PTAB Claim Construction Results in Insufficient Evidence to Support Institution

In its Decision to grant institution of inter partes review in Apple Inc. v. Valencell, Inc. (IPR2017-01947, Decision dated Feb. 26, 2018), the PTAB construed the term “adjacent” to have a different meaning than that proposed by the Petitioner in the Petition requesting inter partes review, and based on this claim construction, the PTAB decided that the Petitioner’s evidence in the Petition was insufficient to support institution (although the IPR was instituted on other grounds).

The independent claim at issue reads as follows:

1. A method of monitoring at least one physiological property of an organism, comprising:

directing energy at a target region of the organism and at a region adjacent the target region, wherein the target region comprises more blood flow than the adjacent region;

detecting an energy response signal from the target region and an energy response signal from the adjacent region; and

processing the detected signals to produce an extracted energy response signal, comprising subtracting a signal associated with motion of the organism,

wherein the directing, detecting and processing steps are performed by a device worn by the organism.

The Petitioner argued that the claim term “adjacent” should be construed to allow interpretation in at least two ways: 1) adjacent in a direction of depth into the body, and 2) adjacent in a direction lateral along the surface of the body. In support, the petitioner points to the specification, which states that a feature disposed adjacent another feature may have portions that “overlap or underlie” the adjacent feature. 

The Patent Owner, on the other hand, asserted that the specification supports that, while “adjacent” regions may overlap, they must be laterally adjacent, and that “adjacent” does not include areas that are at entirely disparate depths.

The PTAB determined that, at very least, “adjacent” regions “should be near to each other because, if they are too far apart, it may be difficult to extract the desired signals,” which is both referenced in the specification and is consistent with the dictionary definition.  The section of the specification reciting “overlap or underlie” cited by the Petitioner is also consistent with this definition, and the PTAB decided that the patentee was not being its own lexicographer, and thus, did not support a deviation from the plain and ordinary meaning of the term.  Accordingly, the PTAB concluded that “adjacent” means “situated near, close to, or adjoining.”  

The primary reference in one of the combinations set forth by the Petitioner included a sensor for irradiating light onto a blood vessel and another emitting light that is reflected on a skin surface above the blood vessel.  The Petitioner argued that the blood vessel and the skin surface are the “adjacent” regions of the claim and relied on their claim construction of “adjacent” to support that proposition.  The PTAB, however, notes that the blood vessel “is at some depth below the skin surface,” but the Petition and the expert testimony did not show how the blood vessel and the skin surface are “situated near, close to, or adjoining,” which was the PTAB’s interpretation of “adjacent.”  Accordingly, the PTAB found the Petition to be deficient and did not institute on this point.

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