PTAB

IPR2017-01883

Apple Inc v. Valencell Inc

Key Events

Petition

petition Intelligence

Title: Method for Monitoring a Subject
Brief Description: The ’776 patent is directed to a method for monitoring a subject's physiological information using a sensor module. The module incorporates light guides optically coupled to emitters and detectors, which are configured to engage a part of the body. The patent also discloses an adaptive noise cancellation scheme to extract a physiological signal from noise, potentially using an accelerometer as an inertial noise reference.

Prior Art Relied Upon: Numaga (Japanese Patent Application Publication No. 2005-040261).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Numaga, which discloses a wrist-worn pulse wave sensor, teaches all elements of independent claim 1. Numaga's sensor includes an optical emitter and detector, a first light guide (21b) with a free end surface (21s) to deliver light, and a second light guide (22b) with a free end surface (22s) to collect light. The sensor is attached to the wrist such that these free end surfaces engage the user's body.
- Motivation to Combine (for §103 grounds): As a single-reference ground, the argument focused on inherency and obviousness of unstated features. Petitioner contended that while Numaga does not explicitly state its light guides are "optically coupled" to the emitter/detector, a person of ordinary skill in the art (POSA) would have understood this coupling is necessary for the device to function as described.
- Expectation of Success (for §103 grounds): A POSA would have had a high expectation of success, as using optically coupled light guides to channel light to and from body tissue was a well-known and fundamental principle in photoplethysmography (PPG) sensors.

Prior Art Relied Upon: Numaga (Japanese Patent Application Publication No. 2005-040261) and Vetter (Application # 2003/0065269).
Core Argument for this Ground:
- Prior Art Mapping: This ground asserted that Numaga teaches the base sensor of claim 1, and Vetter supplies the additional limitations of dependent claims 2-4 and 8. Specifically, Vetter teaches a wrist-worn pulse rate detector that includes a motion sensor (an accelerometer) and a signal processor. The processor uses the motion sensor's signal to remove motion artifacts from the optical sensor's signal, thereby calculating a more accurate pulse rate and executing an adaptive filter algorithm.
- Motivation to Combine (for §103 grounds): A POSA would combine Vetter’s well-known technique for motion artifact cancellation with Numaga’s similar wrist-worn sensor. The motivation was to solve the known problem of motion artifacts corrupting PPG signals, thereby improving the accuracy and reliability of Numaga's device.
- Expectation of Success (for §103 grounds): Success would be predictable, as this was a simple combination of known elements, each performing its known function to achieve a predictable result—an improved, motion-tolerant PPG sensor.

Prior Art Relied Upon: Fraden (Application # 2005/0209516).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Fraden, which discloses an optical pulse oximetry probe for insertion into the ear canal, teaches every limitation of claim 1. Fraden’s probe functions as a sensor module with LEDs (emitters) and a light detector. It uses an illuminator (65) as a first light guide and an ear plug (64) as a second light guide. These components have free end surfaces that are pressed against the ear canal tissue to deliver light directly into the body and collect the modulated light directly from the body.
Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Numaga, Vetter, and Dekker (Patent 6,702,752) to add respiration rate monitoring (Claim 5), and combining Fraden with Fricke (Application # 2009/0105556) to add motion sensing and advanced processing to the ear-worn device embodiment (Claims 2-5, 8).

Petitioner argued for specific constructions of several terms based on the patent’s specification, which were central to distinguishing its invalidity arguments from arguments made during prosecution.
The term "free end surface" was construed as "a surface at the distal end of a light guide that is exposed or otherwise free to be used with many different parts of the body." This construction was used to argue that prior art like Numaga and Fraden, which show light guides with exposed tips engaging the skin, meet the claim limitation. This contrasted with the Patent Owner's earlier arguments during prosecution that distinguished a prior art reference (Aceti) because its light channels terminated within an encapsulating material and did not have "free end surfaces."

Petitioner argued that instituting review on all grounds would not be redundant or an undue burden on the Patent Owner. It asserted that the grounds were meaningfully distinct because the primary references, Numaga and Fraden, teach materially different sensor modules (wrist-worn vs. ear-worn). Furthermore, the legal theories were distinct, with the Fraden-based challenge including a §102 anticipation ground against claim 1, while the Numaga-based challenges were all based on obviousness under §103.

Petitioner requests institution of an inter partes review and cancellation of claims 1-5 and 8 of the ’776 patent as unpatentable.