Apple Inc v. Valencell Inc

1. Case Identification

• Patent #: 8,652,040
• Filed: June 30, 2017
• Petitioner(s): Apple Inc.
• Patent Owner(s): Valencell, Inc.
• Challenged Claims: 1-3, 11-21, 23-25, 27, 29-32, 34-40, 43-46, and 48-53

2. Patent Overview

• Title: Wearable Health and Environmental Monitors
• Brief Description: The ’040 patent describes a wearable earpiece module that integrates optical and acoustic sensors for monitoring a user's physiological information and environmental conditions. The device is designed to function as a combined physiological monitor, environmental monitor, and wireless personal communicator.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 11-21, 23-25, 27, 29-32, 34-40, 43-46, and 48-53 are obvious over Aceti in view of Dettling and Stivoric.

• Prior Art Relied Upon: Aceti (Application # 2005/0059870), Dettling (Patent 5,954,644), and Stivoric (Application # 2004/0039254).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Aceti taught the foundational earpiece monitoring device of independent claim 1, including an earpiece fitting with an optical emitter, optical detector, acoustic sensor, two signal processors, and a transmitter. However, Petitioner argued that Aceti did not explicitly disclose certain noise-filtering functionalities. To bridge these gaps, Petitioner relied on Dettling and Stivoric. Dettling was cited for teaching the configuration of an optical detector (photodiode) in a physiological sensor to also sense and remove an environmental condition, specifically ambient light noise. Stivoric was cited for teaching the configuration of a body-worn acoustic sensor to specifically sense and remove noise signals generated by a person's footsteps to produce cleaner physiological data.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA), starting with Aceti's earpiece monitor, would have been motivated to improve its signal quality. The reduction of signal noise is a well-established goal in sensor design. A POSITA would have looked to solutions for known noise sources. For optical noise, Dettling was presented as an explicit solution for improving a similar pulse oximetry sensor by subtracting ambient light. For acoustic noise, a POSITA would have recognized that a body-worn sensor like Aceti's would detect footfalls. Stivoric was argued to provide an explicit teaching for detecting and removing this exact type of acoustic noise to improve the quality of physiological measurements. The combination was thus presented as the predictable application of known noise-reduction techniques to a known device.
  • Expectation of Success: Petitioner argued a POSITA would have had a reasonable expectation of success. Applying Dettling's technique for ambient light subtraction to Aceti's similar optical sensor would predictably improve the signal-to-noise ratio. Likewise, applying Stivoric's established method for removing footstep noise from acoustic signals to Aceti's acoustic sensor would predictably yield cleaner physiological data, as both systems operate on the same principles.

4. Key Claim Construction Positions

Petitioner proposed constructions for several key terms under the Broadest Reasonable Interpretation (BRI) standard, arguing they were critical to the obviousness analysis.

• "physiological information": Petitioner argued this term should be construed broadly as "information about physical and/or psychological matter and energy of or from the body of a creature." This construction was based on an exhaustive list in the ’040 patent's specification and the definition in the co-owned ’941 patent.
• "selectively remove ... unwanted signals from footsteps": Petitioner contended this phrase should be interpreted to mean "selectively remove the sound generated from footsteps." This was based on specification language describing the digital removal of "sounds of external steps" to achieve a cleaner signal.
• "secondary optical energy": This term was argued to mean "optical energy resulting from one or more changed optical properties of the generated optical energy," such as reflection or absorption, as the light interacts with body tissue.
• "potentially erroneous data": Based on the sole example in the specification ("loud noises"), Petitioner argued this term is analogous to and should be construed as "unwanted signal noise." This construction was important for mapping Dettling's disclosure of ambient light collection to this limitation.
• "real time": Petitioner argued for the patent’s broad definition of "a time frame which is equal to or shorter than the minimum timescale at which the information is needed," which does not limit the term to a specific duration.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 11-21, 23-25, 27, 29-32, 34-40, 43-46, and 48-53 of the ’040 patent as unpatentable under pre-AIA 35 U.S.C. §103.