Paper No. 46
`Trials@uspto.gov
`571-272-7822 Entered: June 1, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC. and FITBIT, INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.
`Patent Owner.
`____________
`
`IPR2017-003171
`Patent 8,989,830 B2
`____________
`
`
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`1Fitbit, Inc. v. Valencell, Inc., Case IPR2017-01553, has been joined with
`this proceeding.
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`

`

`IPR2017-00317
`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.”). 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 Response to 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 on all the asserted grounds, which are:
`
`Basis
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`Claims
`1–4, 11–14
`5, 15
`6, 16
`8, 9, 18, 19
`10, 20
`
`Reference(s)
`Goodman2
`Goodman and Hicks3
`Goodman, Hannula4, and Asada5
`Goodman and Asada
`Goodman and Delonzor6
`
`Paper 7 (“Dec.” or “Institution Decision”).
`
`2 U.S. Patent No. 4,830,014 (issued May 16, 1989) (Ex. 1007).
`3 U.S. Patent No. 6,745,061 B1 (issued June 1, 2004) (Ex. 1008).
`4 U.S. Patent No. 7,190,986 B1 (issued March 13, 2007) (Ex. 1009).
`5 H. Harry Asada, Mobile Monitoring with Wearable
`Photoplethysmographic Biosensors, IEEE ENGINEERING IN 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
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`IPR2017-00317
`Patent 8,989,830 B2
`During the course of trial, Patent Owner filed 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 Owner filed a Motion for Observations on the cross-
`examination of Dr. Anthony (Paper 37), and Petitioner filed a response
`thereto (Paper 39). Patent Owner additionally alleged that certain of
`Petitioner’s arguments exceed the proper scope of Petitioner’s Reply. See
`Ex. 1110.
`
`In addition, Patent Owner filed a Motion to Amend (Paper 20,
`“Mot.”), which was opposed by Petitioner (Paper 28, “Opp.”). Patent
`Owner submitted a Reply in Support of its 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).
`
`We held a consolidated oral hearing on February 27, 2018, in relation
`to this proceeding and that of Case IPR2017-00318. A transcript (Paper 45,
`“Tr.”) of the oral hearing has been entered into the record.
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6, and this Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, we determine that
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`IPR2017-00317
`Patent 8,989,830 B2
`Petitioner has shown by a preponderance of the evidence that 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
`
`The parties 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
`Owner indicated 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 that it filed another
`inter partes review petition challenging claims of the ’830 patent (IPR2017-
`00316), wherein institution of inter partes review was denied, and also filed
`another inter partes review petition (IPR2017-00318), in which inter partes
`review was instituted, challenging claims of U.S. Patent No. 8,886,269 B2,
`which is 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) (Paper 7).
`
`C. The ’830 Patent
`
`The ’830 patent is 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 claims priority 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). Id. at [63].
`
`
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`IPR2017-00317
`Patent 8,989,830 B2
`
`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. 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.
`
`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 is a
`cross-sectional view of the monitoring device. Ex. 1001, 8:16–20. The
`monitoring device that fits over the finger 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. Id. at 28:1–10. Base 50 supports optical emitter 24,
`optical detector 26, and optical noise detector 26´. Id. at 28:19–21. Layer of
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`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 as a light guide to deliver
`light from optical emitter 24 to the finger and to collect light from the finger
`and deliver it to optical detectors 26, 26´. Id. at 28:30–38. “[W]indows 74w
`are formed in the cladding material 21 and serve as light-guiding interfaces
`to the finger.” Id. at 28:44–46. The device also may be embodied in “a
`patch, such as a bandage that sticks on a person’s body.” Id. at 11:53–58.
`
`The ’830 patent discloses an embodiment of the invention illustrated
`in Figure 3, reproduced below.
`
`
`Figure 3 depicts an embodiment of a monitoring device showing a side
`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 confine light within
`light guiding region 19. Id. 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 depend directly from
`6
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`IPR2017-00317
`Patent 8,989,830 B2
`claim 11. Independent 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 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 secured to 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 formed in the layer of cladding material
`that serves as a light-guiding interface to the body of the
`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 along a 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.
`
`II. ANALYSIS
`
`A. The Parties’ Post-Institution Arguments
`In our Decision on Institution, we concluded that the arguments and
`evidence advanced by Petitioner demonstrated a reasonable likelihood that
`claims 1–6, 8–16, and 18–20 of the ’830 patent are unpatentable under 35
`U.S.C. § 103 over asserted prior art. Inst. Dec. 26. We now determine
`whether Petitioner has established by a preponderance of the evidence that
`claims 1–6, 8–16, and 18–20 are unpatentable under 35 U.S.C. § 103(a) over
`
`
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`IPR2017-00317
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`the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent
`Owner that “any arguments for patentability not raised in the [Patent Owner
`Response] will be deemed waived.” Paper 8, 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 not raising the same argument in the Patent Owner Response).
`Additionally, the Board’s Trial Practice Guide states that the Patent Owner
`Response “should identify all the involved claims that are believed to be
`patentable and state 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 advanced by Petitioner to support its unpatentability
`contentions where Patent Owner chose not to address certain limitations in
`its Patent Owner Response. In this regard, the record now contains
`persuasive arguments and evidence presented by Petitioner regarding the
`manner in which the asserted art teaches corresponding limitations of claims
`1–6, 8–16, and 18–20. Based on the preponderance of the evidence before
`us, we conclude that the art identified by Petitioner discloses, teaches, or
`suggests all of the uncontested limitations of the reviewed claims. The
`limitations and claim construction that Patent Owner contests in the Patent
`Owner Response are specifically addressed below.
`
`B. Claim Construction
`
`In an inter partes review, we interpret 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).
`
`
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`IPR2017-00317
`Patent 8,989,830 B2
`Under that standard, and absent any 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. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Two claim terms are 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
`some light.” Pet. 12; Pet. Reply 5. Petitioner refers to several portions of
`the Specification indicating that “cladding material” may be any kind of
`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 ¶¶ 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 Owner argues that “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.” Id. 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
`
`
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`IPR2017-00317
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`that Petitioner’s proposed construction deprives the term of its precise
`meaning. PO Resp. 26. Patent Owner further asserts that “[o]ne of ordinary
`skill [in the art] would understand that the cladding material may consist of
`those otherwise transparent materials because total internal reflection can
`occur inside the silicone light-guiding area if the outer material has a lower
`index of refraction than the silicone,” and, therefore, more than “some light”
`is reflected. Id. at 26–27 (citing Ex. 1001, 13:52–54; Ex. 2007 ¶¶ 75–78).
`Although Patent Owner makes generalized assertions about cladding
`material in its arguments on the alleged obviousness of the’830 patent,
`Patent Owner does not make any specific arguments that the art asserted is
`deficient as to the teaching of cladding as used per se in the claims at issue.
`See PO Resp. 8, 12–14, 30–34. As such, for the purposes of this proceeding,
`we determine that it is not necessary to provide an express interpretation 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 only to 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 reasonable interpretation. Pet. 12–14. Within the Petition’s
`mapping of Goodman to claim 1, Petitioner contends that Goodman’s
`aperture that “allow[s] light to pass” and is described as a “window” meets
`the claim limitation of a “light guiding interface.” See id. at 29.
`Patent Owner alleges that the broadest reasonable interpretation of
`“light-guiding interface” is “an interface that delivers light along a path.”
`
`
`
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`IPR2017-00317
`Patent 8,989,830 B2
`PO Resp. 27. Patent Owner avers that its proposed construction is consistent
`with the Specification that describes a light guide as delivering light along a
`path. Id. at 28 (citing, inter alia, Ex. 1001, 1:66–2:3, 11:34–36, 14:20–25,
`16:23–24). Patent Owner also refers to dictionary definitions. Id. at 28–29.
`Patent Owner argues that Petitioner’s assertion that a construction that a
`light guiding interface would simply allow light to pass into something is
`broader than the plain and ordinary meaning. Id. at 29.
`In its Reply, Petitioner refers to the ’830 patent Specification that
`states “windows 74w are formed in 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 change the direction of path of light. Id. at 5–6. Petitioner
`proposes that 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 we find that the claims at 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 of ordinary 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, or related field of study, or equivalent experience, and at least
`two years’ experience in academia or industry studying or developing
`
`
`
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`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 have also been familiar with optical system
`design and signal processing. Id. at 12. Patent Owner does not contest that
`assessment. PO Resp. 16–17.
`We adopt and apply this assessment of the level of ordinary skill in
`the art articulated by Petitioner to our obviousness analysis in this
`proceeding. In addition, we note that the art of record in this proceeding—
`namely, Goodman, Hicks, Hannula, Asada, and Delonzor—is indicative 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 Goodman allegedly teaches the subject matter of claims 1–4
`and 11–14. Pet. 25–42. In its Response, Patent Owner contends that
`Petitioner fails to demonstrate obviousness because Goodman does not teach
`several limitations of independent claims 1 and 11. See PO Resp. 30–41.
`We find that Petitioner has demonstrated by a preponderance of the
`evidence that Goodman teaches or suggests all of the limitations of claims
`1–4 and 11–14 for the reasons discussed below.
`We begin our analysis with a summary of Goodman, and then address
`the arguments and evidence presented by the parties.
`
`1. Goodman (Ex. 1007)
`
`Goodman generally 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
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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.
`
`
`Figure 4 depicts a digit with the distal ends of the sensor fastened over the
`fingertip. Ex. 1007, 8:27–28, 9:60–61.
`Goodman discloses an embodiment with a sensor that uses a flexible
`adhesive strip, depicted in Figure 2C and reproduced below.
`
`
`
`Figure 2C is an exploded view of an embodiment of a sensor with
`identification of individual elements. Ex. 1007, 8:15–18. In the depicted
`embodiment, the photo-active elements of the sensor substrate, that is,
`element 24 which has a light source mounted to it, and element 14, which
`has a photo-sensor mounted to it, are fastened to opaque vinyl strip 10. Id.
`at 8:50–52, 9:19–22. Second opaque tape, with strip 37 and adhesive layer
`38, is placed over the photo-active elements with apertures 40 and 41 in strip
`37. Id. at 9:32–37. Layer of clear polyester 45 is placed over the length of
`
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`the flexible adhesive strip, and a protective layer of release tape 50 that is in
`place during manufacture and before use. Id. at 9:45–52.
`
`2. Analysis
`
`To prevail on its challenges to the patentability of the claims, a
`
`petitioner must establish 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 for the challenge to
`each claim”)). This burden of persuasion never shifts to the patent owner.
`See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–
`79 (Fed. Cir. 2015) (discussing the burdens of 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 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 ordinary skill in the art; and (4), when in evidence, objective
`
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`evidence of nonobviousness.7 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`Petitioner asserts that claims 1–4 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 Owner disagrees with Petitioner’s assertions. PO Resp. 30–45.
`The parties focus their arguments on whether Goodman teaches the
`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) whether the “light transmissive material is
`configured” to meet the “first and second directions.” See id. at 30–41;
`Pet. 24–40; Pet. Reply 8–18.8 As to the other limitations of the challenged
`claims under this ground, Patent Owner presents no additional issues,
`including as to whether or not Goodman discloses or suggests one or more
`of those limitations, and we have reviewed the evidence and arguments
`presented in the Petition and find that Petitioner has shown sufficiently 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 address the
`arguments regarding the disputed claim limitations in turn.
`
`
`7 Patent Owner does not present arguments or evidence of objective indicia
`of nonobviousness in its Response.
`8 Patent Owner asserts 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, we find that the disputed portions
`of Petitioner’s Reply and associated evidence are within the scope of what is
`appropriate for a reply and may be considered. See id.
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`“light guiding interface”
`i.
`
`Petitioner contends that Goodman teaches or suggests a monitoring
`device, as claimed, and refers to Figure 2C of Goodman, as annotated by
`Petitioner, to show the correspondence of the recited limitations to
`Goodman’s structures. See Pet. 14–15, 25–32. Annotated Figure 2C of
`Goodman is reproduced below.
`
`
`
`Figure 2C is a view of an embodiment of a sensor of Goodman with
`Petitioner’s annotations shown in 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. Id. at 26–28.
`Petitioner relies upon Goodman’s disclosure that its “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 material that serves as a light-guiding
`interface to the body of the subject.” Id. 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 of the challenged claims is
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`taught in Goodman. Pet. 25–42; Ex. 1003 ¶¶ 68–98. We agree with and
`adopt Petitioner’s analysis and Dr. Anthony’s testimony.
`
`Patent Owner argues that apertures 40 and 41 do not “serve as light-
`guiding interfaces to the body” because, under the depiction that Patent
`Owner developed of assembled sensor of Figure 2C, and which is
`reproduced below, the apertures in Goodman do not serve any purpose in
`guiding light to the body. PO Resp. 32–34.
`
`
`
`In the above-annotated Patent Owner depiction, which is allegedly
`
`excerpted and modified by Patent Owner in accordance with the assembly
`description in the ’830 patent, Patent Owner relies, in part, on Goodman’s
`description. PO Resp. 32 (citing Ex. 1007, 9:39–43 (“Strip 37 is apertured at
`respective apertures 40, 41. These apertures allow light to pass. At the same
`time, they conform the thickness of the photo-active substrates to the overall
`thickness of the flexible adhesive strip to which attachment occurs.”)
`(emphasis in PO Resp.)). Patent Owner contends, based upon testimony
`provided by Dr. Titus, that:
`[b]ecause the apertures 40 and 41 conform photoactive
`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 light to
`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).
`
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`
`Patent Owner further alleges that “Goodman’s device has complete
`cutaneous conformance, meaning that 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 Owner avers that “[b]ecause the device of Goodman cutaneously
`conforms to the body, the apertures allow light to pass through the body, but
`they do not also deliver light to the body (guide light).” Id. at 33–34
`(emphasis in original) (citing Ex. 1007, 4:50–54; Ex. 2007 ¶ 96).
`
`We agree 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 shows light source 24 and photo-sensor
`14 extending beyond the apertures. Id. 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. Anthony testifies that a person of ordinary
`skill would have understood that the light source does not extend all the way
`through the aperture and would not do so when attached to the body. Ex.
`1102 ¶ 14.
`
`We find that the weight of the evidence supports that light source 24
`and photo-sensor 14 of Goodman could not extend above the sensor
`assembly as Patent Owner depicts. 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 Owner ignores in its
`depiction of an assembly.9 Given the location of clear polyester layer 45,
`
`9 At oral hearing, Patent Owner was asked about its omission of clear
`polyester layer 45 in the depiction that Patent Owner itself developed and
`presented. Tr. 38:12–22. Although Patent Owner identified additional
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`the evidence supports that 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 teaches the 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 and there is space between the emitting surface of the
`light source and the end of the aperture, and the light interacts with the
`aperture itself. Pet. Reply 12 (citing Ex. 1102 ¶ 16). Petitioner also asserts
`that “Goodman’s apertures function the same as the windows in the ’830
`Patent—they allow light to pass through.” Id. at 12–13 (citing Ex. 1102
`¶ 17; Ex. 1100, 88:2–11, 94:23–95:5, 179:4–12, 186:16–187:7).
`
`We are persuaded that the preponderance of the evidence supports that
`Goodman teaches the claim limitation of “window formed in the layer of
`cladding material that serves as a light-guiding interface to the body of the
`subject,” even under Patent Owner’s proposed construction of a “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. Id.
`Upon further inquiry, directed to the absence of an indentation in clear
`polyester layer 45 in Figure 2C, Patent Owner stated that the clear polyester
`layer 45 would rest on top of the photodiodes. Id. at 39:3–14. We find the
`positions presented by Patent Owner are inconsistent.
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`aperture. See Ex. 1001, 9:39–40. This is further supported by the depiction
`in Figure 2C of Goodman. Dr. Anthony testifies that “[a]s specified by the
`arrows in Figure 2C . . . , the light from the light source (24) passes through
`the aperture (40) . . . [l]ikewise, arrows also show that light returns through
`aperture (41) to the photo-sensor (14).” Ex. 1102 ¶ 12; see also Ex. 1003
`¶ 79. Moreover, Goodman discloses 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 require strict “conform[ance],” such that the photoactive
`substrates extend all the way through and beyond the aperture, as Patent
`Owner argues. As discussed above, extension beyond the apertures would
`be impeded under Goodman’s structure, nor is full extension through the
`strip necessary to accomplish a “capture” of the photoactive substrates in the
`apertures for the purposes of tactile indistinguishability. See Ex. 1102 ¶ 14.
`
`Accordingly, we determine that the evidence sufficiently supports the
`Petition regarding Goodman’s teaching of the claim limitation “at least one
`window formed in the layer of cladding material that serves as a light-
`guiding interface to the body of the subject,” even under Paten