`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`VALENCELL, INC.,
`Appellant
`
`v.
`
`FITBIT, INC.,
`Appellee
`______________________
`
`2018-2224, 2018-2225
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2017-
`00317, IPR2017-00318, IPR2017-01553, IPR2017-01554.
`______________________
`
`Decided: September 26, 2019
`______________________
`
`
`DANIEL FLETCHER OLEJKO, Bragalone Conroy PC, Dal-
`las, TX, argued for appellant. Also represented by JEFFREY
`BRAGALONE, THOMAS WILLIAM KENNEDY, JR., JUSTIN
`KIMBLE, JONATHAN H. RASTEGAR.
`
` KEVIN P.B. JOHNSON, Quinn Emanuel Urquhart & Sul-
`livan, LLP, Redwood Shores, CA, argued for appellee. Also
`represented by MARK YEH-KAI TUNG; SAM STEPHEN STAKE,
`OGNJEN ZIVOJNOVIC, San Francisco, CA; HARPER BATTS,
`
`
`
`
`
`2
`
`VALENCELL, INC. v. FITBIT, INC.
`
`CHRISTOPHER SCOTT PONDER, Sheppard Mullin Richter &
`Hampton LLP, Palo Alto, CA.
` ______________________
`
`Before TARANTO, CHEN, and STOLL, Circuit Judges.
`CHEN, Circuit Judge.
`Valencell appeals from the final written decisions of
`the United States Patent and Trademark Office Patent
`Trial and Appeal Board (Board) in the above-captioned in-
`ter partes review proceedings (IPRs) that found unpatenta-
`ble claims 1–6, 8–16, and 18–20 of U.S. Patent No.
`8,989,830 and claims 1–10 of U.S. Patent No. 8,886,269.
`J.A. 59; J.A. 125. The two patents at issue share a specifi-
`cation describing light-based monitoring devices for physi-
`ological measurements of a patient’s body. The ’269 and
`’830 patents each claim the use of window(s) in a cladding
`layer to serve as light-guiding interfaces between an emit-
`ter and detector and the subject’s body. ’269 patent at
`claim 1; ’830 patent at claims 1, 11. For this appeal, the
`relevant unpatentability grounds are various combinations
`of a publication by Asada,1 U.S. Patent No. 4,830,014
`(Goodman), and U.S. Patent No. 6,745,061 (Hicks). We af-
`firm.
`
`A. APA and Due Process
`Valencell’s primary complaint on appeal alleges that
`the Board adopted arguments from petitioner Fitbit’s Re-
`ply briefing that were not raised in Fitbit’s petition. But
`Valencell fails to identify anything beyond the back and
`forth between petitioner and patent owner that is typical
`in an adversarial proceeding. Idemitsu Kosan Co. v. SFC
`Co., 870 F.3d 1376, 1381 (Fed. Cir. 2017). First, Valencell
`
`1 H. Harry Asada, Mobile Monitoring with Wearable
`Photoplethysmographic Biosensors, IEEE ENGINEERING IN
`MEDICINE AND BIOLOGY MAGAZINE, May–June 2003, at 28.
`
`
`
`VALENCELL, INC. v. FITBIT, INC.
`
`3
`
`alleges that the Board improperly relied on Goodman’s Fig.
`7A in its analysis of the claimed window that serves as a
`light-guiding interface. But the Board does not cite to Fig.
`7A. Instead, the Board relied on Goodman’s Fig. 2C, which
`is the same figure that Fitbit’s petition cited as disclosing
`the claimed light-guiding window. Compare J.A. 16–20 (fi-
`nal written decision) with J.A. 164–65 (petition). To the
`extent that the Board considered Fitbit’s explanation of
`why Valencell’s interpretation of Fig. 2C was incorrect in
`view of Fig. 7A, the Board was permitted to do so to evalu-
`ate whether Fig. 2C—relied upon in the initial petition—
`disclosed the claimed light-guiding window.
`We are also not persuaded that the Board improperly
`considered Fitbit’s rebuttals to Valencell’s arguments that
`(1) dotted lines in one of Asada’s layers represent openings
`in that layer, and (2) Asada’s prototype B did not contain
`the processor and transmitter components disclosed in con-
`nection with prototype A. If anything, Valencell is the
`party that first raised these issues, and Fitbit was entitled
`to counter by explaining why the theories in the initial pe-
`tition as to what Asada discloses were correct despite Va-
`lencell’s arguments to the contrary.
`B. Obviousness over Asada and Goodman
`With respect to the combination of Asada and Good-
`man, we are not persuaded that the Board erred in finding
`that a skilled artisan would be motivated to combine Asada
`and Goodman despite the “detriments” that Valencell al-
`leged would arise. The Board considered Valencell’s argu-
`ment that a skilled artisan would not be motivated to add
`more artifact-reducing functionality to Goodman in view of
`Goodman’s disclosure that its adhesive-based solution
`eliminates motion artifacts. J.A. 104. The Board explained
`that Goodman utilizes skin conformance to eliminate a spe-
`cific type of motion artifact arising from relative motion be-
`tween the device and the wearer’s skin. J.A. 105–06. As
`the Board observed based on testimony from Valencell’s
`
`
`
`4
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`VALENCELL, INC. v. FITBIT, INC.
`
`own expert, it was “undisputed that there can be other
`types of motion artifacts that may occur besides those due
`to the motion of the device relative to the skin.” J.A. 106–
`07. Thus, “[t]he need to address different sources of motion
`artifacts supports Petitioner’s rationale to combine.” J.A.
`107.
`The Board further explained that both Goodman and
`Asada are similarly used for patient treatment in hospital
`settings. J.A. 105; see also J.A. 863 (“For hospital inpa-
`tients . . . wearable CV sensors could increase inpatient
`comfort and may even reduce the risk of tripping and fall-
`ing”); J.A. 870 (describing patient testing with Asada’s pro-
`totype B at Massachusetts General Hospital); Goodman at
`col. 5, ll. 3–5 (“The present invention is directed to provid-
`ing non-invasive, reliable, and continuous monitoring of
`the vital signs of a patient requiring intensive care”). The
`Board’s conclusion that one of skill would be motivated to
`combine Asada and Goodman is supported by substantial
`evidence. We have considered the remaining “detriments”
`that Valencell alleges would result from combining Asada
`and Goodman and do not find them persuasive.
`C. Hicks-based Combinations
`Valencell’s primary argument against the combination
`of Asada and Hicks and the combination of Goodman and
`Hicks relies on a passage in Asada explaining differences
`between reflective-type photoplethysmographs (PPGs), in
`which an emitter and detector are placed on the same side
`of, e.g., a subject’s finger, and transmittal-type PPGs where
`the emitter and detector are placed on opposite sides of the
`finger. J.A. 866. Specifically, Asada discloses that, because
`of the relative locations of the emitter and detector, reflec-
`tive PPGs are susceptible to short circuit paths through
`which light can travel directly from the emitter to the de-
`tector, but transmittal-type PPGs do not suffer from this
`issue. Id.
`
`
`
`VALENCELL, INC. v. FITBIT, INC.
`
`5
`
`As Valencell theorizes, reflective PPGs benefit from a
`lens that focuses light in a specific direction to and from the
`body, thus avoiding the short-circuit problem. In Valen-
`cell’s view, transmittal-type PPGs are not faced with the
`same short-circuit issue and thus can pursue other
`tradeoffs such as improving robustness at the expense of
`unfocused light. J.A. 866 (explaining that the transmittal
`PPG “design allows us to use devices having a weak polar-
`ity, which is, in general, more robust against disturb-
`ances”). Valencell appears to argue that one would
`therefore always opt to improve robustness in transmittal-
`type PPGs by omitting a lens. But we agree with the
`Board’s finding that a generalized statement discussing
`tradeoffs in design does not rise to the level of discouraging
`the combination of Asada and Hicks, particularly when
`Asada and Hicks each discloses a transmittal PPG and
`Hicks explicitly provides a transmittal PPG that includes
`a lens. J.A. 28–29; J.A. 870 (disclosing “a transmittal PPG
`ring sensor, Prototype B”); Hicks at col. 8, ll. 3–8 (disclosing
`LEDs and photodetector “disposed on an opposing surface
`of the finger); id. at col. 13, ll. 39–47 (disclosing a lens struc-
`ture used in conjunction with a clear substrate “to properly
`direct/focus the light emitted/received by the emitters/de-
`tector”); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
`1165 (Fed. Cir. 2006) (explaining that “a given course of
`action often has simultaneous advantages and disad-
`vantages, and this does not necessarily obviate motivation
`to combine”).
`We have considered Valencell’s remaining arguments
`relating to the combination of Asada and Hicks but do not
`find them persuasive. The Board’s findings as to motiva-
`tion to combine Asada and Hicks are supported by substan-
`tial evidence. For similar reasons, the Board’s conclusions
`with regards to the combination of Goodman, which is like-
`wise directed to a transmittal PPG, see Goodman at col. 9,
`ll. 60–64 (describing how light “transilluminates” the
`
`
`
`6
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`VALENCELL, INC. v. FITBIT, INC.
`
`finger as shown in Fig. 4), with Hicks are also supported by
`substantial evidence.
`D. Valencell’s Contingent Motion to Amend
`During the inter partes proceedings of the ’269 patent,
`the Board denied Valencell’s motion to amend the ’269
`claims because the Board found that Valencell’s substitute
`claims were unpatentable as obvious. We review the
`Board’s denial of a contingent motion to amend under 5
`U.S.C. § 706. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
`1292, 1306 (Fed. Cir. 2015), overruled on other grounds by
`Aqua Prods., Inc. v. Proxyconn, Inc., 872 F.3d 1290 (Fed.
`Cir. 2017) (en banc). We set aside the Board’s action only
`if it is “arbitrary, capricious, an abuse of discretion, or oth-
`erwise not in accordance with law.” 5 U.S.C. § 706(2)(A).
`Valencell argues that the Board erred in finding that
`one of skill would be motivated to combine Asada with
`Gupta.2 Specifically, Valencell alleges that the Board did
`not consider Valencell’s argument that Asada teaches away
`from using Gupta’s MEMS devices. Valencell’s argument
`misunderstands the Board’s proposed combination of
`Asada and Gupta. The Board did not consider adding
`Gupta’s MEMS accelerometer to Asada’s sensor. Rather,
`the Board relied on Gupta’s signal processing techniques to
`improve Asada’s sensor. J.A. 117–18 (“Gupta’s teachings
`of detection of patient falls and multiplexing of signals as
`features would have provided a rationale for combination
`with Asada’s teachings . . . there is no suggestion of a bodily
`incorporation of Gupta’s specific accelerometer as part of
`
`
`2 G. Sen Gupta, Design of a Low-cost Physiological
`Parameter Measurement and Monitoring Device, IMTC
`2007 – INSTRUMENTATION AND MEASUREMENT TECHNOLOGY
`CONFERENCE, May 1–3, 2007.
`
`
`
`VALENCELL, INC. v. FITBIT, INC.
`
`7
`
`the basis for the rationale.”). Thus, Valencell’s argument
`against the use of Gupta’s MEMS device lacks merit.3
`CONCLUSION
`We have considered Valencell’s remaining arguments
`and find them unpersuasive. For the reasons stated above,
`we affirm the Board’s conclusion that the challenged
`claims of the ’269 and ’830 patents are unpatentable, as
`well as the Board’s denial of Valencell’s contingent motion
`to amend.
`
`AFFIRMED
`
`
`3 We therefore need not reach the Board’s conclu-
`sions as to written description and indefiniteness issues re-
`garding the substitute claims.
`
`