[00:00:47] Speaker 05: We will hear argument next in number 182223 Valencell versus Fitbit. [00:01:01] Speaker 02: May it please the court? [00:01:02] Speaker 02: I'm Justin Kimball on behalf of Valencell. [00:01:07] Speaker 02: First, the board erred by exceeding its statutory authority to substitute its own theory for [00:01:14] Speaker 02: the theory that Fitbit had advanced to find the claim light guide in New Maga. [00:01:20] Speaker 02: The Supreme Court in SAS explained that because IPRs are party-led, not agency-led proceedings. [00:01:27] Speaker 02: The board cannot depart from the petition and institute an IPR of its own design. [00:01:32] Speaker 02: That's exactly what happened here. [00:01:35] Speaker 02: The claim term at issue is light guide. [00:01:37] Speaker 02: And the state of construction is mechanism for delivering light along a path, which Valencell agrees with. [00:01:44] Speaker 02: Numaga's invention for some context was to press a encapsulated light emitter directly into the skin in order to get as much light directed onto the skin as possible. [00:01:57] Speaker 02: The change that made to the prior artist described in Numaga was to remove some intervening components so that that encapsulated light emitter could directly touch the skin. [00:02:08] Speaker 02: Numaga doesn't teach [00:02:10] Speaker 02: anything about using light guides to deliver light along a path as does the 965 Patton. [00:02:17] Speaker 02: Fitbit contended in its petition that this encapsulated parts, it's called Light Guide Part 21B, was alone the claimed light guide and that some surrounding materials, shell member 29, shell support member 29, was the housing. [00:02:36] Speaker 02: So that was the housing for the [00:02:39] Speaker 02: the emitter and the detector. [00:02:40] Speaker 05: I guess this is what I'm remembering. [00:02:42] Speaker 05: The petition says 21-8 was the light guide. [00:02:49] Speaker 05: You responded, can't be the lights not sufficiently cabin. [00:02:55] Speaker 05: There's going to be a problem with that. [00:02:58] Speaker 05: They come back and they say, [00:03:00] Speaker 05: Look, your own patent allows some kind of cladding on the light guide. [00:03:07] Speaker 05: And Numaga has that. [00:03:09] Speaker 05: Is that either 26 or 29, one of those? [00:03:12] Speaker 05: 29. [00:03:13] Speaker 05: 29. [00:03:14] Speaker 05: So that's a response to your argument that 21 can't really be a light guide because there's not enough protection for it. [00:03:24] Speaker 05: That doesn't make the cladding part of the light guide. [00:03:29] Speaker 02: So a fitbit was very careful in its arguments. [00:03:33] Speaker 02: So the sequence is important. [00:03:35] Speaker 02: We did say in our preliminary patent owner response that the 21b couldn't be a light guide. [00:03:42] Speaker 02: It didn't deliver light in any particular way. [00:03:45] Speaker 02: New Maga doesn't say anything about that. [00:03:46] Speaker 02: The board on its own said, well, what about other parts within New Maga in particular, the shell support member 29? [00:03:54] Speaker 02: Doesn't that deliver light along the path? [00:03:56] Speaker 02: That was not Fitbit's contention. [00:03:59] Speaker 02: And we then, in our patent owner response, continued to point out, responding to the petition, not to the board. [00:04:07] Speaker 05: You were talking about an institution decision now? [00:04:09] Speaker 02: Yes. [00:04:10] Speaker 02: OK. [00:04:10] Speaker 02: Yes, if I misspoke, I'm sorry. [00:04:13] Speaker 05: No, no, no. [00:04:13] Speaker 05: I may just not be paying attention. [00:04:16] Speaker 02: That sequence is important. [00:04:18] Speaker 02: So yes, in the institution decision, the board introduced this idea that the shell support member could deliver light along the path. [00:04:25] Speaker 02: That wasn't what Fitbit contended either in the petition or later. [00:04:30] Speaker 05: Where's the institution language you're talking about? [00:04:34] Speaker 05: And secondarily, then, did the board rely on that in the final written decision? [00:04:38] Speaker 05: And I guess what I want to focus on is when you say, can't deliver without, that doesn't mean the thing that's necessary is part of the light guide. [00:04:53] Speaker 05: That is, the cladding may enable the light guide to do its job as a light guide without being part of the light guide. [00:05:02] Speaker 05: And that, at least, is how I remember what the board said. [00:05:07] Speaker 02: So we read it a different way to respond to that question. [00:05:10] Speaker 02: We read it to be that the shell support member, which later came to be known as cladding, was a part of the light guy, in connection with the singular piece 21B. [00:05:22] Speaker 05: What's the closest you have to where the board said that, short of the light guy? [00:05:29] Speaker 02: Appendix 907. [00:05:32] Speaker 02: And the quote is, or a portion of the quote is, [00:05:35] Speaker 02: Shell Support Member 29 thereby provides a mechanism for delivering light along a path. [00:05:40] Speaker 02: That's pretty unequivocal. [00:05:42] Speaker 05: OK. [00:05:43] Speaker 05: And then what about the final written decision, which is presumably more fully considered than the institutional decision? [00:05:49] Speaker 02: Right. [00:05:49] Speaker 02: In the final written decision, this is Appendix 17, the board says, NUMAGA teaches transmitting light from an emitter through a clad light guide directly to and from the skin of the subject. [00:06:00] Speaker 02: So this clad light guide is referring to, [00:06:03] Speaker 02: some combination of shell support member and the encapsulated piece 21B. [00:06:11] Speaker 02: And so we had argued throughout that 21B, which was what Fitbit consistently argued was the light guy, just could not be because it didn't deliver light along the path. [00:06:21] Speaker 02: The board was not authorized under the APA to come up with its own theory to fix a gap, a problem in the theory of Fitbit. [00:06:33] Speaker 02: But that's what it did here and and that is what the finding of Obviousness with with respect to no MAGA is based upon your patent spec talks about some form of cladding right? [00:06:46] Speaker 04: Yes, your honor and that's to keep exterior light from entering the light guide is that right? [00:06:52] Speaker 04: That's right in a particular embodiment. [00:06:54] Speaker 04: That's right and Isn't that what's going on in new MAGA to? [00:07:01] Speaker 04: They call it a light shutting off property, or something like that. [00:07:07] Speaker 04: So I guess what I'm trying to figure out is, why isn't the shell member 29 that's doing this kind of cladding the same thing that's going on in your patent disclosure? [00:07:19] Speaker 02: So in the patent disclosure, it does talk about, so first of, the patent describes... I guess to be clear, it's not about [00:07:27] Speaker 04: Oh, we need this shell support member so that the light coming from the optical emitter doesn't shoot out of the light guide part 21B off into all sorts of areas beyond the light guide part. [00:07:42] Speaker 04: The support member is really more designed to stop sunlight or some kind of other exterior light from interfering with the light coming from the optical emitter through the light guide part. [00:07:57] Speaker 02: Numaga is a very short reference. [00:07:59] Speaker 02: It doesn't really explain a lot about what it's doing with the shell support member. [00:08:02] Speaker 02: It does talk about, in at least part, preventing some sort of crosstalk between the light emitter and the light detector. [00:08:09] Speaker 02: It also acts as a housing. [00:08:11] Speaker 02: Fitbit contends that it constitutes the claimed housing, the shell support member, not the light guide. [00:08:18] Speaker 02: With respect to the patent, it's true that there are some light guides in the patent that can use light cladding, but the patent consistently talks about cladding or not, that light guides are used to deliver light in a particular way for a particular purpose. [00:08:33] Speaker 02: They're trying to focus light, the whole purpose of the patent is to use these light guides to focus light in a particular place to [00:08:40] Speaker 02: enhanced sensitivity. [00:08:41] Speaker 02: This was one of the keys to their invention. [00:08:45] Speaker 02: There's a particular description of this with respect to an embodiment in the ear and the need to use a light guide to really focus light in a particular way. [00:08:52] Speaker 04: What is it about Numaga's quote-unquote light guide part that in your view [00:08:59] Speaker 02: is failing to serve the same function as your claimed light guide. [00:09:15] Speaker 02: That's not its goal. [00:09:16] Speaker 02: And in fact, its goal, as opposed to that, is to just get as much light onto the skin as possible, which is antithetical to what the 965 was trying to do. [00:09:25] Speaker 02: Remember, the prior art in New Maga had these intervening pieces, and it removes those so that the light emitters right on the skin is shining as much light as possible. [00:09:34] Speaker 02: So we just don't believe that there's just no disclosure in New Maga of using a light guide in any fashion. [00:09:41] Speaker 02: And because of that lack of disclosure, [00:09:45] Speaker 02: It the claim like I just isn't there and it's certainly not there with respect to so then New Magas quote-unquote light guide part is some kind of misnomer in your view Well, it's hard it could it who knows what it means what what we do know is light guide in the patent has been construed to mean a mechanism for delivering light along a path and that's because of Various discussions within the patent of doing that so it's a it's a particular [00:10:13] Speaker 02: light guide. [00:10:13] Speaker 02: It's got a construction and New Maga doesn't address that. [00:10:17] Speaker 05: That's pretty broad. [00:10:20] Speaker 05: New Maga doesn't have to use those words even like the term light guide or the construction for the board to say this is what this is doing. [00:10:32] Speaker 02: Agreed. [00:10:33] Speaker 02: It doesn't have to use the same words. [00:10:35] Speaker 02: Our point is just that it's not just that. [00:10:38] Speaker 02: It's that New Maga's approach is totally different. [00:10:41] Speaker 02: It isn't trying to [00:10:43] Speaker 02: to direct, control the light in any way. [00:10:46] Speaker 02: It's just shining light onto the skin. [00:10:49] Speaker 02: So it's just not using a light guide under any, it's not delivering light, I should say, in any fashion. [00:11:00] Speaker 02: If I may, I know I'm, may I move on to the freight in reference? [00:11:04] Speaker 02: It's your time. [00:11:07] Speaker 02: So that's the second error. [00:11:09] Speaker 02: There what the board did was, the term is distal end. [00:11:13] Speaker 02: And the construction is end opposite of the proximal end. [00:11:16] Speaker 02: What the board did in finding a distal end in Frayton was it read the word opposite totally out of this construction. [00:11:26] Speaker 02: What it said, in fact, so if the figure is figure 10 in Frayton, it's an earplug. [00:11:31] Speaker 02: It's got these ribs along the side. [00:11:33] Speaker 04: What about the most distal rib 64, the furthest from the proximal end? [00:11:39] Speaker 04: So why wouldn't that be, you know, opposite of the proximal end? [00:11:44] Speaker 02: So the issue is, so I understand the Pichu beam. [00:11:47] Speaker 02: The tip, if I'm using my pen, the tip of the plug, that's the distal end. [00:11:55] Speaker 02: Now we would not say that, you know, that this, the area, you know, [00:12:00] Speaker 02: just down from the tip, which is where those farthest most ribs are. [00:12:05] Speaker 04: I thought the farthest most ribs really come right off the most distal point you could locate on that. [00:12:11] Speaker 02: Well, there's sort of a portion of this piece, and I grant you that, but there's a clear end that is not engaging the body, and that is our focus here. [00:12:22] Speaker 02: the claim requires that that distal end engage the body for a reason. [00:12:26] Speaker 02: The reason Frayden doesn't have that end engage the body is because it would be engaging the inner ear and there could be damage. [00:12:33] Speaker 02: So that's the reason Frayden's built that way. [00:12:36] Speaker 02: I also would say that if you look at the description around Frayden in figure 10, it shows that light coming back into the first side rib. [00:12:46] Speaker 02: There is no discussion explicitly of light coming in any of the other further most ribs either. [00:12:54] Speaker 02: But in addition to all of that, a side of this device is not a distal end opposite. [00:13:02] Speaker 02: The construction is end opposite of the proximal end, so it needs to be an end opposite the proximal end. [00:13:09] Speaker 02: Our contention is these side ribs just can't be that. [00:13:13] Speaker 02: And what the board did to address this concern, which we had argued, is it said in qualification that they did not limit distal entamine any particular end or be limited to a single end at the farthest distance of the proximal end. [00:13:27] Speaker 02: In our view, this is essentially a reconstruction right at the end that vitiates the word opposite and really seems to, or make the word opposite meaningless, and it seems to say [00:13:43] Speaker 02: Well, a distal end is just an end that isn't the proximal end, just some other end you can find. [00:13:48] Speaker 02: It's just not the broadest reasonable meaning. [00:13:54] Speaker 03: Would you agree that it's not in the middle though? [00:13:57] Speaker 03: It at least is. [00:13:59] Speaker 03: toward the end more than it is in the middle of the device, right? [00:14:04] Speaker 02: With respect to the rib that Judge Chin was bringing up, certainly. [00:14:08] Speaker 02: Look, I think there's three along the side there, and one is more in the middle and less in the middle. [00:14:13] Speaker 02: I agree. [00:14:13] Speaker 02: Yes, we would agree with that. [00:14:14] Speaker 02: But they are all along the sides. [00:14:17] Speaker 02: And the distal end of that plug doesn't engage. [00:14:21] Speaker 03: I understand, but your view is the more narrow distal end just on the opposite side at the same longitude, if you will. [00:14:26] Speaker 02: Yes, Your Honor. [00:14:30] Speaker 02: As I'm losing time here, I want to be sure. [00:14:31] Speaker 03: Are you going to talk about the motion to amend? [00:14:34] Speaker 02: Yes, Your Honor. [00:14:35] Speaker 03: I want to talk to you for a minute about corroboration. [00:14:38] Speaker 03: On the corroboration point, I see what your argument is on the rule of reason. [00:14:44] Speaker 03: But do you think there's, when I looked at the board's decision, I thought that perhaps it did more than just find that there wasn't corroboration. [00:14:52] Speaker 03: And this is on the Antidote-Hasley section. [00:14:56] Speaker 03: If you look at page A46 in the first paragraph, the board seems to suggest that it says, petitioner notes several shortcomings in patent order's evidence. [00:15:06] Speaker 03: This is evidence to Antidote-Hasley. [00:15:09] Speaker 03: And it says, we agree with petitioner. [00:15:11] Speaker 03: And then it goes through the different evidence. [00:15:13] Speaker 03: It says that the prototype damages are of insufficient detail. [00:15:17] Speaker 03: It says the chart doesn't include an explanation of how the images illustrate some of the claimed components. [00:15:23] Speaker 03: It says that although there is the inventor declaration, it fails to explain how some of the limitations are present, kind of sounding as if they're saying it's conclusory. [00:15:33] Speaker 03: Then it's not until the next paragraph that the board says, inventor Stephen LeBouffe is also [00:15:40] Speaker 03: patent owner's co-founder and president, and has a clear interest in the outcome of this trial. [00:15:46] Speaker 03: So I was reading this board decision as having this first paragraph that says, hey, all the evidence is just insufficient for some of these claim elements, then going into corroboration. [00:15:58] Speaker 03: But I want to know, did you actually appeal that? [00:16:00] Speaker 03: Did you address that in your briefing? [00:16:03] Speaker 03: Because really what I saw in your briefing was simply indefiniteness and corroboration. [00:16:08] Speaker 02: Well, so I understand what your honor is asking. [00:16:11] Speaker 02: The way we looked at this was their taking issue with those pieces of evidence was an attack on, which were meant to corroborate the inventor testimony, was an attack on the corroboration. [00:16:27] Speaker 02: That was the way we viewed it. [00:16:28] Speaker 02: I understand what you're asking. [00:16:30] Speaker 02: That just isn't. [00:16:31] Speaker 02: So yes. [00:16:32] Speaker 03: You didn't view it that way. [00:16:33] Speaker 02: So we believe that we did appeal it. [00:16:35] Speaker 02: And we do think that there's, in fact, [00:16:38] Speaker 02: The criticisms that Your Honor just went through to us is this, what the cases call an elements-based, overly narrow attack on evidence, instead of using the rule of reason to look at this in its totality. [00:16:50] Speaker 02: Like, for example, with respect to the LeBuff Declaration and one of the shortcomings there, they say that LeBuff doesn't show how an emitter is supported by the housing. [00:17:01] Speaker 02: You can see it in the photo, the emitter within the housing. [00:17:04] Speaker 02: There's there that says the photos don't show that there's internal connections I'm not even sure what that means exactly, but there's not the claims are about I don't know what internal connections That are claimed that aren't shown. [00:17:16] Speaker 02: I don't believe that there are any I think that that's pointing to something. [00:17:19] Speaker 02: That's a non-issue so to us that that mr.. Paik didn't know the inner workings of the [00:17:27] Speaker 02: prototypes. [00:17:27] Speaker 02: Well, he wasn't offered to testify about the inner workings. [00:17:30] Speaker 02: He was just somebody who actually had done the testing seven years ago and saw the prototypes. [00:17:37] Speaker 02: He could say, yes, I did that. [00:17:38] Speaker 02: That happened. [00:17:39] Speaker 02: And I used those prototypes. [00:17:45] Speaker 02: And also, the board, and I think this is very significant, didn't even address the invoice from a third party for a molded [00:17:57] Speaker 02: custom molded module and emitter, which was dated 15 months before the Haysley reference. [00:18:03] Speaker 03: What do you think the standard of review is that applies to our review of the board's determination under the rule of reason? [00:18:11] Speaker 02: Well, I think that that's a legal error not to apply the rule of reason. [00:18:16] Speaker 02: But I think to the extent that the court agrees with that, I do think that under NFC tech that it would [00:18:24] Speaker 02: likely need to be remanded to be analyzed under the correct standard. [00:18:31] Speaker 03: But in ordinary circumstances, the corroboration is a question of fact, I think. [00:18:36] Speaker 03: Is that right? [00:18:36] Speaker 02: Correct. [00:18:37] Speaker 02: That's right. [00:18:38] Speaker 02: It's just here, the problem isn't just we're not taking issue with a particular analysis of a particular fact. [00:18:43] Speaker 02: It's the totality of the evidence and the failure to analyze the totality of the evidence. [00:18:50] Speaker 05: Thank you. [00:18:51] Speaker 05: And we'll restore your three minutes. [00:18:52] Speaker 05: Thank you, Your Honor. [00:19:01] Speaker 05: Mr. Johnson. [00:19:03] Speaker 01: Thank you, Your Honor. [00:19:03] Speaker 01: Good morning, Your Honor. [00:19:04] Speaker 01: May it please the Court? [00:19:06] Speaker 01: The Court can affirm the Board's findings on the original claims under either New Maga or Frayden, and can affirm the Board's findings on the amended claims either on obviousness or on the indefiniteness issues. [00:19:18] Speaker 01: And if we start with New Maga, which is where the Court started, [00:19:22] Speaker 01: They're called light guide parts in Umaga, 21B and 22B. [00:19:27] Speaker 01: They're expressly called light guide parts. [00:19:29] Speaker 01: The claim limitations that are issued are light guides. [00:19:33] Speaker 01: There's no question, as the board determined, the light guide parts in Umaga deliver light along a path from the light emitting chip down to the wrist and then back to a receiving chip. [00:19:45] Speaker 05: Can you address Mr. Kimball's point that at least in the [00:19:50] Speaker 05: institution decision and less clearly, but he says implicitly in the final written decision, the board included the 29 cladding [00:20:05] Speaker 05: as part of the light guide, and whatever else is clear, your petition did not do that. [00:20:10] Speaker 01: Well, let me say, first and foremost, the petition, unequivocally, did identify 21A and B as the light guides, and then referenced- Maybe I was not clear. [00:20:20] Speaker 05: Let's talk about 29. [00:20:21] Speaker 05: OK. [00:20:22] Speaker 01: So 29, the final, and I'll start with the final written decision. [00:20:25] Speaker 01: The final written decision does refer to, and it says specifically, that the light, let me just pull up the line. [00:20:36] Speaker 05: The page of interest seems to be, to Mr. Gimbel, is page 17. [00:20:46] Speaker 01: And the part that I'm referring to is, right, so if we, and this is in the, this is in the institution, no, in the final written decision. [00:20:59] Speaker 01: Explicitly it says Numaga explicitly discloses directing light guides with light guide parts and the panel is expert. [00:21:06] Speaker 01: I'm sorry. [00:21:06] Speaker 05: What are you reading from? [00:21:07] Speaker 01: I'm looking at page 17 and If we look at the the it's a top paragraph last sentence. [00:21:15] Speaker 01: That's where I'm reading from yes Numaga explicitly discloses directing light with light guide parts and the patent owner's expert dr. Pollanini states that a properly designed light guide does not leak light and [00:21:28] Speaker 01: And if we go further on down to page 17 to the second full paragraph, the first sentence, we agree with petitioner. [00:21:34] Speaker 05: Right. [00:21:34] Speaker 05: So go a few sentences further. [00:21:36] Speaker 05: This is the sentence, I think, that Mr. Kimball quoted six lines into the paragraph. [00:21:42] Speaker 05: Like the 965, Namaka teaches transmitting light from an emitter through a clad. [00:21:48] Speaker 05: light guide. [00:21:49] Speaker 05: The cladding is 29, right? [00:21:53] Speaker 01: That's correct. [00:21:53] Speaker 01: The cladding is 29. [00:21:54] Speaker 05: So why does that not embody and put the cladding as part of the light guide and why is that not inconsistent with what your petition says? [00:22:03] Speaker 01: Because all the board was doing in that one sentence there was comparing the overall system and the overall system of the 965 pen to the overall system in Numaga. [00:22:15] Speaker 01: And that's all it's doing at that point. [00:22:17] Speaker 01: And if we look specifically at this 965 patent and column 37, lines 15 to 19, it describes, and this is I think the point that you raised with Valence Health Council, quote, in some embodiments, a light guide may be surrounded [00:22:36] Speaker 01: or partially surrounded by a cladding material, 121, that is configured to block light from an external source from entering the light guide, 119, and at least partially confine the light within the light guide, 119. [00:22:50] Speaker 05: Maybe the institution decision becomes unimportant once the final written decision is written. [00:22:57] Speaker 05: But can you address, this is appendix 907, so it's page 17 of the institution decision. [00:23:03] Speaker 05: which seven lines down from the bottom says, shell support member 29 thereby provides a mechanism for delivering light along the path in a manner consistent with the broadest reasonable interpretation. [00:23:18] Speaker 05: That seems to place 29 as part of the light guide, since it's quoting the definition of the light guide. [00:23:25] Speaker 01: But again, that's at the institution phase, Your Honor. [00:23:28] Speaker 01: And I submit the final written decision is what governs here. [00:23:31] Speaker 01: And this was early on in the process. [00:23:33] Speaker 01: And yes, there is this one sentence that refers to the shell support member 29 providing a mechanism for delivering light. [00:23:42] Speaker 01: But if you go back to the petition, the specific petition, [00:23:51] Speaker 01: guide, it specifically referenced the light guide parts of 21A and 21B. [00:23:59] Speaker 01: And that is what we're here before this cordon. [00:24:04] Speaker 01: The light guide parts in the Magha specifically disclose the light guides that are referenced in the claims of the patent. [00:24:17] Speaker 01: You know, their only substantive argument is that the light guide parts alone don't confine the light to a path. [00:24:23] Speaker 01: And if we look at their opening brief, their own opening brief, the annotated version of Namaga's prior art, this is figure 2B on page 29 of their brief, it's the one that has the five red arrows coming down, it shows that at least some light [00:24:40] Speaker 01: One out of the five red arrows is delivered along a path from 21A down to the wrist. [00:24:45] Speaker 01: That's the importance. [00:24:47] Speaker 01: That's the import of Numaga. [00:24:49] Speaker 01: That's the overall system. [00:24:50] Speaker 01: And so when the, in the final written decision, when [00:24:53] Speaker 01: the board was referring to like the 965, and the New Magha also exposes like guides with cladding. [00:25:02] Speaker 01: That's what that reference was to. [00:25:03] Speaker 01: It wasn't including the cladding as the like guide. [00:25:07] Speaker 01: And it made clear, again, in the final written decision of page 17, when it says, [00:25:15] Speaker 01: that the light guides in New Magh are structurally equivalent to the light guides in the 965M. [00:25:21] Speaker 01: And it does not include the cladding in that sentence that's referenced in the final written decision. [00:25:27] Speaker 01: And if we go a little bit further, the light guide doesn't have to restrict or direct the light. [00:25:33] Speaker 01: It's only required that it be a mechanism for delivering light along a path. [00:25:38] Speaker 01: Delivering light is broader than directing, and it doesn't require the cladding. [00:25:44] Speaker 01: light is delivered along a path to New Maga even without the cladding support member 29. [00:25:50] Speaker 01: And again, the board didn't rely on the combination of New Maga's light guide parts and the cladding for this limitation in its final written decision. [00:25:58] Speaker 01: The board relied solely on the light guide parts and referred to the clad light guide only to highlight similarities, again, between the overall system in New Maga and the 965 band. [00:26:09] Speaker 01: And again, [00:26:10] Speaker 01: If we look at the overall import of what they're both trying to do, they're trying to send light through these light guides, through these light guide parts to the wrist and then back up to detect physiological information. [00:26:25] Speaker 01: That's the import of all of this. [00:26:27] Speaker 05: Can we change subjects to the, what is it, Frayden? [00:26:30] Speaker 05: Yes. [00:26:34] Speaker 05: Should we look to figure out whether components that are not at the tip but nearish the tip are distal or not distal? [00:26:45] Speaker 01: We start with the claim language. [00:26:46] Speaker 01: The claim language is a distal end. [00:26:49] Speaker 01: It doesn't say the distal end, it could be a distal end. [00:26:52] Speaker 01: And it's an end opposite the proximal end. [00:26:55] Speaker 05: Well, that could mean there might be multiple tips like the ends of octopi. [00:27:00] Speaker 01: And in fact, the specification refers to that. [00:27:04] Speaker 05: I'm sorry, how does that tell us that components that are not at any tip would be distal, but are on the sides near the tip of one to eight things? [00:27:16] Speaker 01: Well, again, the construction is an end opposite the proximal end. [00:27:20] Speaker 01: And when you look at, again, [00:27:22] Speaker 01: You know, appendix 13, 12 and 13 at the bottom in the final written decision. [00:27:28] Speaker 01: The board said a distal end which, quote, is an end remote or opposite from the proximal end. [00:27:36] Speaker 01: That's what we're really talking about are in Frayden. [00:27:40] Speaker 01: the ribs are opposite and remote from the main body of what's disclosing. [00:27:47] Speaker 05: Let me just try to maybe ask this a different way. [00:27:49] Speaker 05: It certainly seems to me, in my whatever knowledge I may have of the word distal, that that is not limited to the very tip of something that is highly linear. [00:28:00] Speaker 05: But that's just in my head. [00:28:02] Speaker 05: So what else do I look at? [00:28:04] Speaker 05: His argument is, [00:28:05] Speaker 05: The tip only counts, and there may be seven linear things, in which case there are seven tips, but the stuff at the side of the tip doesn't count. [00:28:15] Speaker 01: You look at the specification. [00:28:17] Speaker 01: In the specification, in column 37, lines 54 to 57, tells a person of ordinary skill in the art, it says, [00:28:24] Speaker 01: 3N119C may branch out to two or more legs that may be used to couple with many different points of the body, such as multiple points of the ear. [00:28:36] Speaker 01: That's exactly. [00:28:36] Speaker 03: But where does that say what distal means? [00:28:38] Speaker 03: I mean, I get it that you're saying the specification discloses that there can be multiple sides or multiple tips at what [00:28:49] Speaker 03: opposing council has called the distal end, which can only be the very most tip. [00:28:53] Speaker 03: But the question is, what in the specification helps us understand that distal is not just the tip, but also includes anything, let's say, to the right of the middle? [00:29:03] Speaker 03: How do we know that? [00:29:04] Speaker 01: It's usually used in the context of proximal, right? [00:29:08] Speaker 01: Proximal and distal, and you think about it in terms of more in the mechanical arts. [00:29:12] Speaker 01: And it's not limited to a specific, the farthest point. [00:29:16] Speaker 01: It can be something that's towards the end. [00:29:19] Speaker 01: I mean, it's intentionally... But what evidence do we have of that? [00:29:23] Speaker 01: The claim language and the specification. [00:29:26] Speaker 01: I mean, obviously they're written towards a person of ordinary skill in the art and a person of ordinary skill [00:29:31] Speaker 01: particularly reading that section of the spec that I just read that suggests different branches touching different points of the years and that those can be distal ends. [00:29:42] Speaker 01: That's firmly within the scope of the claim language in that sense. [00:29:46] Speaker 01: And that's clearly disclosed. [00:29:49] Speaker 04: Are you relying on every [00:29:51] Speaker 04: Rib 64, or are you just relying on the ribs to the very right that extend off of what we could all probably agree is the most distant point? [00:30:03] Speaker 04: All we need is one. [00:30:04] Speaker 04: I mean, it's a... Well, I'm just trying to understand your theory. [00:30:07] Speaker 04: Is your theory that [00:30:09] Speaker 04: every one of the six ribs constitutes a distal end or are you saying well the most distal point there are two branches of ribs coming off of that distal point and so that continuous end with the ribs coming off of them is the distal end? [00:30:32] Speaker 01: I'm saying that [00:30:34] Speaker 01: The one on the end certainly is a distal end and using the court's own construction and the board's construction and Valencell's construction. [00:30:43] Speaker 01: And I'm looking at it from a person of ordinary skill in the art. [00:30:46] Speaker 01: And again, the language is a distal end, a distal free end. [00:30:51] Speaker 01: And certainly under the construction that the board adopted and the one that Valencell promulgated, the ribs 64, 84, et cetera, are distal ends. [00:31:06] Speaker 05: Your time is running out. [00:31:07] Speaker 05: Can I ask you about, on the motion, on the proposed amendment, put aside Haisley and the question of corroboration. [00:31:17] Speaker 05: Can you explain, first look, I'm interested in the indefiniteness point that the board made. [00:31:25] Speaker 05: First of all, point me to the pages with the claims that I should be looking at for the amended claims. [00:31:34] Speaker 01: I have it on page 20. [00:31:38] Speaker 01: Well, let me find it. [00:31:47] Speaker 00: I have my own cheat sheet that I use from the brief. [00:32:07] Speaker 05: Okay, so tell me what the indefiniteness problem is. [00:32:13] Speaker 01: Well, first of all, the claims recite terms of degree, and they lack the objective boundaries. [00:32:20] Speaker 01: Let's put that aside. [00:32:21] Speaker 01: So if we look specifically at claim 13, and it's the language, a substantially flat-faced surface narrowing a field of view of the first light guide, and then a substantially flat-faced surface as, the real issue is that there's no objective boundary for evaluating what [00:32:41] Speaker 01: the narrowing part that's referred to as, and what the field of view is. [00:32:45] Speaker 03: Isn't it true that the specification just discloses either flat-faced or, what the other term, I think if I remember correctly, is curved? [00:32:54] Speaker 03: Is that right? [00:32:55] Speaker 03: Or is it rounded? [00:32:56] Speaker 01: Curved. [00:32:57] Speaker 03: Curved. [00:32:58] Speaker 03: And it's the only two it discloses, and it says that the flat-faced is, I believe, narrowed relative to the curved, and the curved is widened relative to the flat. [00:33:11] Speaker 03: I might have them reverse, but there's no other point of reference provided in this specification, right? [00:33:18] Speaker 01: So what's the field of view that's narrowed and what is it narrowed relative to? [00:33:25] Speaker 03: Why aren't they relative to one another? [00:33:27] Speaker 01: Because at what point does a substantially flat surface that narrows a field of view [00:33:34] Speaker 01: encroach upon a flat surface that does not narrow a field of view. [00:33:39] Speaker 03: What if they all do it? [00:33:40] Speaker 03: If the specification says that the substantially flat surface narrows the field of view relative to the curved surface, why isn't that perhaps very broad and not very meaningful? [00:33:56] Speaker 03: but not indefinite. [00:33:57] Speaker 01: Because if I'm a person of an ordinary skill and you are trying to avoid the scope of this claim, how do I determine what is narrowed relative to the field of view that I have? [00:34:09] Speaker 03: I'm asking why isn't it relative to a curved surface? [00:34:13] Speaker 01: I think it is relevant because at what point does a curved surface become a flat surface, right? [00:34:19] Speaker 01: A substantially curved surface become a substantially flat surface. [00:34:24] Speaker 01: Where do those start to intersect? [00:34:27] Speaker 01: And that's what the issue is, is ultimately you get down to certain areas where [00:34:33] Speaker 01: You can't tell, as a person of ordinary skill, whether it's a substantially curved surface or a substantially flat surface. [00:34:38] Speaker 05: And just remind me, the evidence on that question, what a relevant skilled artisan would or would not understand, is what? [00:34:47] Speaker 01: The evidence that we submitted in that respect? [00:34:49] Speaker 01: Yes. [00:34:50] Speaker 01: A lawyer saying it doesn't really count for anything, right? [00:34:55] Speaker 01: Yes, we have expert declaration that we submitted in that context. [00:35:01] Speaker 03: Is indefiniteness, should we look at that in this context as a question of law, mixed question of law and fact? [00:35:07] Speaker 03: What is the standard of review that applies? [00:35:09] Speaker 01: I think it's a mixed question of law and fact. [00:35:12] Speaker 03: Like claim construction, there's underlying [00:35:15] Speaker 01: issues of fact? [00:35:18] Speaker 01: There are underlying questions of fact. [00:35:19] Speaker 01: And we submitted the declaration of Dr. Zaraphsadeh in support of the indefinite in this argument as well. [00:35:29] Speaker 01: And unless your honors have any other further questions with respect to corroboration or anything else. [00:35:33] Speaker 01: Anything else. [00:35:34] Speaker 01: OK, thank you. [00:35:51] Speaker 02: Your Honor, since I didn't get to reach it, I wanted to start with the indefiniteness arguments, if that's fine. [00:35:59] Speaker 02: With respect to substantially flat-faced surface nearing a field of view, we don't think that that is indefinite under the appropriate standards for a couple of reasons. [00:36:09] Speaker 02: First of all, substantially flat-faced has an objective baseline. [00:36:14] Speaker 02: We all know what flat is. [00:36:16] Speaker 03: Is it shown in the figures of the patent? [00:36:18] Speaker 02: Sure. [00:36:19] Speaker 02: And figure 26 shows distal ends that are flat. [00:36:22] Speaker 02: And figure 31 shows its distal ends that are curved. [00:36:25] Speaker 02: And there's discussion around this and on the way that light behaves, depending upon which sort of end you're using. [00:36:31] Speaker 02: This is the area that you were referring to with Fitbit's council. [00:36:36] Speaker 04: Is it your view that substantially flat allows for a little bit of curve? [00:36:45] Speaker 02: I think that the answer to that is the reason why we say substantially flat is because perfect flatness might be difficult to achieve. [00:36:58] Speaker 02: And patent law allows for using a word like substantial so that you don't have a claim that has to be mathematically provably absolutely flat. [00:37:08] Speaker 02: But we are not trying to have that term encompass some curve. [00:37:15] Speaker 02: The distinction between substantially flat-faced and substitute claim 13 and substantially curved and substitute, I think it's 24, is to talk about a real difference which affects light in a different way. [00:37:28] Speaker 04: So is the answer no? [00:37:31] Speaker 02: Yes. [00:37:33] Speaker 02: Yes, the answer is no. [00:37:34] Speaker 02: That's all I'm looking for. [00:37:35] Speaker 03: Sorry, your honor. [00:37:36] Speaker 03: I saw that in your brief you directed us to column 35 of the patent and figures 24A through B and 31. [00:37:44] Speaker 03: for disclosure of what the round and flat surfaces of the light guides are. [00:37:49] Speaker 03: Are there any other portions of the patent that talk about this? [00:37:52] Speaker 03: I couldn't find any, but I want to make sure I didn't miss anything. [00:37:58] Speaker 02: I just wanted to look quickly and see if there's another figure that I'm leaving out here. [00:38:02] Speaker 02: That discussion that we referenced, and that's in column, I want to get column 35, 55 through 61. [00:38:13] Speaker 02: the top of 36, and figures that describe it or that show this include the ones you highlighted. [00:38:25] Speaker 02: Also, yes, there are others. [00:38:28] Speaker 02: 26 and 31. [00:38:30] Speaker 02: 26 is one that has two different light guides, each with a distal and a proximal end. [00:38:39] Speaker 02: But flat ends is the point with respect to this. [00:38:42] Speaker 04: Is there some threshold degree of curve that creates a widening of the field of view? [00:38:51] Speaker 04: Maybe, let's say, the most minor of curves [00:38:53] Speaker 04: Would that widen the view necessarily? [00:38:56] Speaker 04: Compared to flat, yes, is the answer, incrementally. [00:39:00] Speaker 04: OK, so the most mildest of curve would satisfy the limitations substantially curved. [00:39:11] Speaker 02: So I don't know that that is correct. [00:39:15] Speaker 02: Because again, and I just want to answer the question straightforwardly, I don't think that's correct. [00:39:21] Speaker 02: I don't, the language, narrowing a field of view, widening a field of view, that's functional, obviously language. [00:39:27] Speaker 02: These are apparatus claims. [00:39:28] Speaker 02: It's meant to describe what those flat and round surfaces do. [00:39:35] Speaker 02: I don't think that they are limiting. [00:39:37] Speaker 02: That's one thing. [00:39:38] Speaker 02: Secondly, I did want to say, because the anti-dating argument only relates to claim 13, [00:39:45] Speaker 02: I think the focus ought to be on claim 13. [00:39:48] Speaker 02: In other words, the claim 14 that includes the substantially curved is not a part of the appeal on antedating. [00:39:57] Speaker 02: So the main term for focus really is substantially flat faced, narrowing a field of view. [00:40:04] Speaker 03: But I want to ask you one other thing. [00:40:06] Speaker 03: I'm sorry. [00:40:09] Speaker 03: The board cited some testimony. [00:40:11] Speaker 03: I think it was of your expert, where they said that it's possible that it could be falling under the virtue of either one claim or the other. [00:40:20] Speaker 03: That seems kind of problematic with respect to definiteness of the claims. [00:40:26] Speaker 03: And so how are we supposed to understand that? [00:40:31] Speaker 03: Why is that not problematic? [00:40:33] Speaker 02: So in his testimony, he talked about unequivocally flat and unequivocally curved. [00:40:40] Speaker 02: And as they tried to, as they examined him, they started to get into some gray areas that I think are not realistically at issue. [00:40:52] Speaker 02: In other words, I think a person of ordinary skill in the art, and this is what he said, understands what a flat face surface is and what that will do to light. [00:41:01] Speaker 02: slight curve, as just Chen was suggesting, that maybe is perceptible under a microscope or whatever, is not what this person of ordinary skill is considering flat faced. [00:41:12] Speaker 02: And on the contrary, a curved surface like the one in figure 31 is apparent to a person of ordinary skill. [00:41:19] Speaker 02: And they're going to understand that that is going to widen the field of view. [00:41:23] Speaker 02: So I think in that context, the comment that if you bring these curves and flatnesses down to where they're just [00:41:31] Speaker 02: you know, infinitesimal differences between each other, there might be a gray area there. [00:41:37] Speaker 02: But I don't think that's a mathematical precision issue, which is not the standard under indefiniteness. [00:41:44] Speaker 02: It's reasonably certain. [00:41:45] Speaker 02: And here, in view of the specifications description, in view of the inventor's testimony, we think it's clear that a person of ordinary skill understands [00:41:56] Speaker 02: why you would use a flat-faced surface to narrow the field of view. [00:42:00] Speaker 02: An example I referred to earlier is in the ear where you're trying to really focus light in a particular area. [00:42:07] Speaker 03: But there is enough difference between substantially flat and substantially curved that something couldn't be both? [00:42:15] Speaker 02: Yes, I think that's right. [00:42:16] Speaker 02: I think you're either, yes. [00:42:17] Speaker 04: You're either one or the other? [00:42:20] Speaker 04: Is it possible that you can be neither? [00:42:24] Speaker 02: I don't know the answer to that last question. [00:42:27] Speaker 02: I think the answer is no. [00:42:30] Speaker 02: I think you've got to be one or the other. [00:42:32] Speaker 02: You get everybody every which way. [00:42:34] Speaker 02: That's not the intention. [00:42:38] Speaker 02: Maybe it is. [00:42:38] Speaker 02: Thank you for your argument. [00:42:41] Speaker 02: Thank you, Your Honor. [00:42:42] Speaker 05: Both counsel? [00:42:44] Speaker 05: I assume nobody's moving in this next case.