UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`______________
`
`Case IPR2020-01523
`Patent 8,457,703
`______________
`
`PETITIONER’S NOTICE OF APPEAL TO THE
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`
`
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`______________
`
`Case IPR2020-01523
`Patent 8,457,703
`______________
`
`PETITIONER’S NOTICE OF APPEAL TO THE
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`
`
`
`
`
`
`
`Proceeding No.: IPR2020-01523
`Attorney Docket: 50095-0002IP1
`Pursuant to 35 U.S.C. §§ 141(c) and 319, and 37 C.F.R. § 90.2(a), notice is
`
`hereby given that Petitioner Apple Inc. hereby appeals to the United States Court
`
`of Appeals for the Federal Circuit from the Final Written Decision in Case No.
`
`IPR2020-01523 entered April 11, 2022 (Paper 32) (“Final Written Decision”) by
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`the Patent Trial and Appeal Board (“the Board”), and from all underlying orders,
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`decisions, rulings, and opinions related thereto and included therein. This appeal is
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`timely under 35 U.S.C. § 142, 37 C.F.R. § 90.3, Federal Rule of Appellate
`
`Procedure 15(a)(1), and Federal Circuit Rule 15(a)(1).
`
`For the limited purpose of providing the Director with the information
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`required by 37 C.F.R. § 90.2(a)(3)(ii) and Federal Rule of Appellate Procedure
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`15(a)(2)(C), the expected issues on appeal include, but are not necessarily limited
`
`to:
`
`1. The Board’s construction of claim terms of U.S. Patent No. 8,457,703
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`(the “’703 patent”), including the term “processing characteristics,” the
`
`Board’s interpretation of those constructions, and the Board’s application
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`of those constructions to the prior art;
`
`2. The Board’s decision that claims 1–7, 9–18, and 20–24 of the ’703 patent
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`were not shown to be unpatentable under 35 U.S.C. § 103 as obvious
`
`over U.S. Patent No. 5,632,272 to Diab (“Diab”) in view of:
`
`1
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`
`
`Proceeding No.: IPR2020-01523
`Attorney Docket: 50095-0002IP1
`a. U.S. Patent No. 6,293,915 to Amano (“Amano”) for claims 9,
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`10, 12–14, 20, and 22–24;
`
`b. Amano and U.S. Patent No. 6,393,311 (“Edgar”) for claims 11
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`and 21;
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`c. Amano and U.S. Patent No. 6,527,729 (“Turcott”) for claims 1–
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`7, and 15–18;
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`d. The general knowledge of a person of ordinary skill in the art
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`(“GK-POSITA”) for claims 9, 10, 12–14, 20, and 22–24;
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`e. GK-POSITA and Edgar for claims 11 and 21; and
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`f. GK-POSITA and Turcott for claims 1–7, and 15–18.
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`3. The Board’s decision that claims 1–3, 9, 10, 12–17, 20, 22–24 of the ’703
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`patent were not shown to be unpatentable under 35 U.S.C. § 103 as
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`obvious over Amano, alone (for claims 9, 10, 12–14, 20, and 22–24) or in
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`view of Turcott (for claims 1–3, and 15–17);
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`4. All of the Board’s subsidiary findings supporting its determination that
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`claims 1–7, 9–18, and 20–24 of the ’703 patent were not shown to be
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`unpatentable under 35 U.S.C. § 103; the Board’s failure to consider
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`evidence of record properly; the Board’s legal errors in undertaking the
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`obviousness analysis; the Board’s findings that conflict with the evidence
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`of record and are not supported by substantial evidence; and
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`2
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`
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`Proceeding No.: IPR2020-01523
`Attorney Docket: 50095-0002IP1
`5. All other issues decided adversely to Petitioner in any orders, decisions,
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`rulings, or opinions underlying or supporting the Final Written Decision.
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`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a)(1), this notice is being
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`filed with the Director of the U.S. Patent and Trademark Office, and a copy is also
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`being filed with the Board. In addition, pursuant to Federal Circuit Rule 15(a)(1)
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`and 37 C.F.R. § 90.2(a)(2), Petitioner also is electronically filing this notice with
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`the Clerk of the U.S. Court of Appeals for the Federal Circuit, and paying the fee
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`set forth in Federal Circuit Rule 52.
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`
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`Date: June 9, 2022
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`
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`Respectfully submitted,
`
`
`
`/Kim H. Leung/
`W. Karl Renner, Reg. No. 41,265
`Dan Smith, Reg. No. 71,278
`Kim Leung, Reg. No. 64,399
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth St.
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
`
`3
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`
`
`Proceeding No.: IPR2020-01523
`Attorney Docket: 50095-0002IP1
`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on June 9, 2022, a complete and entire copy of this Petitioner’s Notice of
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`Appeal was provided via email to the Patent Owner by serving the correspondence
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`address of record as follows:
`
`Joseph R. Re
`Stephen W. Larson
`Jarom D. Kesler
`Jacob L. Peterson
`
`Knobbe, Martens, Olson, & Bear, LLP
`2040 Main St., 14th Floor
`Irvine,CA 92614
`Email: AppleIPR2020-1523-703@knobbe.com
`
`I hereby certify that, in addition to being filed electronically through the
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`Board’s E2E System, the original version of the foregoing Notice of Appeal was
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`delivered by USPS Certified Mail on June 9, 2022, with the Director of the United
`
`States Patent and Trademark Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`I hereby certify that on June 9, 2022, a true and correct copy of the foregoing
`
`Notice of Appeal, along with a copy of the Institution Decision, was filed
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`4
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`
`
`Proceeding No.: IPR2020-01523
`Attorney Docket: 50095-0002IP1
`electronically with the Clerk’s Office of the United States Court of Appeals for the
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`Federal Circuit, at the following address:
`
`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20005
`
`
`
`
`
`
`
`
`
`
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth St.
`Minneapolis, MN 55402
`(617) 956-5938
`
`
`5
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 32
`Date: April 11, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01523
`Patent 8,457,703 B2
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`COCKS, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Dismissing Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`
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`IPR2020-01523
`Patent 8,457,703 B2
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`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) pursuant to
`35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1–7, 9–
`18, and 20–24 (“challenged claims”) of U.S. Patent No. 8,457,703 B1
`(Ex. 1001, “the ’703 patent”). We instituted the petitioned review (Paper 7).
`Masimo Corporation (“Patent Owner”) filed a Patent Owner Response
`(Paper 15, “PO Resp.”) to oppose the Petition. Petitioner filed a Reply
`(Paper 18, “Pet. Reply”) to the Patent Owner Response. Patent Owner filed
`a Sur-reply (Paper 20, “Sur-reply”) to the Reply. Patent Owner filed a
`Motion to Exclude Petitioner’s Evidence (Paper 25). Petitioner filed an
`Opposition to the Motion to Exclude (Paper 26). Patent Owner filed a Reply
`(Paper 27) to Petitioner’s Opposition. We conducted an oral hearing on
`January 19, 2022. A transcript has been entered in the record (Paper 31,
`“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(b)(4) and § 318(a). This
`Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R.
`§ 42.73 as to the patentability of claims 1–7, 9–18, and 20–24 of the
`’703 patent. We determine Petitioner has not shown by a preponderance of
`the evidence that those claims are unpatentable.
`
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`B. Related Matters
`The parties identify the following matters related to the ’703 patent:
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`
`(C.D. Cal.) (filed Jan. 9, 2020);
`Apple Inc. v. Masimo Corporation, IPR2020-01520 (PTAB
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,258,265 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01521 (PTAB
`Sept. 2, 2020) (challenging claims of U.S. Patent No. 10,292,628 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01524 (PTAB
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,433,776 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01526 (PTAB
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 6,771,994 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01536 (PTAB
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01538 (PTAB
`Sept. 2, 2020) (challenging claims of U.S. Patent No. 10,588,554 B2); and
`Apple Inc. v. Masimo Corporation, IPR2020-01539 (PTAB
`Sept. 2, 2020) (challenging claims of U.S. Patent No. 10,588,554 B2).
`Pet. 75; Paper 3, 2.
`
`C. The ’703 Patent
`The ’703 patent is titled “Low Power Pulse Oximeter,” and issued on
`June 4, 2013, from U.S. Patent Application No. 16/174,144, filed
`November 13, 2007. Ex. 1001, codes (21), (22), (45), (54). The ’703 patent
`relates to a pulse oximeter that may reduce power consumption in the
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`absence of certain parameters that may be monitored to trigger or override
`the reduced power consumption state. Id. at code (57). “In this manner, a
`pulse oximeter can lower power consumption without sacrificing
`performance during, for example, high noise conditions or oxygen
`desaturations.” Id.
`As depicted below, the low power pulse oximeter has signal
`processor 340 that derives physiological measurements 342, including
`oxygen saturation, pulse rate, and plethysmograph, from input sensor signal
`322. Ex.1001, 4:64–5:10, Figs. 3, 4.
`
`
`Figure 3 above illustrates a top-level block diagram of a low power pulse
`oximeter. Id. at 4:40–41. Signal processor 340 may also derive signal
`statistics 344, such as signal strength, noise, and motion artifact. Id. at 5:14–
`15, Figs. 3, 4. Physiological measurements 342 and signal statistics 344
`may be input into sampling controller 360, which outputs sampling controls
`362 that in turn are used to regulate pulse oximeter power dissipation by
`causing sensor interface 320 to vary the sampling characteristics of sensor
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`port 302 and by causing signal processor 340 to vary its sample processing
`characteristics. Id. at 5:15–27, Figs. 3, 4. According to the ’703 patent,
`power dissipation “is responsive not only to output parameters, such as the
`physiological measurements 342, but also to internal parameters, such as the
`signal statistics 344.” Id. at 5:24–27.
`The pulse oximeter uses the physiological measurements and signal
`statistics to determine “the occurrence of an event or low signal quality
`condition.” Ex. 1001, 6:25–28. An event determination is based upon the
`physiological measurements and “may be any physiological-related
`indication that justifies the processing of more sensor samples and an
`associated higher power consumption level, such as an oxygen desaturation,
`a fast or irregular pulse rate or an unusual plethysmograph waveform.” Id.
`at 6:28–34. A low signal quality condition is based upon the signal statistics
`and “may be any signal-related indication that justifies the processing or
`more sensor samples and an associated higher power consumption level,
`such as a low signal level, a high noise level or motion artifact.” Id. at 6:34–
`41.
`
`The pulse oximeter “utilizes multiple sampling mechanisms to alter
`power consumption.” Ex. 1001, 5:59–61. One sampling mechanism is “an
`emitter duty cycle control” that “determines the duty cycle of the current
`supplied by the emitter drive outputs 482 to both red and IR sensor
`emitters.” Id. at 5:61–66. The sampling mechanisms “modify power
`consumption by, in effect, increasing or decreasing the number of input
`samples received and processed.” Id. at 6:9–11. “Sampling, including
`acquiring input signal samples and subsequent sample processing, can be
`reduced during high signal quality periods and increased during low signal
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`quality periods or when critical measurements are necessary.” Id. at 6:11–
`15. “In conjunction with an intermittently reduced duty cycle or as an
`independent sampling mechanism, there may be a ‘data off’ time period
`longer than one drive current cycle where the emitter drivers . . . are turned
`off.” Id. at 7:8–12. The occurrence of an event or low signal quality
`triggers a higher duty sensor sampling, allowing high fidelity monitoring of
`the event and providing a larger signal-to-noise ratio. Id. at 8:44–57.
`
`D. Illustrative Claims
`Of the challenged claims, claims 1, 9, 12, 15, 20, and 22 are
`independent. Claims 1 and 9 are illustrative and are reproduced below.
`1. A method of managing power consumption during continuous
`patient monitoring by adjusting behavior of a patient monitor, the
`method comprising:
`
`[a] driving one or more light sources configured to emit
`light into tissue of a monitored patient;
`[b] receiving on or more signals from one or more
`detectors configured to detect said light after attenuation by said
`tissue;
`[c] continuously operating a patient monitor at a lower
`power consumption level to determine measurement values for
`one or more physiological parameters of a patient;
`[d]
`comparing
`processing
`characteristics
`predetermined threshold; and
`[e] when said processing characteristics pass said
`threshold, transitioning to continuously operating said patient
`monitor at a higher power consumption level,
`[f] wherein said continuously operating at said lower
`power consumption level comprises reducing activation of an
`attached sensor,
`[g] said sensor positioning said light sources and said
`detectors proximate said tissue.
`
`to
`
`a
`
`6
`
`
`
`a
`
`to
`
`9. A method of managing power consumption during continuous
`patient monitoring by adjusting behavior of a patient monitor, the
`method comprising:
`[a] driving one or more light sources configured to emit
`light into tissue of a monitored patient;
`[b] receiving one or more signals from one or more
`detectors configured to detect said light after attenuation by said
`tissue;
`[c] continuously operating a patient monitor at a lower
`power consumption level to determine measurement values for
`one or more physiological parameters of a patient;
`[d]
`comparing
`processing
`characteristics
`predetermined threshold; and
`[e] when said processing characteristics pass said
`threshold, transitioning to continuously operating said patient
`monitor at a higher power consumption level,
`[f] wherein said continuously operating at said lower
`power consumption level comprises reducing an amount of
`processing by a signal processor.
`Ex. 1001, 11:32–51, 12:5–22 (bracketed identifiers [a]–[g] and [a]–[f]
`added).
`Independent claim 12 is also a method claim that includes similar
`limitations, but its last clause recites “wherein said processing characteristics
`include an override condition.” Id. at 12:29–46. Independent claims 15, 20,
`and 22 are corresponding apparatus claims, each directed to a “patient
`monitor.” Id. at 12:53–67, 13:16–14:3, 14:6–21.
`
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`Edgar
`
`Turcott
`
`E. Evidence Relied Upon
`Petitioner relies on the following references:
`Reference
`Publication/Patent Number
`Diab
`U.S. Patent No. 5,632,272 issued May 27, 1997
`Amano
`U.S. Patent No. 6,293915 B1 issued Sept. 25,
`2001
`U.S. Patent No. 6,393,311 B1 issued May 21,
`2002
`U.S. Patent No. 6,527,729 B1 issued Mar. 4,
`2003
`
`Exhibit
`1007
`1004
`
`1005
`
`1006
`
`
`Pet. 3.
`Petitioner also relies on the declaration testimony of Brian W.
`Anthony, Ph.D. (Exhibit 1003). Patent Owner relies on the declaration
`testimony of Vijay K. Madisetti, Ph.D. (Exhibit 2001).
`
`F. Asserted Grounds
`We instituted trial to determine if claims 1–7, 9–18, and 20–24 are
`unpatentable based upon the following grounds:
`Claims Challenged
`35 U.S.C. §
`9, 10, 12–14, 20, 22–
`103
`24
`11, 21
`103
`1–7, 15–18
`103
`
`References/Basis
`Diab, Amano
`Diab, Amano, Edgar
`Diab, Amano, Turcott
`Diab and “the General
`Knowledge of a [person of
`ordinary skill in the art]” (“GK-
`POSITA”)
`Diab, GK-POSITA, Edgar
`Diab, GK-POSITA, Turcott
`Amano
`Amano, Turcott
`
`9, 10, 12–14, 20, 22–
`24
`
`11, 21
`1–7, 15–18
`9, 10, 12–14, 20, 22–
`24
`1–3, 15–17
`
`103
`
`103
`103
`103
`103
`
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`II. ANALYSIS
`A. Claim Construction
`For petitions filed on or after November 13, 2018, a claim shall be
`construed 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) (2019). The parties offer constructions for the following claim
`terms or phrases (1) “reducing/reduce activation of an attached sensor”
`(claims 1 and 15), and (2) “processing characteristics” (all challenged
`claims). We determine that it is only necessary to consider the meaning of
`“processing characteristics.”
`
`1. “processing characteristics”
`The term “processing characteristics” is one that is required by all of
`the challenged claims. In the body of the Petition, Petitioner offers two
`apparent constructions of the term. In one instance, Petitioner sets forth a
`“limiting interpretation requiring ‘processing characteristics’ to be obtained
`from a signal provided by a photodetector.” Pet. 50 (citing Ex. 1003 ¶ 97).
`In another instance, Petitioner expresses that “the plain meaning of
`‘processing characteristics’ includes characteristics or features obtained from
`or used for processing information.” Id. at 51 (citing Ex. 1003 ¶ 98;
`Ex. 1004, 21:9–49). Dr. Anthony characterizes this “plain meaning”
`construction as constituting “an alternative non-limiting interpretation.”
`Ex. 1003 ¶ 98.
`In its Response, Patent Owner lays out disagreement with Petitioner
`on the construction of “processing characteristics.” Patent Owner contends
`that neither Petitioner nor Dr. Anthony has adequately taken a position as to
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`what is the proper or correct construction of “processing characteristics.”
`Patent Owner indicates that on cross-examination, Dr. Anthony, “admitted
`he had not formed an opinion regarding the correct construction.” PO Resp.
`22 (citing Ex. 2003, 126:13–127:5). Because in Patent Owner’s view, Dr.
`Anthony “never formed an opinion regarding the proper construction,”
`Patent Owner submits that Petitioner’s claim construction positions should
`be regarded with skepticism. See id. at 23. Patent Owner expresses that the
`panel should “construe ‘processing characteristics’ to require that the
`processing characteristics are determined from a signal received from one or
`more detectors configured to detect light.” Id. at 23 (citing Ex. 2001 ¶ 44).
`Notably, Patent Owner likens its proposed construction to “Petitioner’s
`‘limiting construction’” and characterizes that construction as “the plain and
`ordinary meaning” of “processing characteristics,” rather than Petitioner’s
`broader proposed construction of the term. Id. at 24. Patent Owner
`contends that its proposed construction draws supports from the claims
`themselves as well as the Specification of the ’703 patent. Id. at 24–27.
`In particular, Patent Owner notes that all of the challenged claims
`require that one or more signals are received from one or more detectors that
`are configured to detect the light after attenuation by body tissue. Id. at 24
`(referencing independent claims 1, 9, 12, 15, 20, 22). Patent Owner also
`observes that all of the claims require “comparing processing characteristics
`to a predetermined threshold.” Id. Patent Owner reasons the following:
`A POSITA would have understood that the processing
`characteristics are determined from the signal received from the
`detector because (1) the signal received from the detector is the
`only signal referenced in the claims, (2) all data processing in the
`claims depends on the signal from the detector, and (3) as
`discussed herein,
`the specification consistently describes
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`determining the processing characteristics from the signal
`received [from] the detector.
`Id. at 24–25 (citing Ex. 2001 ¶ 46).
`
`Patent Owner also explains that throughout the Specification
`the characteristics that are described and shown as being processed are
`those conveyed via signals from light detectors. Id. at 24–27 (citing
`Ex. 1001, 5:28–30, 5:35–38, 5:40–41, 5:46–48, 11:43–47, 12:16–20,
`12:40–44, 12:62–66, 13:25–41:1, 14:15–19, Fig. 4; Ex. 2001 ¶¶ 43–
`49).
`
`In its Reply, Petitioner characterizes Patent Owner’s proposed
`construction as “unjustifiably limiting.” Pet. Reply 1. In support of its
`view, Petitioner points to claims 4 and 8 that, according to Petitioner, convey
`a more expansive meaning of “processing characteristics.” Specifically,
`Petitioner contends that because claim 4 recites “said processing
`characteristics comprise signal characteristics from one or more light
`sensitive detectors” the claim allegedly would be “meaningless” if
`“processing characteristics are already required to be ‘determined from a
`signal received from one or more detectors.’” Id.
`Claim 8 recites “said processing characteristics include determining
`an estimate of current power consumption and comparing said estimate with
`a target power consumption.” Ex. 1001, 12:1–4. Petitioner contends that
`the meaning of that claim as informed by the Specification is that in
`determining an estimate of current power consumption, the processing
`characteristics are determined from control engine 440 rather than detector
`front-end 490 (i.e., a light detector). Id. at 2–3.
`In its Sur-reply, Patent Owner responds to Petitioner’s interpretation
`of claims 4 and 8 as allegedly informing the meaning of “processing
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`characteristics.” Specifically, with respect to claim 4, Patent Owner argues
`that Petitioner’s understanding of the claim is incorrect, stating the
`following:
`Petitioner assumes the limitation “from one or more light
`sensitive detectors” is the narrowing limitation of claim 4.
`However, Petitioner ignores that claim 4 is narrower than claim 1
`because
`the “processing characteristics comprise signal
`characteristics.” The ’703 patent discloses that processing
`characteristics can include (1) physiological measurements and
`(2) signal statistics, both of which are received from the one or
`more light sensitive detectors. (Ex. 1001, 4:11-27, Figs. 3-4.)
`Claim 4 is limited to signal characteristics (i.e., as opposed to
`physiological measurements).
`
`The clause identified by Petitioner, “from one more light
`sensitive detectors,” supports Masimo’s construction that the
`“processing characteristics” must come “from a signal received
`from one or more detectors configured to detect light.” (See also
`POR 23-27.)
`Sur-reply 4–5.
`
`In connection with claim 8, and the portions of the Specification cited
`by Petitioner in construing the claim, Patent Owner expresses that Petitioner
`is incorrect in its view that a power consumption estimate is not determined
`from a signal received from detector 490. Patent Owner argues “[a]s
`illustrated by the red lines below, the ‘process status calculator 460’ [orange]
`estimates the current power consumption using a signal received from the
`detector front-end 490 [green].” Id. at 5–6. Patent Owner’s annotated
`version of Figure 4 is reproduced below.
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`
`The annotated version of Figure 4 above shows a signal path from detector
`front-end 490 to power status calculator 460. Patent Owner explains that,
`while the signal passes through other processing modules before reaching
`power status calculator 460, the power consumption estimate is still
`“determined from a signal received from one or more detectors [490]
`configured to detect light.” Id. at 6.
`In our view, Patent Owner has the better explanation for what a
`person of ordinary skill in the art would understand from the ’703 patent as
`to what constitutes the “processing characteristics” that factor into the
`patient monitoring described by the claims. In that respect, we agree with
`Patent Owner’s above-noted assessments of the requirements of claims 4
`and 8. Patent Owner persuasively explains that claim 4 does not emerge as
`meaningless based on Patent Owner’s construction of “processing
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`characteristics” but instead claim 4 further refines the understanding of the
`type of processing characteristics that are received from the light detectors,
`i.e., signal characteristics rather than physiological measurements. We also
`share Patent Owner’s view that the understanding of claim 8 taken in the
`context of the Specification (e.g., Fig. 4), establishes that the estimate of
`power consumption is determined based on signals from light detector 490.
`We agree that Petitioner’s views as to how claims 4 and 8 inform the
`meaning of “processing characteristics” lack support and fall short.
`We conclude that it is inconsistent with the ’703 patent to tease out
`the sweeping premise advanced by Petitioner that simply any information
`that is processed, regardless of its source, can constitute the “processing
`characteristics” that are employed as a part of all of the challenged claims to
`monitor a patient based on light signals. Rather, we rely on the written
`description of the ’703 patent as a useful guide in informing the meaning of
`“processing characteristics,” and conclude that the proper understanding of
`the term is that such characteristics are derived from signals from light
`detectors. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005)
`(“It is therefore entirely appropriate for a court, when conducting claim
`construction, to rely heavily on the written description for guidance as to the
`meaning of the claims.”).
`Accordingly, we conclude that, in the context of the ’703 patent,
`“processing characteristics” are determined from a signal received from one
`or more detectors configured to detect light.
`
`2. Other Claim Terms
`Upon consideration of the entirety of the arguments and evidence
`presented, we conclude no further explicit construction of any claim term is
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`needed to resolve the issues presented by the arguments and evidence of
`record. 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. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented 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
`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 skill in the art; and (4) objective evidence of non-
`obviousness.1 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
`evaluating a combination of teachings, we must also “determine whether
`there was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior art
`elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`
`
`1 Neither party presents objective evidence of non-obviousness.
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`In an inter partes review, the petitioner must show with particularity
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). It is
`Petitioner’s burden to show unpatentability by a preponderance of the
`evidence. 35 U.S.C. § 316(e). The burden of persuasion never shifts to
`Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
`1375, 1378 (Fed. Cir. 2015).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`Petitioner identifies the appropriate level of skill in the art as that
`possessed by a person having
`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, including but not limited to physiological
`monitoring technologies or a Master of Science degree in a
`relevant academic discipline with less than a year of related work
`experience in the same discipline.
`Pet. 5 (citing Ex. 1003 ¶ 33).
`Patent Owner does not offer its own assessment of the level of
`ordinary skill. Patent Owner, however, does level a measure of criticism of
`Petitioner’s assessment of the level of skill in the art as being inconsistent
`with Petitioner’s own declarant, Dr. Anthony, in not accounting for
`experience in “non-invasive optical biosensors.” PO Resp. 16–17.
`Nevertheless, Patent Owner expresses that it “applies the asserted level of
`skill identified in the Petition.” Id. at 17 (citing Ex. 2001 ¶ 22). We
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`determine that the Petitioner’s expressed level of ordinary skill in the art is
`consistent with the ’703 patent and the prior art of record. Accordingly, we
`adopt it in this Decision.
`
`D. Ground Based on Diab and Amano
`Petitioner contends that claims 9, 10, 12–14, 20, and 22–24 of the
`’703 patent would have been obvious over the combined teachings of Diab
`and Amano. Pet. 6–28. Patent Owner challenges that obviousness
`contention. See generally PO Resp.; Sur-reply.
`
`1. Overview of Diab (Ex. 1007)
`Diab is a U.S. Patent titled “Signal Processing Apparatus.” Ex. 1007,
`code [54]. Diab discloses a “method and apparatus for analyzing two
`measured signals that are modeled as containing primary and secondary
`portions” particularly with respect to blood oximetry measurements. Id. at
`code [57]. Diab further presents “[a] physiological monitor particularly
`adapted to pulse oximetry oxygen saturation measurement comprises two
`light emitting diodes (LED[]s) which emit light at difference wavelengths to
`produce first and second signals.” Id. at 4:51–54.
`
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`Diab’s Figure 11 is reproduced below:
`
`
`
`Figure 11 above shows “[a] schematic of a physiological monitor for pulse
`oximetry” that “depicts a general hardware block diagram of a pulse
`oximeter 299.” Id. at 34:10–12. Pulse oximeter 299 includes sensor 300
`with light emitters 301 and 302, digital signal processing system 334, and
`display 336. Id. at 34:12–25. Digital signal processing system 334 provides
`outputs to display 336 that may include “blood oxygen saturation, heart rate,
`and a clean plethysmographic waveform.” Id. at 34:25–29.
`
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`Diab’s Figure 14 is reproduced below:
`
`
`
`Figure 14 depicts a “functional block diagram[] of the operations of the
`pulse oximeter 299 carried out by the digital signal processing system 334.”
`Id. at 38:61–63. Data entering processing system 334 undergoes various
`operations including “demodulation” by demodulation module 400,
`“decimation” by decimation module 402, certain statistical calculations by
`statistics module 404, and a “saturation transform” by saturation transform
`module 406. Id. at 38:66–39:10. “The data subjected to the statistics
`operations and the data subjected to the saturation transform operations are
`forwarded to the saturation operations as represented by a saturation
`calculation module 408 and pulse rate operations as represented in a pulse
`rate calcul
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