PTAB

IPR2017-01553

Fitbit Inc v. Valencell Inc

Log In
Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Wearable Light-Guiding Devices for Physiological Monitoring
  • Brief Description: The ’830 patent relates to wearable physiological monitors, such as patches or bandages, that use photoplethysmography (PPG) to measure parameters like heart rate and blood oxygen. The claimed invention features a multi-layered structure with light transmissive and cladding materials designed to guide light from an emitter to a subject’s body and subsequently to a detector.

3. Grounds for Unpatentability

Ground 1: Obviousness over Goodman - 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 single prior art reference, discloses every element of the challenged independent claims. Goodman teaches a flexible, layered optical biosensor with a layered construction including a flexible tape outer layer, a clear polyester inner layer (the "light transmissive material"), and a base comprising an optical emitter (LED) and detector. Petitioner asserted that Goodman’s opaque vinyl strip (37), which is placed over the photoactive elements and has apertures (40, 41) to allow light passage, corresponds directly to the claimed "layer of cladding material" with "at least one window." The remaining limitations concerning the optical path for PPG measurement were argued to be inherent to the normal operation of the sensor described in Goodman.

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

  • Prior Art Relied Upon: Goodman (Patent 4,830,014), Hicks (Patent 6,745,061).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that the base sensor structure is taught by Goodman. The additional limitation in claims 5 and 15—a "lens region" that focuses light from the emitter—is disclosed by Hicks. Hicks teaches that a clear substrate can act as a lens or that a separate lens structure can be used in conjunction with the substrate to concentrate light into a more unidirectional beam.
    • Motivation to Combine: Petitioner contended that Goodman and Hicks are from the same field of non-invasive optical biosensors. A person of ordinary skill in the art (POSITA) reviewing Goodman would have sought to improve the device's signal quality by better guiding or focusing the light, a known challenge in the field. A POSITA would combine Hicks’s teaching of using a lens to focus emitted light, as it was a well-known and straightforward method for improving light transmission in such sensors.
    • Expectation of Success: Incorporating a lens as taught by Hicks into Goodman’s sensor was argued to be a simple combination of known elements to achieve the predictable result of improved light focusing and, consequently, enhanced signal quality.

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 (a 2003 IEEE publication).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground builds on Goodman’s base sensor by adding features from Hannula and Asada. Hannula was cited for its teaching of "a light reflective material" (a reflective mask) surrounding the photodetector to reflect light that has passed through tissue back toward the detector, thereby increasing the signal. Asada was cited for disclosing the use of a second optical detector and an on-board signal processor to establish a "motion noise reference" to attenuate motion artifacts from the primary PPG signal.
    • Motivation to Combine: Petitioner argued a POSITA would be motivated to address two distinct, well-known problems in wearable sensors: poor signal strength and motion artifacts. To solve poor signal pickup (a concern noted in Goodman), a POSITA would logically look to Hannula's solution of using a reflective mask. To solve the common problem of motion artifacts, a POSITA would incorporate Asada's established technique of using a second detector and signal processor for adaptive noise cancellation. Making the device wireless with an on-board processor, as taught by Asada, was presented as a natural technological progression.
    • Expectation of Success: The combination represented the application of known solutions to solve known problems, which would have yielded predictable improvements in sensor performance with a high expectation of success.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 8, 9, 18, and 19 are obvious over Goodman and Asada, and that claims 10 and 20 are obvious over Goodman and Delonzor (Patent 5,797,841). These grounds relied on similar motivations to combine known elements, such as adding wireless transmission capabilities (Asada) or light-blocking barriers to prevent optical shunting (Delonzor).

4. Key Claim Construction Positions

  • "cladding material" (claims 1 and 11): Petitioner proposed the construction "a material that blocks or reflects at least some light." This was based on the patent's disclosure that the cladding material can be made of virtually any material (including reflective or opaque types) and that windows are formed within it to serve as light-guiding interfaces, implying the material itself is not intended to transmit the signal light.
  • "near" (claims 1 and 11): Petitioner proposed the construction "within a short distance." This argument relied on the plain and ordinary meaning of the term, supported by the context of the invention, which involves thin, multi-layered structures where adjacent layers are inherently in close proximity.

5. 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.