Paper No. 54
`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.
`____________
`
`IPR2017-003181
`Patent 8,886,269 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
`
`
`
`
`
`
`1 Fitbit, Inc. v. Valencell, Inc., Case IPR2017-01554, has been joined with
`this proceeding.
`
`
`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.
`____________
`
`IPR2017-003181
`Patent 8,886,269 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
`
`
`
`
`
`
`1 Fitbit, Inc. v. Valencell, Inc., Case IPR2017-01554, has been joined with
`this proceeding.
`
`
`
`IPR2017-00318
`Patent 8,886,269 B2
`
`I. INTRODUCTION
`A. Background
`
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–10 (“the challenged claims”) of U.S. Patent No.
`8,886,269 B2 (Ex. 1001, “the ’269 patent”) pursuant to 35 U.S.C. §§ 311–
`319. Paper 2 (“Pet.”). Fitbit, Inc. v. Valencell, Inc., Case IPR2017-01554,
`has been joined with this proceeding. Paper 30, 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 1–10 of the ’269 patent on June 5, 2017 on all of the
`asserted grounds, which are:
`Ground Claim(s)
`§ 103
`1, 2, 6, 7
`§ 103
`3
`§ 103
`4, 5
`§ 103
`8
`§ 103
`9, 10
`§ 103
`1, 2
`
`Reference(s)
`Asada2
`Asada and Hicks3
`Asada and Hannula4
`Asada and Delonzor5
`Asada and Al-Ali6
`Goodman7
`
`
`2 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).
`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 U.S. Patent No. 5,797,841 (issued August 25, 1998) (Ex. 1010).
`6 U.S. Publication No. 2007/0123763 A1, published May 31, 2007
`(Ex. 1011).
`7 U.S. Patent No. 4,830,014 (issued May 16, 1989) (Ex. 1007).
`2
`
`
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`IPR2017-00318
`Patent 8,886,269 B2
`Ground Claim(s)
`§ 103
`3
`§ 103
`4
`§ 103
`5
`§ 103
`6, 7
`§ 103
`8
`§ 103
`9, 10
`
`Reference(s)
`Goodman and Hicks
`Goodman and Hannula
`Goodman, Hannula, and Asada
`Goodman and Asada
`Goodman and Delonzor
`Goodman and Al-Ali
`
`Paper 7 (“Dec.” or “Institution Decision”), 25–26.
`During the course of trial, Patent Owner filed a Corrected Patent
`Owner Response (Paper 22, “PO Resp.”), and Petitioner filed a Reply to the
`Patent Owner Response (Paper 32, “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 42), and Petitioner filed a response
`thereto (Paper 45). Petitioner filed a Motion to Exclude Evidence (Paper 44,
`“Mot. Ex.”), with Patent Owner filing an Opposition the Motion to Exclude
`(Paper 47, “Mot. Ex. Opp.”), and Petitioner filing a Reply thereto (Paper 48,
`“Mot. Ex. Reply”). In support of Patent Owner’s Opposition to the Motion
`to Exclude, the Declaration of Alex Wong (Ex. 2154) and the Declaration of
`Nathan L. Levenson (Ex. 2155) were submitted.
`
`In addition, Patent Owner filed a Motion to Amend (Paper 21,
`“Mot.”), which was opposed by Petitioner (Paper 33, “Opp.”). Patent
`Owner submitted a Reply in Support of its Motion to Amend (Paper 37, “PO
`
`
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`IPR2017-00318
`Patent 8,886,269 B2
`Reply”), and Petitioner filed a Sur-Reply supporting its Opposition
`(Paper 39, “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 the Opposition (Ex. 1103).
`
`We held a consolidated oral hearing on February 27, 2018, in relation
`to this proceeding and that in Case IPR2017-00317. A transcript (Paper 53,
`“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
`Petitioner has shown by a preponderance of the evidence that claims 1–10 of
`the ’269 patent are unpatentable. We deny Patent Owner’s Motion to
`Amend. Additionally, we deny Petitioner’s Motion to Exclude.
`
`B. Related Proceedings
`
`The parties indicate that the ’269 patent is at issue in Valencell, Inc. v.
`Apple Inc., Case No. 5:16-cv-00001 (E.D.N.C), and Valencell, Inc. v. Fitbit,
`Inc., Case No. 5:16-cv-00002 (E.D.N.C). Pet. 3; Paper 5, 1. Patent Owner
`indicates the ’269 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 indicates that it filed other inter
`partes review petitions challenging claims of U.S. Patent No. 8,989,830 B2
`(IPR2017-00316 (institution denied) and IPR2017-00317 (instituted)).
`Pet. 3. U.S. Patent No. 8,989,830 B2 is a continuation of the ’269 patent.
`Id.
`
`
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`IPR2017-00318
`Patent 8,886,269 B2
`
`C. The ’269 Patent
`
`The ’269 patent is entitled “Wearable Light-Guiding Bands For
`
`Physiological Monitoring” and issued on November 11, 2014, from an
`application filed on February 19, 2014. Ex. 1001, [22], [45], [54]. The ’269
`patent claims priority to the following applications: (1) U.S. Patent
`Application No. 12/691,388, filed on January 21, 2010 (now U.S. Patent No.
`8,700,111); (2) U.S. Provisional Patent Application No. 61/208,567, filed on
`February 25, 2009; (3) U.S. Provisional Patent Application No. 61/208,574,
`filed on February 25, 2009; (4) U.S. Provisional Patent Application No.
`61/212,444, filed on April 13, 2009; and (5) U.S. Provisional Patent
`Application No. 61/274,191, filed on August 14, 2009. Id. at [63], [60].
`
`The ’269 patent is directed to monitoring devices capable of
`encircling a portion of 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 4:31–65. Monitoring devices may be configured to be
`attached to earlobes, fingers, toes, and other digits. Id. at 27:59–61. The
`’269 patent discloses various embodiments of the monitoring devices, such
`as that depicted in Figures 22A and 22B, reproduced below.
`
`
`
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`IPR2017-00318
`Patent 8,886,269 B2
`
`
`Figure 22A is a top plan of an embodiment of monitoring device configured
`to be attached to the finger of a subject, and Figure 22B is a cross-sectional
`view of the monitoring device. Ex. 1001, 8:13–17. Monitoring device 70
`includes a generally circular band that may encircle finger F of a subject,
`and has cylindrical outer body portion 72 and generally cylindrical inner
`body portion 74 secured together. Id. at 27:61–28:1. Base 50 supports
`optical emitter 24, optical detector 26, and optical noise detector 26´. Id. at
`28:15–17. Layer of cladding material 21 is applied to (or near) outer surface
`74a of inner body portion 74, as well as inner surface 74b, to serve as a light
`guide to deliver light from optical emitter 24 to the finger and to collect light
`from the finger and deliver it to optical detectors 26, 26´. Id. at 28:26–34.
`“[W]indows 74w are formed in the cladding material 21 and serve as light-
`guiding interfaces to the finger.” Id. at 28:40–42. Multiple emitters and/or
`detectors may assist in detecting motion artifacts. Id. at 28:62–29:11.
`
`
`
`6
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`IPR2017-00318
`Patent 8,886,269 B2
`
`Claim 1 is the only independent claim at issue, and claims 2–10
`depend directly or indirectly from claim 1. Claim 1, reproduced below, is
`illustrative of the challenged claims of the ’269 patent.
`
`1. A monitoring device, comprising:
`
`a band configured to at least partially encircle a portion of the
`body of a subject, the band comprising:
`a generally cylindrical outer body portion and a generally
`cylindrical inner body portion secured together in concentric
`relationship the inner body portion comprising light
`transmissive material, and having outer inner surface;
`a layer of cladding material near the inner body portion
`inner surface; and
`at least one window formed in the cladding material that
`serves as a light-guiding interface to the body of the subject;
`and
`at least one optical emitter and at least one optical detector
`attached to the band;
`
`wherein the light transmissive material is in optical
`communication with the at least one optical emitter and the at least
`one optical detector and is configured to deliver light from the at least
`one optical emitter to one or more locations of the body of the subject
`via the at least one window and to collect light from one or more
`locations of the body of the subject via the at least one window and
`deliver the collected light to the at least one optical detector.
`Ex. 1001, 30:30–53.
`
`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 1–10 of the ’269 patent are unpatentable under 35 U.S.C. § 103 over
`asserted prior art. Dec. 25–26. We now determine whether Petitioner has
`established by a preponderance of the evidence that claims 1–10 are
`7
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`IPR2017-00318
`Patent 8,886,269 B2
`unpatentable under 35 U.S.C. § 103(a) over 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 prior art teaches corresponding limitations of
`claims 1–10. Based on the preponderance of the evidence before us, we
`conclude that the art identified by Petitioner discloses, teaches, or suggests
`all of the limitations of the reviewed claims.
`
`B. Claim Construction
`
`In an inter partes review, the Board interprets 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). Under that standard, and absent any special definitions, we
`
`
`
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`IPR2017-00318
`Patent 8,886,269 B2
`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).
`Three claim terms are identified and discussed by the parties:
`“cladding material,” “light guiding interface,” and “generally cylindrical.”
`See Pet. 13–16, PO Resp. 21–26; 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. 15; 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, 13:50–52), or could be a
`reflective material (id. at 16:65). Pet. 14–15 (citing also Ex. 1001, 16:66–
`17:1, 28:1–2, 28:26–29, 28:35–39, Figs. 22A, 22B; Ex. 1003 ¶¶ 52–53).
`Petitioner also asserts that Figure 3 of the ’269 patent depicts two layers of
`cladding, and claim 1 requires only one layer of cladding material (“a layer
`of cladding”). Pet. Reply 4.
`Patent Owner argues that “cladding material” should be construed as
`“a material that confines light within a region.” PO Resp. 21. 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 21–23 (quoting Ex. 1001, 14:58–61
`(emphasis in Response), also citing id. at 16:14–22; 16:64–17:10; 18:44–46;
`18:58–19:2; 28:26–39; 29:42–46, Figs. 3, 22B). Patent Owner argues that
`Petitioner’s proposed construction deprives the term of its precise meaning.
`
`
`
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`IPR2017-00318
`Patent 8,886,269 B2
`PO Resp. 24. Patent Owner further asserts that the “one of ordinary skill
`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 being
`reflected. Id. (citing Ex. 1001, 13:22–26, 49–52; Ex. 2007 ¶¶ 82–86).
`Although Patent Owner makes generalized assertions about cladding
`material in its arguments on the alleged obviousness of the’269 patent,
`Patent Owner does not make any specific arguments that the prior art
`asserted is deficient as to the teaching of cladding as used per se in the
`claims at issue. See PO Resp. 6, 49–53. 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-guiding interface,” except for the general application of
`broadest reasonable interpretation. Pet. 13–16. Within the Petition’s
`mapping of the prior art to claim 1, however, Petitioner contends that Asada
`and Goodman’s features include windows that serve as a “light-guiding
`interface.” See id. at 32, 54.
`Patent Owner alleges that the broadest reasonable interpretation of
`“light-guiding interface” is “an interface that delivers light along a path.”
`PO Resp. 25. Patent Owner avers that its proposed construction is consistent
`
`
`
`10
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`IPR2017-00318
`Patent 8,886,269 B2
`with the Specification that describes a light guide as delivering light along a
`path. Id. (citing, inter alia, Ex. 1001, 11:30–32, 14:18–23, 14:38–40, 16:21–
`22, 18:50–55, 19:54–55, 20:65–67; 28:26–34, 30:42–50). Patent Owner also
`refers to dictionary definitions. Id. 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 26.
`In its Reply, Petitioner refers to the ’269 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 6 (citing Ex. 1001, 28:40–42, 29:56–58). Petitioner also
`refers to Patent Owner expert’s testimony, which generally states that a
`window does not change the direction of path of light. Id. at 6–7. 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 8 (emphasis omitted).
`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.
`
`“generally cylindrical”
`
`Petitioner asserts that under broadest reasonable construction, the term
`
`“generally cylindrical” should be interpreted as “having a convex shape.”
`Pet. 13 (citing Ex. 1003 ¶ 50). Patent Owner contends that Petitioner’s
`proposed construction is unreasonably broad, and the term should be
`
`
`
`11
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`IPR2017-00318
`Patent 8,886,269 B2
`construed as “generally shaped like [a]cylinder,” which is allegedly its plain
`and ordinary meaning. PO Resp. 26–27.
`
`Although there is a difference in the parties’ proposed constructions of
`the term “generally cylindrical,” the parties do not identify or further argue
`any issues related to the claim term that require resolution. As such, for the
`purposes of this proceeding, we determine that it is not necessary to provide
`an express interpretation of the term “generally cylindrical.”
`
`C.
`
`Level of Ordinary Skill in the Art
`
`Petitioner argues that a person of ordinary skill in the art at the time of
`the ’269 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
`physiological monitoring devices such as non-invasive optical biosensors.”
`Pet. 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. Patent Owner does not contest that
`assessment. PO Resp. 15.
`We adopt and apply the level of ordinary skill in the art articulated by
`Petitioner to our obviousness analysis in this proceeding. In addition, we
`note that the prior art of record in this proceeding—namely, Goodman,
`Hicks, Hannula, Asada, Al-Ali, 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).
`
`
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`D.
`Asserted Obviousness of Claim 1 over Asada
`
`In support of this asserted ground of unpatentability, Petitioner
`
`explains how Asada allegedly teaches the subject matter of claim 1. Pet. 29–
`34. In its Response, Patent Owner contends that Petitioner fails to
`demonstrate obviousness because Petitioner’s ground rests upon faulty
`assumptions, and Asada fails to teach some of the claim limitations. See PO
`Resp. 27–36.
`We find that Petitioner has demonstrated by a preponderance of the
`evidence that Asada teaches or suggests all of the limitations of claim 1 for
`the reasons discussed below.
`We begin our analysis with a summary of Asada, and then address the
`arguments and evidence presented by the parties.
`
`1. Asada (Ex. 1005)
`
`Asada discloses “miniaturized data acquisition features with advanced
`
`photoplethysmographic (PPG) techniques to acquire data related to the
`patient’s cardiovascular state.” Ex. 1005, 28. For example, a ring
`configuration of the sensor may monitor a patient’s heart rate, oxygen
`saturation, and heart rate variability, accounting for technical issues such as
`motion artifacts. Id. Asada describes a ring sensor prototype that includes
`an optical sensor unit with an LED and a photodetector; and an onboard
`microcomputer for data acquisition, signal processing, filtering, and bi-
`directional radio-frequency (“RF”) communication. Id. at 30, 34. Asada’s
`Figure 11 is reproduced below.
`
`
`
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`
`
`Figure 11 of Asada depicts a ring sensor band that protects optical
`components and hides wires from the outside environment. Ex. 1005, 35.
`The ring prototype configuration uses bands to hold the sensor unit and
`secure contact with the skin, as well as shield the unit. Id. at 34.
`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
`
`
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`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
`evidence of nonobviousness.8 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`Petitioner asserts that claim 1 is unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Asada. Pet. 29–34; Pet. Reply 12–18. 9 Patent
`Owner disagrees with Petitioner’s assertions. PO Resp. 27–36. The parties
`focus their arguments on: (1) whether the assertions made about Asada’s
`components are faulty; (2) whether Asada teaches the limitation “the inner
`body portion comprising light transmissive material;” and (3) whether Asada
`teaches “deliver[ing] light” as the claim recites. See id. at 27–36; Pet. 29–
`34; Pet. Reply 12–17. We address the arguments regarding these disputed
`issues as to independent claim 1 in turn.
`
`
`8 Patent Owner does not present arguments or evidence of objective indicia
`of nonobviousness in its Patent Owner Response.
`9 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.
`15
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`i.
`Alleged faulty assertions by Petitioner regarding Asada
`
`Petitioner contends that Asada discloses a monitoring device as
`claimed, and refers to Figure 11 of Asada, as annotated by Petitioner, for
`correspondence of the claimed elements of claim 1 to Asada’s structures.
`See Pet. 18–20. Annotated Figure 11 of Asada is reproduced below.
`
`
`
`Figure 11 depicts a sensor band of Asada with Petitioner’s annotations
`shown in red. Pet. 19. Dr. Anthony testifies that, although Asada does not
`correlate its descriptions with the reference numbers shown in Figure 11,
`this type of structure was known in the prior art. Ex. 1003 ¶ 61 (citing
`Ex. 1007, Fig. 2B; Ex. 1008, Fig. 6; Ex. 1009, Fig. 1B; Ex. 1011, Fig. 10;
`Ex. 1016, 3:42–46, Figs. 1A, 1B). Dr. Anthony alleges that one of ordinary
`skill in the art would have recognized the depicted elements and that the
`layered structure was known for decades. Id. Swedlow,10 for example,
`describes a layered adhesive wrap for use around a finger, which discloses
`LEDs and photodetectors coupled to an outer bandage layer, coupled to a
`
`
`10 U.S. Patent No. 5,226,417 (issued July 13, 1993) (Ex. 1006).
`16
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`clear polyethylene layer, with holes for receiving the optical elements. See
`Pet. 19–20 (citing Ex. 1003 ¶ 61; Ex. 1006, 5:43–49, 5:66–68, Fig. 2).
`Dr. Anthony asserts that a person of ordinary skill in the art would have
`understood that similar features logically would have been included in
`Asada’s device. Ex. 1003 ¶ 61.
`
`Petitioner’s obviousness analysis, as supported by Dr. Anthony’s
`Declaration, relies on testimony as to where each element of the challenged
`claims is taught in Asada. Pet. 29–38; Ex. 1003 ¶¶ 73–84. We agree with
`and adopt Petitioner’s analysis and credit Dr. Anthony’s testimony.
`
`Patent Owner argues that “Asada never identifies or specifically
`discusses the enumerated components in Figure 11,” and makes assumptions
`to “fit Asada to the claims.” PO Resp. 28. Patent Owner avers that
`Petitioner did not have to make assumptions because Petitioner’s expert,
`Dr. Anthony, knows Dr. Asada, and Dr. Anthony, or Petitioner’s lawyers,
`could have asked Dr. Asada about the details of Figure 11. Id. at 29.
`
`We do not find Patent Owner’s argument on this issue persuasive.
`Dr. Anthony’s testimony regarding the views of a person of ordinary skill in
`the art as to the structure in the Asada reference is supported by evidence
`that sensors with similar physical structures were known in the art. See
`Ex. 1007, Fig. 2B; Ex. 1008, Fig. 6; Ex. 1009, Fig. 1B; Ex. 1011, Fig. 10;
`Ex. 1016, 3:42–46, Figs. 1A, 1B; Ex. 1006, 5:43–49, 5:66–68, Fig. 2.
`
`
`
`ii. “the inner body portion comprising light transmissive material”
`
`Patent Owner asserts that, although Petitioner identifies element 3 in
`
`Figure 11 of Asada as “light transmissive material,” there is nothing in
`Asada that identifies this element to be capable of transmitting light. PO
`Resp. 30–31. Patent Owner argues that, from the disclosure that “[t]he
`
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`Patent 8,886,269 B2
`sensor band was redesigned with the use of bio-compatible elastic materials
`to better hold the LED’s and PD’s, maintain a proper level of pressure,
`optically shield the sensor unit, and secure the contact with the skin
`consistently in the face of finger motion,” a person of ordinary skill would
`understand that “element 3 is not light transmissive because it states that the
`materials used are designed to ‘optically shield the sensor unit.’” Id. (citing
`Ex. 1005, 35; Ex. 2007 ¶ 100). Patent Owner also contends that the dotted
`lines in element 3 of Figure 11 of Asada are “apertures” to hold light emitter
`4 and light detector 5 in place and would prevent detrimental “shunting,”
`rather than providing a “light transmissive material.” Id. at 31–33 (citing
`Ex. 2007 ¶¶ 102–104).
`
`Some of Patent Owner’s arguments presume that all of the
`components of Asada’s sensor band have to be capable of “optically
`shield[ing],” without explaining why it should view Asada’s description in
`that manner. See PO Resp. 30–31 (citing Ex. 1005, 35; Ex. 2007 ¶ 100).
`And Dr. Titus, Patent Owner’s expert, provides testimony that this view is
`overly restrictive; Dr. Titus testified that all the materials of the sensor band
`“may not all have to do that,” with “that” being to “better hold the LEDs and
`the PDs,” “maintain[] proper level of pressure,” [and] “optically shield the
`sensor unit.” Ex. 1100, 98:12–99:5. Alternatively, Petitioner’s assertion
`that element 3 of Asada is “light transmissive” so that “light can pass into
`and out of the finger” is supported by evidence within the context of Asada.
`See Pet. 31 (citing 1003 ¶ 77). As Dr. Anthony testifies, layer 3 is not
`shaded like layers 2 and 6, and the purpose of the device is to pass light into
`and out of the wearer’s finger. Ex. 1003 ¶ 77. Further, Petitioner’s view
`that the intent of the dotted lines in layer 3 is not intended to depict cut-outs
`or apertures has support because assuming cut-outs would be contrary to
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`Patent 8,886,269 B2
`Asada’s explicit disclosure that the sensor band “protects optical
`components from direct contact with skin.” See Pet. Reply 15 (citing
`Ex. 1005, 35 (caption of Fig. 11)).
`
`Accordingly, we are persuaded that the evidence sufficiently supports
`the Petitioner’s arguments for Asada’s teaching of the claim limitation “the
`inner body portion comprising light transmissive material.”
`
`iii. “deliver[ing] light from the at least one optical emitter to one or
`
`more locations of the body”
`
`Patent Owner disputes the teaching of the “deliver[ing] light” based
`on the arguments that no “light transmissive layer” is taught in Asada, as
`discussed above. PO Resp. 35. Patent Owner additionally argues that
`allowing light to be delivered to layer 3 would cause unwanted shunting
`between the light source and photodetector. Id. (citing Ex. 2007 ¶ 108).
`
`As discussed above, the weight of the evidence supports that layer 3 is
`transparent and, as such, light would be “delivered” and “collected” from a
`finger as taught by Asada. Dr. Anthony’s testifies that any possible shunting
`would be negligible (Ex. 1102 ¶ 24), and there is no evidence in the record
`that any possible shunting would be so significant that there would be no
`delivery or collection of light (see Ex. 2007 ¶¶ 102, 103, 108, 109).
`
`Accordingly, we are persuaded that the evidence sufficiently supports
`the Petition regarding Asada’s teaching of the claim limitation “deliver[ing]
`light.”
`
`In summary, for the reasons discussed above, we are persuaded
`Petitioner has shown by a preponderance of the evidence that claim 1 of the
`’269 patent is unpatentable as obvious over Asada.
`
`
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`Patent 8,886,269 B2
`E. Asserted Obviousness of Claims 2, 6, and 7 over Asada
`
`For dependent claim 2, which additionally recites “the portion of the
`
`body comprises a limb, a nose, an earlobe, and/or a digit,” Petitioner relies
`on Asada’s disclosure of a finger sensor attachment for the teaching of the
`limitation because a finger is a digit. Pet. 34 (citing Ex. 1005 30, Figs. 5, 6,
`9, 10). Patent Owner presents no additional arguments related to claim 2,
`and we agree with and adopt Petitioner’s analysis and credit Dr. Anthony’s
`supporting testimony.
`
`For dependent claim 6, which recites “a signal processor configured to
`receive and process signals produced by the at least one optical detector,”
`Petitioner asserts that a person of ordinary skill in the art “would have
`understood that the signals are produced by the photodetector and received
`by the microcomputer processing unit for signal processing.” Pet. 35 (citing
`Ex. 1005, 34; Ex. 1003 ¶ 86). Dependent claim 7 recites “a transmitter
`configured to transmit signals processed by the signal processor to a remote
`device,” and Petitioner includes references to Asada’s teaching of an RF
`transmitter, as shown in Figures 9 and 10 of Prototype A. Pet. Reply 18
`(citing Ex. 1005, 34). Patent Owner argues that, because Petitioner maps the
`components to the embodiment depicted in Figure 11 (Prototype B) that it
`should be limited to reliance on that embodiment of Asada. PO Resp. 37–
`39. Patent Owner also argues that, as to Petitioner’s assertions as to claims 6
`and 7, the ring sensor embodiments of Figures 9 and 10 of Asada were relied
`upon impermissibly. Id.
`
`We are not persuaded by Patent Owner’s argument because
`Dr. Anthony, Petitioner’s expert, testifies that Prototype B of Figure 11 of
`Asada is a modified version of Prototype A shown in Figures 9 and 10, and a
`
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`Patent 8,886,269 B2
`person of ordinary skill in the art would have understood that Prototype B
`focuses on improvements and modifications to Prototype A. Pet. Reply 18
`(citing Ex. 1102 ¶ 28). We agree with Petitioner that Asada discusses
`Prototype B relative t
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