Trials@uspto.gov
`571-272-7822
`
`
` Paper 73
`
`
`Entered: April 5, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FITBIT, INC.,1
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00319
`Patent 8,923,941 B22
`_______________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining All Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318
`
`
`1 Petitioner Apple, Inc. is no longer a party in this proceeding. See Fitbit,
`Inc. v. Valencell, Inc., 964 F.3d 1112, 1114 (Fed. Cir. 2020) (“Following the
`[Final Written Decision], Apple withdrew from the proceeding.”).
`2 Case IPR2017-01555 has been joined with this proceeding.
`
`
`
`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
`
`I. INTRODUCTION
`
` Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–13 (“the challenged claims”) of U.S. Patent
`No. 8,923,941 B2 (Ex. 1001, “the ’941 patent”) under 35 U.S.C. §§ 311–
`319. Paper 2 (“Pet.”). Valencell, Inc. (“Patent Owner”) filed a Preliminary
`Response. Paper 6. We instituted an inter partes review as to claims 1, 2,
`and 6–13. Paper 10. Petitioner filed a Request for Rehearing (Paper 13) of
`our Decision on Institution with respect to our denial of institution of
`Petitioner’s challenges to claim 3, and we entered a decision (Paper 15)
`denying Petitioner’s Request for Rehearing. Fitbit, Inc. (also “Petitioner”)3
`filed a corresponding Petition (IPR2017-01555, Paper 2), accompanied by a
`Motion for Joinder (IPR2017-01555, Paper 3), challenging only claims 1, 2,
`and 6–13 of the ’941 patent, and we granted the Motion for Joinder and
`instituted review of the challenged claims (IPR2017-01555, Paper 9) based
`on the corresponding Petition.
`Subsequent to institution, Patent Owner filed a Patent Owner Response
`(Paper 22), and Petitioner filed a Reply (Paper 27). A transcript of the
`hearing held on February 27, 2018, has been entered into the record as
`Paper 34 (“Tr. I”).4
`On April 24, 2018, the U.S. Supreme Court held that a decision to
`institute under 35 U.S.C. § 314 may not institute on fewer than all of the
`
`
`3 Where appropriate for clarity, we distinguish between original Petitioner,
`Apple Inc., and joined Petitioner, Fitbit, Inc. Nevertheless, for the most part,
`we refer only to “Petitioner.” See supra note 1.
`4 This was a consolidated hearing with the following related case: Case
`IPR2017-00321. See Tr. I, 3:2–5.
`
`2
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`IPR2017-00319
`Patent 8,923,941 B2
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`claims challenged in the Petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
`1354 (2018). In view of the Court’s decision, we issued an Order (Paper 39)
`modifying our Decision on Institution to institute on all of the challenged
`claims and on all of the grounds asserted in the Petition. In particular, the
`additional grounds upon which we instituted review were: (1) claim 3 as
`obvious over the combined teachings of Luo and Craw (Ground 1) or over
`Mault, Al-Ali, and Lee (Ground 7); and (2) claims 4 and 5 as obvious over
`the combined teachings of Luo, Craw, and Wolf (Ground 2) or over Mault,
`Al-Ali, and Behar (Ground 8). Paper 39, 4; see infra Sections I.D. and I.E.
`The Chief Administrative Patent Judge granted a good cause extension of
`the one-year period for issuing a final written decision in this case
`(Paper 37), and the panel extended the deadline to issue a final written
`decision until August 6, 2018 (Paper 38). Pursuant to our authorization
`(Paper 39, 5–6), Petitioner filed additional briefing regarding the newly-
`instituted grounds and associated claims (Paper 40), and Patent Owner filed
`a response to Petitioner’s additional briefing (Paper 41).
`On August 6, 2018, we entered a Final Written Decision pursuant to 35
`U.S.C. § 318(a). Paper 43 (“FWD”). In that decision, we determined that
`Petitioner demonstrated by a preponderance of the evidence that claims 1, 2,
`and 6–13 of the ’941 patent are unpatentable, but that Petitioner failed to
`demonstrate by a preponderance of the evidence that claims 3–5 of the ’941
`patent are unpatentable. In particular, we determined that because Petitioner
`Apple Inc.’s challenge to claim 3 relied on an improper construction of the
`term “application-specific interface (API),” the application of the combined
`teachings of prior art references under that construction was unpersuasive.
`FWD 11–18. Similarly, we determined that claims 4 and 5, dependent from
`
`3
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`IPR2017-00319
`Patent 8,923,941 B2
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`claim 1, had an antecedent basis defect; namely, both claims recite “the
`application,” for which claim 1 provides no antecedent basis. Thus, either
`those claims properly depend from claim 3, which recites “an application,”
`or claim 4 should recite “an application.” See id. at 18. Although the parties
`later agreed on the apparent dependency error, we declined to speculate on
`which error was present, and, consequently, we were not persuaded by
`Petitioner’s challenge to claims 4 and 5. Id. at 18–22.
`On October 5, 2018, Petitioner, Fitbit, Inc., filed a Notice of Appeal
`(Paper 45) challenging our decision that claims 3–55 are not unpatentable on
`the grounds asserted in the Petition. See FWD 11–22 (discussing claims 3–
`5). On July 8, 2020, the U.S. Court of Appeals for the Federal Circuit
`(“Federal Circuit”) determined that “Fitbit’s rights as a joined party applies
`[sic.] to the entirety of the proceedings and includes the right of appeal,
`conforming to the statutory purpose of avoiding redundant actions by
`facilitating consolidation, while preserving statutory rights, including
`judicial review.” Fitbit, 964 F.3d at 1115. Further, the Federal Circuit
`affirmed our claim construction, but vacated our decision that claim 3 is not
`unpatentable. Id. at 1119. The Federal Circuit remanded for determination
`of the patentability of claim 3 in light of the Petition’s challenges under our
`construction of the term “application-specific interface (API).”6 Id. at 1118–
`
`
`5 Patent Owner did not appeal the panel’s determination that claims 1, 2,
`and 6–13 are unpatentable. Fitbit, 964 F.3d at 1114 (“Valencell does not
`cross-appeal as to the claims held unpatentable[.]”).
`6 Because Petitioner argued in the Petition that “API” in claim 3 means
`“application-programming interface,” we understand Petitioner’s references
`to “API” in the briefing generally are to “application-programming
`interfaces,” rather than “application-specific interfaces.” See Pet. 14.
`
`4
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`1119. In particular, the Federal Circuit noted that “[t]he Board’s narrowing
`construction [of the term “application-specific interface (API)”] may have
`no significance, where, as here, the claimed ‘application-specific interface’
`performs the same function as an application programming interface, i.e.,
`‘enabl[ing] a particular application to utilize data obtained from hardware.’”
`Id. at 1117. The Federal Circuit also vacated our decision that claims 4 and
`5 were not unpatentable due to the “absence of antecedent” basis. Id. at
`1120. The Federal Circuit instructed that “[o]n remand the Board shall
`determine patentability of corrected claims 4 and 57 on the asserted grounds
`of obviousness,” based on their dependence from claim 3, as agreed to by
`the parties. Id. at 1120 (emphasis added); see id. at 1119.
`Pursuant to the Board’s Standard Operating Procedure (SOP) 9, which
`describes our procedures for decisions remanded from the Federal Circuit
`for further proceedings, the parties conferred to discuss procedures for this
`review upon remand. Subsequently, a conference call was held on
`September 4, 2020, between the panel and counsel for the parties to discuss
`the procedure for this review upon remand. On that call, the parties agreed
`that limited and consecutive briefing was appropriate to address the
`patentability of claims 3–5 of the ’941 patent, on the grounds presented in
`Petitioner Apple Inc.’s Petition. Consequently, we authorized the filing of
`Petitioner’s opening brief (Paper 60), Patent Owner’s response brief
`(Paper 62), and Petitioner’s reply brief (Paper 64). See Paper 57.
`
`
`7 The Federal Circuit held that the Board has authority to correct certain
`claim errors by means in addition to formal mechanisms (such as a
`Certificate of Correction requested by a patent owner), and that the Board
`should exercise that authority here. Fitbit, 964 F.3d at 1119–20.
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`
`Patent Owner objects to portions of Petitioner’s opening brief because
`it allegedly contains new arguments and evidence not presented in Petitioner
`Apple Inc.’s Petition. We authorized Patent Owner to file a one-page
`document identifying the alleged new arguments and evidence (Paper 63),
`and we authorized Petitioner to file a one page document identifying support
`for the challenged arguments and evidence (Paper 65).
`Petitioner Fitbit Inc. requested a brief hearing, and Patent Owner
`requested to file a sur-reply brief. See Paper 69. We granted both requests.
`Patent Owner filed a sur-reply brief. Paper 70. We conducted a telephonic
`hearing on December 11, 2020, and we added a transcript of that hearing to
`the record of this review. Paper 71 (“Tr. II”).
`
`A. Related Proceedings
`
`According to the parties, the ’941 patent is involved in the following
`civil actions: Valencell, Inc. v. Apple Inc., Case No. 5-16-cv-00010
`(E.D.N.C. 2016); Valencell, Inc. v. Bragi Store, LLC et al., Case No. 5-16-
`cv-00895 (E.D.N.C. 2016); and Valencell, Inc. v. Fitbit, Inc., Case No. 5-16-
`cv-00002 (E.D.N.C. 2016). Pet. 52; Paper 5, 1. Further, the ’941 patent was
`involved in a related petition for inter partes review, Case IPR2017-00321,
`filed by Petitioner Apple Inc. on the same day as the instant Petition, which
`challenged claims 14–21 of the ’941 patent. We also instituted review of a
`related Petition by Fitbit, Inc. with the same grounds, and granted a Motion
`for Joinder of that review with Case IPR2017-00321. IPR2017-01556,
`Paper 9. We issued a Final Written Decision, finding challenged claims 14–
`21 of the ’941 patent unpatentable and denying a Motion to Amend those
`claims in Case IPR2017-00321. IPR2017-00321, Paper 44, 76. That related
`Final Written Decision was not appealed.
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`
`B. The ’941 Patent
`
`The ’941 patent is entitled “Methods and Apparatus for Generating
`Data Output Containing Physiological and Motion-Related Information,”
`and was filed February 19, 2014, and issued December 30, 2014. Ex. 1001,
`codes (22), (45), (54). The ’941 patent is a continuation of U.S. Patent
`Application No. 12/691,388, filed January 21, 2010, now issued as U.S.
`Patent No. 8,700,111 B2 (id. at (63)), and claims priority to four provisional
`patent applications: U.S. Provisional Patent Application Nos. 61/208,567,
`filed February 25, 2009; 61/208,574, filed February 25, 2009; 61/212,444,
`filed April 13, 2009; and 61/274,191, filed August 14, 2009 (id. at (60)).
`For purposes of this Decision, we accept February 25, 2009, as the earliest
`effective filing date of the ’941 patent, which is undisputed. See Pet. 9; see
`generally, PO Resp.
`The ’941 patent relates generally to physiological monitoring
`apparatus. Ex. 1001, 1:21–23. Figure 5 of the ’941 patent depicts an
`
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`exemplary embodiment and is reproduced below.
`
`
`Figure 5 depicts a side section view of light-guiding earbud 30 for a headset.
`In particular, earbud 30 includes light guiding cover 18 that serves the
`function of a housing. Id. at 16:16–19. Cover 18 includes a plurality of
`windows 18w formed in cladding material 21 on outer surface 18a of cover
`18. Id. at 16:19–21. Light 111 emitted from light emitter 24 passes through
`windows 18w and into the wearer’s body, and scattered light 110 returning
`from the wearer’s body passes into light guiding cover 18 through
`windows 18w and is directed to light detector 26. Id. at 16:21–24. In other
`embodiments, earbud housing and cover 18 may be separate components,
`for example, as shown in Figures 3 and 4, which depicts cover 18
`surrounding housing 16. Id. at 14:6–10. In addition, cover 18 of Figure 5 is
`surrounded by layer 29 of light transmissive material. Id. at 16:30–31. One
`or more lenses 29L are formed in layer 29 and are in optical communication
`with respective windows 18w in cover 18, and lenses 29L are configured to
`
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`collect returning, scattered light 110 and to direct scattered light 110 into
`light guiding region 19 and to light detector 26. Id. at 16:31–41. An earbud,
`such as earbud 30, may integrate a sensor module containing a plurality of
`sensor elements for measuring physiological information and at least one
`noise source for measuring noise information and may include a
`microprocessor that is in electrical communication with the sensor module
`or modules. Id. at 3:46–55, 4:21–25.
`In the apparatus described in the ’941 patent, photoplethysmography
`(“PPG”) signals may be pre-conditioned by the microprocessor to reduce
`motion artifacts and signal noise. Id. at 4:11–17, 4:25–32, 30:44–48; see id.
`at 32:1–15, 3:47–55. In particular, the physiological information may be
`filtered to remove signal noise by using various, known signal processing
`techniques. See id. at 3:56–67. Thus, the ’941 patent discloses apparatus for
`removing motion-related noise artifacts, such as subject footstep noise. See
`id. at 3:65–4:5; 31:18–19.
`
`C. Claims Challenged on Appeal
`
`Claim 1 is the sole independent claim of the ’941 patent. Each of
`challenged claims 3–5 depends directly or indirectly from claim 1. Claims 1
`and 3–5 are reproduced below.
`A method of generating data output containing
`1.
`physiological and motion-related information, the method
`comprising:
`sensing physical activity and physiological
`information from a subject via a single monitoring device
`attached to the subject, wherein the monitoring device
`comprises at least one motion sensor for sensing the
`physical activity and at least one photoplethysmography
`(PPG) sensor for sensing the physiological information;
`and
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`
`processing signals from the at least one motion
`sensor and signals from at least one PPG sensor via a
`processor of the monitoring device into a serial data output
`of physiological
`information
`and motion-related
`information, wherein the serial data output is configured
`such that a plurality of subject physiological parameters
`comprising subject heart rate and subject respiration rate
`can be extracted from the physiological information and
`such that a plurality of subject physical activity parameters
`can be extracted from the motion-related information.
`3. The method of claim 1, wherein the serial data output
`is parsed out such that an application-specific interface (API)
`can utilize the physiological information and motion-related
`information for an application.
`4. The method of claim [3],8 wherein the application is
`configured to generate statistical relationships between
`subject physiological parameters and subject physical activity
`parameters in the physiological information and motion-
`related information.
`5. The method of claim 4, wherein the application is
`configured to generate statistical relationships between
`subject physiological parameters and subject physical activity
`parameters via at least one of the following: principal
`component analysis, multiple linear regression, machine
`learning, and Bland-Altman plots.
`Id. at 30:35–54, 30:62–31:9. Per the Federal Circuit’s decision, we have
`corrected claim 4 to depend from claim 3. Fitbit, 964 F.3d at 1119–20.
`
`
`
`
`8 See supra 5, including note 7.
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`
`D. Applied References and Declaration
`
`Petitioner relies on the following references and declaration in support
`of its asserted grounds of unpatentability with respect to claims 3–5.
`
`Exhibit
`1003
`1004
`1042
`
`1055
`
`1056
`
`1057
`
`1058
`
`1059
`
`1061
`
`References and Declaration
`Declaration of Dr. Majid Sarrafzadeh
`Curriculum Vitae of Dr. Majid Sarrafzadeh
`U.S. Patent Application Publication No. 2007/0197881 A1 to
`Wolf et al., published August 23, 2007 (“Wolf”)
`U.S. Patent Application Publication No. 2008/0200774 A1 to
`Luo, filed February 16, 2007; published August 21, 2008
`(“Luo”)
`U.S. Patent Application Publication No. 2008/0133699 A1 to
`Craw et al., filed October 4, 2007, published June 5, 2008
`(“Craw”)
`U.S. Patent No. 6,513,532 B2 to Mault et al., issued February
`4, 2003 (“Mault”)
`U.S. Patent Application Publication No. 2003/0181798 A1 to
`Al-Ali, published September 25, 2003 (“Al-Ali”)
`Ren-Guey Lee et al., A Mobile Care System with Alert
`Mechanism, IEEE Trans. Inf. Technol. Biomed, vol. 11, no. 5
`pgs. 507–517 Sept. 2007 (“Lee”)
`International Patent Application Publication No. WO
`2006/009830 to Behar et al., published January 26, 2006
`(“Behar”)
`
`
`Pet. vii–x.
`As noted above, the ’941 patent issued claiming benefit from
`U.S. provisional patent applications having filing dates as early as February
`25, 2009. Ex. 1001, code (60). Each of the applied references has an
`effective filing date prior to February 25, 2009. See Pet. 8–9.
`
`
`
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`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts that claims 3–5 would have been unpatentable on the
`following grounds:
`Claim(s)
`Challenged9
`
`Reference(s)/Basis
`35 U.S.C. §
`Luo, Craw
`103(a)10
`3
`Luo, Craw, Wolf
`103(a)
`4, 5
`Mault, Al-Ali, Lee
`103(a)
`3
`Mault, Al-Ali, Behar
`103(a)
`4, 5
`Pet. 8–9. We instituted inter partes review of all of the appealed claims and
`on each of these asserted grounds. Paper 39, 6.
`In our Remand briefing order, we instructed that if Petitioner chose to
`maintain its challenge to claims 4 and 5 as obvious over the combined
`teachings of Mault, Al-Ali, and Behar, Petitioner should address in its
`opening brief the apparent inconsistency between that challenge and the
`challenge to claim 3 as obvious over the combined teachings of Mault, Al-
`Ali, and Lee. Paper 57, 6. Petitioner did not present arguments in support of
`the challenge to claims 4 and 5 as obvious over the combined teachings of
`Mault, Al-Ali, and Behar in its opening brief, and confirmed during the
`subsequent hearing that it is no longer pursuing that challenge to the
`patentability of claims 4 and 5. See generally Papers 60, 64; Tr. II, 7:21–
`
`
`9 Although independent claim 1 is not the subject of this Remand, we note
`that claim 1 was found unpatentable under 35 U.S.C. §103(a) over the
`combined teachings of Luo and Craw and over the combined teachings of
`Mault and Al-Ali. FWD 77.
`10 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. § 103 that became effective
`after the February 25, 2009 effective filing date of the ’941 patent. Therefore,
`we apply the pre-AIA version of 35 U.S.C. § 103.
`
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`8:5. Consequently, that challenge is waived, and we do not discuss its
`merits further herein.
`
`II. DISCUSSION
`A. Claim Interpretation: “application-specific interface (API)” (Claim 3)
`
`We construed “application-specific interface (API)” to mean “an
`interface which enables a particular application to utilize data obtained from
`hardware, such as the at least one motion sensor and the at least one PPG
`[photoplethysmography] sensor.” FWD 17. Under this claim construction,
`an “‘application-specific interface (API)’ is directed to a ‘particular
`application,’ rather than broadly to different applications.” Id. at 2
`(emphasis in original). The Federal Circuit affirmed our construction of this
`term, finding our “interpretation conforms to the specification and the
`prosecution history.” Fitbit, 964 F.3d at 1116–17. The court noted that the
`“narrowing construction may have no significance, where, as here, the
`claimed ‘application-specific interface’ performs the same function as an
`application programming interface, i.e., ‘enabl[ing] a particular application
`to utilize data obtained from hardware.’” Id. (quoting FWD 7). The Federal
`Circuit advised that “[o]n remand the Board may consider this aspect.” Id.
`
`We continue to apply the constructions of “physiological information”
`and “PPG sensor” set forth in our Final Written Decision. FWD 10–11, 22.
`At this time, no other claim terms require construction. Id. at 23.
`
`B. Obviousness of Claim 3 over Luo and Craw, and of Claims 4 and 5
`in Further Combination with Wolf
`
`1. Overview
`
`Petitioner contends that claim 3 is obvious under 35 U.S.C. § 103(a)
`over the combined teachings of Luo and Craw, and that claims 4 and 5 are
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`obvious under Section 103(a) over the combined teachings of Lou, Craw,
`and Wolf. See supra Section I.E. To support its contentions regarding these
`challenged claims, Petitioner provides a mapping of limitations of claims 3–
`5 to structures taught or suggested by Luo and Craw or by Luo, Craw, and
`Wolf. Pet. 15–44. Petitioner also refers to Dr. Sarrafzadeh’s Declaration for
`support. See Ex. 1003 ¶¶ 79–91, 94–98, 105–129.
`A 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 obvious at the 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 obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art;11 and (4), when in evidence, objective evidence of
`nonobviousness, i.e., secondary considerations.12 Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`We begin our analysis of these remanded grounds for unpatentability
`with a review of the applied references.
`
`
`11 Petitioner proposes an assessment of the level of ordinary skill in the art.
`Pet. 12; see Ex. 1003 ¶ 59. Patent Owner’s declarant, Dr. Pollonini, does not
`contest Petitioner’s proposed assessment. Ex. 2006 ¶ 65. Both
`Dr. Sarrafzadeh’s and Dr. Pollonini’s qualifications exceed this assessed
`level. Ex. 1004; Ex. 2006, App’x A. We adopt Petitioner’s assessment. See
`FWD 24 n.10.
`12 Patent Owner does not argue or provide evidence of secondary
`considerations with respect to claims 3–5. See FWD 24 n.11.
`
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`
`2. Luo (Ex. 1055)
`
`Luo teaches noninvasive monitoring systems for continuous, painless,
`and bloodless health state monitoring of a subject. Ex. 1055, Abstract.
`Specifically, a wearable device, such as that depicted in Luo’s Figure 1,
`monitors health conditions, analyzes the subject’s health information, and
`outputs that information. Id. ¶¶ 9–13.
`Luo’s Figure 1 is reproduced below with our annotations.13
`
`
`
`Luo’s Figure 1, above, depicts a system configured for positioning
`around the subject’s ear for detection of activity and physiological
`information. Id. ¶ 10. The depicted system includes physiological sign
`sensors (“S1”) for detecting the subject’s physiological information (such as
`heart rate, oxygen saturation (“SpO2”), and respiration rate (i.e., sleep
`
`13 We included this annotated figure in our Final Written Decision. FWD
`25. The annotations link components of Luo’s monitoring system to
`limitations of claim 1, consistent with Petitioner’s mapping.
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`apnea)); activity sensors (“S2”) for detecting the subject’s physical activity;
`a central processing module (“CPM”) including a central processing unit
`(“CPU”); and a shell to contain the system components. Id. ¶ 27; see id.,
`Figs. 3 and 4; see also id. ¶ 46 (“blood oxygen level, heart rate or pulse,
`blood flow information, body temperature, sleep apnea, glucose, exercise
`amount, unexpected fall or any type of health sign or activity that may be
`detected by the monitoring device” (emphasis added)), claim 37
`(“respiratory rate”). Physiological sensors (“S1”) include red (660 nm) and
`infrared (910 nm) light sources for emitting light through the subject’s body,
`for example, the earlobe, and optoelectronic sensors for optically detecting
`the intensity of light reflected back through the earlobe from a reflection
`plate. Id. ¶ 28. The CPM extracts physiological parameters from the
`plethysmographic signals obtained by the optoelectronic sensors. Id.
`Signals from Luo’s sensors are processed in real-time to output
`physiological and activity information. Id. ¶¶ 28, 46, claim 37, Fig. 4.
`Activity sensors S2 continuously detect a subject’s physical activity in
`three dimensions. Id. ¶ 29. The CPM processes signals from 3-axis
`acceleration sensors to extract activity information, such as activity state,
`activity strength, and activity duration. Id.; see id., Fig. 5. Activity
`information may be correlated with physiological information to more
`intelligently differentiate normal and dangerous health conditions. Id. ¶ 31.
`For example, a heart rate of 60–100 beats per minute (bpm) may be
`considered normal for a subject at rest, but a heart rate of 120 bpm may be
`considered within a normal range if the subject is running. Id.
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`
`3. Craw (Ex. 1056)
`
`Craw teaches methods for communicating medical information
`between network devices. Ex. 1056 ¶ 2; see id. ¶ 13, Fig. 9A (displaying
`physiological information based definitions derived from data dictionaries).
`The health care computing environment includes a variety of medical
`monitoring and analysis devices that process physiological data, including
`heart rate and respiration rate, and communicate that physiological data via a
`network. Id. ¶ 4. For example, Craw teaches “a system for interoperability
`of medical devices on a network and particularly measurements of non-
`invasive blood pressure (‘NIBP’), but it is understood that this example is
`merely illustrative and other uses and fields of use are contemplated.” Id.
`¶ 51.
`Craw teaches serializing data for transmission using a classification
`scheme to enable extraction of physiological parameters by a recipient
`device, such as for displaying information. See id. ¶¶ 200–216.
`“Serialization may be thought of as a process for taking an instance of
`software structure or class and turning the attributes/members of the class
`into transferable data encoding.” Id. ¶ 235. Craw further teaches the use of
`string tables to provide an interface that may be used by software to manage
`and access strings of data. Id. ¶ 255. A data dictionary may be used with a
`string table as an interface for managing, extracting, and displaying
`information from binary information streams. Id. ¶ 256, Fig. 7G. Thus,
`Craw’s system may include a protocol for the serializing and deserializing
`byte streams of information. Id. ¶ 15. Accordingly, physiological
`information may be communicated via known serial communications
`channels. Id. ¶¶ 68–70.
`
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`IPR2017-00319
`Patent 8,923,941 B2
`
`
`4. Wolf (Ex. 1042)
`
`Wolf discloses a wearable health monitoring device (i.e., basic health
`monitor 303). Like the monitor of Luo, Wolf’s device is worn around the
`ear and includes a physiological sensor (i.e., pulse oximeter), a motion
`sensor (i.e., an accelerometer), a processor, and a wireless transmitter.
`Ex. 1042 ¶ 52, Fig. 4; Ex. 1003 ¶ 100. Also like Luo, Wolf’s physiological
`sensor measures oxygen saturation SpO2 and heart rate, while Wolf’s motion
`sensor measures physical activities and detects falls. Ex. 1042 ¶¶ 67, 70, 71;
`Ex. 1003 ¶ 100. The wireless transmitter sends the measured physiological
`and physical activity parameters to a cognitive server. Ex. 1003 ¶ 100
`(citing Wolf ¶¶ 70–71).
`The cognitive server has a full, multi-parameter inference engine,
`meaning that some inferences with respect to the current health of an
`individual must be made by using multiple measurements and relating them
`through statistical analysis (i.e., Bayesian inference filters). Ex. 1042 ¶ 72,
`Fig. 6; Ex. 1003 ¶ 101. Petitioner’s expert asserts a person of ordinary skill
`in the relevant art would have understood that Wolf’s Bayesian inference
`engine is a statistical model that relates conditionally independent variables
`through probability functions. Ex. 1003 ¶ 101.
`
`5. Analysis
`a. Obviousness of Claim 3 Over Luo and Craw
`
`As noted above, claim 3 depends from independent claim 114 and
`recites, in the method of claim 1, “the serial data output is parsed out such
`
`
`14 Because we previously determined that claim 1 is obvious over the
`combined teachings of Luo and Craw (FWD 43) and that determination was
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`IPR2017-00319
`Patent 8,923,941 B2
`
`that an application-specific interface (API) can utilize the physiological
`information and motion-related information for an application.” Ex. 1001,
`30:62–65. With regard to our construction of the term “application-specific
`interface,” Petitioner contends that if we had evaluated the grounds for
`rejecting claim 3 applying our construction of the term, we would have
`found that the Petition includes a sufficient challenge to claim 3. Paper 40,
`4–5. Specifically, Petitioner contends:
`While [application programming interfaces] were generally
`well-known means of allowing different technologies to work
`together, different [application programming interfaces] were
`designed for specific uses. (Pet., 56.) In each of the
`combinations presented by [Petitioner], a specific [application
`programming interface] is applied for a specific application,
`thus satisfying the purported intent in the ’941 patent
`specification that the interface “can utilize the data as required
`for a particular application.” (See, Pet., 27-28 (Luo in view of
`Craw) . . . ; see also, [Paper 13], 2-4.) Accordingly, the Petition
`not only presented a reasonable likelihood that claim 3 would
`have been obvious, but the Petition and supporting evidence also
`proved by a preponderance of the evidence that claim 3 would
`have been obvious. The Board should find claim 3 obvious for
`the reasons set forth in [the] Petition.
`Paper 40, 5 (emphasis added).
`In the Petition, Petitioner acknowledges that “Luo does not expressly
`disclose that the serial data output is parsed out such that an [application-
`programming interface] can utilize the physiological information and
`motion-related information for an application.” Pet. 27. Nevertheless,
`
`
`not appealed, neither our determination that Luo and Craw together teach or
`suggest all of the limitations of claim 1 nor that a person of ordinary skill in
`the relevant art would have had reason to combine the teachings of Luo and
`Craw to achieve the methods, as recited in claim 1, are in dispute.
`
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`IPR2017-00319
`Patent 8,923,941 B2
`
`according to Petitioner, the combined teachings of Luo and Craw teach or
`suggest the additional limitations of claim 3 because:
`First, Luo teaches that its health monitoring device is configured
`to regularly extract and transmit historical and current health
`information to external computers and devices for health
`monitoring and evaluation. Ex. 1055, ¶¶0033-0041; Ex. 1003,
`¶92. Second, . . . Craw suggests configuring this data into a serial
`output string of physiological and physical activity parameters.
`Third, Craw teaches that a device receiving such a serial output
`string would have been able to extract the parameters from the
`s