`Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 7
`Date: March 2, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`____________
`
`
`
`Before GEORGE R. HOSKINS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314; 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`I.
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”) has filed a Petition (Paper 2, “Pet.”) pursuant
`
`to 35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1–4,
`
`6–14, and 16–30 of U.S. Patent No. 10,258,265 B1 (“the ’265 patent”).
`
`Masimo Corporation (“Patent Owner”) elected to waive the filing of a
`
`Preliminary Response. See Paper 6; 37 C.F.R. § 42.107 (2019).
`
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`
`the Petition to demonstrate a reasonable likelihood that Petitioner would
`
`prevail with respect to at least one challenged claim, we institute, on behalf
`
`of the Director (37 C.F.R. § 42.4(a)), an inter partes review to determine
`
`whether Petitioner demonstrates by a preponderance of the evidence that
`
`claims 1–4, 6–14, and 16–30 are unpatentable, considering all grounds
`
`asserted in the Petition.
`
`II.
`
`BACKGROUND
`
`A.
`
`Real Parties-in-Interest and Related Proceedings
`
`Petitioner identifies itself as the sole real party-in-interest for
`
`Petitioner. Pet. 104. Patent Owner identifies itself as the sole real
`
`party-in-interest for Patent Owner. Paper 4, 1.
`
`The parties identify one judicial matter as related to this proceeding:
`
`Masimo Corporation et al. v. Apple Inc., Civil Action No. 8:20-cv-
`
`00048-JVS-JDE (C.D. Cal.) (“the parallel district court litigation”).
`
`Pet. 105; Paper 4, 1. We are also aware of several other IPR proceedings
`
`challenging other patents at issue in the parallel district court litigation. See,
`
`e.g., Pet. 105; Paper 4, 3.
`
`2
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`B.
`
`The ’265 Patent
`
`The ’265 patent concerns noninvasive devices and methods for
`
`measuring blood analytes such as glucose, or other physiologically relevant
`
`characteristics such as pulse rate. See Ex. 1001, Abstract, 2:20–30.
`
`Figures 3C and 3E are reproduced below:
`
`
`
`
`
`Figure 3C is a perspective view of sensor 301a, comprising upper emitter
`
`shell 304a pivotally connected to lower detector shell 306a, to sandwich a
`
`person’s finger between the shells. See id. at 5:52–55, 18:39–51. Figure 3E
`
`is a perspective view of detector shell 306b of a different but similar
`
`sensor 301b, showing photodetectors 316 disposed therein. See id. at
`
`5:59–61, 22:21–40 (“The features described with respect to the detector
`
`shell 306b can also be used with the detector shell 306a of the
`
`sensor 301a.”).
`
`3
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`Emitter shell 304a houses various emitter components (not shown in
`
`Figure 3C) such as LEDs, which emit light of different wavelengths, such as
`
`visible light, near infrared light, or infrared light. See id. at 5:3–7, 12:3–12,
`
`13:8–15, 18:40–42, 18:62–63.
`
`Detector shell 306a houses four photodetectors 316, one underneath
`
`each window 320–323 within finger bed 310 formed on top of shell 306a.
`
`See id. at 19:4–5, 19:13–16, 19:38–48. Finger bed 310 includes “a tissue
`
`thickness adjustor or protrusion 305,” which may be interchanged to
`
`correspond to different finger shapes, characteristics, opacity, sizes, and the
`
`like. Id. at 19:29–37.
`
`Sensor 301a operates in the following manner. A person places
`
`a finger on finger bed 310, and upper emitter shell 304a pivots toward lower
`
`detector shell 306a to hold the finger in place, and to shield the interior of
`
`sensor 301a from interference by ambient light. See id. at 16:52–64,
`
`18:43–51, 18:66–19:20. Then, the emitters housed in emitter shell 304a
`
`emit light of different wavelengths, to pass through the person’s finger and
`
`into windows 320–323 within finger bed 310, to reach photodetectors 316.
`
`See id. at 19:38–48. Photodetectors 316 capture and measure the light,
`
`which has been attenuated by the person’s finger tissue, and output
`
`responsive signals to a processor that uses the signals to derive the
`
`concentration of a blood analyte such as glucose, or some other
`
`physiological parameter such as pulse rate. See id. at 2:20–30, 10:30–39,
`
`10:62–11:1, 14:11–19, 15:31–35.
`
`4
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`Another detector subassembly is shown in Figure 14D, reproduced
`
`below:
`
`
`
`Figure 14D illustrates subassembly 1450 including submount 1400c,
`
`cylindrical housing 1430, transparent cover 1432 with protrusion 605b
`
`disposed on it, and four detectors 1410c. See id. at 6:54–55, 36:38–47. The
`
`light focusing properties provided by protrusion 605b advantageously reduce
`
`the number of detectors, or rows of detectors, that are required. See id. at
`
`35:56–36:10; see also id. at Fig. 14B, 36:11–30 (illustrating and describing
`
`function of protrusion 605 to focus light on detector(s) 1410b).
`
`C.
`
`The Claims of the ’265 Patent
`
`The ’265 patent lists thirty claims, including two independent claims,
`
`claims 1 and 26. Ex. 1001, 44:65–47:20. Petitioner challenges all but
`
`claims 5 and 15. We reproduce illustrative claim 1 here:
`
`5
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`1. A noninvasive optical physiological measurement device
`adapted to be worn by a wearer, the noninvasive optical
`physiological measurement device providing an indication
`of a physiological parameter of the wearer comprising:
`
`a plurality of emitters of different wavelengths;
`
`a housing having a surface and a circular wall protruding
`from the surface;
`
`at least four detectors arranged on the surface and spaced
`apart from each other, the at least four detectors configured
`to output one or more signals responsive to light from the
`one or more light emitters attenuated by body tissue, the one
`or more signals indicative of a physiological parameter of
`the wearer; and
`
`a light permeable cover arranged above at least a portion of
`the housing, the light permeable cover comprising a
`protrusion arranged to cover the at least four detectors.
`
`Id. at 44:66–45:15.
`
`D.
`
`Prior Art, Asserted Grounds, and Testimonial Evidence
`
`Petitioner relies on the following eight prior art references. See
`
`Pet. 1–3.
`
`Name
`Reference
`US 2002/0188210 A1
`Aizawa
`US 7,031,728 B2
`Beyer
`Goldsmith US 2007/0093786 A1
`Inokawa
`JP 2006-296564 A
`Lo
`US 2004/0138568 A1
`
`Date
`Exhibit No(s).
`Dec. 12, 2002 1006
`Apr. 18, 2006 1019
`Apr. 26, 2007 1027
`1007 & 10081
`Nov. 2, 2006
`July 15, 2004
`1028
`
`
`1 Exhibit 1007 is the reference, which was published in the Japanese
`language, and Exhibit 1008 is a certified English language translation.
`
`6
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`Name
`Mendelson
`-1988
`
`Mendelson
`-2006
`
`Ohsaki
`
`Reference
`Y. Mendelson, et al.,
`Design and Evaluation of a
`New Reflectance Pulse
`Oximeter Sensor, Medical
`Instrumentation, Vol. 22,
`No. 4, 167–173 (1988)
`Y. Mendelson, et al.,
`A Wearable Reflectance
`Pulse Oximeter for Remote
`Physiological Monitoring,
`Proceedings of the 28th
`IEEE EMBS Annual Int’l
`Conf., 912–915 (2006)
`US 2001/0056243 A1
`
`Date
`Aug. 1988
`
`Exhibit No(s).
`1015
`
`Dec. 26, 20072 1016
`
`Dec. 27, 2001 1014
`
`Petitioner relies on the following eight grounds of unpatentability.
`
`See Pet. 1–2.
`
`Claim(s) Challenged 35 U.S.C. §
`1–4, 6–14, 16, 17,
`19–23, 26–29
`1–4, 6–14, 16, 17,
`19–23, 26–29
`
`103
`
`103
`
`References
`
`Aizawa, Inokawa
`
`Aizawa, Inokawa, Ohsaki
`
`23, 24
`
`23, 24
`
`25
`
`1–4, 6–14, 16–22,
`26–30
`
`23, 24
`
`25
`
`103
`
`103
`
`103
`
`Aizawa, Inokawa, Mendelson-2006
`
`Aizawa, Inokawa, Goldsmith, Lo
`
`Aizawa, Inokawa,
`Mendelson-2006, Beyer
`
`103
`
`Mendelson-1988, Inokawa
`
`103
`
`103
`
`Mendelson-1988, Inokawa,
`Mendelson-2006
`Mendelson-1988, Inokawa,
`Mendelson-2006, Beyer
`
`
`2 This date for Mendelson-2006 is taken from the Petition (page 3).
`
`7
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`Petitioner additionally relies on the declaration testimony of
`
`Thomas W. Kenny, Ph.D. (Exhibit 1003, “the Kenny Declaration”),
`
`provided in support of Petitioner’s contentions of unpatentability.
`
`III. ANALYSIS
`
`A.
`
`Claim Construction
`
`We interpret the ’265 patent claims “using the same claim
`
`construction standard that would be used to construe the claim in a civil
`
`action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). This “includ[es]
`
`construing the claim in accordance with the ordinary and customary
`
`meaning of such claim as understood by one of ordinary skill in the art and
`
`the prosecution history pertaining to the patent.” Id.
`
`Petitioner asserts “no formal claim constructions are necessary in this
`
`proceeding.” Pet. 3.
`
`Upon review of the arguments and evidence presented at this stage of
`
`the proceeding, we determine no explicit construction of any claim term is
`
`needed at the present time. See Nidec Motor Corp. v. Zhongshan Broad
`
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim
`
`terms need to be construed “only to the extent necessary to resolve the
`
`controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999))).
`
`B.
`
`Law of Obviousness
`
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`8
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`
`non-obviousness, if made available in the record.3 See Graham v. John
`
`Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C.
`
`Level of Ordinary Skill in the Art
`
`Petitioner contends a person having ordinary skill in the art pertaining
`
`to the ’265 patent would have “a Bachelor of Science degree in an academic
`
`discipline emphasizing the design of electrical, computer, or software
`
`technologies, in combination with training or at least one to two years of
`
`related work experience with capture and processing of data or information.”
`
`Pet. 3–4; Ex. 1003 ¶¶ 21–22. “Alternatively, the person could have also had
`
`a Master of Science degree in a relevant academic discipline with less than a
`
`year of related work experience in the same discipline.” Pet. 4; Ex. 1003
`
`¶ 21.
`
`For purposes of this Decision, we generally adopt Petitioner’s
`
`assessment as set forth above, which appears consistent with the level of
`
`skill reflected in the ’265 patent and the prior art of record.
`
`
`3 Patent Owner does not present objective evidence of non-obviousness at
`this stage.
`
`9
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`D. Obviousness over Aizawa and Inokawa
`
`Petitioner argues claims 1–4, 6–14, 16, 17, 19–23, and 26–29 of the
`
`’265 patent would have been obvious over Aizawa and Inokawa. Pet. 1–2,
`
`6–48.
`
`We have reviewed Petitioner’s arguments, which are undisputed at the
`
`present time, and the evidence cited by Petitioner. Based on this record, we
`
`conclude Petitioner has demonstrated a reasonable likelihood of prevailing
`
`on its assertions as to at least claim 1. We begin our analysis with brief
`
`summaries of Aizawa and Inokawa, then we address Petitioner’s contentions
`
`as to obviousness.
`
`1.
`
`Aizawa Disclosure
`
`Aizawa discloses a pulse rate detector comprising a sensor worn on a
`
`user’s wrist. Ex. 1006, Abstract. Figures 1(a) and 1(b) are reproduced
`
`below:
`
`
`
`10
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`
`
`Figure 1(a) is a schematic underside view, and Figure 1(b) is a schematic
`
`cross-sectional side view, of pulse rate detector 1 including pulse rate
`
`sensor 2, and belt 7 to be wrapped around a user’s wrist 10. Id. ¶¶ 17, 23,
`
`26. Sensor 2 includes LED 21 which emits near infrared light. Id. ¶¶ 23, 27.
`
`The emitted light enters the user’s wrist 10 and reflects off red corpuscles in
`
`artery 11. Id. ¶ 27. Some of the reflected light is received by four
`
`photodetectors 22 arranged around LED 21. Id. ¶¶ 23, 27. Associated
`
`electronics 3, 4, and 24 gather and process signals from photodetectors 22 to
`
`generate a pulse wave indicative of the user’s pulse, and transmit the pulse
`
`wave to another device (not shown) for display to the user. Id.
`
`Detector 1 includes holder 23 to hold LED 21 and photodetectors 22
`
`in place. Id. ¶ 23. Acrylic transparent plate 6 is disposed between holder 23
`
`and the user’s wrist 10, to improve adhesion between detector 1 and the
`
`user’s wrist 10, and thereby improve the efficiency of detector 1. Id. ¶¶ 23,
`
`26, 30.
`
`11
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`2.
`
`Inokawa Disclosure
`
`Inokawa discloses an optical vital sensor system worn on a user’s
`
`wrist. See Ex. 1008, Abstract, ¶ 56. Figures 1 and 2 are reproduced below:
`
`
`
`Figure 1 is a perspective view, and Figure 2 is a diagrammatic side view, of
`
`an “optical vital sensor” which “is a pulse sensor 1 that is able to sense the
`
`pulse, etc. by being attached, for example, to a person’s . . . wrist” via
`
`wristband 5. Id. ¶¶ 56–57, 119.
`
`12
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`Sensor unit 3 has green LED 21 and infrared LED 23, with a single
`
`photodiode 25 to detect light emitted from both LEDs and reflected from the
`
`wearer’s wrist, as shown by arrows in Figure 2. Id. ¶ 58. The “basic
`
`function of . . . green LED 21 is to sense the pulse from the light reflected
`
`off of the body (i.e.[,] change in the amount of hemoglobin in the capillary
`
`artery), while the . . . infrared LED 23 serves to sense body motion from the
`
`change in this reflected light.” Id. ¶ 59.
`
`Pulse sensor 1 also includes lens 27, which “makes it possible to
`
`increase the light-gathering ability of the LED as well as to protect the LED
`
`or [photodiode 25].” Id. ¶¶ 15, 58.
`
`3.
`
`Claim 1
`
`Petitioner provides arguments and evidence, including the Kenny
`
`Declaration, in support of contending claim 1 is unpatentable as having been
`
`obvious over Aizawa and Inokawa. Pet. 6–29; Ex. 1003 ¶¶ 53–63, 73–99.
`
`a)
`
`Comparing Claim 1 with Aizawa
`
`Petitioner contends Aizawa’s pulse rate detector 1 exhibits several
`
`limitations recited in claim 1. See Pet. 22–29; Ex. 1003 ¶¶ 73–99.
`
`In particular, according to Petitioner, Aizawa’s detector 1 is a
`
`noninvasive optical measurement device adapted to be worn on a wearer’s
`
`wrist, to provide an indication of a physiological parameter of the wearer
`
`(i.e., pulse wave).4 See Pet. 22–23 (citing Ex. 1006, Fig. 2, ¶¶ 2, 26);
`
`Ex. 1003 ¶ 73. Petitioner asserts Aizawa’s detector 1 has a single emitter
`
`
`4 Whether the preamble is limiting need not be resolved at this stage of the
`proceeding because Petitioner shows sufficiently for purposes of institution
`that the recitation in the preamble is satisfied by the prior art.
`
`13
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`(i.e., LED 21) of one wavelength (i.e., near infrared light). See Pet. 6–7,
`
`23–24 (citing Ex. 1006, Abstract, Figs. 1(a)–1(b), ¶¶ 23, 27); Ex. 1003
`
`¶¶ 53–54, 74. Petitioner contends Aizawa’s detector 1 includes a housing
`
`(i.e., holder 23) having a surface and a circular wall protruding from the
`
`surface. See Pet. 24–25 (annotating Ex. 1006, Figs. 1(a) and Fig. 1(b), to
`
`identify the “Housing” in red, the “Surface” in brown, and the “Circular
`
`wall” in purple, and citing id. ¶¶ 23–24); Ex. 1003 ¶¶ 87–88.
`
`Petitioner contends Aizawa’s detector 1 further includes four detectors
`
`(i.e., photodetectors 22) arranged on the housing’s surface and spaced apart
`
`from each other, symmetrically on a circle centered on LED 21. See
`
`Pet. 25–27 (citing Ex. 1006, Figs. 1(a) and 1(b), ¶¶ 24, 29, 32); Ex. 1003
`
`¶¶ 89–90. Petitioner asserts Aizawa’s photodetectors 22 are configured to
`
`output signals responsive to light emitted from LED 21 and attenuated by
`
`the wearer’s body tissue, with the signals being indicative of the wearer’s
`
`pulse wave. See Pet. 27 (citing Ex. 1006 ¶¶ 23, 27, 28); Ex. 1003 ¶ 91.
`
`Petitioner argues Aizawa’s detector 1 has a light permeable cover
`
`(i.e., acrylic transparent plate 6) mounted at detection face 23a of holder 23,
`
`to cover the four photodetectors 22. See Pet. 28 (citing Ex. 1006, Fig. 1(b),
`
`¶ 23); Ex. 1003 ¶ 92.
`
`Patent Owner does not challenge the foregoing contentions at this
`
`stage of the proceeding. We determine these contentions are sufficiently
`
`articulated and supported by the cited evidence to justify institution of trial.
`
`Thus, for purposes of this Decision, we determine Aizawa’s pulse rate
`
`detector 1 exhibits each and every limitation of claim 1, except that it has
`
`only one emitter 21 of near infrared light instead of the claimed “plurality of
`
`14
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`emitters of different wavelengths,” and its cover 6 lacks the claimed
`
`“protrusion.”
`
`b)
`
`Comparing Claim 1 with Inokawa
`
`Petitioner contends Inokawa’s pulse sensor 1 is a noninvasive optical
`
`measurement device adapted to be worn on a wearer’s wrist, to provide an
`
`indication of two physiological parameters of the wearer (i.e., pulse and
`
`body motion). See Pet. 9–10 (citing Ex. 1008, Figs. 1 and 2, ¶¶ 14, 56–59);
`
`Ex. 1003 ¶¶ 59–60. This is accomplished, Petitioner asserts, using light
`
`from green LED 21 to monitor the wearer’s pulse, and using light from
`
`infrared LED 23 to monitor the wearer’s motion, using detector 25. See
`
`Pet. 10 (citing Ex. 1008, Fig. 2, ¶¶ 14, 58–59); Ex. 1003 ¶ 60. According to
`
`Petitioner, using two LEDs 21 and 23 also advantageously permits
`
`Inokawa’s pulse sensor 1 to be mounted within base device 17, which
`
`charges the sensor and downloads vital sign information from the sensor via
`
`LEDs 21 and 23. See Pet. 11–13 (citing Ex. 1008, Figs. 3 and 7, ¶¶ 60,
`
`66–77, 109–111); Ex. 1003 ¶¶ 62–63.
`
`Petitioner asserts Inokawa’s pulse sensor 1 also has a light permeable
`
`cover (i.e., lens 27), which according to Inokawa “makes it possible to
`
`increase the light-gathering ability of the LED as well as to protect the LED
`
`or [photodiode 25].” Pet. 10 (quoting Ex. 1008 ¶ 15, and citing id. ¶ 58);
`
`Ex. 1003 ¶ 61. Petitioner contends lens 27 is a “light permeable cover
`
`comprising a protrusion as recited in claim 1.” Pet. 10–11 (citing Ex. 1008,
`
`Fig. 2); Ex. 1003 ¶¶ 61, 95–96.
`
`Patent Owner does not challenge the foregoing contentions at this
`
`stage of the proceeding. We determine these contentions are sufficiently
`
`15
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`articulated and supported by the cited evidence to justify institution of trial.
`
`Thus, for purposes of this Decision, we determine Inokawa’s pulse sensor 1
`
`includes, as recited in claim 1, a plurality of emitters 21 and 23 of different
`
`wavelengths, and a light permeable cover 27 comprising a protrusion
`
`arranged to cover a light detector 25.
`
`c)
`
`Obviousness of Combining Aizawa and Inokawa
`
`Petitioner contends a person of ordinary skill in the art would have
`
`been motivated to modify Aizawa’s pulse rate detector 1, in light of
`
`Inokawa’s disclosures, by: (1) adding a second emitter to emit light of
`
`different wavelengths, so that Aizawa’s detector 1 can monitor the user’s
`
`body motion for improved pulse detection, and so that the detector can
`
`transmit information more reliably to a base device with less error; and
`
`(2) adding a protrusion to Aizawa’s cover 6 to improve the sensor’s light
`
`detection efficiency. See Pet. 13–22. We consider each modification in
`
`turn.
`
`(1) Plurality of Emitters of Different Wavelengths
`
`Petitioner asserts that, “[w]hile Aizawa contemplates the use of
`
`multiple emitters, Aizawa never specifically identifies the use of multiple
`
`emitters operating at different wavelengths in conjunction with multiple
`
`detectors.” Pet. 17 (citing Ex. 1006 ¶ 33); Ex. 1003 ¶ 74. Inokawa,
`
`meanwhile, in Petitioner’s view, discloses using an infrared LED “to detect
`
`vital signs and transmit vital sign information,” and a separate green LED
`
`“to detect pulse.” Pet. 17 (citing Ex. 1008 ¶¶ 14, 44, 58–59); Ex. 1003 ¶ 75.
`
`Petitioner asserts a person of ordinary skill in the art “would have
`
`recognized Inokawa’s use of two different emitters operating at different
`
`16
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`wavelengths as a desirable configuration that would reap similar benefits for
`
`Aizawa.” Pet. 17; Ex. 1003 ¶ 76. Specifically: “A POSITA would have
`
`recognized, in view of Inokawa, that providing an additional emitter to
`
`Aizawa would allow Aizawa’s device to use its existing infrared LED to
`
`detect body motion while using the added green LED to detect pulse.”
`
`Pet. 17–18 (citing Ex. 1008 ¶ 59), 23–24; see also id. at 18 (“[A] POSITA
`
`would have been motivated and found it obvious to divide the single emitter
`
`of Aizawa . . . into two emitters operating at two different wavelengths.”);
`
`Ex. 1003 ¶¶ 77–78. Further, according to Petitioner, Dr. Kenny testifies that
`
`“[t]he added ability to measure body movement can allow for a more
`
`reliable pulse measurement that takes into account and corrects for
`
`inaccurate readings stemming from body movement.” Pet. 18 (citing
`
`Ex. 1003 ¶ 77)5.
`
`Petitioner provides the following illustrations to portray the proposed
`
`modification of Aizawa’s pulse rate detector 1. See Pet. 18; Ex. 1003 ¶ 77.
`
`
`
`At the left, Petitioner has annotated Aizawa’s Figure 1(b), to identify
`
`Aizawa’s pre-existing single near infrared LED 21 (colored green) in
`
`
`5 We note Dr. Kenny’s testimony in part cites to Exhibit 1010, at 8:45–50.
`See Ex. 1003 ¶ 77. However, the cited passage appears to discuss only a
`single light emitting element, so it provides very little (if any) support for the
`testimony in paragraph 77 of the Kenny Declaration.
`
`17
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`relation to two of Aizawa’s four photodetectors 22 (colored red). At the
`
`right, Petitioner has shown the proposed modification, which would include
`
`two different LED emitters (colored green and purple), operating at two
`
`different wavelengths. See Pet. 18. According to Petitioner, this
`
`modification “merely entails the use of known solutions to improve similar
`
`systems and methods in the same way,” in a predictable fashion and
`
`“without significantly altering or hindering the functions performed by
`
`Aizawa’s sensor.” Pet. 19; Ex. 1003 ¶¶ 78–79. Indeed, according to
`
`Petitioner, “Aizawa itself contemplates the addition of extra emitters, albeit
`
`for a different purpose.” Pet. 19 (citing Ex. 1006 ¶ 33); Ex. 1003 ¶ 78.
`
`As an additional and alternative motivation “for improving Aizawa by
`
`adding a second LED/emitter,” Petitioner contends “Aizawa contemplates
`
`uploading data to a base device yet is silent about how such data
`
`transmission would be implemented, instead leaving such implementation
`
`details to the POSITA.”6 Pet. 19–20 (citing Ex. 1006 ¶¶ 15, 23, 35);
`
`Ex. 1003 ¶¶ 80–81. Inokawa, meanwhile, in Petitioner’s view, discloses
`
`how pulse sensor 1 can transmit data to base device 17 using infrared
`
`LED 23, which advantageously means “it not necessary to use a wireless
`
`communication circuit or to establish connections via communication cable,
`
`which makes it possible to easily transmit vital sign information with few
`
`malfunctions and with a simple structure.” Pet. 19–20 (quoting Ex. 1008
`
`¶ 7, and citing id. at Fig. 3, ¶ 60); Ex. 1003 ¶¶ 81–82.
`
`
`6 Petitioner may somewhat overstate the paucity of Aizawa’s disclosure
`here. Aizawa’s pulse rate detector 1 includes transmitter 4 for uploading
`data to other devices. See Ex. 1006, Fig. 1(b), ¶¶ 15, 23.
`
`18
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`Petitioner concludes: “A POSITA would have been motivated and
`
`found it obvious and straightforward to incorporate Inokawa’s base device
`
`and LED-based data transmission into Aizawa to, for instance, ‘make[] it
`
`possible to transmit vital sign information to the base device 17 accurately,
`
`easily, and without malfunction.’” Pet. 20–21 (quoting Ex. 1008 ¶ 77); id.
`
`at 23–24; Ex. 1003 ¶ 82. This modification would have the additional
`
`advantage, according to Petitioner, of allowing data transmission “in a way
`
`that is wireless (thus avoiding the problems of a physical cable) and that
`
`does not require a separate RF circuit.” Pet. 20–21 (citing Ex. 1008 ¶ 7);
`
`Ex. 1003 ¶ 82.
`
`Moreover, according to Petitioner, Inokawa also “teaches that using
`
`two LEDs further helps improve data transmission accuracy by using the
`
`second LED, such as green LED, to transmit checksum information such
`
`that ‘the accuracy of data can be increased.’” Pet. 21 (citing Ex. 1008,
`
`Fig. 19, ¶¶ 44, 48, 111); Ex. 1003 ¶ 83. In Petitioner’s view, this provides
`
`an additional motivation “to supplement Aizawa’s IR LED/emitter with a
`
`green LED/emitter to, as per Inokawa, improve accuracy of data
`
`transmission from its sensor.” Pet. 21–22; Ex. 1003 ¶ 84.
`
`Petitioner asserts adding a second emitter to Aizawa to achieve the
`
`foregoing data upload benefits disclosed by Inokawa would have “entail[ed]
`
`the use of known solutions to improve similar systems and methods in the
`
`same way,” and simply arranged old elements with each performing the
`
`same function it had been known to perform, with predictable results
`
`“without significantly altering or hindering the functions performed by
`
`Aizawa’s sensor.” Pet. 22; Ex. 1003 ¶ 85.
`
`19
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`Upon review of the foregoing, and based on the present record, we
`
`conclude Petitioner has provided sufficient argument and evidence in
`
`relation to the proposed obviousness of adding a second emitter to emit light
`
`of different wavelengths in Aizawa, in view of Inokawa, to justify institution
`
`of trial.
`
`(2) Cover Comprising Protrusion to Cover Detectors
`
`Petitioner next asserts that while Aizawa indicates its acrylic
`
`transparent plate 6 helps improve detection efficiency, “Aizawa does not
`
`provide much other detail” regarding plate 6, “for instance regarding its
`
`shape.”7 Pet. 13 (citing Ex. 1006 ¶ 30). Petitioner contends a person of
`
`ordinary skill in the art nonetheless would have known how to give plate 6 a
`
`shape to improve detection efficiency. Id. (citing Ex. 1006 ¶¶ 13, 30, 32;
`
`Ex. 1009, 3:46–51); Ex. 1003 ¶ 94.
`
`According to Petitioner: “A POSITA would have looked to Inokawa
`
`to enhance light collection efficiency” in Aizawa’s plate 6, for example by
`
`making it “include a convex protrusion that acts as a lens” like Inokawa’s
`
`lens 27. Pet. 14 (citing Ex. 1008, Fig. 2), 28–29; Ex. 1003 ¶¶ 95–97. Here,
`
`Petitioner cites Inokawa’s description of lens 27 as “mak[ing] it possible to
`
`increase the light-gathering ability of the LED.” Pet. 14 (quoting Ex. 1008
`
`¶ 15); Ex. 1003 ¶ 96. In particular, pursuant to testimony offered by
`
`Dr. Kenny, a person of ordinary skill in the art would have known that
`
`adding a convex protrusion to Aizawa’s plate 6 would “increase the light
`
`
`7 Petitioner may somewhat overstate the paucity of Aizawa’s disclosure
`here. Aizawa illustrates plate 6 as having a flat surface, which Dr. Kenny
`notes in his testimony. See Ex. 1006, Fig. 1(b); Ex. 1003 ¶¶ 93, 94, 97.
`
`20
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`collection efficiency, which would lead to an improved signal-to-noise ratio
`
`(and more reliable pulse detection).” Pet. 14 (citing Ex. 1003 ¶¶ 96–97).
`
`Petitioner provides the following illustrations to portray the proposed
`
`modification of Aizawa’s pulse rate detector 1. See Pet. 15; Ex. 1003 ¶ 97.
`
`
`
`At the left, Petitioner has excerpted and annotated Aizawa’s Figure 1(b), to
`
`identify Aizawa’s pre-existing cover (colored blue) which covers the light
`
`emitter (colored green) and the light detectors (colored red). At the right,
`
`Petitioner has shown the proposed modification of the cover to have a
`
`convex protrusion (colored blue). See Pet. 15. According to Petitioner,
`
`“Inokawa teaches that its cover may be either flat . . . such that ‘the surface
`
`is less prone to scratches,’” as is suggested at the left above, or Inokawa’s
`
`cover may be “in the form of a lens . . . to ‘increase the light-gathering
`
`ability of the LED’” as suggested at the right above. Pet. 15–16 (citing
`
`Ex. 1008, Figs. 16 and 17, ¶¶ 15, 106); Ex. 1003 ¶ 98. Petitioner adds that
`
`Aizawa’s “transparent acrylic material . . . can be readily formed into a
`
`lens-like shape as in Inokawa.” Pet. 16; Ex. 1003 ¶ 99.
`
`Upon review of the foregoing, and based on the present record, we
`
`conclude Petitioner has provided sufficient argument and evidence in
`
`relation to the proposed obviousness of adding a protrusion to Aizawa’s
`
`sensor cover, in view of Inokawa, to justify institution of trial.
`
`21
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`d)
`
`Conclusion as to Claim 1
`
`Based on the arguments and evidence summarized above, which are
`
`undisputed at this preliminary stage of the proceeding, we conclude
`
`Petitioner has demonstrated a reasonable likelihood of prevailing on the
`
`challenge to claim 1 as having been obvious over Aizawa and Inokawa. We,
`
`therefore, institute a review to proceed to a final written decision on that
`
`challenge, based on a fully developed record.
`
`4.
`
`Claims 2–4, 6–14, 16, 17, 19–23, and 26–29
`
`Petitioner provides arguments and evidence, including the Kenny
`
`Declaration, in support of contending claims 2–4, 6–14, 16, 17, 19–23, and
`
`26–29 are unpatentable as having been obvious over Aizawa and Inokawa.
`
`Pet. 29–48; Ex. 1003 ¶¶ 100–138. We have reviewed these arguments and
`
`the cited evidence, and we determine Petitioner has demonstrated a
`
`reasonable likelihood of prevailing as to these contentions.
`
`Moreover, as discussed in detail above, Petitioner has demonstrated a
`
`reasonable likelihood of prevailing on the challenge to claim 1 as having
`
`been obvious over Aizawa and Inokawa. Therefore, pursuant to USPTO
`
`policy implementing the decision in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348
`
`(2018) (“SAS”), we institute as to all claims challenged in the petition and on
`
`all grounds in the petition. See PTAB Consolidated Trial Practice Guide
`
`(Nov. 2019) (“Consolidated Guide”)8, 5–6, 64.
`
`
`8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`22
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`
`We institute review as to whether claims 2–4, 6–14, 16, 17, 19–23,
`
`and 26–29 are unpatentable as having been obvious over Aizawa and
`
`Inokawa.
`
`E. Other Challenges
`
`Petitioner provides arguments and evidence, including the Kenny
`
`Declaration, in support of Petitioner’s various other grounds challenging
`
`various claims of the ’265 patent. Pet. 48–99; Ex. 1003 ¶¶ 139–238. We
`
`have reviewed these arguments and the cited evidence, and we determine
`
`Petitioner has demonstrated a reasonable likelihood of prevailing as to these
`
`contentions. We institute review of all of these challenges. See SAS;
`
`Consolidated Guide, 5–6, 64.
`
`IV. CONCLUSION
`
`For the above reasons, we determine the information presented in the
`
`record establishes there is a reasonable likelihood that Petitioner would
`
`prevail with respect to at least one claim of the ’265 patent challenged in the
`
`Petition. Accordingly, we institute an inter partes review of claims 1–4,
`
`6–14, and 16–30.9
`
`At this preliminary stage, the Board has not made a final
`
`determination with respect to the patentability of the challenged claims or
`
`any underlying factual or legal issue. The Board’s final determination will
`
`be based on the record as developed during the inte
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
