Trials@uspto.gov
`571-272-7822
`
`Paper No. 46
`Entered: June 1, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC. and FITBIT, INC.,
`Petitioner,
`
`V.
`
`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.
`
`FINAL WRITTEN DECISION
`35 USC. § 318(a) and 37 CFR. § 42.73
`
`\Fitbit, Inc. v. Valencell, Inc., Case IPR2017-01553, has been joined with
`this proceeding.
`
`
`571-272-7822
`
`Paper No. 46
`Entered: June 1, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC. and FITBIT, INC.,
`Petitioner,
`
`V.
`
`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.
`
`FINAL WRITTEN DECISION
`35 USC. § 318(a) and 37 CFR. § 42.73
`
`\Fitbit, Inc. v. Valencell, Inc., Case IPR2017-01553, has been joined with
`this proceeding.
`
`
`
`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 US.
`
`Patent No. 8,989,830 B2 (Ex. 1001, “the ’830 patent’) pursuant to 35 U.S.C.
`
`§§ 311-319. Paper 2 (“Pet.”). Fitbit, Inc. v. Valencell, Inc., Case IPR2017-
`01553, has been joined with this proceeding. Paper 26, 5-6. Valencell, Inc.
`(“Patent Owner’) filed a Preliminary Responseto the Petition. Paper 6
`(“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted an inter partes
`review as to claims 1-6, 8-16, and 18-20 (“the challenged claims”) of the
`
`°830 patent on June 5, 2017 onall the asserted grounds, whichare:
`
`
`
`
`
`| § 103
`§ 103
`§ 103
`§ 103
`
`
`
`Reference
`
`3
`
`‘
`Goodman and Hicks
`Goodman, Hannula‘, and Asada?
`Goodman and Asada
`Goodmanand Delonzor®
`
`8,9, 18, 19
`10, 20
`
`
`
`
`
`Paper7 (“‘Dec.”or “Institution Decision”).
`
`2U.S. Patent No. 4,830,014 (issued May 16, 1989) (Ex. 1007).
`3U.S. Patent No. 6,745,061 B1 (issued June 1, 2004) (Ex. 1008).
`4U.S. Palent No. 7,190,986 B1 (issued March 13, 2007) (Ex. 1009).
`5H. Harry Asada, Mobile Monitoring with Wearable
`Photoplethysmographic Biosensors, IEEE ENGINEERINGIN MEDICINE AND
`BIOLOGY MAGAZINE,22:3, 28-40, May-June 2003. (Ex. 1005).
`6 U.S. Patent No. 5,797,841 (issued August 25, 1998) (Ex. 1010).
`
`2
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`During the course oftrial, Patent Ownerfiled a Response (Paper 19,
`
`“PO Resp.”), and Petitioner filed a Reply to the Patent Owner Response
`(Paper 27, “Pet. Reply”). Petitioner submitted the Declaration of Brian W.
`Anthony, Ph.D. (Ex. 1003) and the Declaration of Brian W. Anthony, Ph.D.
`in Support of Petitioner’s Reply (Ex. 1102). Patent Owner submitted the
`
`Declaration of Albert H. Titus, Ph.D. (Ex. 2007).
`
`Patent Ownerfiled a Motion for Observations on the cross-
`
`examination of Dr. Anthony (Paper 37), and Petitioner filed a response
`thereto (Paper 39). Patent Owneradditionally alleged that certain of
`Petitioner’s arguments exceed the proper scopeofPetitioner’s Reply. See
`
`Ex. 1110.
`
`In addition, Patent Ownerfiled a Motion to Amend(Paper 20,
`
`“Mot.”), which was opposed by Petitioner (Paper 28, “Opp.”). Patent
`Owner submitted a Reply in Support ofits Motion to Amend (Paper 32, “PO
`Reply”), and Petitioner filed a Sur-Reply supporting its Opposition (Paper
`34, “Sur-Reply’”). In support of the Motion to Amend, Patent Owner
`submitted the Declaration of Dr. Titus (Ex. 2110), as well as the
`Supplemental Declaration of Dr. Titus (Ex. 2151). Petitioner submitted the
`Declaration of Dr. Anthony in support of Opposition (Ex. 1103), and the
`Supplemental Declaration of Dr. Anthony in support of Sur-Reply
`
`(Ex. 1111).
`Weheld a consolidated oral hearing on February 27, 2018, in relation
`to this proceeding and that of Case IPR2017-00318. A transcript (Paper45,
`“Tr.”) of the oral hearing has been entered into the record.
`Wehavejurisdiction to hearthis inter partes review under 35 U.S.C.
`§ 6, and this Final Written Decisionis issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, we determinethat
`
`3
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`Petitioner has shown by a preponderanceofthe evidencethat claims 1-6, 8-
`
`16, and 18-20 of the ’830 patent are unpatentable. Additionally, we deny
`
`Patent Owner’s Motion to Amend.
`
`B. Related Proceedings
`
`Theparties indicated 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
`
`Ownerindicated the ’830 patent is 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 indicated thatit filed another
`
`inter partes review petition challenging claimsof the *830 patent (IPR2017-
`00316), wherein institution of inter partes review was denied,andalsofiled
`
`anotherinter partes review petition (IPR2017-00318), in which inter partes
`
`review wasinstituted, challenging claims of U.S. Patent No. 8,886,269 B2,
`
`whichis the parent of the ’830 patent. Pet. 3; see also Apple Inc.v.
`Valencell, Inc., Case IPR2017-00316, (PTAB June 5, 2017) (Paper 7); Apple
`
`Inc. v. Valencell, Inc., Case IPR2017-00318, (PTAB June 5, 2017) (Paper7).
`
`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 patentclaimspriority 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].
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`The ’830 patentis directed to monitoring devices configuredto 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. Id. 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.
`
`pe
`
`
`
`
`228
`
` solUs
`
`
`
`
`FIG. 22B
`
`FIG. 22A
`
`Figure 22A is a top plan of an embodiment of monitoring device 70
`configured to be attached to the finger of a subject, and Figure 22B isa
`cross-sectional view of the monitoring device. Ex. 1001, 8:16-20. The
`monitoring device thatfits over the finger has outer body portion 72 that
`mayincludeaflex circuit, and base 50 securedto inner body portion 74 and
`outer body portion 72. Jd. at 28:1-10. Base 50 supports optical emitter 24,
`optical detector 26, and optical noise detector 26’. Jd. at 28:19-21. Layer of
`5
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`cladding material 21 is applied to (or near) outer surface 74a of inner body
`portion 74, as well as inner surface 74b,to serve asa light guideto deliver
`light from optical emitter 24 to the finger and to collect light from the finger
`and deliverit to optical detectors 26, 26’. Jd. at 28:30-38. “[W]indows 74w
`are formedin the cladding material 21 and serve aslight-guiding interfaces
`to the finger.” Jd. at 28:44-46. The device also may be embodiedin “a
`patch, such as a bandagethat sticks on a person’s body.” Jd. at 11:53-58.
`The *830 patent discloses an embodimentofthe inventionillustrated
`
`in Figure 3, reproduced below.
`
`
` ge
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`
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`mote
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`J
`SSUESTENSTSS
`
`i
`
`FIG. 3
`
`Figure 3 depicts an embodiment of a monitoring device showingaside
`section view of a headset with a light-guiding earbud. Ex. 1001, 7:7-9.
`
`Earbud 30 includes optical detector 26 and optical emitter 24.
`Ex. 1001, 14:52-53. Cladding material 21 is used to confinelight within
`
`light guiding region 19. Jd. at 14:60-63.
`
`Claims 1 and 11 are independent. Claims 2—6 and 8-10 depend
`directly from claim 1, and claims 12-16 and 18-10 dependdirectly from
`
`6
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`claim 11. Independent claim 1, reproducedbelow,isillustrative 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 andat least oneoptical
`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
`subject, wherein the light transmissive materialis 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 deliverlight from the at least one
`optical emitter to the body ofthe subject alongafirst 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 seconddirections are
`substantially parallel.
`
`Ex. 1001, 30:35-55.
`
`HW. ANALYSIS
`
`A. The Parties’ Post-Institution Arguments
`
`In our Decision on Institution, we concluded that the arguments and
`
`evidence advancedby Petitioner demonstrated a reasonable likelihood that
`claims 1 6,8 16, and 18-20 ofthe ’830 patcnt are unpatentable under35
`U.S.C. § 103 over asserted priorart. Inst. Dec. 26. We now determine
`whether Petitioner has established by a preponderanceof the evidence that
`claims 1-6, 8-16, and 18-20 are unpatentable under 35 U.S.C. § 103(a) over
`
`7
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent
`Ownerthat “any arguments for patentability not raised in the [Patent Owner
`Response] will be deemed waived.” Paper8, 3; see also 37 C.F.R.
`§ 42.23(a) (“Any material fact not specifically denied may be considered
`admitted.”); In re Nuvasive, Inc., 842 F.3d 1376, 1379-82 (Fed. Cir. 2016)
`(holding Patent Owner waived an argument addressed in Preliminary
`Response by notraising the same argument in the Patent Owner Response).
`Additionally, the Board’s Trial Practice Guidestates that the Patent Owner
`Response “shouldidentify all the involved claims that are believed to be
`patentable andstate the basis for that belief.” Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`With a complete record before us, we note that we have reviewed
`arguments and evidence advancedby Petitioner to support its unpatentability
`contentions where Patent Ownerchosenot to address certain limitationsin
`
`Inthis regard,the record now contains
`its Patent Owner Response.
`persuasive arguments and evidence presented by Petitioner regarding the
`mannerin which the asserted art teaches correspondinglimitations of claims
`1-6, 8-16, and 18-20. Based on the preponderanceofthe evidence before
`us, we concludethat the art identified by Petitioner discloses, teaches, or
`suggests all of the uncontestedlimitations of the reviewed claims. The
`limitations and claim construction that Patent Owner contests in the Patent
`
`OwnerResponseare specifically addressed below.
`
`B. Claim Construction
`
`In an inter partes review, weinterpret claim terms in an unexpired
`patent according to the broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R.§ 42.100(b).
`
`8
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`Underthat standard, and absentany special definitions, we give claim terms
`their ordinary and customary meaning,as they would be understood by one
`of ordinary skill in the art at the time of the invention. Jn re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Twoclaim termsare identified and discussed by the parties: “cladding
`
`material” and “light guiding interface.” See Pet. 12-14, Prelim. Resp. 25-
`
`30, PO Resp. 23-30; Pet. Reply 3-8.
`
`“cladding material”
`
`In the Petition and in its Reply, Petitioner asserts that “cladding
`
`material” should be construed as “a material that blocks or reflects at least
`
`somelight.” Pet. 12; Pet. Reply 5. Petitioner refers to several portions of
`the Specification indicating that “cladding material” may beany kindof
`material such as “air, a polymer,plastic, or a soft material having a lower
`index of refraction than silicone” (Ex. 1001, 13:51-54), or could be a
`
`reflective material (id. at 14:63-64). Pet. 13-14 (citing also Ex. 1001,
`14:64-67, 29:21-23, 46-50, 54-59, 60-62; Ex. 1003 9] 47-48). Petitioner
`also asserts that Figure 3 of the ’830 patent depicts two layers of cladding,
`and claim 1 requires only one layer of cladding material (“a layer of
`
`cladding”). Pet. Reply 3-4.
`Patent Ownerarguesthat “cladding material” should be construed as
`“a material that confines light within a region.” PO Resp. 23. Patent Owner
`refers to the Specification’s disclosure that “in the illustrated embodiment of
`FIG. 3 is defined by cladding material 21 that helps confine light within the
`light guiding region 19.” Jd. at 23-24 (quoting Ex. 1001, 14:62—-64
`(emphasis added), also citing id. at 16:16—25, 16:66-17:12, 18:46-48,
`18:60-19:4, 28:30-43, 29:46-50, Figs. 3 and 22B). Patent Owner argues
`
`|
`
`9
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`that Petitioner’s proposed construction deprives the term of its precise
`meaning. PO Resp. 26. Patent Ownerfurther asserts that “[o]ne of ordinary
`skill [in the art] would understandthat the cladding material may consist of
`those otherwise transparent materials becausetotal internal reflection can
`
`occur inside thesilicone light-guiding area if the outer material has a lower
`
`index of refraction than the silicone,” and, therefore, more than “some light”
`
`/d. at 26-27 (citing Ex. 1001, 13:52-54; Ex. 2007 ff 75-78).
`is reflected.
`Although Patent Owner makes generalized assertions about cladding
`material in its arguments on the alleged obviousness of the’830 patent,
`Patent Owner does not makeany specific arguments that the art asserted 1s
`deficient as to the teaching of cladding as used per se in the claimsatissue.
`See PO Resp. 8, 12-14, 30-34. As such, for the purposesofthis proceeding,
`we determine thatit is not necessary to provide an expressinterpretation of
`the term “cladding material.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`that are in controversy, and onlyto the extent necessary to resolve the
`
`controversy.”’).
`
`“light guiding interface”
`
`In the Petition, Petitioner did not provide a proposed construction for
`the term “light guide interface,” except for the general application of
`broadest reasonableinterpretation. Pet. 12-14. Within the Petition’s
`mapping of Goodmanto claim 1, Petitioner contends that Goodman’s
`aperture that “allow[s] light to pass” andis described as a “window” meets
`the claim limitation ofa “light guiding interface.” See id. at 29.
`Patent Owneralleges that the broadest reasonable interpretation of
`“light-guiding interface”is “‘an interface that delivers light along a path.”
`
`10
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`PO Resp. 27. Patent Owneraversthat its proposed construction is consistent
`with the Specification that describes a light guide as delivering light along a
`path. Jd. at 28 (citing, inter alia, Ex. 1001, 1:66—2:3, 11:34-36, 14:20-25,
`16:23-24). Patent Owneralso refers to dictionary definitions. Jd. at 28-29.
`
`Patent Ownerarguesthat Petitioner’s assertion that a construction that a
`light guiding interface would simplyallow light to pass into something 1s
`broader than the plain and ordinary meaning. Jd. at 29.
`In its Reply, Petitioner refers to the ’830 patent Specification that
`states “windows 74w are formedin the cladding material 21 and serve as
`
`light-guiding interfaces,” with window 74w shown, for example, in Figure
`22B. Pet. Reply 5-6 (citing Ex. 1001, 28:44-46, 29:60-62). Petitioner also
`refers to Patent Owner’s expert’s testimony, which generally states that a
`window does not changethedirection of path oflight. /d. at 5-6. Petitioner
`proposesthat the term “light-guiding interface” be construed as “a window
`that allows the light to pass through the cladding material into the body.” Id.
`
`at 7.
`
`Because wefind that the claimsat issue are rendered obvious even
`
`under Patent Owner’s proposed construction of the term “light guiding
`interface,”it is not necessary to provide an express interpretation of the
`
`term.
`
`C.
`
`Level of Ordinary Skill in the Art
`
`Petitioner argues that a person ofordinary skill in the art at the time of
`the 830 invention “would have had at least a four-year degree in electrical
`engineering, mechanical engineering, biomedical engineering, optical
`engineering, orrelated field of study, or equivalent experience, andat least
`two years’ experience in academiaorindustry studying or developing
`
`1]
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`physiological monitoring devices such as non-invasive optical biosensors.”
`Pet. 11-12 (citing Ex. 1003 §§ 25—26). Petitioner also asserts that a person
`of ordinary skill in the art would havealso been familiar with optical system
`design and signal processing. Jd. at 12. Patent Owner doesnot contestthat
`
`assessment. PO Resp. 16-17.
`Weadopt and apply this assessmentof the level of ordinary skill in
`the art articulated by Petitioner to our obviousnessanalysis in this
`proceeding. In addition, we notethat the art of record in this proceeding—
`namely, Goodman,Hicks, Hannula, Asada, and Delonzor—isindicative of
`the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001).
`
`D. Asserted Obviousness of Claims 1-4 and 11-14 over Goodman
`
`In support of this asserted ground of unpatentability, Petitioner
`explains how Goodmanallegedly teaches the subject matter of claims 1-4
`and 11-14. Pet. 25-42. In its Response, Patent Owner contendsthat
`Petitioner fails to demonstrate obviousness because Goodman doesnot teach
`
`several limitations of independent claims 1 and 11. See PO Resp. 30-41.
`Wefind that Petitioner has demonstrated by a preponderanceofthe
`
`evidence that Goodmanteachesor suggestsall of the limitations of claims
`
`1-4 and 11-14 for the reasons discussed below.
`Webegin ouranalysis with a summary of Goodman,and then address
`the arguments and evidence presented by theparties.
`
`1. Goodman (Ex. 1007)
`
`Goodmangenerally discloses an optical biosensor that measures
`arterial oxygen saturation. Ex. 1007, 1:11-14. The sensors can be
`configured for use with fingertips, toes, hands, or feet, as well as on the skin
`12
`
`
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`IPR2017-00317
`Patent 8,989,830 B2
`of the nasal septum overlying the carotid cavity. Id. at 9:65—-68, 10:7-9.
`
`Figure 4, reproduced below,is a depiction of a sensor fastened over a
`
`fingertip.
`
`
` 'FIG._4
`
`Figure 4 depicts a digit with the distal ends of the sensor fastened overthe
`
`fingertip. Ex. 1007, 8:27—28, 9:60-61.
`
`Goodmandiscloses an embodiment with a sensorthat usesa flexible
`
`adhesivestrip, depicted in Figure 2C and reproduced below.
`
`5C
`
`Figure 2C is an exploded view of an embodimentof a sensor with
`identification of individual elements. Ex. 1007, 8:15—18. In the depicted
`
`embodiment, the photo-active elements of the sensor substrate, thatis,
`element 24 which has a light source mountedto it, and element 14, which
`has a photo-sensor mountcdtoit, arc fastencd to opaque vinyl strip 10. Jd.
`at 8:50-52, 9:19-22. Second opaquetape, with strip 37 and adhesive layer
`
`38, is placed over the photo-active elements with apertures 40 and41 instrip
`37. Id. at 9:32-37. Layerofclear polyester 45 is placed over the length of
`
`13
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`the flexible adhesivestrip, and a protective layer of release tape 50 thatis in
`
`place during manufacture and before use. Jd. at 9:45—52.
`
`2. Analysis
`
`To prevail on its challenges to the patentability of the claims, a
`petitioner mustestablish facts supporting its challenge by a preponderance
`of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an[inter
`
`partes review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity .. . the evidence that supports the grounds forthe challenge to
`each claim”)). This burden of persuasion nevershifts to the patent owner.
`See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378—
`79 (Fed. Cir. 2015) (discussing the burdensof persuasion and production in
`
`inter partes review).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obviousatthe time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousnessis resolved on the basis of underlying
`factual determinations including:
`(1) the scope and contentofthe priorart;
`(2) any differences between the claimed subject matter and thepriorart;
`(3) the level of ordinary skill in the art; and (4), when in evidence, objective
`
`14
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`IPR2017-00317
`Patent 8,989,830 B2
`evidence of nonobviousness.’ Graham v. John Deere Co., 383 U.S. 1, 17-
`
`18 (1966).
`
`Petitioner asserts that claims 14 and 11-14 are unpatentable under 35
`
`U.S.C. § 103 as obvious over Goodman. Pet. 15-16, 25-42; Pet. Reply 8—
`
`19. Patent Ownerdisagrees with Petitioner’s assertions. PO Resp. 30-45.
`The parties focus their arguments on whether Goodman teachesthe
`following claim limitations of independent claims 1 and 11: (1) a window
`
`that serves “as a light-guiding interface;”(2) “the first and second directions
`are substantially parallel;” and (3) whetherthe “light transmissive material is
`
`configured” to meetthe “first and second directions.” See id. at 30-41;
`Pet. 24-40; Pet. Reply 8-18.® Asto the other limitations of the challenged
`
`claims under this ground, Patent Ownerpresents no additionalissues,
`
`including as to whether or not Goodmandiscloses or suggests one or more
`
`of those limitations, and we have reviewed the evidence and arguments
`presentedin the Petition and find that Petitioner has shownsufficiently that
`those elements are disclosed as arranged in the claims related to dependent
`
`claims 2-4 and 12-14. See Pet. 15-39; PO Resp. 30-41. We addressthe
`
`arguments regarding the disputed claim limitations in turn.
`
`7 Patent Ownerdoes not present argumentsor evidence ofobjectiveindicia
`of nonobviousnessin its Response.
`8 Patent Ownerasserts that portions of Petitioner’s Reply are allegedly
`beyond the scope of what is considered appropriate for a reply. See infra
`Section III. As discussed below, however, wefind that the disputed portions
`of Petitioner’s Reply and associated evidence are within the scope of whatis
`appropriate for a reply and may be considered. See id.
`
`15
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`
`IPR2017-00317
`Patent 8,989,830 B2
`i.
`“light guiding interface”
`
`Petitioner contends that Goodmanteaches or suggests a monitoring
`
`device, as claimed, and refers to Figure 2C of Goodman,as annotated by
`
`Petitioner, to show the correspondenceofthe recited limitations to
`
`Goodman’s structures. See Pet. 14-15, 25-32. Annotated Figure 2C of
`
`Goodmanis reproduced below.
`
`Clear layer (ianierffirst
`
`layer — light transmissive snaterial)
`
`
`
`opaquelayer
`(cladding)
`
`
`
`base
`
`
`
`
`outer layer
`
`Figure 2C is a view of an embodimentofa sensor of Goodman with
`Petitioner’s annotations shownin red. Pet. 16. As depicted, Petitioner
`
`asserts that the “cladding”limitation of claim 1 is taught by opaque layer 40
`of Goodman,the “outer” and “inner”layers are part of clear polyester layer
`45, and the “optical emitter” and “optical detector” are taught by Goodman’s
`light-emitting diodes (“LEDs”) 24 and photodetector 14. Jd. at 26-28.
`Petitioner relies upon Goodman’s disclosure thatits “opaque tape layer (37)
`‘is apertured at respective apertures 40, 41.. . [t]hese apertures allow light
`to pass,’” for the teaching of the claim limitation that “at least one window
`[is] formed in the layer of cladding materialthat 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’s obviousness analysis, as supported by Dr. Anthony’s
`Declaration, demonstrates where each element ofthe challenged claimsis
`16
`
`
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`IPR2017-00317
`Patent 8,989,830 B2
`taught in Goodman. Pet. 25-42; Ex. 1003 §] 68-98. We agree with and
`adopt Petitioner’s analysis and Dr. Anthony’s testimony.
`Patent Ownerargues that apertures 40 and 41 do not “serve as light-
`guiding interfaces to the body” because, underthe depictionthat Patent
`Owner developed of assembled sensor of Figure 2C, and whichis
`reproduced below,the apertures in Goodmando notserve any purposein
`
`guiding light to the body. PO Resp. 32-34.
`
`
`
`In the above-annotated Patent Ownerdepiction, whichis allegedly
`excerpted and modified by Patent Owner in accordance with the assembly
`description in the ’830 patent, Patent Ownerrelies, in part, on Goodman’s
`description. PO Resp. 32 (citing Ex. 1007, 9:39-43 (“Strip 37 is aperturedat
`respective apertures 40, 41. These aperturesallow light to pass. At the same
`time, they conform the thickness of the photo-active substrates to the overall
`thicknessofthe flexible adhesive strip to which attachment occurs.””)
`(emphasis in PO Resp.)). Patent Owner contends, based upontestimony
`
`provided by Dr. Titus, that:
`conform photoactive
`[because the apertures 40 and 41
`substrates 14 and 24 to the overall thickness of the flexible
`adhesive strip, one of ordinary skill in the art would understand
`that the apertures do not serve any purpose in guiding lightto
`the body.
`In that situation, light from the light source never
`interacts with the aperture itself, meaning that the apertures
`cannot guide any light to the body and cannot deliver light
`along a path.
`PO Resp. 33 (quoting Ex. 2007
`
`94).
`
`17
`
`
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`IPR2017-00317
`Patent 8,989,830 B2
`Patent Ownerfurther alleges that “Goodman’s device has complete
`
`cutaneous conformance, meaningthat it is adhered to the skin without any
`
`light-guiding interface between the light source and the body.” PO Resp. 33
`
`(citing Ex. 1007, 1:11-12, 4:64-66, 5:41-44, 7:13-18; Ex. 2007 ¥ 95).
`
`Patent Owneraversthat “[b]ecause the device of Goodman cutaneously
`
`conformsto the body,the apertures allow light to pass through the body, but
`
`they do not also deliver light to the body (guide light).” Jd. at 33-34
`
`(emphasis in original) (citing Ex. 1007, 4:50-54; Ex. 2007 { 96).
`Weagree with the Petitioner that the Patent Owner’s modified
`
`depiction does not depict accurately the Goodman Figure 2C device cross-
`section when assembled. See Pet. Reply 10. Petitioner points out that the
`
`Patent Owner’s depicted assembly showslight source 24 and photo-sensor
`
`14 extending beyond the apertures. Jd. Petitioner asserts that Patent
`Owner’s version of the assembly fails to include clear polyester layer 45 and
`
`release tape 50. Id. As such, Dr. Anthonytestifies that a person of ordinary
`skill would have understood that the light source does not extendall the way
`
`through the aperture and would not do so whenattached to the body. Ex.
`
`1102 4 14.
`
`Wefind that the weight of the evidence supports thatlight source 24
`
`and photo-sensor 14 of Goodmancould not extend above the sensor
`assembly as Patent Ownerdepicts. Referring to Figure 2C, even if release
`tape 50 is removed before use (Ex. 1007, 9:45—-52), clear polyester layer 45
`would be present in the assembled sensor, which Patent Ownerignoresin its
`depiction of an assembly.’ Given the location of clear polyester layer 45,
`
`° At oral hearing, Patent Owner was asked aboutits omission ofclear
`polyester layer 45 in the depiction that Patent Owneritself developed and
`presented. Tr. 38:12-22. Although Patent Owneridentified additional
`18
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`the evidence supportsthat it would impede the light source 24 and photo-
`
`sensor 14 from extending through the apertures.
`
`Petitioner contends that, even under Patent Owner’s proposed claim
`
`construction of“light-guiding interface,” Goodman teachesthe claim
`
`limitation, “window formed in the layer of cladding material that serves as a
`
`light-guiding interface to the body of the subject.” Pet. Reply 11-13; see
`also Pet. 29-30. The Petition refers to Goodman’s disclosure that opaque
`
`tape layer 37 “is apertured at respective apertures 40, 41. These apertures
`allow light to pass.” Pet. 29 (citing Ex. 1007, 9:39-40, Figs. 2B, 2C).
`Petitioner argues that in Goodman,light source 24 does not extend entirely
`through aperture 49 andthere is space between the emitting surfaceof the
`light source andthe endofthe aperture, and thelight interacts with the
`apertureitself. Pet. Reply 12 (citing Ex. 1102 16). Petitioner also asserts
`that “Goodman’s apertures function the same as the windowsinthe 830
`Patent—they allow light to pass through.” Jd. at 12-13 (citing Ex. 1102
`4 17; Ex. 1100, 88:2-11, 94:23-95:5, 179:4-12, 186:16—-187:7).
`Weare persuadedthat the preponderanceofthe evidence supports that
`Goodmanteachesthe claim limitation of “window formedin the layer of
`cladding material that servesas a light-guiding interface to the bodyof the
`subject,” even under Patent Owner’s proposed construction ofa “light
`guiding interface”as “an interface that serves to deliver light along a path.”
`Under Goodman,the apertures are described as allowing “light to pass”—
`not, instead, that the light source element completely “passes” through the
`
`layers that were not shown,there was no explanation for the omission. Jd.
`Uponfurther inquiry, directed to the absenceof an indentation in clear
`polyester layer 45 in Figure 2C, Patent Ownerstated that the clear polyester
`layer 45 wouldrest on top of the photodiodes. Id. at 39:3-14. We find the
`positions presented by Patent Ownerare inconsistent.
`19
`
`
`
`IPR2017-00317
`Patent 8,989,830 B2
`aperture. See Ex. 1001, 9:39-40. This is further supported by the depiction
`in Figure 2C of Goodman. Dr. Anthonytestifies that “[a]s specified by the
`arrows in Figure 2C .. .
`, the light from thelight source (24) passes through
`the aperture (40). .
`. [lJikewise, arrows also show thatlight returns through
`aperture (41) to the photo-sensor (14).” Ex. 1102 4 12; see also Ex. 1003
`479. Moreover, Goodmandiscloses that its apertures “conform the
`thickness of the photo-active substrates to the overall thickness of the
`flexible adhesive strip,” and that the substrates are “captured”to be tactilely
`indistinguishable from the flexible adhesive strip. See Ex. 1007, 9:39-45.
`Goodman’s “capture” of photoactive substrates within the flexible adhesive
`strip would not requirestrict “conform[ance],” such that the photoactive
`substrates extendall the way through and beyond the aperture, as Patent
`Ownerargues. As discussed above, extension beyond the apertures would
`be impeded under Goodman’s structure, noris full extension through the
`strip necessary to accomplisha “capture”of the photoactive substrates in the
`apertures for the purposesoftactile indistinguishability. See Ex. 1102 q 14.
`Accordingly, we determine that the evidencesufficiently supports the
`Petition regarding Goodman’s teaching of the claim limitation “at least one
`window formedin the layer of cladding material that servesasa light-
`guiding interface to the body ofthe subject,” even under Patent Owner’s
`proposed construction of “light-guiding interface.”
`
`ii. “first and seconddirections are substantially parallel”
`
`Patent Ownerarguesthat the Petition makes assumptions that fail to
`support that Goodmanteachesthe limitation of claim 1 that the light
`delivered to the optical detector is substantially parallel to the emitted light.
`PO Resp. 35-40. Patent Ownerrefers to Goodman’s embodimentdepicted
`
`20
`
`
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`IPR2017-00317
`Patent 8,989,830 B2
`in Figure 6, arguing that emitters and detectors positioned on opposite sides
`
`of the nose do notresult in the directions oflight emitted and detected being
`
`substantially parallel. /d. at 38-40. Patent Owneralso alleges that under
`Goodman’s finger embodiment, Petitioner jumps from the assumption of the
`
`orthogonal direction of some light emitted and received from the LEDs and
`photodiode surfaces to a conclusion that the LEDs and photodiode andtheir
`surfaces are disposed substantially opposite each other. /d. at 35-36. Patent
`Ownerargues that, although Goodmandiscloses that the first and second
`end of the substrates are disposed on “opposite side[s] of the flesh,”there 1s
`no guidance on the orientation ofthe light emitting or receiving surfaces. Jd.
`at 36 (citing Ex. 1007 at 4:37-45, 46-47; Ex. 2007 4 102). Patent Owner
`refers to
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