Trials@uspto.gov
`571-272-7822
`
`Paper No. 7
`Entered: June 5, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.
`Petitioner,
`
`Vv.
`
`VALENCELL, INC.
`Patent Owner.
`
`IPR2017-00317
`Patent 8,989,830 B2
`
`Before BRIAN J. MCNAMARA, JAMESB. ARPIN,and
`SHEILA F. McSHANE,Administrative Patent Judges.
`
`McSHANE,Administrative Patent Judge.
`
`DECISION
`Instituting Jnter Partes Review
`37 CFR. § 42.108
`
`
`571-272-7822
`
`Paper No. 7
`Entered: June 5, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.
`Petitioner,
`
`Vv.
`
`VALENCELL, INC.
`Patent Owner.
`
`IPR2017-00317
`Patent 8,989,830 B2
`
`Before BRIAN J. MCNAMARA, JAMESB. ARPIN,and
`SHEILA F. McSHANE,Administrative Patent Judges.
`
`McSHANE,Administrative Patent Judge.
`
`DECISION
`Instituting Jnter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`
`I. INTRODUCTION
`
`A. Background
`
`AppleInc. (“Petitioner”) filed a Petition requesting inter partes
`
`review of claims 1-6, 8-16, and 18~—20 (“the challenged claims”) of U.S.
`
`Patent No. 8,989,830 B2 (Ex. 1001, “the ’830 patent”) pursuant to 35 U.S.C.
`
`§§ 311-319. Paper 2 (“Pet.”). Valencell, Inc. (“Patent Owner’) filed a
`
`Preliminary Responseto the Petition. Paper 6 (“Prelim. Resp.”).
`
`Wehaveauthority under 35 U.S.C. § 314(a), which provides that an
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`inter partes review may notbeinstituted “unless .
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`.
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`. the information
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`presented in the petition .
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`.
`
`. showsthat there is a reasonable likelihood that
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`the Petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.”
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`Wedetermine that Petitioner has demonstrated that there is a
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`reasonable likelihood that it would prevail with respect to at least one of the
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`challenged claims. For the reasonsset forth below, weinstitute an inter
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`partes review of claims 1—6, 8-16, and 18-20.
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`B. Related Proceedings
`
`The parties indicate that the ’830 patent is at issue in Valencell, Inc. v.
`
`Apple Inc., Case No. 5:16-cv-00001 (E.D.N.C), and Valencell, Inc. v. Fitbit,
`
`Inc., Case No. 5:16-cv-00002 (E.D.N.C). Pet. 3; Paper 5, 1. Patent Owner
`
`indicates the ’830 patentis also at issue in Valencell, Inc. v. Bragi Store,
`
`LLC, Case No. 5:16-cv-00895 (E.D.N.C.). Paper 5, 1.
`
`In addition to this Petition, Petitioner indicates that it filed another
`
`inter partes review petition challenging claims of the ’830 patent (IPR2017-
`
`00316), and also filed another inter partes review petition (IPR2017-00318)
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`challenging claims of U.S. Patent No. 8,886,269 B2, whichis the parent of
`
`the ’830 patent. Pet. 3.
`
`C. The ’830 Patent
`
`The ’830 patentis entitled “Wearable Light-Guiding Devices For
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`Physiological Monitoring” and issued on March 24, 2015 from an
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`application filed on September 12, 2014. Ex. 1001, [22], [45], [54]. The
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`*830 patent claimspriority to U.S. Patent Application No. 14/184,364,filed
`on February 19, 2014 (now U.S. Patent No. 8,886,269 B2), and U.S. Patent
`Application No. 12/691,388, filed on January 21, 2010 (now U.S. Patent
`
`8,700,111). Jd. at [63].
`
`The ’830 patent is directed to monitoring devices configured to be
`
`attached to the body of a subject. Ex. 1001, Abstract. The monitoring
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`devices may include physiological sensors to measure, for example, heart
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`rate, pulse rate, breathing rate, and a variety of other physical parameters.
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`Id., 4:33-67. The sensors, for example, may be photoplethysmography
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`(“PPG”) sensors for measuring blood flow properties, such as blood oxygen
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`level. Id. at 3:67-4:5. The ’830 patent discloses various embodiments of
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`the monitoring devices, such as that depicted in Figures 22A and 22B,
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`reproduced below.
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`
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`IPR2017-00317
`Patent 8,989,830 B2
`
`70
`
`228
` Ty
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`
`
`
`
`Fig. 22B
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`FIG. 22A
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`Figure 22A is a top plan of an embodiment of monitoring device 70
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`configured to be attached to the finger of a subject, and Figure 22B is a
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`cross-sectional view of the monitoring device. Ex. 1001, 8:16-20. The
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`monitoring device that fits over the finger has outer body portion 72 that
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`may include a flex circuit, and base 50 secured to inner body portion 74 and
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`outer body portion 72. Jd. at 28:1-10. Base 50 supports optical emitter 24,
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`optical detector 26, and optical noise detector 26’.
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`/d. at 28:19-21. Layer of
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`cladding material 21 is applied to (or near) outer surface 74a of inner body
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`portion 74, as well as inner surface 74b,to serve as a light guide to deliver
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`light from optical emitter 24 to the finger andto collect light from the finger
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`and deliverit to optical detectors 26, 26’. Id. at 28:30-38. “[W]indows 74w
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`are formed in the cladding material 21 and serve as light-guiding interfaces
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`to the finger.” Jd. at 28:44-46. The device also may be embodied in “a
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`patch, such as a bandagethat sticks on a person’s body.” Jd. at 11:53-58.
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`The ’830 patent discloses an embodimentof the invention illustrated
`
`in Figure 3, reproduced below.
`
`
`
`IPR2017-00317
`
`Patent 8,989,830 B2
`
`FIG. 3
`
`Figure 3 depicts an embodiment of monitoring device showingaside section
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`view ofa headset with a light-guiding earbud. Ex. 1001, 7:7-9.
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`Earbud30 includes optical detector 26 and optical emitter 24. Ex.
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`1001, 14:52—53. Cladding material 21 is used to confine light within light
`
`guiding region 19. /d. at 14:60-63.
`
`Claim 1, reproduced below,is illustrative of the challenged claims of
`the ’830 patent.
`
`1. A monitoring device configured to be attached to the body ofa
`subject, comprising:
`
`an outer layer and an inner layer secured together, the inner
`layer comprising light transmissive material, and having inner
`and outer surfaces;
`
`a base securedto at least one of the outer and inner layers and
`comprising at least one optical emitter and at least one optical
`detector;
`
`a layer of cladding material near the outer surface of the inner
`layer; and
`
`at least one window formedin the layer of cladding material
`that serves as a light-guiding interface to the body of the
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`subject, wherein the light transmissive material is in optical
`communication with the at least one optical emitter andtheat
`least one optical detector, wherein the light transmissive
`material is configured to deliver light from the at least one
`optical emitter to the body of the subject alongafirst direction
`and to collect light from the body of the subject and deliver the
`collected light in a seconddirection to the at least one optical
`detector, wherein the first and second directions are
`substantially parallel.
`
`Ex. 1001, 30:35-55.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`
`Claim(s)
`[4 11-1
`
`108
`
`Reference(s)
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`
`
`
`
`
`
`
`
`
`
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`
`
`
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`Pet. 6.
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`II. ANALYSIS
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`A. Claim Construction
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`In an inter partes review, the Board interprets claim terms in an
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`unexpired patent according to the broadest reasonable construction in light
`
`U.S. Patent No. 4,830,014 (issued May 16, 1989) (Ex. 1007).
`2 U.S. Patent No. 6,745,061 B1 (issued June 1, 2004) (Ex. 1008).
`7 U.S. Patent No. 7,190,986 B1 (issued March 13, 2007) (Ex. 1009).
`4H. Harry Asada, Mobile Monitoring with Wearable
`Photoplethysmographic Biosensors,EEE ENGINEERING IN MEDICINE AND
`BIOLOGY MAGAZINE,Vol. 22, Issue 3, May-June 2003. (Ex. 1005).
`US. Patent No. 5,797,841 (issued August 25, 1998) (Ex. 1010).
`
`6
`
`
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`IPR2017-00317
`Patent 8,989,830 B2
`of the specification of the patent in which they appear. 37 C.F.R.
`
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 214446
`
`(2016) (upholding the use of the broadest reasonable interpretation
`
`approach). Underthat standard, and absent any special definitions, we give
`
`claim termstheir ordinary and customary meaning, as they would be
`
`understood by one ofordinary skill in the art at the time of the invention.
`
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Althoughthe parties propose claim constructions for some terms,at
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`this juncture of the proceeding, we determinethatit is not necessary to
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`provide an express interpretation of any term ofthe claims.
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`B. Alleged Obviousness of Claims 1-4 and 11-14 over Goodman
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`Petitioner contends that claims 14 and 11-14 would have been
`
`obvious over Goodman. Pet. 25-42. To support its contentions, Petitioner
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`provides explanations as to howtheprior art discloses each claim limitation.
`
`Id. Petitioner also relies upon the Declaration of Brian W. Anthony, Ph.D.
`
`(Ex. 1003) (‘Anthony Declaration’) to support its positions. Patent Owner
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`counters that the prior art does not render the claims obvious because
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`Petitioner has not sufficiently disclosed the basis of obviousness for some
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`claims and Goodmanfails to teach someclaim limitations. Prelim. Resp.
`
`30-40.
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`Atthis stage of the proceedings, we are persuaded by Petitioner’s
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`explanation and evidence in support of the obviousness groundsasserted
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`under Goodmanagainst claims 14 and 11-14. Webegin our discussion
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`with a brief summary of Goodman, and then address the evidence,analysis,
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`and arguments presented bytheparties.
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`
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`IPR2017-00317
`Patent 8,989,830 B2
`
`1. Goodman (Ex. 1007)
`
`Goodmangenerally discloses an optical biosensor that measures
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`arterial oxygen saturation. Ex. 1007, 1:11—14. The sensors can be
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`configured for use with fingertips, toes, hands or feet, as well as on the skin
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`of the nasal septum overlying the carotid cavity. Jd. at 9:65-68, 10:79.
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`Figure 4, reproduced below,is a depiction of a sensor fastened over a
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`fingertip.
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`
`
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`Figure 4 depicts a digit with the distal ends of the sensor fastened over the
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`fingertip. Ex. 1007, 8:27—28, 9:60-61.
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`Goodman discloses an embodimentwith a sensorthat uses a flexible
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`adhesivestrip, depicted in Figure 2C and reproduced below.
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`Figure 2C is an exploded view of an embodimentof a sensor with
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`identification of individual elements. Ex. 1007, 8:15—18. In the depicted
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`embodiment, the photo-active elements of the sensor substrate, that is,
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`element 24 which hasa light source mountedto it, and element 14, which
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`
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`IPR2017-00317
`Patent 8,989,830 B2
`has a photo-sensor mountedto it, are fastened to opaque vinylstrip 10. Jd.
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`at 8:50-52, 9:19-22. Second opaquetape, with strip 37 and adhesive layer
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`38, is placed over the photo-active elements with apertures 40 and 41 in strip
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`37. Id. at 9:32-37. Layer of clear polyester 45 is placed over the length of
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`the flexible adhesivestrip, and a protective layer of release tape 50 thatis in
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`place during manufacture and before use. Jd. at 9:45—52.
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`2. Analysis
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`Petitioner contends that Goodmanteachesor suggests a monitoring
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`device, as claimed, and refers to Figure 2C of Goodman,as annotated by
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`Petitioner, to show the correspondenceofthe recited limitations to
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`Goodman’s structures. See Pet. 15, 16, 25-42. Annotated Figure 2C of
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`Goodmanis reproducedbelow.
`
`50
`
`
`opaque layer
`(cladding)
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`clear layer (immenfirst
`
`layer ~ light transmissive imuterial)
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`outerlaver
`
`
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`Figure 2C is a view of an embodimentof a sensor of Goodman with
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`Petitioner’s annotations shown in red. Pet. 16. As depicted, Petitioner
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`asserts that the “cladding” limitation of claim 1 is taught by opaque layer 40
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`of Goodman,the “outer” and “inner” layers are part of clear polyester layer
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`45, and the “optical emitter” and “optical detector” are taught by Goodman’s
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`light-emitting diodes (“LEDs”) 24 and photodetector 14. Jd. at 26-28.
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`Petitioner relies upon Goodman’s disclosure that its “opaque tape layer (37)
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`‘is apertured at respective apertures 40, 41. .
`
`. [t]hese apertures allow light
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`
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`IPR2017-00317
`Patent 8,989,830 B2
`to pass,” for the teaching of the claim limitation that “at least one window
`[is] formed in the layer of cladding material that serves as a light-guiding
`interface to the body of the subject.” Jd. at 29-30 (citing Ex. 1007, 9:39-40,
`
`Figs. 2B, 2C). Petitioner alleges that this passage suggests to a person of
`
`ordinary skill that the rest of the non-apertured layer inhibits the passage of
`light. Id. at 29 (citing Ex. 1003 4 74).
`
`The Petition refers to Goodman’s disclosure of the embodimentthat
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`depicts the sensor applied to a finger. Pet. 31. In this configuration,
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`Petitioner asserts that “the light source is disposed approximately on an
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`opposite side of the body part being transmilluinated [sic] from the
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`detector.” Jd. (citing Ex. 1007, 4:46—52, Figs. 4, 6A-6B; Ex. 1003
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`78).
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`Petitioner, referring to the Anthony Declaration for further support, asserts
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`that a person of ordinary skill in the art
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`_ would have understood that in Goodman’s device, some ofthe
`light emitted from the LEDs through the bio-compatible
`windowand into the body is emitted in a first direction, for
`example, approximately orthogonal to the LED’s light emitting
`surface. (Anthony Decl., | 80.) As the emitted lightis
`reflected and refracted within the patient’s body—often multiple
`times—the light changes directions. (/d.) Someof the emitted
`light will be received at the photodiode in a seconddirection,
`for example, approximately orthogonal to the photodiode’s
`light receiving surface. (/d.) Thesefirst and second directions
`are “substantially parallel,” as recited in claim 1, because the
`LEDsandphotodiode are disposed approximately opposite
`each other. (/d.).
`
`Pet. 32.
`
`Dr. Anthonytestifies that PPG measurements may be performed using
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`either transmission or reflective modes, one of ordinary skill in the art would
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`have been familiar with these modes, and that one mode could be adapted
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`for use with the other. Ex. 1003 { 78 (citing Ex. 1013, 7-8; Ex. 1014, 405;
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`10
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`
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`IPR2017-00317
`Patent 8,989,830 B2
`Ex. 1015, 912). Mendleson®,referred to by Dr. Anthony to reflect the
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`knowledgeof one ofordinary skill in the art, states that, “[i]n transmission
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`pulse oximetry, the sensor can be attached acrossa fingertip, foot, or
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`earlobe. In this configuration, the light emitting diodes (LEDs) and
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`photodetector (PD) in the sensor are placed on opposite sides of a peripheral
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`pulsating vascular bed.” Ex. 1015, 912. Petitioner asserts that a person of
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`ordinary skill in the art would have understood that “Goodman employs a
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`transmittal PPG configuration, as opposed to a reflective PPG
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`configuration,” for the relied-upon transmittal configurations. Pet. 31 (citing
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`Ex. 1003 § 78).
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`Patent Ownerarguesthat institution should be denied because the
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`Petitioner’s arguments and evidence are conclusory and fail to support that
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`Goodmanteachesthe limitation of claim 1 that the light delivered to the
`
`optical detector is substantially parallel to the emitted light. Prelim. Resp.
`
`30-35. Patent Ownerrefers to Goodman’s embodiment depicted in Figure
`
`6B, arguing that when the adhesive strip containing the sensor is applied to a
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`nose, “the light leaving the emitteris largely perpendicularto the light being
`received by the detector.” Jd. at 32. Patent Owneralso alleges that the same
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`deficiency in teaching applies to Goodman’s finger embodiment, because
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`Goodmanissilent as to where the emitter and detector are located and in
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`order to determine whether the elements would emit and detect light in
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`parallel directions, “one would need to know the width of the finger and the
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`position of the emitter and detector along the length of the device.” Jd. at
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`° Y. Mendelson, A Wearable Reflectance Pulse Oximeterfor Remote
`Physiological Monitoring, PROCEEDINGS OF THE 28™ IEEE EMBS ANNUAL
`INTERNATIONAL CONFERENCE, August 30—September 3, 2006; 912-915 (Ex.
`1015).
`
`11
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`IPR2017-00317
`Patent 8,989,830 B2
`35. Patent Owneraversthat “Petitioner (and its expert) only assumesthat
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`somelight might be parallel, but does not support the contention that the
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`sensor device necessarily surroundsthe finger, for example providing for the
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`length of the device and the width of the patient’s finger.” Jd. Patent Owner
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`also argues that other references in the Petition, specifically, Figure 6 of
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`Asada, suggest the light would not be substantially parallel. Jd. at 33 (citing
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`Ex. 1018, Fig. 6).
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`Patent Ownerrefers to Goodman’s disclosure that its apertures
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`“conform the thickness of the photo-active substrates to the overall thickness
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`of the flexible adhesivestrip,” so that the substrates “are ideally
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`indistinguishable in the tactile sense from the flexible adhesivestrip itself.”
`Prelim Resp. 22 (citing Ex. 1007, 9:39-45). With that, Patent Owner argues
`that Goodman’s disclosures fail to support that its apertures serve as a light-
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`guideorthat strip 37 confines light for delivery to the body and backto the
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`photosensor. Id.
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`Patent Owneradditionally contendsthat Petitioner fails to provide
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`sufficient support for the grant of inter partes review becauseit fails to
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`provide sufficient evidence and detailed explanation ofthe basis ofits
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`assertions, such as the alleged failure to provide evidence that the cladding
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`material operates to confine light within a light-guiding region. Prelim.
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`Resp. 21, 37. More specifically, it is alleged that the Petition fails to explain
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`how Goodmanteaches a cladding material “near the outer surface of the
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`inner layer” that operates to deliver light in a direction that is substantially
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`parallel. Jd. Patent Owneradditionally alleges that there are gaps in
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`Petitioner’s analysis, and that the Dr. Anthony’s declaration repeats attorney
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`argument, lacks analysis, and “is full of mere conclusions.” Jd. at 37-40.
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`12
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`IPR2017-00317
`Patent 8,989,830 B2
`Patent Owneralso refers to its innovations in biometrics wearables,
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`asserting that its sensors are more accurate than competitors’ products, and
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`that it has received industry recognition, numerous awards, and patents for
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`these innovations. Prelim. Resp. 9-10. Patent Owneralsoreferstoits
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`licensing ofits patent portfolio program with multiple licensing partners. Jd.
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`at 10.
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`Onthis record, we are persuaded that Petitioner has provided
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`sufficient support that Goodman adequately teachesthe limitations of claim
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`1. Our view, based upon the current record, is that Petitioner’s arguments
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`and evidence as to Goodman’s descriptions are consistent with the teaching
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`of the claim limitations, including the limitation of “deliver light from theat
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`
`
`
`
`
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`least one optical emitter . . alongafirst direction and .. . . deliver the
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`
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`collected light in a second direction . .. wherein the first and second
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`directions are substantially parallel.” Goodman discloses that in its finger
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`application (Ex. 1007, Fig. 4), the preferred configuration is the use of
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`elongated tape 35 formedinto a butterfly design.’ See id., 9:25—-32, Fig. 2B.
`Considering Figures 2B and 4 of Goodman,andthe use of the butterfly
`design, the locations of the light source (LED) and photo-sensor appearto be
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`opposite of each other, which is consistent with Petitioner’s assertion that
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`the light source is disposed approximately on an opposite side of the body
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`part from the sensor. With this orientation, our view is that there is
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`sufficient support at this stage in the proceedings that, under Goodman’s
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`7 Although Patent Ownerrefers to Asada’s disclosures to support its
`assertion that other references suggest that the associated light would not be
`substantially parallel (Prelim. Resp. 33), Petitioner relies upon Goodman
`solely for this ground. See Pet. 30-32.
`
`13
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`IPR2017-00317
`Patent 8,989,830 B2
`teachings, the “first direction” and “second direction”of the light is
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`substantially parallel.
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`On this record, we also are not persuaded by Patent Owner’s view that
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`the Petition misapplies the term “cladding material,” and its support is
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`insufficient to demonstrate that the cladding material of Goodmanoperates
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`to deliver light in a direction that is substantially parallel to the direction in
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`whichthe light is emitted. The claim refers to the “at least one window
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`formed in the layer of cladding material that serves as a light-guiding
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`interface to the body of the subject,” and it is the window formedin the
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`cladding, and not the cladding only, that delivers the light in a manner
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`claimed, and it appears that Goodmandiscloses windowsor apertures
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`situated in an opaque tape. See Ex. 1007, 9:33-40, Fig. 2C (apertures 40 and
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`41, opaque tape 37). Additionally, it appears that Goodman’s opaquelayer
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`is used to block light, and its apertures “allow light to pass,” thereby
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`sufficiently supporting that the apertures in the opaque tape serve as a “light-
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`guiding interface.”
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`Further, although Patent Owner generally refers to the commercial
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`successes ofits innovations, there is no evidence presented in the
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`Preliminary Response of a nexus between the evidence and the merits of the
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`claimed invention, nor are there any arguments presented on the application
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`of objective indicia of nonobviousness. As such, at this juncture, we cannot
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`subscribe any weight to potential secondary considerations, to the extent that
`Patent Ownerintendedto assert any.®
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`Based on the record before us, we are persuadedthat Petitioner has
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`demonstrated a reasonable likelihood of prevailing on its assertion that claim
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`8 This deficiency also applies to each of the other grounds considered
`below.
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`14
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`IPR2017-00317
`Patent 8,989,830 B2
`1 is obvious over Goodman. Independent claim 11 has similar limitations to
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`claim 1, and wealso are persuadedthat Petitioner has presented sufficient
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`evidence to demonstrate its obviousness over Goodman. Pet. 33-40. For
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`the dependent claims 2-4 and 12-14, wealso are persuadedthat Petitioner
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`has presented sufficient evidence to demonstrate a reasonable likelihood that
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`Goodmanteachesall of the limitations of the claims based on the record
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`before us. See Pet. 40-42.
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`C. Alleged Obviousness of Claims 5 and 15 over Goodman and Hicks
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`Petitioner contends that claims 5 and 15 would have been obvious
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`over Goodmanand Hicks. Pet. 43-45. To support its contentions, Petitioner
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`provides explanations as to how theprior art discloses each claim limitation.
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`Id. Petitioner also relies upon the Anthony Declaration to support its
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`positions.
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`Onthis record, we are persuaded by Petitioner’s explanation and
`
`evidence in support of the obviousness groundsasserted under Goodman
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`and Hicks against‘claims 5 and 15. We begin ourdiscussion with a brief
`
`summary of Hicks, and then address the evidence presented.
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`1. Hicks (Ex. 1008)
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`Hicks is directed to pulse oximetry sensors that can be used on
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`fingers. Ex. 1008, 1:5—7, 8:3-8. Hicks discloses “a substantially clear
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`flexible substrate that may be conformed about a portion of a patient’s
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`tissue, such as a finger .
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`.
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`. allowing for emitting and detecting light signals
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`through this clear substrate,” and “one or more LED’s 40, 42 are disposed on
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`a first surface of the finger and a photodetector 38 is disposed on an
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`opposing surface of the finger.” Jd. at 2:4-10, 8:6-8. Hicks discloses “a
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`compressible material layer may be disposed on the patient side surface”
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`15
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`IPR2017-00317
`Patent 8,989,830 B2
`with “apertures aligned with each light emitter and/orlight detector...
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`allowing light to be emitted and/or detected through these aperturesfree
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`from interference.” Jd. at 2:35-41. Hicksalso discloses that the clear
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`substrate may actpartially as a lens with drops of clear adhesive usedto
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`provide some focusing function for the LEDs, or a lens, such as a frensel
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`lens, may be formedintegrally into the clear substrate to providelight
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`focusing. Jd. at 9:38-42, 13:42-48.
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`2. Analysis
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`Claims 5 and 15 recite the limitation of “the light transmissive
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`material comprises a lens region in optical communication with the at least
`
`one optical emitter that focuses light emitted by the at least one optical
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`emitter.” Ex. 1001, 30:66-31:2, 32:14-17. Petitioner alleges that Hicks
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`teaches the use of a clear substrate that may act as a lens, or a separate lens
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`structure that may be used in conjunction with the clear substrate. Pet. 43—
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`44 (citing Ex. 1008, 9:38—-40, 13:42-51). Petitioner contends that Goodman
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`and Hicks are directed to non-invasive optical bio-sensors and are from the
`
`samefield of endeavor. Jd. at 43 (citing Ex. 1003 4 99). Petitioner also
`
`alleges that including Hicks’ lens structure with Goodman’s clear polyester .
`
`layer “would have simply been a combination ofprior art elements
`
`according to known methodsto yield predictable results,” and would have
`
`improved the function of Goodman’s device. Jd. at 44 (citing Ex. 1003
`
`4 101). As such, Petitioner avers that it would have been obvious to a
`
`person of ordinary skill in the art to combine the teachings of Goodman and
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`Hicks. Jd.
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`Onthis record, we are persuaded that Petitioner has provided
`
`sufficient evidence and explanationsas to howtheprior art discloses each
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`16
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`IPR2017-00317
`Patent 8,989,830 B2
`claim limitation, as well as a sufficiently articulated rationale for combining
`
`their teachings. Therefore, we determine that Petitioner has demonstrated a
`
`reasonable likelihood that it will prevail on its assertion that claims 5 and 15
`
`of the ’830 patent are obvious over Goodmanand Hicks.
`
`D. Alleged Obviousness of Claims 6 and 16 over
`Goodman, Hannula, and Asada and Claims 8, 9, 18, and 19 over Goodman
`and Asada
`
`Petitioner contendsthat claims 6 and 16 would have been obvious
`
`over Goodman, Hannula, and Asada, and claims 8, 9, 18, and 19 would have
`
`been obvious over Goodman and Asada. Pet. 45-55. To support its
`
`contentions, Petitioner provides explanations as to how thepriorart
`
`discloses each claim limitation. /d. Petitioner also relies upon the Anthony
`
`Declaration to support its positions.
`
`On this record, we are persuaded by Petitioner’s explanation and
`
`evidence in support of the obviousness grounds asserted under Goodman,
`
`Hannula, and Asadaagainst claims 6 and 16, and those under Goodman and
`
`Asada against claims 8, 9, 18, and 19. We begin our discussion with a brief
`
`summary of Hannula and Asada, and then address the evidence, analysis,
`
`and arguments presented.
`
`1. Hannula (Ex. 1009)
`
`Hannuladiscloses a non-invasive, optical biosensor that uses LEDsto
`
`emit light into tissue and measuresthe light passing through the tissue using
`
`a photodetector. Ex. 1009, 1:6-16, 2:44-47. Figures 1B and 1C are
`
`reproduced below:
`
`17
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`
`“
`{ _/-
`116
`Stee ncoe ~
`
`“S
`
`a
`
`iW.
`
`1250 a3
`
`112
`
`“~127
`
`FIG. 1B
`
`
`
`FIG. 1C
`Figures 1B and 1C depict cross-section and detailed view, respectively, of an
`
`embodiment of sensor. Ex. 1009, 2:26—32. As shownin Figures 1B and IC,
`
`Hannula discloses components of the sensors, such as LED 111,
`photodetector 116, transparent window 118, and multiple laminated layers
`112-114. Jd. at 2:44-57, 3:9-13. Hannula also discloses that LED 111 and
`
`photodetector 116 can be surrounded byreflective mask 117, which can be
`
`made of polyester or polypropylene with a reflective metal surface. Jd. at
`
`2:58-59, 2:66—-3:3, Figs. 1B and 1C. “Reflective mask 117 reflects light
`
`from LED 111 (that has passed through patient tissue and exited near the
`
`photodetector) back toward photodetector 116 like a mirror.” Jd. at 2:58-62.
`
`This increases the amount of LED light that the photodetector receives from
`
`the patient’s tissue and also mayassist in blocking ambientlight and LED
`
`light that may shunt through the laminated layers. Jd. at 2:63-66.
`
`2. Asada (Ex. 1005)
`
`Asada discloses “miniaturized data acquisition features with advanced
`
`photoplethysmographic (PPG) techniques to acquire data related to the
`
`18
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`
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`IPR2017-00317
`Patent 8,989,830 B2
`patient’s cardiovascular state.” Ex. 1005, 28. For example, a ring
`
`configuration of the sensor may monitora patient’s heart rate, oxygen
`
`saturation, and heart rate variability, accounting for technical issues, such as
`
`motion artifacts. Jd. Asada describes a ring sensor prototype that includes
`
`an optical sensor unit with an LED and a photodetector; and an onboard
`
`microcomputerfor data acquisition, signal processing, data acquisition,
`
`filtering, and bi-directional radio-frequency (“RF”) communication. Jd. at
`
`30, 34. Asada’s Figure 11 is reproduced below.
`
`
`
`LE SS
`
`6
`
`
`
`Figure 11 of Asada depicts a ring sensor bandthat protects optical
`
`components and hides wires from the outside environment. Ex. 1005, 35.
`
`The ring prototype configuration uses bands to hold the sensor unit and
`
`secure contact with the skin, as well as shield the unit. /d. at 34.
`
`3. Analysis
`
`Claims 6 and 16 recite the limitation of‘a light reflective material on
`
`at least a portion of one or both ofthe inner and outer surfaces of the inner
`
`layer, wherein the at least one optical detector comprisesa first and second
`
`optical detectors, and further comprising a signal processor, and wherein a
`
`portion oflight reflected in by the light reflective material and detected by
`
`the second optical director is processed by the signal processor as a motion
`
`19
`
`
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`IPR2017-00317
`Patent 8,989,830 B2
`noise reference.” Ex. 1001, 31:3-10, 32:19-25. Petitioner alleges that
`
`Hannula teachesthe use ofa light reflective material, and a person of
`
`ordinary skill in the art would have had reason to modify Goodman’s
`
`teachings in view of Hannula’s teachings to increase the amount of LED
`
`light that the photodetector receives from the patient’s tissue. Pet. 46.
`
`Petitioner also contends that Asada is from the samefield of endeavoras
`
`Goodmanand Hannula, that is, they are directed to non-invasive optical bio-
`
`sensors. Jd. at 47. It is alleged that Goodmandiscloses that “motion
`
`artifacts” are a commonproblem,and this concern would have led a person
`
`of ordinary skill in the art to Asada, which discloses “measure[ing] the
`
`finger motion with another sensor or a second PDand us[ing] it as a noise
`
`reference for verifying the signal as well as for canceling the disturbance and
`
`noise.” Jd. at 47-48 (citing Ex. 1003 | 108; Ex. 1005, 30; also citing Ex.
`
`1005, 32-33, 37, Figs. 6 and 15). Petitioner refers to Asada’s on-board
`signal processor, and alleges that, because Goodmandiscloses that “long
`
`term, uninterrupted measurement”is desirable, a person of ordinary skill in
`
`the art would have had reason to make Goodman’s system wireless,like the
`
`Asada system. /d. at 48 (citing Ex. 1007, 2:33-35, Ex. 1003, Jf 109, 110).
`
`Dr. Anthonytestifies that, although Asada device appears bulky (see Ex.
`
`1005, Fig. 9), it is small in volume and mass,and one ofordinary skill in the
`
`art would have understoodthat the device would have even less volume and
`
`mass whentransitioned to bulk manufacturing. Ex. 1003 § 107.
`
`Additionally, Dr. Anthony opines that the combination of the teachings of
`
`Asada with Goodman’s teachings would yield predictable results, improve
`
`the function of Goodman’s similar device, and would introduce desirable
`
`redundancy. Jd. 4110. As such, Petitioner avers that it would have been
`
`20
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`
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`IPR2017-00317
`Patent 8,989,830 B2
`obviousto a person of ordinary skill in the art to combine the teachings of
`
`Goodman, Hannula, and Asada. Pet. 48.
`
`Claims 8 and 9 recite, respectively, that the monitoring device has
`
`“signal processor” and “a transmitter configured to transmit signals
`
`processed by the signal processor to a remote device.” Ex. 1001, 31:24-29.
`
`Claims 18 and 19 recite similar respective limitations. Jd. at 32:39-44.
`
`Petitioner asserts that Asada teaches the use of signal processing and
`
`bidirectional RF communication, with transmission to a cellular phone
`
`through an RF link. Pet. 54—55 (citing Ex. 1005, 34).
`
`Patent Ownerarguesthat the Petition fails to address significant
`
`differences between Goodman and Asada,andthe effect of those differences
`
`on reasons to combinetheir teachings. Prelim. Resp. 41. Patent Owner
`
`asserts that those differences relate to the aspect of Goodman’s sensor
`
`directed to eliminating motion artifacts by fastening its apparatus completely
`
`to the patient’s skin; Asada alternatively uses reflective PPG, with some
`
`motion, to achieve a morereliable signal. Jd. at 42-43 (citing Ex. 1007,
`
`5:30-47, Fig. 2C; Ex. 1005, 31, Fig. 15). Patent Owner also contendsthat
`
`Asada’s device teaches away from Goodman’s sensor, because Asada’s
`
`configuration would increase motion artifacts, and Goodman doesnot need
`
`an extra photosensorbecauseofits reliance on secure fastening to the skin.
`
`Id. at 43-44. Patent Owneralso asserts that Asada teaches away from
`
`Goodmanwith its use of a device with an attachmentthat applies localized
`
`pressure, which Goodmancautions against.
`
`/d. at 42-43 (citing Ex. 1005,
`
`Fig. 15; Ex. 1007, 4:60—5:2, 5:56-68). Moreover, Patent Owner arguesthat
`
`the Petition does not explain why the added complexity or mass of Asada
`
`would be desired in Goodmanin the view of a person of ordinary skill in the
`
`art. Id. at 44. Patent Owner contendsthat the Petition applies the
`
`21
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`IPR2017-00317
`Patent 8,989,830 B2
`Goodman’s reference to “long term, uninterrupted measurement”out of
`
`context because Goodmanrefers to reduction in blood flow dueto the
`
`sensor’s construction, and, therefore, it would not have suggested the use of
`
`a wireless device. Jd. at 45 (citing Ex. 1007, 2:30-35),
`
`In KSR, the Supreme Court stated “[t]he combination of familiar
`
`elements according to known methodsis likely to be obvious whenit does
`
`no more than yield predictable results.” KSR Int’l Co.
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