NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
VALENCELL, INC.,
Appellant
v.
FITBIT, INC.,
Appellee
______________________
2018-2224, 2018-2225
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2017-
00317, IPR2017-00318, IPR2017-01553, IPR2017-01554.
______________________
Decided: September 26, 2019
______________________
DANIEL FLETCHER OLEJKO, Bragalone Conroy PC, Dal-
las, TX, argued for appellant. Also represented by JEFFREY
BRAGALONE, THOMAS WILLIAM KENNEDY, JR., JUSTIN
KIMBLE, JONATHAN H. RASTEGAR.
KEVIN P.B. JOHNSON, Quinn Emanuel Urquhart & Sul-
livan, LLP, Redwood Shores, CA, argued for appellee. Also
represented by MARK YEH-KAI TUNG; SAM STEPHEN STAKE,
OGNJEN ZIVOJNOVIC, San Francisco, CA; HARPER BATTS,
2 VALENCELL, INC. v. FITBIT, INC.
CHRISTOPHER SCOTT PONDER, Sheppard Mullin Richter &
Hampton LLP, Palo Alto, CA.
______________________
Before TARANTO, CHEN, and STOLL, Circuit Judges.
CHEN, Circuit Judge.
Valencell appeals from the final written decisions of
the United States Patent and Trademark Office Patent
Trial and Appeal Board (Board) in the above-captioned in-
ter partes review proceedings (IPRs) that found unpatenta-
ble claims 1–6, 8–16, and 18–20 of
U.S. Patent No.
8,989,830 and claims 1–10 of
U.S. Patent No. 8,886,269.
J.A. 59; J.A. 125. The two patents at issue share a specifi-
cation describing light-based monitoring devices for physi-
ological measurements of a patient’s body. The ’269 and
’830 patents each claim the use of window(s) in a cladding
layer to serve as light-guiding interfaces between an emit-
ter and detector and the subject’s body. ’269 patent at
claim 1; ’830 patent at claims 1, 11. For this appeal, the
relevant unpatentability grounds are various combinations
of a publication by Asada, 1
U.S. Patent No. 4,830,014
(Goodman), and
U.S. Patent No. 6,745,061 (Hicks). We af-
firm.
A. APA and Due Process
Valencell’s primary complaint on appeal alleges that
the Board adopted arguments from petitioner Fitbit’s Re-
ply briefing that were not raised in Fitbit’s petition. But
Valencell fails to identify anything beyond the back and
forth between petitioner and patent owner that is typical
in an adversarial proceeding. Idemitsu Kosan Co. v. SFC
Co.,
870 F.3d 1376, 1381 (Fed. Cir. 2017). First, Valencell
1 H. Harry Asada, Mobile Monitoring with Wearable
Photoplethysmographic Biosensors, IEEE ENGINEERING IN
MEDICINE AND BIOLOGY MAGAZINE, May–June 2003, at 28.
VALENCELL, INC. v. FITBIT, INC. 3
alleges that the Board improperly relied on Goodman’s Fig.
7A in its analysis of the claimed window that serves as a
light-guiding interface. But the Board does not cite to Fig.
7A. Instead, the Board relied on Goodman’s Fig. 2C, which
is the same figure that Fitbit’s petition cited as disclosing
the claimed light-guiding window. Compare J.A. 16–20 (fi-
nal written decision) with J.A. 164–65 (petition). To the
extent that the Board considered Fitbit’s explanation of
why Valencell’s interpretation of Fig. 2C was incorrect in
view of Fig. 7A, the Board was permitted to do so to evalu-
ate whether Fig. 2C—relied upon in the initial petition—
disclosed the claimed light-guiding window.
We are also not persuaded that the Board improperly
considered Fitbit’s rebuttals to Valencell’s arguments that
(1) dotted lines in one of Asada’s layers represent openings
in that layer, and (2) Asada’s prototype B did not contain
the processor and transmitter components disclosed in con-
nection with prototype A. If anything, Valencell is the
party that first raised these issues, and Fitbit was entitled
to counter by explaining why the theories in the initial pe-
tition as to what Asada discloses were correct despite Va-
lencell’s arguments to the contrary.
B. Obviousness over Asada and Goodman
With respect to the combination of Asada and Good-
man, we are not persuaded that the Board erred in finding
that a skilled artisan would be motivated to combine Asada
and Goodman despite the “detriments” that Valencell al-
leged would arise. The Board considered Valencell’s argu-
ment that a skilled artisan would not be motivated to add
more artifact-reducing functionality to Goodman in view of
Goodman’s disclosure that its adhesive-based solution
eliminates motion artifacts. J.A. 104. The Board explained
that Goodman utilizes skin conformance to eliminate a spe-
cific type of motion artifact arising from relative motion be-
tween the device and the wearer’s skin. J.A. 105–06. As
the Board observed based on testimony from Valencell’s
4 VALENCELL, INC. v. FITBIT, INC.
own expert, it was “undisputed that there can be other
types of motion artifacts that may occur besides those due
to the motion of the device relative to the skin.” J.A. 106–
07. Thus, “[t]he need to address different sources of motion
artifacts supports Petitioner’s rationale to combine.” J.A.
107.
The Board further explained that both Goodman and
Asada are similarly used for patient treatment in hospital
settings. J.A. 105; see also J.A. 863 (“For hospital inpa-
tients . . . wearable CV sensors could increase inpatient
comfort and may even reduce the risk of tripping and fall-
ing”); J.A. 870 (describing patient testing with Asada’s pro-
totype B at Massachusetts General Hospital); Goodman at
col. 5, ll. 3–5 (“The present invention is directed to provid-
ing non-invasive, reliable, and continuous monitoring of
the vital signs of a patient requiring intensive care”). The
Board’s conclusion that one of skill would be motivated to
combine Asada and Goodman is supported by substantial
evidence. We have considered the remaining “detriments”
that Valencell alleges would result from combining Asada
and Goodman and do not find them persuasive.
C. Hicks-based Combinations
Valencell’s primary argument against the combination
of Asada and Hicks and the combination of Goodman and
Hicks relies on a passage in Asada explaining differences
between reflective-type photoplethysmographs (PPGs), in
which an emitter and detector are placed on the same side
of, e.g., a subject’s finger, and transmittal-type PPGs where
the emitter and detector are placed on opposite sides of the
finger. J.A. 866. Specifically, Asada discloses that, because
of the relative locations of the emitter and detector, reflec-
tive PPGs are susceptible to short circuit paths through
which light can travel directly from the emitter to the de-
tector, but transmittal-type PPGs do not suffer from this
issue.
Id.
VALENCELL, INC. v. FITBIT, INC. 5
As Valencell theorizes, reflective PPGs benefit from a
lens that focuses light in a specific direction to and from the
body, thus avoiding the short-circuit problem. In Valen-
cell’s view, transmittal-type PPGs are not faced with the
same short-circuit issue and thus can pursue other
tradeoffs such as improving robustness at the expense of
unfocused light. J.A. 866 (explaining that the transmittal
PPG “design allows us to use devices having a weak polar-
ity, which is, in general, more robust against disturb-
ances”). Valencell appears to argue that one would
therefore always opt to improve robustness in transmittal-
type PPGs by omitting a lens. But we agree with the
Board’s finding that a generalized statement discussing
tradeoffs in design does not rise to the level of discouraging
the combination of Asada and Hicks, particularly when
Asada and Hicks each discloses a transmittal PPG and
Hicks explicitly provides a transmittal PPG that includes
a lens. J.A. 28–29; J.A. 870 (disclosing “a transmittal PPG
ring sensor, Prototype B”); Hicks at col. 8, ll. 3–8 (disclosing
LEDs and photodetector “disposed on an opposing surface
of the finger);
id. at col. 13, ll. 39–47 (disclosing a lens struc-
ture used in conjunction with a clear substrate “to properly
direct/focus the light emitted/received by the emitters/de-
tector”); Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157,
1165 (Fed. Cir. 2006) (explaining that “a given course of
action often has simultaneous advantages and disad-
vantages, and this does not necessarily obviate motivation
to combine”).
We have considered Valencell’s remaining arguments
relating to the combination of Asada and Hicks but do not
find them persuasive. The Board’s findings as to motiva-
tion to combine Asada and Hicks are supported by substan-
tial evidence. For similar reasons, the Board’s conclusions
with regards to the combination of Goodman, which is like-
wise directed to a transmittal PPG, see Goodman at col. 9,
ll. 60–64 (describing how light “transilluminates” the
6 VALENCELL, INC. v. FITBIT, INC.
finger as shown in Fig. 4), with Hicks are also supported by
substantial evidence.
D. Valencell’s Contingent Motion to Amend
During the inter partes proceedings of the ’269 patent,
the Board denied Valencell’s motion to amend the ’269
claims because the Board found that Valencell’s substitute
claims were unpatentable as obvious. We review the
Board’s denial of a contingent motion to amend under
5
U.S.C. § 706. Microsoft Corp. v. Proxyconn, Inc.,
789 F.3d
1292, 1306 (Fed. Cir. 2015), overruled on other grounds by
Aqua Prods., Inc. v. Proxyconn, Inc.,
872 F.3d 1290 (Fed.
Cir. 2017) (en banc). We set aside the Board’s action only
if it is “arbitrary, capricious, an abuse of discretion, or oth-
erwise not in accordance with law.”
5 U.S.C. § 706(2)(A).
Valencell argues that the Board erred in finding that
one of skill would be motivated to combine Asada with
Gupta. 2 Specifically, Valencell alleges that the Board did
not consider Valencell’s argument that Asada teaches away
from using Gupta’s MEMS devices. Valencell’s argument
misunderstands the Board’s proposed combination of
Asada and Gupta. The Board did not consider adding
Gupta’s MEMS accelerometer to Asada’s sensor. Rather,
the Board relied on Gupta’s signal processing techniques to
improve Asada’s sensor. J.A. 117–18 (“Gupta’s teachings
of detection of patient falls and multiplexing of signals as
features would have provided a rationale for combination
with Asada’s teachings . . . there is no suggestion of a bodily
incorporation of Gupta’s specific accelerometer as part of
2 G. Sen Gupta, Design of a Low-cost Physiological
Parameter Measurement and Monitoring Device, IMTC
2007 – INSTRUMENTATION AND MEASUREMENT TECHNOLOGY
CONFERENCE, May 1–3, 2007.
VALENCELL, INC. v. FITBIT, INC. 7
the basis for the rationale.”). Thus, Valencell’s argument
against the use of Gupta’s MEMS device lacks merit. 3
CONCLUSION
We have considered Valencell’s remaining arguments
and find them unpersuasive. For the reasons stated above,
we affirm the Board’s conclusion that the challenged
claims of the ’269 and ’830 patents are unpatentable, as
well as the Board’s denial of Valencell’s contingent motion
to amend.
AFFIRMED
3 We therefore need not reach the Board’s conclu-
sions as to written description and indefiniteness issues re-
garding the substitute claims.
