throbber
NOTE: This disposition is nonprecedential.
`
`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
`
`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
`
`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.
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket