims 1-4, 8, 10, 11,
`
`and 14 as unpatentable under pre-AIA 35 U.S.C. § 102 because these claims are
`
`anticipated by Mills.
`
`- 11 -
`
`

`

`
`
`Ground 2: Petitioner requests that the Board cancel claims 1-4 and 8-22 as
`
`unpatentable under pre-AIA 35 U.S.C. § 103 because they are obvious in view of
`
`Markel in combination with Mills.
`
`B. Status of References as Prior Art
`
`The following references are prior art for the following reasons:
`
`Exhibit No.
`
`Description
`
`Prior Art Basis
`
`
`
`
`
`
`
`
`
`1001
`
`1005
`
`1006
`
`’257 patent
`(background section)
`Markel
`
`Mills
`
`Admitted Prior Art
`
`Pre-AIA102(b) – published January 25,
`2007
`Pre-AIA 102(b) – published October 4,
`1994
`
`These references constitute analogous art because they are from the same field
`
`of endeavor as the ’257 patent, e.g., devices for detecting cardiac signals via user
`
`contact. Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1000 (Fed. Cir. 2016).
`
`They are also reasonably pertinent to a particular problem with which the inventor
`
`was involved, e.g., detecting cardiac signals via a device exterior while maintaining
`
`an aesthetically pleasing design. As these references are analogous art, a POSITA is
`
`presumed to have been aware of them. In re Nilssen, 851 F.2d 1401, 1403 (Fed. Cir.
`
`1988).
`
`- 12 -
`
`

`

`
`
`IV. SPECIFIC PROPOSED GROUNDS FOR UNPATENTABILITY
`
`As explained below, claims 1-4 and 8-22 of the ’257 patent are either
`
`anticipated or would have been obvious in view of the prior art identified below.
`
`AliveCor repeats the grounds from the Massimo Petition in full. Indeed, and
`
`based on Apple’s infringement contentions in the district court litigation against
`
`AliveCor, the grounds repeated herein demonstrate that the claims are unpatentable.
`
`For example, consistent with how Mills is used in Ground 1, Apple points to a metal
`
`spring in the accused products as being a “pad” in its infringement contentions.
`
`A. Overview of Key Prior Art
`
`1. Mills
`
`Mills published on October 4, 1994, as U.S. Patent No. 5,351,695. Mills
`
`discloses a “cardiac and data event monitor having dry skin electrodes integral with
`
`the monitor’s housing.” EX1006, Abstract. As shown in Fig. 1 (reproduced with
`
`annotations below), a wrist-worn ECG monitor 10 includes a first electrode 14
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`incorporated within housing 12 and a second electrode 16. According to Mills, an
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`“object [of the invention] is to provide such a monitor that reliably detects and
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`records ECG signals without the use of external electrodes or messy gels.” EX1006,
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`1:39-42. Mills also states that “an object of the invention [is] to provide an improved
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`dry skin electrode system that is an integral part of the housing of such a monitor.
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`Id., 1:43-45; EX1003, ¶54.
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`2. Markel
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`
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`Markel published on January 25, 2007, as U.S. Patent Publication No.
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`2007/0021677. Markel discloses a device that comprises one or more electrodes that
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`are “adapted to detect cardiac activity of a user” of the device. EX1005, [0035]. In
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`Fig. 4 of Markel (below), a mobile communication device 400 includes electrodes
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`placed on or molded into regions 410b, 420b, that are “substantially concealed (or
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`hidden) from a user.” EX1005, Fig. 4 (reproduced below with annotations), [0039],
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`[0040], [0045]. Markel provides an example, disclosing that “an electrode may
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`comprise molded conductive plastic with little or no visible indication of the
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`electrode presence.” Id., [0040]; EX1003, ¶55.
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`- 14 -
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`
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`B. Ground 1: Claims 1-4, 8, 10, 11, and 14 are unpatentable as
`anticipated by Mills
`
`1. Claim 1: “An electronic device for detecting a user’s cardiac
`signal, comprising:”
`
`Mills discloses a “wrist-worn cardiac data and event monitor having dry skin
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`electrodes integral with the monitor’s housing.” EX1006, Abstract; EX1003, ¶56.
`
`a.
`Limitation 1[a]: “an enclosure”
`Fig. 1 of Mills (partially reproduced below) discloses an electronic device 10
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`for detecting a user’s cardiac signal. EX1006, Fig. 1; 3:7-8. The device 10 includes
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`a housing or enclosure 12. Id.; EX1003, ¶57.
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`- 15 -
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`
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`Limitation 1[b]: “a heart sensor configured to detect the
`user’s cardiac signal”
`Mills discloses a “wrist-worn cardiac monitor” (i.e., a heart sensor) that
`
`b.
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`“reliably detects and records ECG signals” (i.e., cardiac signals). EX1006, Abstract,
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`1:11-12, 1:39-40; EX1003, ¶58. Mills discloses a wrist-worn ECG monitor 10.
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`EX1006, Abstract, 1:11-12; 9:12-15. The ’257 patent equates an ECG (or EKG)4
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`monitor with a heart sensor: “heart sensor 112 can serve as an EKG monitor.”
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`EX1001, 6:5-6. The heart sensor of Mills comprises two leads (electrodes)
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`designated 14 and 16, as annotated below in Figs. 1 (top view) and 3A (bottom
`
`exploded view). Lead 14 is the “first lead” and lead 16 is the “second lead” of Claim
`
`1 as discussed further below.
`
`
`
` Electrocardiogram is abbreviated as both ECG and EKG. EX1003, ¶48, n.2.
`
` 4
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`- 16 -
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`
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`i. Limitation 1[b(i)]: “a first lead comprising a first
`pad”
`As explained above, a POSITA would understand a pad to be an electrode and
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`a lead to be one or more conductive components that form at least a part of an
`
`electrical path from the user’s skin to the processor, including an electrode. Electrode
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`14 of Mills (Fig. 1, partially reproduced below) is a pad that forms part of the first
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`lead of Mills. EX1006, 7:16-18; EX1003, ¶59.
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`To be sure, Mills equates the term electrode with a pad:
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`- 17 -
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`
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`“electrode 14 comprising such plated expanse obviates use of a messy,
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`conductive gel, and even the so-called “residue-free’ self-adhesive
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`gelatinous pads that often are used to enhance conductivity between an
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`electrode and a patient’s skin.”
`
`EX1006, 4:19-24 (emphasis added); EX1003, ¶59. And the ‘257 patent states that a
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`“lead can include a pad or extended area placed on the outer or inner surface of an
`
`electronic device … housing” and which can then be “coupled to a wire or other
`
`connector for providing cardiac signals to a processor for processing.” EX1001,
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`6:29-33.
`
`Electrode 14 of Mills is a thin mat that is part of the electrical path and covers
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`an extended area on the outer surface of the device housing (as shown above in Fig.
`
`1) and is internally connected to provide cardiac signals as explained below.
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`EX1006, 4:67-5:3; 7:16-18. Accordingly, Mills discloses a first pad - electrode 14.
`
`EX1003, ¶59.
`
`ii. Limitation 1[b(ii)]: “embedded in a first portion fo
`the enclosure”
`Fig. 1 of Mills discloses its electrode 14 (first pad) is “integrally molded” (i.e.,
`
`embedded) into the housing. EX1006, Fig. 1; 3:8-9; EX1003, ¶59.
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`- 18 -
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`
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`Mills further discloses the heart sensor “comprises a housing 12 including first and
`
`second dry skin electrodes 14, 16 unitarily connected therewith and forming an
`
`integral part thereof.” 1006, 3:8-11 (emphasis added). Mills refers to electrode 14
`
`as the “upper electrode” and electrode 16 as the “lower electrode.” EX1006, 4:65-
`
`67. Fig. 3A of Mills, partially reproduced below, illustrates these electrodes, 14 and
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`16, located on different portions of the enclosure, which may be referred to as an
`
`upper portion and a lower portion, respectively. EX1003, ¶59.
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`- 19 -
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`
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`Not only is each of electrodes 14 and 16 embedded into the housing 12 by
`
`being “integrally molded” into housing 12, each electrode 14 and 16 also has a base
`
`material embedded underneath an outer surface coating. Fig. 3B of Mills
`
`(reproduced below left with annotations) illustrates a cross-section of “an electrode
`
`such as electrode 14.” EX1006, 3:67-68. The construction shown consists of a base
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`metal 14a on an inner surface and “an outer, skin-contactable region or surface 14a.”
`
`EX1006, 4:4-5. Thus, the pad (base metal 14a) is positioned underneath the exterior
`
`of the first portion (conductive surface coating 14b) and is therefore also embedded
`
`under the exterior of the first portion. This two-layer construction is similar to the
`
`construction shown in Fig. 4B of the ‘257 patent (below right with annotations) and
`
`both are motivated mainly for aesthetic reasons. EX1006, 4:35-39; EX1001,
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`Abstract; EX1003, ¶59.
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`- 20 -
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`
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`
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`Mills explains “14a [is] electrically connectable with such monitoring
`
`equipment, as illustrated in FIGS. 1 and 2.” EX1006, 4:2-3. Mills further explains
`
`its “plating [exterior surface 14b] also has been found to provide high conductivity
`
`and thus to produce a high quality electrical interface between an electrode such as
`
`electrode 14 and the patient’s skin surface, which may be very dry.” EX1006, 4:43-
`
`47. Thus, Mills teaches and a POSITA would understand that this first pad, electrode
`
`14a, is configured to detect an electrical cardiac signal via the user’s skin’s contact
`
`with the exterior surface 14b of the first portion of the enclosure. EX1003, ¶59.
`
`In addition to the above described ways in which Mills meets the limitation
`
`of this Claim 1, Mills further discloses electrode 14 is physically and electrically
`
`connected to processing circuitry by a leaf spring 62 as shown in Fig. 2 (reproduced
`
`below with annotations). Id. at 4:67 – 5:3; See also Id. at 4:1-3; EX1003, ¶60.
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`- 21 -
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`
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`Mills teaches that “electrode 14 is connected to the … signal input terminal of ECG
`
`amplifier 32 via a generally trapezoid-shaped, split and thus slidably yielding, leaf
`
`spring 62 connected to a circuit pad formed on the top side of PCB 50.” EX1006,
`
`4:67 – 5:3. The top of the trapezoid-shaped leaf spring 62 is a pad.
`
`
`
`The pad is pressed against the inner wall of electrode 14 in Mills and surrounded by
`
`the housing 12 of Mills and is therefore embedded in the device of Mills.
`
`Accordingly, leaf spring 62 is a pad that is embedded in the enclosure of device of
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`- 22 -
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`

`

`
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`Mills. The pad is underneath the exterior surface and the pad is configured to detect
`
`an ECG signal of the user via its contact with electrode 14 located on the exterior
`
`surface. EX1003, ¶60.
`
`iii. Limitation 1[b(iii)]: “an exterior surface of the
`enclosure comprises an exterior surface of the first
`portion”
`Fig. 1 of Mills (below left) discloses a housing 12 with electrode14 which is
`
`a first portion forming part of the exterior surface of Mills. Further, electrode 14
`
`(first portion) has an exterior surface 14b shown in Fig. 3B, below right. Id. at 2:16-
`
`20; EX1003, ¶60.
`
`
`
`iv. Limitation 1[b(iv)]: “the first pad is positioned
`underneath the exterior surface of the first
`portion”
`As discussed above with regard to Fig. 3B of Mills, embedded lead 14a is
`
`underneath or covered by the exterior surface 14b. Mills at Fig. 3B, EX1006, 4:43-
`
`47; EX1003, ¶60.
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`- 23 -
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`
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`Alternatively, the pad of leaf spring 62 is positioned under