PTAB

IPR2017-01703

Apple Inc v. Valencell Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Wearable Earpiece for Health and Environmental Monitoring
  • Brief Description: The ’040 patent is directed to a wearable earpiece module that integrates optical and acoustic sensors to monitor a user's physiological information and environmental conditions. The module also includes processing and communication capabilities, such as removing unwanted noise from sensor signals and transmitting data to a remote terminal.

3. Grounds for Unpatentability

Petitioner asserted that all challenged dependent claims are obvious over a core combination of prior art that renders the underlying independent claim 1 obvious, in further view of one or more additional references specific to each ground.

Core Combination for All Grounds: Obviousness of Claim 1 over Aceti, Dettling, and Stivoric

  • Prior Art Relied Upon: Aceti (Application # 2005/0059870), Dettling (Patent 5,954,644), and Stivoric (Application # 2004/0039254).
  • Core Argument:
    • Prior Art Mapping: Petitioner argued that Aceti taught the foundational earpiece module, including an earpiece fitting with a speaker, optical emitter/detector, acoustic sensor, processors, and a transmitter for physiological monitoring. To meet the limitations for environmental sensing and noise removal, Petitioner asserted that Dettling taught using an optical detector to sense and subtract ambient light, while Stivoric taught using an acoustic sensor to detect and remove noise from footsteps. The combination of these references allegedly taught every limitation of independent claim 1.
    • Motivation to Combine: A POSITA would combine Dettling with Aceti's device to improve the signal-to-noise ratio of the optical sensor, a well-established goal in sensor design. Similarly, a POSITA would combine Stivoric with Aceti to address the known problem of motion artifacts (footsteps) corrupting acoustic sensor data, thereby achieving cleaner physiological signals.
    • Expectation of Success: The combination involved applying known and predictable noise-reduction techniques to a standard sensor platform, which would have provided a POSITA with a reasonable expectation of success.

Ground 1: Claims 4, 5, 7, and 56 are obvious over the Core Combination in view of Schulze '692

  • Prior Art Relied Upon: The core combination of Aceti, Dettling, and Stivoric, in view of Schulze '692 (Patent 5,673,692).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Schulze ’692, which discloses a wearable ear monitor, taught the additional limitations of claims 4, 5, and 7. Specifically, Schulze ’692 taught directing optical sensors toward the tympanic membrane to measure physiological parameters, including sensing blackbody radiation. For claim 56, Schulze '692 taught using multiple temperature sensors to measure both core body and skin temperature.
    • Motivation to Combine: A POSITA would be motivated to incorporate the teachings of Schulze '692 because it explicitly disclosed that sensing from the tympanic membrane provides a more reliable indication of a patient's core body temperature and improves calibration consistency across different patient demographics.

Ground 4: Claims 10 and 47 are obvious over the Core Combination in view of Verjus

  • Prior Art Relied Upon: The core combination of Aceti, Dettling, and Stivoric, in view of Verjus (Application # 2003/0233051).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Verjus taught the additional features of claims 10 and 47. Verjus disclosed an ear-worn heart rate monitor that also received audio from an external source (e.g., a "walkman") for playback to the user, mapping to claim 10. Verjus also disclosed an embodiment where the device functions as a hearing aid, mapping to claim 47.
    • Motivation to Combine: A POSA would combine the teachings of Verjus with the Aceti-based system to enhance the user experience, particularly during exercise, which was a stated use for both devices. Adding external audio or hearing aid functionality was a predictable integration of known features using the speaker and microphone already present in Aceti's device.

  • Additional Grounds: Petitioner asserted additional obviousness challenges against the remaining claims based on the core combination in view of other references, including: Webster for signal filtering (claims 6, 8, 9); Charych for a colorimetric chemical sensor (claim 22); Wendt for EMF, ozone, and carbon monoxide sensors (claims 26, 28); Schulze ’890 for a "sensor off" signal (claim 33); Asada for a power-saving transmission protocol (claim 41); Carroll for user identification codes (claim 42); Welles for stress-reducing audio therapy (claim 54); and Mac for stress-reducing light therapy (claims 55, 57).

4. Key Claim Construction Positions

Petitioner argued for the following constructions under the broadest reasonable interpretation standard:

  • "physiological information": Proposed as "information about physical and/or psychological matter and energy of or from the body of a creature." This construction, supported by a co-owned patent, broadens the scope of information the device is claimed to process.
  • "selectively remove ... unwanted signals from footsteps": Proposed as "selectively remove the sound generated from footsteps." This construction was argued to align the claim language directly with the noise-cancellation teachings of Stivoric.
  • "secondary optical energy": Proposed as "optical energy resulting from one or more changed optical properties of the generated optical energy." This construction clarifies that the detected energy is the result of the emitted light interacting with the user's tissue.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 4-10, 22, 26, 28, 33, 41, 42, 47, and 54-57 of Patent 8,652,040 as unpatentable.