[00:00:32] Speaker 03:
We will hear argument next in number 182224, valencell against Fitbit.

[00:00:43] Speaker 01:
Good morning.

[00:00:44] Speaker 01:
May it please the court?

[00:00:46] Speaker 01:
Sorry.

[00:00:46] Speaker 01:
My name is Dan Olaka.

[00:00:47] Speaker 01:
I represent the appellant valencell in this appeal.

[00:00:50] Speaker 01:
Valencell raises three primary issues on appeal, the first two of which have to do with denials of due process and violations of the Administrative Procedures Act,

[00:01:01] Speaker 01:
The third issue has to do with the board's erroneous denial of Valencel's conditional motion to amend, which I'll save for last.

[00:01:08] Speaker 01:
With respect to the first issue, the board deprived Valencel of its due process rights and violated the APA by relying on new arguments from Fitbit's reply that were not made in the petition.

[00:01:22] Speaker 01:
Valencell recognized these new arguments and specifically asked the board for permission to file a surreply or in the alternative to file a motion to strike those new arguments.

[00:01:33] Speaker 01:
The board denied that request and suggested that Valencell should address those arguments during the oral hearing.

[00:01:41] Speaker 01:
Well, Valencell did that, but ironically the board actually struck Valencell's arguments that were made in rebuttal to Fitbit's new arguments and instead

[00:01:51] Speaker 01:
relied on Fitbit's arguments in its final written decision.

[00:01:55] Speaker 01:
For example, the board relied on new arguments that Fitbit made regarding Figure 7a of Goodman in its reply.

[00:02:04] Speaker 01:
In its petition, Fitbit argued that Figures 2c of Goodman disclosed the claim light guiding interface under Fitbit's own construction.

[00:02:15] Speaker 01:
After Valencell responded, proposed a new construction for light guiding interface, Fitbit switched horses.

[00:02:22] Speaker 01:
Instead of relying on figure 2C, it relied on figure 7A to disclose the claims of light guiding interface under Valencell's construction.

[00:02:33] Speaker 01:
And the board ended up adopting that argument.

[00:02:36] Speaker 01:
It specifically adopted the argument at appendix 17.

[00:02:40] Speaker 01:
And it's clear that the board relied on that new argument as part of its analysis.

[00:02:45] Speaker 01:
Because the light source doesn't extend through the aperture, there's a space between the emitting surface and the end of the aperture at appendix 20.

[00:02:55] Speaker 01:
The only figure in Goodman that shows a space between the emitter and the end of the aperture is figure 7a.

[00:03:03] Speaker 01:
Figure 2c, the emitter fills the entire aperture.

[00:03:07] Speaker 01:
Second, the board relied on a new arguments that Fitbit made in its reply regarding the Asada reference.

[00:03:15] Speaker 01:
in its petition that they relied on.

[00:03:18] Speaker 03:
I'm sorry, can I just ask, how do we know just from 2C that the emitter is 24, the emitter 24, and I guess 24 is the emitter, right, that it fills the aperture?

[00:03:33] Speaker 01:
Well, the figure 2C is an expanded version of the device.

[00:03:42] Speaker 01:
When you collapse that down, it appears to fill the space.

[00:03:47] Speaker 01:
There's no disclosure in Goodman that there is any space with respect to figure 2C's emitter in the end of the aperture.

[00:03:56] Speaker 01:
And there's no testimony that there would be.

[00:03:59] Speaker 01:
The only evidence that Fitbit relied on to show that space was figure 7A and not figure 2C.

[00:04:08] Speaker 01:
With respect to ASADA, Fitbit failed to provide any reason that you would combine the embodiments of figure 11 with the embodiments of figure 9 and 10 that it relied on to disclose or to support its arguments regarding claims 6 and 7.

[00:04:26] Speaker 01:
After Valencel noted that deficiency in its response, Fitbit came back with a new expert declaration and a new argument saying that, oh, well, a person of ordinary skill in the art would combine those different embodiments

[00:04:39] Speaker 01:
Vail and Sill never had an opportunity to respond to that new evidence in that new argument.

[00:04:44] Speaker 01:
The Board improperly adopted it at Appendix 80 and deprived Vail and Sill of its opportunity to respond.

[00:04:52] Speaker 01:
Third, the Board relied on a new argument that Fitbit made regarding Layer 3 of Figure 11 in Asada.

[00:05:00] Speaker 01:
Fitbit argued initially in its petition that Layer 3 of Asada was the claimed light transmissive material.

[00:05:09] Speaker 01:
but failed to provide any real evidence supporting that claim.

[00:05:13] Speaker 01:
It argued only that because the figure showed that the layer 3 was clear, that it must be light transmissive without relying on any disclosure from ASADA to support that claim or any other expert testimony regarding ASADA's layer 3.

[00:05:30] Speaker 01:
In its reply, Fitbit added to its obviousness case and argued that layer 3 must be light transmissive material

[00:05:39] Speaker 01:
because it needs to protect the skin or protect the optical components of the device from the skin, and relied on new expert testimony and that new argument.

[00:05:50] Speaker 01:
The board relied on that new argument in finding the claims unpatentable.

[00:05:54] Speaker 01:
And that was a proper, in light of the board's denial of its request to strike those new arguments and to file a cert reply.

[00:06:04] Speaker 01:
The second issue on appeal.

[00:06:06] Speaker 01:
In newvasive, this court held

[00:06:09] Speaker 01:
that a person of the board's findings must be supported by sufficient reasoning and it must explain why a person of ordinary skill in the art will combine two different references.

[00:06:20] Speaker 01:
It must explain why a primary reference would benefit from the features of a secondary reference.

[00:06:27] Speaker 01:
Here, the board failed to do that with respect to certain combinations.

[00:06:32] Speaker 01:
With respect to the combination of Goodman and Asada, the board found that Goodman would benefit from Asada's

[00:06:38] Speaker 01:
reduction of motion artifacts and benefit from Asada's wireless features.

[00:06:44] Speaker 01:
However, Goodman itself doesn't need the reduction of motion artifacts.

[00:06:48] Speaker 01:
Goodman is a device used in intensive care unit with patients that are suffering from the disabilitating problems.

[00:06:59] Speaker 01:
But the sensor of Goodman conforms to the skin such that it becomes part of the skin.

[00:07:05] Speaker 01:
The sensor has very low mass and has cutaneous conformance.

[00:07:10] Speaker 01:
The primary electronics of the sensor are actually separated from the sensor itself on the skin, such that Goodman states it eliminates motion artifacts.

[00:07:20] Speaker 01:
Those features eliminate motion artifacts in Goodman.

[00:07:26] Speaker 01:
ASADA, on the other hand, is a wearable device.

[00:07:30] Speaker 01:
that tracks heart rate, but it has relatively high mass and does not have cutaneous conformance.

[00:07:38] Speaker 01:
The board never explains why a person of ordinary skill in the art would add mass to Goodman's sensor, decrease cutaneous conformance, and increase motion artifacts to achieve any purported benefit.

[00:07:53] Speaker 01:
Further, the board never explains why a person of ordinary skill in the art

[00:07:57] Speaker 01:
would want to make Goodman's device wireless when Goodman's device is intended to be used on an intensive care patient.

[00:08:06] Speaker 01:
For example, if I had just suffered a heart attack, why would I want to use a wireless sensor that's battery operated instead of a sensor that's plugged into the wall and is very reliable?

[00:08:18] Speaker 01:
The board never explained that.

[00:08:21] Speaker 01:
Instead, the board just found that the benefits, whatever they are, outweigh the detriments of the combination, but failed to support that finding with any reasoning.

[00:08:31] Speaker 01:
Second, with respect to the combination of Asada, Goodman, and Hicks, the board found that the lens of Hicks would be beneficial to Asada and Goodman to direct or focus light.

[00:08:45] Speaker 01:
As Hicks acknowledges itself, the only time you need a lens is if the substrate doesn't properly direct or focus light.

[00:08:53] Speaker 01:
Neither Asada nor Goodman discussed an issue with needing to direct or focus light more in transmissive PPGs.

[00:09:03] Speaker 01:
ASADA mentions, with respect to reflective PPGs, the need to direct or focus light.

[00:09:09] Speaker 01:
But that's because those types of PPGs suffer short circuits.

[00:09:13] Speaker 01:
Transmissive PPGs do not suffer those same short circuits.

[00:09:17] Speaker 01:
By failing to fully articulate the benefits that the primary references would achieve from the combinations, the board failed to conduct an adequate obviousness analysis.

[00:09:32] Speaker 01:
With respect to the last issue, the denial of Valencel's conditional motion to amend, the board again conducted insufficient obviousness analysis with respect to the combination of Gupta and Asada.

[00:09:50] Speaker 01:
Asada teaches that you would not use a MEMS accelerometer in the device.

[00:09:57] Speaker 01:
Gupta is a MEMS accelerometer.

[00:10:00] Speaker 01:
The board discarded that teaching away evidence based on Keller, which stands for the proposition that the standard for obviousness is not one of bodily incorporation.

[00:10:12] Speaker 01:
Well, that's true.

[00:10:12] Speaker 01:
The standard for obviousness is not one of bodily incorporation.

[00:10:16] Speaker 01:
That doesn't mean you can just disregard completely evidence of a teach away, as this court held in Polaris

[00:10:23] Speaker 01:
Evidence of a teachaway is always relevant, even if it doesn't amount to a teachaway.

[00:10:28] Speaker 01:
The board must consider that evidence as part of its overall analysis of a motivation to combine.

[00:10:37] Speaker 01:
Second, with respect to the board's findings of lack of written description, the board ignored the essence of the underlying specification, as this court held in

[00:10:48] Speaker 01:
the Leyland-Stanford case, it's the essence of the specification that controls not whether the claims map one-to-one with the exact words of the specification.

[00:10:58] Speaker 01:
And here, the board ignored that essence.

[00:11:02] Speaker 01:
The claim covers a signal processor configured to remove motion artifacts using a bandpass sensor to remove a band of frequencies and produce a conditioned signal.

[00:11:17] Speaker 01:
The specification describes a first block that represents a conditioning stage that utilizes a bandpass filter to remove frequency bands outside of a range of interest.

[00:11:30] Speaker 01:
And a second block that accepts that signal, preconditioned signal, from the first block to remove motion artifacts.

[00:11:37] Speaker 01:
It also discloses

[00:11:39] Speaker 01:
that both of those blocks can be encoded in a microprocessor.

[00:11:43] Speaker 01:
That is, in essence, the claim at issue, substitute claim 12.

[00:11:52] Speaker 01:
Finally, with respect to indefiniteness, the board found that several claims were indefinite for lack of antecedent basis.

[00:12:00] Speaker 01:
However, this just ignores how a person of ordinary skill in the art would read the claims.

[00:12:06] Speaker 01:
For example, substitute claim 12

[00:12:08] Speaker 01:
recites motion-related physiological information.

[00:12:12] Speaker 01:
There's not multiple motion-related physiological information disclosed in the claim.

[00:12:17] Speaker 01:
There's only one, and that information is extracted.

[00:12:19] Speaker 02:
Can you tell me where the claims are and where the alleged lack of antecedent basis issues are?

[00:12:27] Speaker 01:
The substitute claim is at appendix 4613.

[00:12:37] Speaker 01:
So the issue I was just discussing about the bandpass filter reduction of motion artifacts, that's on 4613.

[00:13:00] Speaker 01:
And then the claim, so the issue in this claim with respect to the antecedent basis is the extraction of physiological motion related information and then later a reference to a string comprising motion related and physiological information.

[00:13:19] Speaker 01:
It's clearly referring back to the initial motion-related physiological information that's extracted by the processor from the two motion sensors there.

[00:13:30] Speaker 01:
There's really no other way to read it, and there's no evidence that a person of ordinary skill would read it any other way.

[00:13:37] Speaker 03:
I guess this surprised me a little bit because I initially thought this was not indefinite because

[00:13:44] Speaker 03:
It's perfectly clear that there is no restriction on the nature of the multiplexed output serial data string comprising motion related and physiological information because it doesn't say said, but then your position is that in fact there is, it's perfectly clear that there is an implicit restriction.

[00:14:05] Speaker 01:
I'm sorry, an implicit restriction on what?

[00:14:08] Speaker 03:
About what this information is.

[00:14:10] Speaker 03:
Isn't that what the board said?

[00:14:11] Speaker 03:
The board said this is indefinite because we can't tell from the clan language whether the string comprising motion-related and physiological information, whether the information in that string is the same information as was referred to.

[00:14:25] Speaker 03:
And I would have thought from the language, of course, it doesn't have to be the same information as above.

[00:14:30] Speaker 03:
It doesn't say it has to be.

[00:14:31] Speaker 03:
So it's any string of information.

[00:14:35] Speaker 03:
But your position is, no, that's quite wrong.

[00:14:38] Speaker 01:
Well, my position is that those are the same, it's clearly the same piece of information.

[00:14:44] Speaker 01:
There's no disclosure of separate information in the specification.

[00:14:49] Speaker 01:
And although it does maybe flip wording there from motion-related physiological information to physiological and motion-related information,

[00:15:00] Speaker 01:
There's no other physiological emotion-related information that's referred to in the claim as being extracted.

[00:15:07] Speaker 01:
I think it's the same.

[00:15:09] Speaker 01:
With respect to substitute claim 17, the board found that the first through fourth optical emitters lacked an antecedent basis.

[00:15:21] Speaker 01:
However, it's clearly present in the dependent claim.

[00:15:25] Speaker 01:
Substitute claim 17, this is at appendix 4615, depends from claim 16.

[00:15:34] Speaker 01:
wherein at least one optical emitter comprises our first, second, third, and fourth optical emitters.

[00:15:43] Speaker 01:
And finally, with respect to

[00:15:49] Speaker 01:
substitute claim 22, which is actually at the back on page 4637.

[00:15:54] Speaker 01:
The signal processor referred to here is clearly the same signal processor that's referred to in the dependent claim 12, or the claim 12 from which this ultimately depends.

[00:16:09] Speaker 02:
Where's the signal processor?

[00:16:10] Speaker 02:
I'm sorry.

[00:16:11] Speaker 02:
I lost track.

[00:16:12] Speaker 01:
Sorry.

[00:16:13] Speaker 02:
Which claim is it?

[00:16:14] Speaker 01:
Claim 22, and that's on 4637.

[00:16:19] Speaker ?:
OK.

[00:16:19] Speaker 01:
Claim 17 depends from claim 16 not claim 15 Well, so I believe there's a typographical error at the back of this three Which so I'm just looking at 46 36 right and I would direct you to a

[00:16:45] Speaker 01:
And it says the monitoring device of claim 16 were in the first and second optical emitters.

[00:16:54] Speaker 01:
So it's a pinning complex 16 here.

[00:16:56] Speaker 02:
I believe it's a typographical error.

[00:16:57] Speaker 02:
I'm sorry to interrupt you, but how do you know which one the board looked at?

[00:17:01] Speaker 01:
Well, I think the board maybe incorrectly looked at the one with the typographical error.

[00:17:08] Speaker 01:
I mean, it's clear to me when you're looking at this that claim 17 was meant to depend from claim 16 because that's where the optical emitters haven't been seen based.

[00:17:22] Speaker 02:
Which is this chart?

[00:17:24] Speaker 02:
I mean, this part's within the briefing itself, whereas the other one is a claim listing, right?

[00:17:31] Speaker 02:
And so one would think that if they're looking just at the claims, they're probably going to look at that claim listing.

[00:17:38] Speaker 01:
I don't think that the unsolved was bound by the claim listing when there is this detailed explanation of the changes in the brief itself.

[00:17:47] Speaker 01:
I mean, both the listing and this explanation on 46

[00:17:56] Speaker 01:
I mean, one's not separately submitted from the other.

[00:18:01] Speaker 03:
Was there discussion before the board of this typographical disparity?

[00:18:08] Speaker 01:
I don't believe there was due to briefing limitations.

[00:18:11] Speaker 01:
And at the oral hearing, just timing limitations.

[00:18:14] Speaker 01:
But I submit that it's very clear based on- It had to be 16.

[00:18:18] Speaker 01:
It had to be 16.

[00:18:18] Speaker 03:
Because 16 says first, second, third, fourth.

[00:18:20] Speaker 03:
And 17 refers to first, second, and third, and fourth.

[00:18:23] Speaker 01:
Absolutely.

[00:18:24] Speaker 01:
That's our position, Your Honor.

[00:18:25] Speaker 01:
And so I see I'm out of time.

[00:18:27] Speaker 01:
If you have any more questions, please let me know.

[00:18:31] Speaker 01:
Otherwise.

[00:18:31] Speaker 03:
Not just now.

[00:18:32] Speaker 03:
Thank you.

[00:18:35] Speaker ?:
We'll restore the record.

[00:18:37] Speaker ?:
Thank you.

[00:18:54] Speaker 00:
May it please the court

[00:18:55] Speaker 00:
Let's start with the notice issues.

[00:18:59] Speaker 00:
Valencell is incorrect.

[00:19:00] Speaker 00:
Valencell was given the opportunity to address every one of Fitbit's rebuttals at the IPR hearing.

[00:19:07] Speaker 00:
With respect to figure 7a, which the board did not rely upon, there's no reference to figure 7a of Goodman in the final written decision anywhere.

[00:19:16] Speaker 00:
Mr.. Bragg alone villain cells council argued at the IPR hearing that Goodman's figure 7a does not support fit bits in bleak position the board disagreed Villain cells council also addressed figure 11 if the board didn't mention it.

[00:19:30] Speaker 03:
How did the board disagree?

[00:19:33] Speaker 00:
The board disagreed by implicitly by not referring to it and adopting Fitbit's Fitbit's view of figure 2c and and then Goodman invalidates the claims and

[00:19:44] Speaker 02:
Is that your primary position that the board just didn't rely on it because they didn't mention it?

[00:19:48] Speaker 02:
Or do you also argue that the board could have relied on it because it's just rebuttal evidence?

[00:19:53] Speaker 00:
It could have relied upon it, because it was proper rebuttal as well.

[00:19:57] Speaker 00:
It's not referenced in the final written decision, but the board could have relied upon it.

[00:20:02] Speaker 00:
And ultimately, what we do know is in their response, Valencell provided a manipulated figure of 2C that left off the top two layers.

[00:20:13] Speaker 00:
And that was something that couldn't predict what happened.

[00:20:19] Speaker 00:
And in explaining why Valencell's manipulated figure was incorrect,

[00:20:24] Speaker 00:
Fitbit referred to the specification, referred to figure 2C again, and pointed to figure 7A as to another reason why Valencell's arguments and depictions were incorrect.

[00:20:35] Speaker 03:
What's the connection between their providing what you call a manipulated figure and their argument that your petition in relying on 2C was insufficient

[00:20:54] Speaker 03:
because it provided no basis for the assertion that the aperture 24 or the emitter 24 does not fill the aperture.

[00:21:05] Speaker 00:
But it did.

[00:21:06] Speaker 00:
The petition did reference, obviously, figure 2C.

[00:21:09] Speaker 00:
And the petition did explain the reasons why those limitations were met.

[00:21:14] Speaker 03:
So where does the petition explain that 24 doesn't fill the aperture?

[00:21:20] Speaker 03:
I don't believe it specifically says... And if it doesn't fill the aperture, doesn't that mean there's no guide?

[00:21:25] Speaker 00:
No, because there is a guide, because ultimately Goodman discloses directing light.

[00:21:32] Speaker 00:
And so there is a guide, and that's exactly what's shown in Figure 2C in a person of ordinary skill in the art would understand it that way.

[00:21:39] Speaker 00:
And at the end of the day,

[00:21:42] Speaker 00:
What we do know is that the board relied on figure 2C and column 9, lines 39 to 40 of Goodman to reject Valenzel's arguments.

[00:21:51] Speaker 00:
And it doesn't refer to figure 7A, but again, that's not the only reason with respect to, you know, under the Indian Met suit case.

[00:21:58] Speaker 00:
This was proper rebuttal explanation as to why Vail and Sell's arguments were incorrect.

[00:22:05] Speaker 00:
And the specification does discuss allowing light to be directed along a path, right?

[00:22:16] Speaker 00:
And so when we look at the, again, when we look at what happened with respect to figure 7A, they had the opportunity to address it at the hearing.

[00:22:24] Speaker 00:
They did address it at the hearing.

[00:22:27] Speaker 00:
At the end, the board relies on figure 2C and the specification of Goodman to invalidate the claims under Goodman.

[00:22:36] Speaker 00:
When we turn to ASADA, again, the issues fall into two groups.

[00:22:43] Speaker 00:
Whether ASADA discloses windows with light transmissive material, and whether ASADA's prototype B includes components of prototype A.

[00:22:51] Speaker 00:
And in response to Fitbit's identification of the transmissive material in Asada in the original petition, Valenzel presented an argument that the dotted lines in Asada's images were holes in the layer.

[00:23:05] Speaker 00:
And in reply, Fitbit then reiterated its arguments in the petition that Asada's layer three was

[00:23:11] Speaker 00:
the required light transmissive material, and it rebutted the speculation that the dotted lines were apertures.

[00:23:18] Speaker 00:
Layer 3 in ASADA is transmissive.

[00:23:21] Speaker 00:
When you look at the figure 11, the layers 2 and 6 are opaque, but layer 3 is left clear to show that it's light transmissive.

[00:23:30] Speaker 00:
ASADA consistently uses solid lines in the figures to show features that exist, like the apertures in layer 2.

[00:23:39] Speaker 00:
And in Asada, the dash lines are just assembly instructions.

[00:23:43] Speaker 00:
And ultimately, Valencell's counsel ultimately agreed at the IPR hearing that the lines in Asada are just assembly instructions on how those layers are put together.

[00:23:54] Speaker 00:
Again, similarly, under Itamitsu, Fitbit's arguments regarding the dash lines is permissible rebuttal argument.

[00:24:02] Speaker 00:
With respect to prototype B, again, Fitbit presented its theory.

[00:24:08] Speaker 03:
Do I understand right?

[00:24:10] Speaker 03:
Valencell's argument on these matters is only a notice argument.

[00:24:15] Speaker 03:
It's not an argument that there is a lack of substantial evidence for the conclusions, for the findings that the board made about these teachings.

[00:24:24] Speaker 00:
That's correct.

[00:24:25] Speaker 00:
And again, this court can affirm based either on Goodman or Asada.

[00:24:32] Speaker 00:
And here, with respect to prototype B, it presented its theory, Fitbit did, in its original petition that prototype B builds on.

[00:24:40] Speaker 00:
prototype A. It explained that Asada describes, quote, iterations of the pioneering MIT ring.

[00:24:47] Speaker 00:
And then Fitbit walked through these iterations and presented prototype B as, quote, a redesign of the same sensor band that includes a CPU.

[00:24:56] Speaker 00:
And then Fitbit's experts similarly confirmed that prototype B was just a later iteration of the earlier prototypes.

[00:25:02] Speaker 00:
And as I said, Fitbit, Phelancil had notice of Fitbit's positions.

[00:25:08] Speaker 00:
And ultimately, you address this prototype B and A issue at the IPR hearing.

[00:25:15] Speaker 00:
Again, Fitbit at all times pointed to the same disclosure in ASADA for the signal processor and the transmitter limitations that are disclosed in claims six and seven.

[00:25:25] Speaker 00:
Let me turn to the motivation and combine because the board conducted a detailed analysis of the motivation and combine the priority.

[00:25:34] Speaker 00:
The board found that Goodman, Assad, and Hicks all relate to the same fields of art and are generally directed to the same uses.

[00:25:42] Speaker 00:
The board agreed with Fitbit's analysis that all three

[00:25:45] Speaker 00:
are directed to non-invasive optical biosensors.

[00:25:49] Speaker 00:
All three references describe transmissive type PPGs.

[00:25:54] Speaker 00:
Hicks and Goodman both placed sensors on the finger.

[00:25:58] Speaker 00:
The board further found that Assad and Goodman described uses by patients in a hospital setting.

[00:26:03] Speaker 00:
All of these sensors are geared towards detecting health information

[00:26:09] Speaker 00:
and being able to read through motion.

[00:26:11] Speaker 00:
Motion is a constant issue, and there are a lot of patents, and I've stood before this court on other occasions, dealing with motion artifact and pulse oximeters.

[00:26:21] Speaker 00:
And even in an ICU setting, in a hospital setting, with pediatric patients in the ICU, small

[00:26:29] Speaker 00:
Sick kids that are wiggling around and even, you know, adults and others, even in a hospital setting, there's motion that has to be dealt with and each of these patents talks about that.

[00:26:40] Speaker 00:
And so the board also described the concrete benefits for combining the references and the reasons why a person with an ordinary skill in ER would look to these references for any missing elements.

[00:26:51] Speaker 00:
The board also found that Goodman and Osada would benefit from, quote, enhanced lens characteristics that were used in HICS.

[00:27:00] Speaker 00:
And the board found one of ordinary skill would be motivated to modify Goodman to take advantage of the additional motion artifact reduction in Osada.

[00:27:10] Speaker 00:
So where we are is a situation where

[00:27:14] Speaker 00:
As in Novartis, the board was not required to address every piece of evidence cited by Vale and Sell in support of its detriment arguments.

[00:27:23] Speaker 00:
We have two opinions on these two appeals that are quite lengthy, and each of them addresses the motivation to combine, and actually addresses quite a number of the detriment arguments that were raised by Vale and Sell.

[00:27:36] Speaker 00:
So under Ally Directing and Novartis, that's more than enough to affirm the board's findings.

[00:27:43] Speaker 00:
Let me talk about the amended claims briefly.

[00:27:47] Speaker 00:
There are three separate grounds that the board found the amended claims to be invalid on.

[00:27:52] Speaker 00:
Obviousness, written description, and indefiniteness.

[00:27:56] Speaker 00:
To prevail on appeal, Valencell has to show all three bases were incorrect.

[00:28:00] Speaker 00:
And it cannot do so here.

[00:28:02] Speaker 00:
If we look at obviousness, Valencell's counsel argued that Asada teaches away from adding Gupta's MEMS accelerator.

[00:28:11] Speaker 00:
The board rejected Valencell's arguments, specifically because the claims don't require a MEMS accelerometer.

[00:28:18] Speaker 00:
So Valencell's teaching away argument is irrelevant under, again, the Itamitsu case.

[00:28:23] Speaker 00:
And the board ultimately agreed that Valencell's teaching away argument did not apply either.

[00:28:30] Speaker 00:
Finally, the board didn't rely on adding Gupta's MEMS accelerator to Asada.

[00:28:35] Speaker 00:
So again, the teaching away argument is not relevant.

[00:28:38] Speaker 00:
Instead, what the board did was it

[00:28:40] Speaker 00:
The board's combination implements Gupta's multiplexing that used hardware that was already found in Asada.

[00:28:48] Speaker 00:
If we look at the written description issues, again, the board's factual determination on that is entitled to deference under the Inray Owens case.

[00:28:59] Speaker 00:
And amended independent claim 12 requires reducing motion artifacts that use at least one bandpass filter.

[00:29:08] Speaker 00:
But the bandpass filter described in the specification of column 25, lines 44 to 45, doesn't reduce motion artifact.

[00:29:15] Speaker 00:
That's performed by a different filter, an adaptive filter that is separate and it's described at column 25, lines 48 to 51.

[00:29:26] Speaker 00:
Therefore, amended independent claim also requires reducing motion artifacts that use at least one bandpass filter.

[00:29:35] Speaker 00:
And that doesn't match up with what's described in the specification.

[00:29:40] Speaker 00:
So if we look at the indefiniteness issues, again, extracting physiological motion-related information in claim 12, and then at the bottom, it then refers to a data string comprising.

[00:29:52] Speaker 00:
And I think counsel for Vale and Sell identified the real issue here.

[00:29:57] Speaker 00:
I mean, these claims, as we all know, are written for a person of ordinary skill in the art.

[00:30:03] Speaker 00:
And I heard him say,

[00:30:04] Speaker 00:
that, of course, it's the same.

[00:30:06] Speaker 00:
It's the only way to read it.

[00:30:08] Speaker 02:
What about the other claim where the claim seems to refer back to claim 16, which then discusses the first, second, third, and fourth emitters?

[00:30:20] Speaker 02:
That doesn't seem to be a problem.

[00:30:22] Speaker 02:
Why is that a problem?

[00:30:23] Speaker 00:
I believe that there is also vague antecedent basis with respect to those claims as well.

[00:30:30] Speaker 00:
Because I don't think that they identify what the first, second, third, fourth emitters are.

[00:30:35] Speaker 03:
Do you agree that that claim depends on 16, not 15?

[00:30:42] Speaker 00:
Can I have one moment?

[00:30:43] Speaker 00:
I think I have the answer, but I want to be correct.

[00:30:46] Speaker 03:
It depends which page of the appendix you look at, doesn't it?

[00:30:55] Speaker 03:
Yes.

[00:30:56] Speaker 03:
OK.

[00:30:56] Speaker 03:
Did the board recognize that or not recognize that?

[00:31:01] Speaker 00:
I'm not 100% sure.

[00:31:03] Speaker 03:
I know you're like four layers down or three layers or something, but still.

[00:31:08] Speaker 00:
For sure.

[00:31:09] Speaker 00:
It's not clear to me the board recognized that.

[00:31:11] Speaker 02:
I really don't understand.

[00:31:13] Speaker 02:
And I understand we're several layers down.

[00:31:15] Speaker 02:
So you don't have to answer this.

[00:31:16] Speaker 02:
But I understand why the language, we're in the first and second optical emitters,

[00:31:23] Speaker 02:
emit infrared light, and the third and fourth optical emitters emit visible light.

[00:31:28] Speaker 02:
It doesn't have an antecedent basis.

[00:31:29] Speaker 02:
And that claim refers back to a claim that says we're in the at least one optical emitter comprises first, second, third, and fourth optical emitters.

[00:31:36] Speaker 02:
I don't see the argument at all.

[00:31:38] Speaker 02:
If you want to respond to that and tell me why it's indefinite, I'm happy to hear you.

[00:31:51] Speaker 00:
Because, and let me just say,

[00:31:55] Speaker 00:
There are arguments that I've articulated that I think are more forceful arguments as to why this court's opinion should be affirmed.

[00:32:05] Speaker 00:
And if we look at that particular issue, there are arguments that I think, with respect to what was done with the dependency and claim 15, but I'm going to take your offer not to answer it.

[00:32:22] Speaker 00:
Sit down unless your honors have any other questions.

[00:32:38] Speaker 03:
With three minutes.

[00:32:39] Speaker 01:
Thank you.

[00:32:40] Speaker 01:
May it please the court.

[00:32:41] Speaker 01:
So I just want to address a few issues here.

[00:32:43] Speaker 01:
Council noted that we had the opportunity to respond to these new arguments from Fitbit's applied oral hearing.

[00:32:49] Speaker 01:
This court has never found that to be sufficient.

[00:32:52] Speaker 01:
We didn't get to submit a new expert declaration to rebut their new expert declaration.

[00:32:58] Speaker 01:
We didn't get a surreply.

[00:33:00] Speaker 01:
And the board ended up relying on those very arguments as part of this decision.

[00:33:04] Speaker 03:
And just remind me, you asked the board for those things?

[00:33:07] Speaker 01:
Oh, yes.

[00:33:08] Speaker 01:
We asked in a teleconference to respond to these new arguments, and the board denied that request.

[00:33:12] Speaker 01:
And the council suggested the board didn't rely on Figure 7A as part of its analysis.

[00:33:18] Speaker 01:
The board clearly adopted Fitbit's entire argument as its own.

[00:33:23] Speaker 01:
I mean, you can't back away from that.

[00:33:24] Speaker 01:
I mean, if the board adopted Fitbit's new argument,

[00:33:29] Speaker 02:
Their argument is because the board didn't actually refer to the Figure 7 that you can't infer that they actually relied on it.

[00:33:36] Speaker 02:
It doesn't expressly refer to that figure at all.

[00:33:39] Speaker 01:
You don't need to refer to the figure in order to have it inform your analysis and rely upon it.

[00:33:44] Speaker 01:
They specifically relied on pages 10 through 13 of Fitbit's reply.

[00:33:49] Speaker 01:
And those were the pages that were Fitbit discussed, Figure 7A.

[00:33:53] Speaker 01:
And they also made the finding that there was separation between the emitter and the end of the aperture.

[00:33:58] Speaker 01:
The only figure that discloses such a separation is figure 7a.

[00:34:03] Speaker 01:
So it must have relied on that figure.

[00:34:05] Speaker 01:
In fact, adopted Fitbit's analysis with respect to that figure and implicitly relied on it.

[00:34:12] Speaker 02:
What is the line between rebuttal argument and presenting a new argument?

[00:34:17] Speaker 01:
Well, so counsel referenced the Itamitsu case.

[00:34:21] Speaker 01:
Itamitsu involves a situation where

[00:34:25] Speaker 01:
The petitioner presented a combination of references.

[00:34:29] Speaker 01:
The patent owner said, oh, no, those teach away from each other.

[00:34:32] Speaker 01:
And then in response, in a proper rebuttal, the petitioner came back and said, oh, no, the references don't teach away.

[00:34:41] Speaker 01:
That's a clear back and forth.

[00:34:43] Speaker 01:
But where you're introducing and relying on new figures from a reference, as Fitbit did here with respect to Figure 7A,

[00:34:52] Speaker 01:
That's improper.

[00:34:53] Speaker 01:
And that was the exact same circumstances as the nuvasive case, where the petitioner switched horses and relied on a new figure from the prior art references to support its prima facie case of obviousness.

[00:35:07] Speaker 01:
That's exactly what happened here.

[00:35:09] Speaker 03:
Can you just point me to the pages in the board's opinion that says that they adopt the petitioner's analysis, and I think you also

[00:35:23] Speaker 03:
said that the board cited certain pages of the reply, maybe 10 to 13.

[00:35:30] Speaker 01:
Yes.

[00:35:31] Speaker 01:
Appendix 17.

[00:35:32] Speaker 01:
Yeah.

[00:35:35] Speaker 01:
Board says at the top of that page, we agree with and adopt petitioner's analysis and Dr. Anthony's testimony.

[00:35:43] Speaker 03:
So that doesn't cite the reply.

[00:35:45] Speaker 01:
Well, it didn't say specifically that it wasn't

[00:35:52] Speaker 03:
Adopting the reply it just says in general what it is Just before that sentence it cites petition 25 to 42 That's just the petition and I exhibit 103 I assume is Anthony's opening declaration or only declaration Opening it wasn't his only submitted so that's not that's just not reply material right that the board says it is a

[00:36:15] Speaker 03:
Adopting.

[00:36:15] Speaker 01:
Well, I disagree that the board is only adopting what it referenced in the prior sentence.

[00:36:20] Speaker 01:
I believe that statement broadly adopts all of Fitbit's arguments.

[00:36:24] Speaker 01:
But the board did rely on the new arguments from the reply on page 19.

[00:36:30] Speaker 01:
It specifically referenced them.

[00:36:32] Speaker 01:
Petitioner argues that in Goodman, light source 24 does not extend entirely through aperture 49.

[00:36:38] Speaker 01:
And there's a space between the emitting surface of the light source and the end of the aperture.

[00:36:42] Speaker 01:
The light interacts with the aperture itself.

[00:36:44] Speaker 01:
Petitioner replies.

[00:36:45] Speaker 01:
the reply at 12, citing the new expert declaration.

[00:36:49] Speaker 01:
And the board accepted that finding as part of its analysis on appendix page 20.

[00:37:00] Speaker 01:
Yeah, and earlier on, Appendix 19, it also cites Petition Reply 11 through 13, as I noted earlier.

[00:37:08] Speaker 04:
So it's not, the board didn't use... Doesn't the Goodman Reference also talk about how its apertures allow light to pass?

[00:37:18] Speaker 01:
Well, sure, and that was Fitbit's original construction of light guiding interface was

[00:37:24] Speaker 01:
that the interface allows light to pass, that's not the same as Valencell's construction of light guiding interface, which is to deliver light along a path.

[00:37:34] Speaker 04:
So regardless of whether... Well, I guess the idea is the apertures can't be completely filled in if they're allowing light to pass.

[00:37:42] Speaker 04:
I guess that's the point.

[00:37:44] Speaker 01:
If the apertures are spaces on each side of the emitter where the emitter sits, then the aperture can allow light to pass because all the light goes, it doesn't even pass through the aperture itself.

[00:38:02] Speaker 01:
It's just where the emitter sits.

[00:38:07] Speaker 01:
So let me address a few other points here.

[00:38:10] Speaker 03:
I think your time has more than expired.

[00:38:13] Speaker 03:
So I thank both parties for their arguments and the case will be submitted.