PTAB

IPR2017-00318

Apple Inc v. Valencell Inc

Key Events

Petition

petition Intelligence

Title: Wearable Light-guiding Bands for Physiological Monitoring
Brief Description: The ’269 patent discloses wearable monitoring devices, such as finger rings or earbuds, that use photoplethysmography (PPG) sensors to measure physiological information like heart rate and blood oxygen levels. The core technology involves a band with light-guiding properties, an optical emitter, and a detector.

Prior Art Relied Upon: Asada (H. Asada et al., “Mobile Monitoring with Wearable Photoplethysmographic Biosensors,” IEEE Engineering in Medicine and Biology Magazine, May/June 2003).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Asada’s disclosure of the “MIT Ring Sensor” teaches every element of independent claim 1. Asada described a ring sensor for continuous health monitoring with a layered structure that a POSITA would recognize as corresponding to the claimed elements. Specifically, Asada’s redesigned sensor band was alleged to show a “generally cylindrical” outer body portion and an inner body portion (light transmissive material) secured together. The design also included material for optically shielding the sensor (cladding material) with windows for an LED (emitter) and photodetector, which are attached to the band and in optical communication with the light-transmissive material.
- Motivation to Combine (for §103 grounds): As this ground relied on a single reference, Petitioner argued that all elements were present in Asada and that it would have been obvious to a POSITA to implement them in the manner claimed.
- Expectation of Success (for §103 grounds): Petitioner contended that because Asada described a functioning prototype ring sensor, a POSITA would have had a high expectation of success.

Prior Art Relied Upon: Asada (2003 IEEE journal article) and Hannula (Patent 7,190,986).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon Asada’s ring sensor to address dependent claims 4 and 5. For claim 4’s requirement of a “light reflective material,” Petitioner pointed to Hannula, which taught a reflective mask surrounding a photodetector to reflect light back into the tissue, thereby increasing the signal. For claim 5, which required first and second optical detectors and a signal processor for attenuating motion noise, Petitioner argued Asada itself disclosed this. Asada taught a dual photodetector design where one detector measures the PPG signal and the other measures noise from finger motion, with a processor using the noise signal as a reference to filter the primary signal.
- Motivation to Combine (for §103 grounds): A POSITA, starting with Asada’s device and seeking to improve signal quality (a key challenge identified in Asada), would combine it with Hannula’s known technique of using a reflective mask to increase the amount of light collected by the photodetector.
- Expectation of Success (for §103 grounds): The combination involved applying a known signal-enhancement technique from Hannula to a similar biosensor in Asada, which would yield predictable and successful results.

Prior Art Relied Upon: Goodman (Patent 4,830,014).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Goodman’s flexible, layered sensor for measuring oxygen saturation disclosed all elements of claim 1. Goodman’s sensor, a flexible adhesive strip designed to wrap around a finger, was alleged to have concentric inner and outer body portions when applied. Petitioner mapped Goodman's opaque vinyl strip to the claimed "outer body portion" and its clear polyester layer to the "inner body portion" comprising "light transmissive material." Another opaque tape layer with apertures in Goodman was asserted to be the claimed "cladding material" with at least one "window."
- Key Aspects: Petitioner acknowledged that Goodman’s device is flat before application but argued that when wrapped around a finger, it assumes a concave shape that meets the proposed construction of "generally cylindrical."
Additional Grounds: Petitioner asserted numerous additional obviousness challenges, primarily based on permutations of Asada or Goodman as the primary reference. These grounds combined the primary references with secondary art including Hicks (Patent 6,745,061) for adding a lens, Delonzor (Patent 5,797,841) for adding light-blocking material, and Al-Ali (’763 application) for adding an optical filter.

"generally cylindrical": Petitioner proposed the construction "having a convex shape." This construction was argued to be consistent with the specification’s use of "generally" to indicate imprecision and was important for the Goodman-based grounds, as Goodman’s sensor is a flat strip that becomes convex when wrapped around a finger.
"cladding material": Petitioner proposed "a material that blocks or reflects at least some light." This broad construction was based on the varied examples in the specification and was necessary because prior art references like Asada and Goodman used opaque or shielding layers for this function.
"near": Petitioner proposed "within a short distance." This construction was based on the plain and ordinary meaning and was relevant to the mapping of layered structures in the prior art where components were adjacent but not necessarily in direct contact.

Petitioner argued that the Board should institute trial on all twelve grounds, asserting this would not be unduly burdensome. The argument centered on the existence of two distinct sets of primary prior art references: Asada (a journal article describing a ring sensor) and Goodman (a patent on a flat, flexible sensor). Petitioner contended that the relative strength of these two sets of grounds could shift based on the Board's final claim construction of terms like "generally cylindrical," and therefore, failing to institute both sets would prejudice Petitioner by precluding it from asserting its best challenge.

Petitioner requests institution of an inter partes review and cancellation of claims 1-10 of the ’269 patent as unpatentable.