PTAB

IPR2017-00317

Apple Inc v. Valencell Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Wearable Light-Guiding Devices for Physiological Monitoring
  • Brief Description: The ’830 patent discloses wearable optical biosensors, such as photoplethysmography (PPG) sensors, for measuring physiological parameters like heart rate. The technology is described in embodiments like patches or bandages that use a multi-layered structure with light-guiding materials, optical emitters, and detectors to monitor a user.

3. Grounds for Unpatentability

Ground 1: Obviousness over a Single Reference - Claims 1-4 and 11-14 are obvious over Goodman

  • Prior Art Relied Upon: Goodman (Patent 4,830,014).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Goodman, a non-invasive optical biosensor, discloses every element of independent claims 1 and 11. Goodman’s layered sensor structure allegedly includes an "outer layer" (flexible tape), an "inner layer" (clear polyester), a "base" (opaque vinyl strip) with an emitter and detector, and a "cladding material" (opaque tape layer). Petitioner contended that apertures in Goodman’s opaque layer function as the claimed "windows," and the overall arrangement for transilluminating a finger inherently meets the limitations regarding optical communication and light delivery.
    • Motivation to Combine (for §103 grounds): As a single-reference ground, the argument focused on how Goodman itself teaches or suggests all the claimed components in a manner that renders the claimed combination obvious. Petitioner asserted that all claimed features are present in Goodman’s design for a flexible, layered biosensor.
    • Expectation of Success (for §103 grounds): A person of ordinary skill in the art (POSITA) would have had a high expectation of success as the claimed invention represents a straightforward application of the components and principles explicitly disclosed in Goodman.

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

  • Prior Art Relied Upon: Goodman (Patent 4,830,014) and Hicks (Patent 6,745,061).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addresses dependent claims 5 and 15, which add the limitation of a "lens region" to the light transmissive material to focus light from the emitter. Petitioner argued that Goodman discloses the foundational multi-layer sensor, and Hicks explicitly teaches incorporating a lens structure into a similar non-invasive optical biosensor to focus light. Hicks discloses that a clear substrate can act as a lens or that a separate lens structure can be added to create a more unidirectional light beam.
    • Motivation to Combine (for §103 grounds): A POSITA, starting with Goodman’s sensor, would be motivated to improve light transmission efficiency to get a better signal. Petitioner argued that controlling or focusing light refraction was a known problem, and incorporating a lens, as taught by Hicks, was a well-understood and logical solution to improve the performance of Goodman’s device.
    • Expectation of Success (for §103 grounds): Combining a known focusing element (a lens from Hicks) with a known optical sensor (Goodman) was a predictable design choice that would have yielded the expected result of improved light concentration.

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

  • Prior Art Relied Upon: Goodman (Patent 4,830,014), Hannula (Patent 7,190,986), and Asada (IEEE Eng. Med. Bio. Mag., May/June 2003).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground targets claims requiring light reflective material, first and second optical detectors, a signal processor, and processing of a motion noise reference. Petitioner asserted Goodman provides the base sensor. Hannula was added for its teaching of a "reflective mask" to increase the amount of light reaching the detector, satisfying the "light reflective material" limitation. Asada was added to disclose using a second photodetector and an onboard signal processor (CPU) specifically to create a noise reference signal for cancelling motion artifacts, a known problem in the field.
    • Motivation to Combine (for §103 grounds): A POSITA would combine these references to solve distinct, known problems. Hannula would be consulted to improve poor signal pick-up in Goodman by increasing light collection via a reflective surface. Asada would be consulted to address the common problem of motion artifacts by adding a second detector for noise cancellation and to add wireless capabilities through its onboard processor, a natural technological progression from wired devices like Goodman.
    • Expectation of Success (for §103 grounds): Each combination was presented as a predictable solution to a known problem, with a POSITA expecting success in improving signal quality (from Hannula) and reducing noise while adding modern wireless functionality (from Asada).

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 8, 9, 18, and 19 are obvious over Goodman and Asada, and claims 10 and 20 are obvious over Goodman and Delonzor (Patent 5,797,841). These grounds relied on similar motivations to add functionality like signal processing, wireless transmission, and light-blocking barriers to Goodman’s base sensor.

4. Key Claim Construction Positions

  • "cladding material": Petitioner proposed the construction "a material that blocks or reflects at least some light." This construction was based on the patent’s description of the material having windows to let light pass, implying the material itself is intended to be at least partially light-obstructing, and its function as analogous to optical cladding.
  • "near": Petitioner proposed the construction "within a short distance." This was argued to be consistent with the plain and ordinary meaning of the term and the context of the patent’s figures, which show thin, adjacent layers in a compact device.

5. Relief Requested

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