PTAB

IPR2017-01552

Fitbit Inc v. Valencell Inc

Key Events

Petition

petition

Title: Sensor Module for Physiological Monitoring
Brief Description: The ’965 patent describes a sensor module for detecting physiological information from a subject. The technology is often incorporated into a headset or earbud and uses a housing with at least one optical emitter and detector coupled to first and second light guides that engage a user’s body to measure parameters like heart rate.

Prior Art Relied Upon: Numaga (Japanese Patent Application Publication No. 2005/040261)
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Numaga, a wrist-worn pulse wave sensor, disclosed all limitations of independent claim 1. Numaga’s sensor module included a housing (sensor case), an optical emitter and detector, a first light guide to direct light to the wrist, and a second light guide to collect reflected light. Petitioner contended that Numaga’s light guides have exposed end surfaces that press against the user’s wrist to deliver and collect light directly, meeting the key limitations added during prosecution of the ’965 patent. For dependent claim 2, Numaga’s housing was shown integrated within a wrist strap.
- Motivation to Combine (for §103 grounds): This ground relied on a single reference. Petitioner argued that applying the known components and configurations of Numaga to create the claimed sensor module would have been obvious to a Person of Ordinary Skill in the Art (POSITA) as a simple application of existing technology.
- Expectation of Success (for §103 grounds): Petitioner asserted a POSITA would have had a high expectation of success because Numaga’s device already performed the same function using the same components.

Prior Art Relied Upon: Numaga (Japanese Application # 2005/040261) and Vetter (Application # 2003/0065269)
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon the teachings of Numaga for the base sensor module of claim 1. To meet the limitations of claims 3 and 4 (adding a motion sensor and a processor to remove motion artifacts), Petitioner cited Vetter. Vetter taught that optical pulse sensors suffered from signal noise caused by motion artifacts and disclosed a solution: incorporating an accelerometer to provide a motion reference signal to a processor, which then employs a noise reduction algorithm to extract the true pulse signal.
- Motivation to Combine (for §103 grounds): Petitioner argued that it was well-known that wearable physiological sensors were susceptible to motion artifacts. A POSITA seeking to improve the accuracy and reliability of Numaga’s wrist-worn sensor would have been motivated to incorporate the known motion-cancellation technique taught by Vetter, a similar wrist-worn device, to solve this known problem.
- Expectation of Success (for §103 grounds): Because Vetter demonstrated a functional system for motion artifact reduction in a similar device, a POSITA would have reasonably expected that integrating its accelerometer and processing logic into Numaga’s sensor would predictably improve its performance during user movement.

Prior Art Relied Upon: Fraden (Application # 2005/0209516)
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Fraden, which discloses an ear-canal optical photoplethysmography assembly, anticipated every element of claim 1 and several dependent claims. Fraden’s ear probe included a housing supporting optical emitters (LEDs) and a detector. It explicitly disclosed using a first light guide ("illuminator") to deliver light into the ear tissue and a second light guide ("ear plug") to collect modulated light. Petitioner asserted Fraden’s light guides had exposed surfaces that made physical contact with the ear canal to directly deliver and collect light. Fraden also disclosed that its light guides could be made of elastomeric (claim 8) or substantially rigid (claim 9) materials, and that its emitters and detectors comprised optical coupling material (claims 10 and 11).
Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Numaga with Dekker (for respiration rate), Debreczeny (for optical dye filtering), Rafert (for elastomeric/rigid materials), Negley (for optical coupling), and Miao (for optical coupling). Petitioner also asserted obviousness grounds combining Fraden with Verjus (for headset integration and motion sensing), and further with Fricke (for respiration rate).

"engage a portion of a body": Petitioner argued this term should be construed broadly as “contacting the skin or closely adjacent the skin of a subject,” based on an explicit definition in the ’965 patent’s specification. This construction was central to arguing that prior art references, which showed components pressing against or placed near the skin, met the claim limitation.
"headset": Petitioner contended this term should be construed as “any type of device or earpiece that may be attached to or near the ear of a user, including peripheral devices.” This broad construction, also based on the specification, was important for grounds that combined an ear-worn sensor with audio functionality from a separate reference.

Petitioner requests institution of an inter partes review and cancellation of claims 1-12 of the ’965 patent as unpatentable.