Apple Inc v. Valencell Inc

1. Case Identification

• Case #: IPR2017-00316
• Patent #: 8,989,830
• Filed: November 23, 2016
• Petitioner(s): Apple Inc.
• Patent Owner(s): Valencell, Inc.
• Challenged Claims: 1-6, 8-16, 18-20

2. Patent Overview

• Title: Wearable Light-Guiding Devices for Physiological Monitoring
• Brief Description: The ’830 patent discloses wearable physiological monitoring devices, such as earbuds or adhesive patches, that use light-guiding structures and photoplethysmography (PPG) sensors to measure biological parameters like heart rate and blood oxygen levels. The invention focuses on a layered construction including light transmissive materials and cladding to direct light to and from a subject's body.

3. Grounds for Unpatentability

Ground 1: Obviousness over Haahr - Claims 1-4, 8-14, and 18-20 are obvious over Haahr.

• Prior Art Relied Upon: Haahr (a 2008 publication titled "A Wearable ‘Electronic Patch’ for Wireless Continuous Monitoring of Chronically Diseased Patients").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Haahr, which discloses a wearable, non-invasive optical biosensor patch, teaches every element of independent claims 1 and 11 and the relevant dependent claims. Haahr’s "Electronic Patch" allegedly includes the claimed layered structure: an adhesive patch (outer layer), a bio-compatible transparent membrane (inner/first layer comprising light transmissive material), a printed circuit board (PCB) with LEDs and a photodiode (base), and a plastic housing with a frame around the LEDs (cladding material with windows). Petitioner asserted that the physical arrangement of these components in Haahr’s assembled patch satisfies the claim limitations regarding how the layers are secured and positioned relative to one another. The fundamental operation of Haahr’s PPG sensor was argued to meet the limitations on delivering and collecting light in substantially parallel directions.

Ground 2: Obviousness over Haahr and Hicks - Claims 5 and 15 are obvious over Haahr in view of Hicks.

• Prior Art Relied Upon: Haahr (2008 publication), Hicks (Patent 6,745,061).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims 5 and 15, which add the limitation that the light transmissive material comprises a "lens region" to focus light from the emitter. Petitioner contended that Haahr provides the base device, as detailed in Ground 1. Hicks was introduced for its explicit teaching of incorporating a lens into a non-invasive optical biosensor to focus light. Hicks describes that a clear flexible substrate can act as a lens or that a separate lens structure can be used to concentrate light into a more unidirectional beam.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine these references to solve a known problem. Haahr’s disclosure of a frame to prevent light from "going directly from the LEDs into the photodiode" would have suggested to a POSITA the importance of controlling the path of emitted light. To improve this, a POSITA would have looked to known methods for focusing light in similar devices and found the lens solution in Hicks.
  • Expectation of Success: Combining a known element (a lens, from Hicks) with a conventional optical biosensor (Haahr) to achieve its well-understood purpose (focusing light) would have been a simple, predictable modification with a high expectation of success.

Ground 3: Obviousness over Haahr, Asada, and Hannula - Claims 6 and 16 are obvious over Haahr in view of Asada and Hannula.

• Prior Art Relied Upon: Haahr (2008 publication), Asada (a 2003 publication titled "Mobile Monitoring with Wearable Photoplethysmographic Biosensors"), Hannula (Patent 7,190,986).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground challenged claims 6 and 16, which add limitations requiring "light reflective material" and the use of first and second optical detectors where the second detector provides a motion noise reference. Petitioner asserted Haahr as the base device. Asada was added for its teaching of using a dual-photodetector system to mitigate motion artifacts—a well-known problem in PPG sensors. In Asada, a second photodetector generates a noise reference signal that is used in an adaptive filter to cancel motion noise from the primary physiological signal. Hannula was added to teach the "light reflective material" element, as it discloses a reflective mask surrounding a photodetector to reflect light back toward the detector, thereby increasing signal strength and blocking ambient light.
  • Motivation to Combine: A POSITA, starting with Haahr’s sensor and recognizing the "well-know[n] problem" of motion artifacts, would combine it with Asada’s established dual-detector noise cancellation technique. Haahr itself acknowledges the use of discrete photodiodes was known. After modifying Haahr to include a second, smaller noise-detecting photodiode per Asada, a POSITA would then be motivated to maximize the collection of backscattered light to ensure a strong signal. This would lead them to incorporate the reflective mask taught by Hannula, a known method for improving light collection efficiency in such sensors.
  • Expectation of Success: The combination involved applying known solutions (dual-detector noise cancellation from Asada, reflective surfaces from Hannula) to address known issues (motion artifacts, signal loss) in a predictable manner, ensuring a high expectation of success.

4. Key Claim Construction Positions

• "cladding material": Petitioner proposed this term be construed as "a material that blocks or reflects at least some light." This construction was based on the function of the cladding material in the ’830 patent, which contains windows to serve as light-guiding interfaces, implying the material itself is intended to block light to channel it through the windows.
• "near": Petitioner proposed this term be construed as "within a short distance." This construction was argued to be consistent with the plain and ordinary meaning of the term and its use in the specification to describe the relationship between thin layers in a compact device.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should institute trial on this petition as well as a concurrently filed companion petition challenging the same claims of the ’830 patent. Petitioner acknowledged the Board’s discretion under §325(d) but contended that the limited number of claims and grounds across both petitions would not be unduly burdensome. It was argued that the grounds in the two petitions are distinct, with this petition relying on Haahr (a non-patent publication) as the primary reference, which may be viewed differently than the patent-based grounds in the companion petition. Petitioner asserted that instituting both is in the interest of justice to avoid precluding its best challenges against claims it believes are unpatentable.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 8-16, and 18-20 of Patent 8,989,830 as unpatentable.