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.
`
`IPR2017-00316
`Patent 8,989,830 B2
`
`Before BRIAN J. MCNAMARA, JAMESB. ARPIN,and
`SHEILA F. McSHANE,Administrative Patent Judges.
`
`McSHANE,Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`35 US.C. § 314(a) and 37 C_F.R. § 42.108
`
`

`

`IPR2017-00316
`Patent 8,989,830 B2
`
`I. INTRODUCTION
`
`A. Background
`
`Apple Inc. (“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.”).
`
`Under 35 U.S.C. § 314(a), an inter partes review maynotbeinstituted
`
`unless the information presented in the Petition shows“there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” Taking into account Patent Owner’s
`
`Preliminary Response, and for the reasons that follow, we conclude that the
`
`information presented in the Petition does not establish that there is a
`
`reasonable likelihood that Petitioner will prevail in challenging claims 1-6,
`
`8—16, and 18—20 as unpatentable under 35 U.S.C § 103(a). Pursuant to 35
`
`U.S.C. § 314, we hereby decline to institute an inter partes review of any
`
`challenged claim of the ’830 patent.
`
`B. Related Proceedings
`
`Theparties indicate that the ’830 patentis 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 thatit filed another
`
`inter partes review petition challenging claimsof the ’830 patent (IPR2017-
`00317), and also filed another inter partes review petition (IPR2017-00318)
`
`

`

`IPR2017-003 16
`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
`
`Physiological Monitoring” and issued on March 24, 2015 from an
`
`application filed on September 12, 2014. Ex. 1001, [22], [45], [54]. The
`
`°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 B2). 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
`
`devices may include physiological sensors to measure, for example, heart
`
`rate, pulse rate, breathing rate, and a variety of other physical parameters.
`
`Id. at 4:33-67. The sensors, for example, may be photoplethysmography
`
`(“PPG”) sensors for measuring blood flow properties, such as blood oxygen
`
`level. Jd. at 3:67-4:5. The ’830 patent discloses various embodiments of
`
`the monitoring devices, such as that depicted in Figures 22A and 22B,
`
`reproduced below.
`
`

`

`IPR2017-00316
`Patent 8,989,830 B2
`
`_t
`
`
`
`
`to
`
`FIG. 22B
`
`FIG. 22A
`
`Figure 22A is a top plan of an embodiment of monitoring device configured
`
`to be attached to the finger of a subject, and Figure 22B is a cross-sectional
`
`view of the monitoring device. Ex. 1001, 8:16-20. The monitoring device
`
`that fits over the finger in these figures has outer body portion 72 that may
`
`include a flex circuit, and base 50 secured to inner body portion 74 and outer
`
`body portion 72. /d. at 28:1-10, 28:15—-16. Base 50 supports optical emitter
`
`24, optical detector 26, and optical noise detector 26’. Jd. at 28:19-21.
`
`Layer of cladding material 21 is applied to (or near) outer surface 74a of
`
`inner body portion 74, as well as inner surface 74b, to serve as a light guide
`
`to deliver light from optical emitter 24 to the finger and collect light from
`
`the finger and deliverit to optical detectors 26, 26’. Id. at 28:30-38.
`
`“TW]indows 74w are formed in the cladding material 21 and serve as light-
`
`guiding interfaces to the finger.” Jd. at 28:44-46. The device also may be
`
`embodied in “a patch, such as a bandagethat sticks on a person’s body.” Id.
`
`at 11:53-58.
`
`The ’830 patent discloses an embodimentof the invention illustrated
`
`in Figure 3, reproduced below.
`
`

`

`IPR2017-00316
`Patent 8,989,830 B2
`
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`Figure 3 depicts an embodiment of monitoring device showinga side section
`
`view of a headset with a light-guiding earbud. Ex. 1001, 7:19-21. Earbud
`
`30 includes optical detector 26 and optical emitter 24. Jd. at 14:52—53.
`
`Cladding material 21 is used to confine light within light guiding region 19.
`
`Id. at 14:60-63.
`
`Claim 1, reproducedbelow,is illustrative of the challenged claims of
`the ’830 patent.
`
`1. A monitoring device configured to be attached to the body of a
`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
`
`

`

`IPR2017-003 16
`Patent 8,989,830 B2
`subject, wherein the light transmissive material is in optical
`communication with the at least one optical emitter and the at
`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 alonga first direction
`and to collect light from the body of the subject and deliver the
`collected light in a second direction 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:
`
`
`
`0 0 0
`
`Pet. 6.
`
`Il. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, the Board interprets claim terms in an
`
`unexpired patent according to the broadest reasonable construction in light
`
`' Rasmus G. Haahr, A Wearable “Electronic Patch” for Wireless
`Continuous Monitoring of Chronically Diseased Patients, PROCEEDINGS OF
`THE 5TH INTERNATIONAL WORKSHOP ON WEARABLE AND IMPLANTABLE
`Boby SENSOR NETWORKS,JUNE 1—3, 2008 (Ex. 1020).
`? U.S. Patent No. 6,745,061 B1 (issued June 1, 2004) (Ex. 1008).
`3 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).
`
`6
`
`

`

`IPR2017-00316
`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, 2144-46
`
`(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
`
`understoodby one of ordinary skill in the art at the time of the invention.
`
`Inre Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Although the parties propose claim constructions for some terms,at
`
`this juncture of the proceeding, we determinethatit is not necessary to
`
`provide an express interpretation of any term ofthe claims.
`
`B. Alleged Obviousness of Claims 1-4, 8—14, and 18-20 over Haahr
`
`Petitioner contendsthat claims 1-4, 8-14, and 18-20 would have been
`obvious over Haahr. Pet.25-43. To support its contentions, Petitioner
`provides explanations as to how theprior art discloses each claim limitation.
`
`Id. Petitioner also relies upon the Declaration of Brian W. Anthony, Ph.D.
`
`(Ex. 1003) to support its positions. Patent Owner counters that Petitioner
`
`does not establish and sufficiently support that the prior art teaches some
`
`claim limitations. Prelim. Resp. 24-32. Based on the evidence ofrecord,
`
`weare not persuadedthat the Petition is sufficient to account for the
`
`teaching ofall the limitations of the claims.
`
`Webegin our discussion with a brief summary of Haahr, and then
`
`address the evidence andthe basis for the contentions and arguments.
`
`1. Haahr (Ex. 1020)
`
`Haahrgenerally discloses an optical biosensor for wireless monitoring
`
`of physiological signals. Ex. 1020, 54 (Abstract). The optical biosensoris
`
`in the form of an electronic patch. Jd. The biosensorhasa printed circuit
`
`

`

`IPR2017-00316
`Patent 8,989,830 B2
`board (“PCB”) which has sensors, electronics, and radio communications
`
`components. /d. at 55. Figures 3, 4, and 5 are reproduced below.
`
`LEDs eurent canbol, IC prowenl ' | ”" aA | {a)Adhesivepatch
`
`Crys 32 MHx
`
`MCU smd RE
`
`Anstogebyitsl euaverter
`
`Copaneiprs (prhatastieks)
`
`;
`
` ' {d) Plastic houstng- middle
`
`
`
`DN
`Hq EES oo ™
`er
`
`
`
`|
`|
`!
`
`.
`:
`(b) Plastic housing - top
`.
`{c) Battery
`
`yy
`
`:
`Opmyp.(thenaiser)
`Memory
`Fig. 3. Topside of the PCB showing the types of clecironic components
`which is ulilzed in the pulse oximetry version of the Electronic Patch,
`
`| ey”:
`SF
`
`(e)Printed circuit boardFCB
`ok
`{#) Plastic housing- bottom
`{f:) Rincompatibte Susiindaw™
`
`CAD drawing of the parts in the ckectronic patch and how iny
`Fig. &
`ure assembled.
`
`
`
`The assembled puch with a pulse oximetry sensor made as a
`Fig. 5.
`concentric photodiode arcund two LEDs placed in the center. The litk
`square frame around the LEDs is to prevent light going directly from the
`LEDs into the photodiode.
`
`Figure 3 depicts a PCB, Figure 4 depicts a disassembled parts view, and
`
`Figure 5 depicts an assembled patch. Ex. 1020, 56. Haahr’s biosensorhas
`
`two light-emitting diodes (“LEDs”) in the center and a circular photodiode
`
`(depicted in blue in Figure 5). /d. at 55. A frame around the LEDsprevents
`
`light from travelling directly from the LEDs into the photodiode. Jd.
`
`2. Analysis
`
`Petitioner contends that Haahr discloses a monitoring device as
`
`claimed, and refers to Fig. 4 of Haahr, as annotated, to show the
`
`correspondenceofthe recited limitations to Haahr’s structures. See Pet. 16,
`
`25-37. Annotated Figure 4 of Haahris reproduced below.
`
`

`

`|i|
`
`| »
`
`IPR2017-003 16
`Patent 8,989,830 B2
`
`(d) Plastic housing- middle
`
`(a) Adhesive patch
`
`(b) Plastic housing - top
`
`(c) Battery
`
`(c) Printed circuit boardPCB
`
`windows (f) Plastic housing - bottom
`er surface
`inner/ firstlayer TO
`
`(g) Bio-compatible “window”
`
`inner surface
`
`Fig. 4. CAD drawing of the parts in the electronic patch and how they
`are assembled.
`
`Figure 4 (annotated) is a view of a CAD drawing of Haahr with Petitioner’s
`
`annotations shownin red. Pet. 16 (citing Ex. 1020, Fig. 4; Ex. 1003 § 52).
`
`Asdepicted, Petitioner asserts that the “cladding”limitation of claim
`
`1 is taught by layer (f) of Haahr. Pet. 27. Petitioner also asserts the “first”
`
`layer is layer (g), with its “inner” and “outer” surfaces on either side, and
`
`layer (g) teaches the “light transmissive material” of claim 1. Jd. at 25-26,
`
`31. Petitioner contends that the PCB is the claimed “base,” and the “optical
`
`emitter” and “optical detector” are Haahr’s LEDs and concentric
`
`photodiode, respectively. Jd. at 26-27. Petitioner relies upon Haahr’s
`
`disclosure of the multiple windowsin the plastic housing bottom portion to
`
`serve as “at least one window formedin the layer of cladding materialthat
`
`serves as a light-guiding interface to the body of the subject.” /d. at 28
`
`(citing Ex. 1020, 68).
`
`

`

`IPR2017-00316
`Patent 8,989,830 B2
`The Petition relies upon Figures 4 and 5 of Haahrfor the teaching that
`
`its LEDs and photodiodeare in optical communication by the transmission
`
`of light from the LEDsinto the body of a subject in one direction, and with
`
`reflected light passing through the window abovethe photodiode in a second
`
`direction. Pet. 29 (citing Ex. 1003 § 76). Petitioner further asserts that:
`
`A POSA would have understood that in Haahr’s device, at least
`some of the light emitted from the LEDs through the bio-
`compatible window into the body in the first direction is
`reflected back through the bio-compatible window from the
`body to the photodiode
`in a
`second direction that
`is
`“substantially parallel” to the first direction. ([Ex. 1003] 77.)
`By way of example, some of the light emittedfrom the LEDs in
`Haahrwill be emitted in a direction that is orthogonalto the
`PCB on which the sensor, which includes the LEDs and
`Photodiode, is mounted.
`(See [Ex.] 1020, Figures 2, 4, and 5;
`[Ex. 1003] 4 77.) As the emitted light is reflected and refracted
`within the patient’s body—often multiple times—someof the
`emitted light will be received back at the photodiode along a
`path that is also orthogonal to the PCB, but in the opposite
`direction as the light emitted from the LEDs into the body.
`([Ex. 1003] § 77.)
`These opposite forward and reflected
`orthogonal directions are, by their very nature, parallel.
`(Id.)
`A POSA would have understood that some light emitted from
`the LEDs is emitted at an angle that is nearly orthogonalto the
`sensor and that some light
`received at
`the photodiode is
`received in the opposite direction at an angle that is also nearly
`orthogonal to the sensor.
`(/d.) The directions of the emitted
`and received light are thus “substantially parallel,” as recited
`in claim I.
`(Id.)
`
`Pet. 29-30 (emphases added).
`
`Dr. Anthonystates that PPG measurements may be performed using
`
`either transmission or reflective modes, one of ordinary skill in the art would
`
`have been familiar with these modes, and that one mode could be adapted
`
`for use with the other. Ex. 1003 4 75 (citing Ex. 1013, 7-8; Ex. 1014, 405;
`
`Ex. 1015, 912). Petitioner asserts that a person of ordinary skill in the art
`
`10
`
`

`

`IPR2017-00316
`Patent 8,989,830 B2
`“would have understood that Haahr describes the reflection mode, where the
`
`LED(s) and photodetector are both mounted facing the sameside of the
`
`vascular bed.” Jd. (citing Ex. 1013, 8; Ex. 1014, 405; Ex. 1015, 912). It is
`
`further stated that, “[i]n reflection mode, only a small fraction of the incident
`
`light is backscattered by the subcutaneouslayers. [] The backscattered light
`
`intensity reaching the skin surfaceis typically distributed overa relatively
`
`large area surrounding the LEDs.” /d. (citing Ex. 1015, 914).
`
`Patent Ownercontendsthat institution should be denied because
`
`Haahrfails to teach the claim 1 limitation that light delivered to the optical
`
`detector is substantially parallel to the emitted light. Prelim. Resp. 16-18,
`
`25-32. Patent Ownerarguesthat the Petition’s argumentthat “some”light
`
`that is collected and delivered to the photodiodein a direction that “may” be
`
`parallel is insufficient to meet the standard forinstitution of inter partes
`
`review,that is, the evidence provided by Petitioner is insufficient to establish
`
`a reasonable likelihood that Haahr teachesthe claim limitation. Jd. at 26.
`
`Patent Owneravers that Haahr’s square frames prevent the light going from
`
`the LEDsinto the photodiode, and its concentric photodiode is optimized to
`
`collect backscattered light from the LEDs, but there is no disclosure of a
`
`light guide or other meansin Haahrthat delivers light in directions that are
`
`substantially parallel to the direction light was emitted because
`
`“backscattered light .. . is collected by the photodiode from all directions
`
`without any configuration that guides light in any direction.” Jd. at 26-27.
`
`Patent Ownerthus argues that Haahris not configured in a mannerto collect
`
`and deliver light in the mannerrecited in the challenged claims, and
`
`“{ijnstead, Haahr collects as much backscattered light as it can without
`
`regard to the angle at which it was collected and delivered to the
`
`photodiode.” Jd. at 28-29. Patent Ownerfurther alleges that, although
`
`11
`
`

`

`IPR2017-00316
`Patent 8,989,830 B2
`Petitioner assumesthat “someof the emitted light will be received backat
`
`the photodiode along a path thatis also orthogonal to the PCB, butin the
`
`opposite direction as the light emitted from the LEDsinto the body,”thereis
`
`no further explanation or evidence provided in support of this short of
`
`Petitioner’s declarant referring to the emitted light being reflected and
`
`refracted multiple times—butthis does not necessarily mean thatlight will
`
`be delivered in an orthogonal direction.
`
`/d. at 30-31.
`
`Onthis record, we are not persuadedthat Petitioner presents sufficient
`
`evidence to support a finding that Haahr discloses a device where “the light
`
`transmissive material is configured to deliver light from the at least one
`
`optical emitter to the body of the subject alonga first direction and to collect
`
`light from the body of the subject and deliver the collected light in a second
`
`direction to the at least one optical detector, wherein the first and second
`
`directions are substantially parallel,” as required by independentclaims 1
`
`and 11. Here, even assuming that someofthe light emitted from the LEDs
`
`is in an orthogonaldirection, Petitioner’s declarantfails to provide
`
`supporting evidence or persuasive explanation why someofthe
`
`backscattered light would also be delivered to the photodiode in an
`
`orthogonal direction. Dr. Anthonyrefers to the emitted light being reflected
`
`and refracted and changing direction within a patient’s body, but provides
`
`only a conclusory view that one of ordinary skill in the art would know that
`
`someofthe light would be received by the photodiode in an orthogonal
`
`angle. See Ex. 1003 § 77. Speculation aloneis insufficient to support a
`
`finding of a reasonable likelihood of prevailing in showing obviousness.
`
`Accordingly, in light of Petitioner’s failure to demonstrate a
`
`reasonable likelihood of prevailing on its assertion that independent claims 1
`
`

`

`IPR2017-00316
`Patent 8,989,830 B2
`and 11 are obvious over Haahr, the obviousness challenges to dependent
`
`claims 2-4, 8-10, 12-14, and 18—20 alsofail.
`
`C. Alleged Obviousness of Claims 5 and 15 over Haahr and Hicks
`
`Petitioner contends that claims 5 and 15 are unpatentable under 35
`U.S.C. § 103(a) over Haahr and Hicks. Pet. 44-46. Claim 5 depends
`directly from claim 1, and claim 15 depends directly from claim 11. Ex.
`
`1001, 30:66-31:2, 32:14-17. As discussed above in the ground based on
`
`Haahralone, Petitioner has not shownsufficiently that Haahr discloses the
`
`“substantially parallel” limitation of claims 1 and 11. Petitioner does not
`
`allege that Hicks teachesthis limitation, but rather relies upon Hicks to teach
`
`the additional limitations recited in claims 5 and 15. Pet. 45-46. In light of
`
`Petitioner’s failure to demonstrate a reasonablelikelihoodofprevailing on
`its assertion that claims 1 and 11 are obvious over Haahr, the obviousness
`ground alsobased, in part, on Haahr, that challenges dependent claims 5 and
`
`15 alsofails.
`
`D.
`
`Alleged Obviousness of Claims 6 and 16 over Haahr,
`Asada, and Hannula
`
`Petitioner contends that claims 6 and 16 are unpatentable under 35
`
`U.S.C. § 103(a) over Haahr, Asada, and Hannula. Pet. 46-53. Claim 6
`
`dependsdirectly from claim 1, and claim 16 dependsdirectly from claim 11.
`
`Ex. 1001, 31:3-12, 32:18-27. As discussed above for the ground based on
`
`Haahralone, Petitioner has not shownsufficiently that Haahr discloses the
`
`“substantially parallel” limitation of claims 1 and 11. Petitioner does not
`
`allege that Asada or Hannulateachesthis limitation of claims 1 and 11, but
`
`rather relies upon Asada and Hannulato teach the additional limitations
`
`recited in claims 5 and 15. Pet. 49-53. In light of Petitioner’s failure to
`
`demonstrate a reasonable likelihood of prevailing on its assertion that claims
`
`13
`
`

`

`IPR2017-00316
`Patent 8,989,830 B2
`1 and 11 are obvious over Haahr, the obviousness groundalso based, in part,
`
`on Haahr, that challenges dependent claims 6 and 16 alsofails.
`
`II. CONCLUSION
`
`For the foregoing reasons, the information presented in the Petition
`
`does not demonstrate that there is a reasonable likelihood that Petitioner
`
`would prevail in challenging claims 1-6, 8-16, and 18-20as unpatentable
`under 35 U.S.C § 103(a).
`
`IV. ORDER
`
`Accordingly,it is:
`
`ORDEREDthat the Petition is denied as to claims 1-6, 8-16, and 18—
`
`20 of the ’830 patent; and
`
`FURTHER ORDEREDthat no inter partes reviewis instituted.
`
`14
`
`

`

`IPR2017-00316
`Patent 8,989,830 B2
`
`PETITIONER:
`
`Michael D. Specht
`Michelle K. Holoubek
`Jason A. Fitzsimmons
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`mspecht-PTAB@skgf.com
`holoubek-PTAB@skgf.com
`jfitzsimmons-PTAB@skgf.com
`PTAB@skgf.com.
`
`PATENT OWNER:
`
`Justin B. Kimble
`Nicholas C Kliewer
`Jonathan H. Rastegar
`BRAGALONE CONROY PC
`2200 Ross Ave.
`Suite 4500 — West
`Dallas, TX 75201
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
`jrastegar@bepc-law.com
`
`