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` Paper 43
` Entered: February 23, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`IPR2020-01538
`Patent 10,588,554 B2
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`
`
`
`
`Before GEORGE R. HOSKINS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`WIEKER, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`Patent 10,588,554 B2
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`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–7 and 20–28 (“challenged claims”) of U.S. Patent
`No. 10,588,554 B2 (Ex. 1001, “the ’554 patent”). Paper 3 (“Pet.”). Masimo
`Corporation (“Patent Owner”) waived filing a Preliminary Response.
`Paper 7. We instituted an inter partes review of all challenged claims 1–7
`and 20–28 on the sole asserted ground of unpatentability, pursuant to 35
`U.S.C. § 314. Paper 8 (“Inst. Dec.”).
`After institution, Patent Owner filed a Response (Paper 23, “PO
`Resp.”) to the Petition, Petitioner filed a Reply (Paper 27, “Pet. Reply”), and
`Patent Owner filed a Sur-reply (Paper 32, “PO Sur-reply”).1 An oral hearing
`was held on December 7, 2021, and a transcript of the hearing is included in
`the record. Paper 42 (“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons set forth below, Petitioner has met
`its burden of showing, by a preponderance of the evidence, that challenged
`claims 1–7 and 20–28 of the ’554 patent are unpatentable.
`
`B. Related Proceedings
`The parties identify the following matters related to the ’554 patent:
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`(C.D. Cal.) (filed Jan. 9, 2020);
`
`
`1 After the Sur-reply was filed, we authorized Petitioner to file an
`Identification of Testimony. Paper 38.
`2
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`Apple Inc. v. Masimo Corporation, IPR2020-01539 (PTAB Sept. 2,
`2020) (also challenging claims 1–28 of the ’554 patent);
`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, IPR2020-01523 (PTAB Sept. 9,
`2020) (challenging claims of U.S. Patent No. 8,457,703 B2);
`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); and
`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 10,588,553 B2).
`Pet. 3–4; Paper 5, 1–3.
`
`Patent Owner further identifies the following pending patent
`applications, among other issued and abandoned applications, that claim
`priority to, or share a priority claim with, the ’554 patent:
`
`U.S. Patent Application No. 16/834,538;
`
`U.S. Patent Application No. 16/449,143; and
`
`U.S. Patent Application No. 16/805,605.
`
`Paper 5, 1–2.
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`C. The ’554 Patent
`The ’554 patent is titled “Multi-Stream Data Collection System for
`Noninvasive Measurement of Blood Constituents,” and issued on March 17,
`2020, from U.S. Patent Application No. 16/544,713, filed August 19, 2019.
`Ex. 1001, codes (21), (22), (45), (54). The ’554 patent claims priority
`through a series of continuation and continuation-in-part applications to
`Provisional Application Nos. 61/078,228 and 61/078,207, both filed July 3,
`2008. Id. at codes (60), (63).
`The ’554 patent discloses a two-part data collection system including
`a noninvasive sensor that communicates with a patient monitor. Id. at 2:38–
`40. The sensor includes a sensor housing, an optical source, and several
`photodetectors, and is used to measure a blood constituent or analyte, e.g.,
`oxygen or glucose. Id. at 2:29–35, 64–65. The patient monitor includes a
`display and a network interface for communicating with a handheld
`computing device. Id. at 2:45–48.
`Figure 1 of the ’554 patent is reproduced below.
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`Figure 1 illustrates a block diagram of data collection system 100 including
`sensor 101 and monitor 109. Id. at 11:47–58. Sensor 101 includes optical
`emitter 104 and detectors 106. Id. at 11:59–63. Emitters 104 emit light that
`is attenuated or reflected by the patient’s tissue at measurement site 102. Id.
`at 14:3–7. Detectors 106 capture and measure the light attenuated or
`reflected from the tissue. Id. In response to the measured light,
`detectors 106 output detector signals 107 to monitor 109 through front-end
`interface 108. Id. at 14:7–10, 26–32. Sensor 101 also may include tissue
`shaper 105, which may be in the form of a convex surface that: (1) reduces
`the thickness of the patient’s measurement site; and (2) provides more
`surface area from which light can be detected. Id. at 11:2–14.
`Monitor 109 includes signal processor 110 and user interface 112. Id.
`at 15:16–18. “[S]ignal processor 110 includes processing logic that
`determines measurements for desired analytes . . . based on the signals
`received from the detectors.” Id. at 15:21–24. User interface 112 presents
`the measurements to a user on a display, e.g., a touch-screen display. Id. at
`15:46–56. The monitor may be connected to storage device 114 and
`network interface 116. Id. at 15:60–16:11.
`
`The ’554 patent describes various examples of sensor devices.
`Figures 14D and 14F, reproduced below, illustrate detector portions of
`sensor devices.
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`Figure 14D illustrates portions of a detector submount and Figure 14F
`illustrates portions of a detector shell. Id. at 6:44–47. As shown in
`Figure 14D, multiple detectors 1410c are located within housing 1430 and
`under transparent cover 1432, on which protrusion 605b (or partially
`cylindrical protrusion 605) is disposed. Id. at 35:36–39, 36:30–37.
`Figure 14F illustrates a detector shell 306f including detectors 1410c on
`substrate 1400c. Id. at 37:9–17. Substrate 1400c is enclosed by shielding
`enclosure 1490 and noise shield 1403, which include window 1492a and
`window 1492b, respectively, placed above detectors 1410c. Id.
`Alternatively, cylindrical housing 1430 may be disposed under noise
`shield 1403 and may enclose detectors 1410c. Id. at 37:47–48.
`
`Figures 4A and 4B, reproduced below, illustrate an alternative
`example of a tissue contact area of a sensor device.
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`Figures 4A and 4B illustrate arrangements of protrusion 405 including
`measurement contact area 470. Id. at 23:18–24. “[M]easurement site
`contact area 470 can include a surface that molds body tissue of a
`measurement site.” Id. “For example, . . . measurement site contact area
`470 can be generally curved and/or convex with respect to the measurement
`site.” Id. at 23:39–43. The measurement site contact area may include
`windows 420–423 that “mimic or approximately mimic a configuration of,
`or even house, a plurality of detectors.” Id. at 23:49–63.
`
`D. Illustrative Claim
`Of the challenged claims, claims 1 and 20 are independent. Claim 1 is
`illustrative and is reproduced below.
`1. A physiological measurement system comprising:
`[a] a physiological sensor device comprising:
`[b] a plurality of emitters configured to emit light into tissue
`of a user;
`[c] at least four detectors, wherein each of the at least four
`detectors has a corresponding window that allows light
`to pass through to the detector;
`[d] a wall that surrounds at least the at least four detectors;
`and
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`[e] a cover that operably connects to the wall and that is
`configured to be located between tissue of the user and
`the at least four detectors when the physiological
`sensor device is worn by the user, wherein:
`[f] the cover comprises a single protruding convex surface,
`and
`[g] at least a portion of the cover is sufficiently rigid to
`cause tissue of the user to conform to at least a
`portion of a shape of the single protruding convex
`surface when the physiological sensor device is
`worn by the user; and
`[h] a handheld computing device in wireless communication
`with
`the physiological sensor device, wherein
`the
`handheld computing device comprises:
`[i] one or more processors configured to wirelessly receive
`one or more signals from the physiological sensor
`device, the one or more signals responsive to at least
`a physiological parameter of the user;
`[j] a touch-screen display configured to provide a user
`interface,
`
`wherein:
`[k] the user interface is configured to display indicia
`responsive to measurements of the physiological
`parameter, and
`[l] an orientation of the user interface is configurable
`responsive to a user input; and
`[m] a storage device configured to at least temporarily
`store at least the measurements of the physiological
`parameter.
`Ex. 1001, 44:51–45:21 (bracketed identifiers a–m added). Independent
`claim 20 includes limitations substantially similar to limitations [a]–[h] of
`claim 1. Id. at 46:31–52.
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`E. Applied References
`Petitioner relies upon the following references:
`Mendelson, U.S. Patent No. 6,801,799 B2, filed February 6,
`2003, issued October 5, 2004 (Ex. 1012, “Mendelson-799”);
`Ohsaki et al., U.S. Patent Application Publication No.
`2001/0056243 A1, filed May 11, 2001, published December 27, 2001
`(Ex. 1009, “Ohsaki”);
`Schulz et al., U.S. Patent Application Publication No.
`2004/0054291 A1, filed July 31, 2003, published March 18, 2004
`(Ex. 1013, “Schulz”); and
`Y. Mendelson et al., “A Wearable Reflectance Pulse Oximeter
`for Remote Physiological Monitoring,” Proceedings of the 28th IEEE
`EMBS Annual International Conference, 912–915 (2006) (Ex. 1010,
`“Mendelson-2006”).
`Pet. 12.
`Petitioner also submits, inter alia, the Declaration of Thomas W.
`Kenny, Ph.D. (Ex. 1003) and the Second Declaration of Dr. Thomas W.
`Kenny (Ex. 1047). Patent Owner submits, inter alia, the Declaration of
`Dr. Vijay K. Madisetti (Ex. 2004). The parties also provide deposition
`testimony from Dr. Kenny and Dr. Madisetti, including from this proceeding
`and others. See Exs. 1041–1043, 2006–2009, 2027.
`
`F. Asserted Ground of Unpatentability
`We instituted an inter partes review based on the following ground.
`Inst. Dec. 9, 32.
`Claims Challenged
`1–7, 20–28
`
`35 U.S.C. §
`103
`
`References/Basis
`Mendelson-799, Ohsaki,
`Schulz, Mendelson-2006
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`II. DISCUSSION
`
`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). Petitioner submits that no claim term requires express
`construction. Pet. 11. Patent Owner submits that claim terms should be
`given their ordinary and customary meaning, consistent with the
`Specification. PO Resp. 9–10.
`We agree that no claim terms require express construction. Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013,
`1017 (Fed. Cir. 2017).
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) 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
`nonobviousness.2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`When evaluating a combination of teachings, we must also “determine
`
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`2 Patent Owner has not presented objective evidence of non-obviousness.
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`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
`elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`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). 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). To
`prevail, Petitioner must support its challenge by a preponderance of the
`evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`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.”
`Pet. 10–11 (citing Ex. 1003 ¶¶ 1–18, 20–21). “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.” Id. at 11.
`Patent Owner makes several observations regarding Petitioner’s
`identified level of skill in the art but, “[f]or purposes of this proceeding,
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`[Patent Owner] nonetheless applies Petitioner’s asserted level of skill.” PO
`Resp. 10.
`We adopt Petitioner’s assessment as set forth above, which appears
`consistent with the level of skill reflected in the Specification and prior art.
`
`D. Obviousness over the Combined Teachings of
`Mendelson-799, Ohsaki, Schulz, and Mendelson-2006
`Petitioner contends that claims 1–7 and 20–28 of the ’554 patent
`would have been obvious over the combined teachings of Mendelson-799,
`Ohsaki, Schulz, and Mendelson-2006. Pet. 43–96; see also generally Pet.
`Reply. Patent Owner disagrees. PO Resp. 12–63; see also generally PO
`Sur-reply.
`Based on our review of the parties’ arguments and the cited evidence
`of record, we determine that Petitioner has met its burden of showing by a
`preponderance of the evidence that claims 1–7 and 20–28 are unpatentable.
`
` Overview of Mendelson-799 (Ex. 1012)
`
`Mendelson-799 is a U.S. patent titled “Pulse Oximeter and Method of
`Operation,” and discloses a sensor for non-invasive measurement of a blood
`parameter, which includes a sensor housing, a radiation source, and a
`detector. Ex. 1012, codes (54), (57).
`Figure 7 of Mendelson-799 is reproduced below.
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`Figure 7 illustrates optical sensor 10 with light source 12, which includes
`three closely spaced light emitting elements 12a, 12b, 12c. Id. at 9:22–28.
`Optical sensor 10 includes an array of discrete detectors, i.e., “far”
`detectors 16 and “near” detectors 18, “arranged in two concentric ring-like
`arrangements . . . surrounding the light emitting elements.” Id. at 9:29–34.
`“[L]ight shield 14 is positioned between the photodiodes and the light
`emitting elements, and prevents direct optical coupling between them,
`thereby maximizing the fraction of backscattered light passing through the
`arterially perfused vascular tissue in the detected light.” Id. at 9:35–40.
`Sensor housing 17 accommodates the light source, light shield, and
`detectors. Id. at 9:34–35.
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`Figure 8 of Mendelson-799 is reproduced below.
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`Figure 8 illustrates a block diagram of pulse oximeter 20 using sensor 10.
`Id. at 10:16–17. Pulse oximeter 20 includes control unit 21, with electronic
`block 22 connectable to sensor 10, microprocessor 24, and display 26, which
`presents measurement results. Id. at 10:17–22. “The measured data (i.e.,
`electrical output of the sensor 10 indicative of the detected light) is directly
`processed in the block 22, and the converted signal 25 is further processed
`by the microprocessor 24.” Id. at 10:22–25.
`
` Overview of Ohsaki (Ex. 1009)
`
`Ohsaki is a U.S. patent application publication titled “Wristwatch-type
`Human Pulse Wave Sensor Attached on Back Side of User’s Wrist,” and
`discloses an optical sensor for detecting a pulse wave of a human body.
`Ex. 1009, code (54), ¶ 3.
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`Figure 1 of Ohsaki is reproduced below.
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`Figure 1 illustrates a cross-sectional view of pulse wave sensor 1 attached on
`the back side of user’s wrist 4. Id. ¶¶ 12, 16. Pulse wave sensor 1 includes
`detecting element 2 and sensor body 3. Id. ¶ 16.
`
`Figure 2 of Ohsaki, reproduced below, illustrates further detail of
`detecting element 2.
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`Figure 2 illustrates a mechanism for detecting a pulse wave. Id. ¶ 13.
`Detecting element 2 includes package 5, light emitting element 6, light
`receiving element 7, and translucent board 8. Id. ¶ 17. Light emitting
`element 6 and light receiving element 7 are arranged on circuit board 9
`inside package 5. Id. ¶¶ 17, 19.
`“[T]ranslucent board 8 is a glass board which is transparent to light,
`and attached to the opening of the package 5. A convex surface is formed
`on the top of the translucent board 8.” Id. ¶ 17. “[T]he convex surface of
`the translucent board 8 is in intimate contact with the surface of the user’s
`skin,” preventing detecting element 2 from slipping off the detecting
`position of the user’s wrist. Id. ¶ 25. By preventing the detecting element
`from moving, the convex surface suppresses “variation of the amount of the
`reflected light which is emitted from the light emitting element 6 and
`reaches the light receiving element 7 by being reflected by the surface of the
`user’s skin.” Id. Additionally, the convex surface prevents penetration by
`“noise such as disturbance light from the outside.” Id.
`
`Sensor body 3 is connected to detecting element 2 by signal line 13.
`Id. ¶ 20. Signal line 13 connects detecting element 2 to drive circuit 11,
`microcomputer 12, and a monitor display (not shown). Id. Drive circuit 11
`drives light emitting element 6 to emit light toward wrist 4. Id. Detecting
`element 2 receives reflected light which is used by microcomputer 12 to
`calculate pulse rate. Id. “The monitor display shows the calculated pulse
`rate.” Id.
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` Overview of Schulz (Ex. 1013)
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`Schulz is a U.S. patent application publication titled “Pulse Oximetry
`Ear Sensor,” and discloses an ear sensor assembly including an emitter pad
`and a detector pad. Ex. 1013, codes (54), (57).
`Figure 19C of Schulz is reproduced below.
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`Figure 19C illustrates an exploded top perspective view of an ear sensor clip.
`Id. ¶ 31. Each sensor clip 1900 includes “opposingly positioned
`housings 1902 and 1903 that house one or more sensor optical components.”
`Id. ¶ 65. Each housing includes respective inward facing shells 1905 and
`1906.3 Id. ¶ 65. “[I]nward facing shells 1905 and 1906 further include
`windows 1919 and 1924 that provide an aperture for transmission of optical
`
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`3 Figure 19C appears to label inward facing shell 1906 as 1916. See id. at
`Fig. 19B.
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`energy to or from a tissue site. Translucent silicone material covers
`windows 1919 and 1924 providing lenses 1920 and 1921.” Id. ¶ 67.
`A “thin sheet of opaque material is located beneath window 1919 or
`1924, and a window in the opaque material provides an aperture for
`transmission of optical energy to or from the tissue site.” Id. ¶ 73. “The
`opaque material blocks light, and the window in the opaque material can be
`sized as needed to block the proper amount of light from entering the
`aperture to, for example, avoid saturation of the light detector.” Id.
`
` Mendelson-2006 (Ex. 1010)
`
`Mendelson-2006 is a journal article titled “A Wearable Reflectance
`Pulse Oximeter for Remote Physiological Monitoring,” and discloses a
`wireless wearable pulse oximeter connected to a personal digital assistant
`(“PDA”). Ex. 1010, 1.4
`Figure 1 of Mendelson-2006 is reproduced below.
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`4 Petitioner cites to the page numbers added to Exhibit 1010, rather than the
`native page numbering that accompanies the article. See, e.g., Pet. 23–25.
`We follow Petitioner’s numbering scheme.
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`Figure 1 illustrates a sensor module attached to the skin (top), and a
`photograph of a disassembled sensor module and receiver module (bottom).
`The sensor module includes an optical transducer, a stack of round printed
`circuit boards, and a coin cell battery. Id. at 2.
`
`Figure 2 of Mendelson-2006 is reproduced below.
`
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`Figure 2 depicts a system block diagram of the wearable, wireless, pulse
`oximeter including the sensor module (top) and the receiver module
`(bottom). Id. The sensor module includes at least one light-emitting diode
`(“LED”), a photodetector, signal processing circuitry, an embedded
`microcontroller, and an RF transceiver. Id. at 1–2. Mendelson-2006
`discloses that a concentric array of discrete photodetectors could be used to
`increase the amount of backscattered light detected by a reflectance type
`pulse oximeter sensor. Id. at 4. The receiver module includes an embedded
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`microcontroller, an RF transceiver for communicating with the sensor
`module, and a wireless module for communicating with the PDA. Id. at 2.
`As a PDA for use with the system, Mendelson-2006 discloses “the HP
`iPAQ h4150 PDA because it can support both 802.11b and Bluetooth™
`wireless communication” and “has sufficient computational resources.” Id.
`at 3. Mendelson-2006 further discloses that
`[t]he use of a PDA as a local terminal also provides a low-cost
`touch screen interface. The user-friendly touch screen of the
`PDA offers additional flexibility. It enables multiple controls to
`occupy the same physical space and the controls appear only
`when needed. Additionally, a touch screen reduces development
`cost and time, because no external hardware is required. . . . The
`PDA can also serve to temporarily store vital medical
`information received from the wearable unit.
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`Id.
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`The PDA is shown in Figure 3 of Mendelson-2006, reproduced below.
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`Figure 3 illustrates a sample PDA and its graphical user interface (“GUI”).
`Id. Mendelson-2006 explains that the GUI allows the user to interact with
`the wearable system. Id. “The GUI was configured to present the input and
`output information to the user and allows easy activation of various
`functions.” Id. “The GUI also displays the subject’s vital signs, activity
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`level, body orientation, and a scrollable PPG waveform that is transmitted by
`the wearable device.” Id. For example, the GUI displays numerical oxygen
`saturation (“SpO2”) and heart rate (“HR”) values. Id.
`
` Independent Claim 1
`
`Petitioner contends that claim 1 would have been obvious over the
`combined teachings of Mendelson-799, Ohsaki, Schulz, and Mendelson-
`2006. Pet. 43–69. Below, we set forth how the combination of prior art
`references teaches or suggests the claim limitations that are not disputed by
`the parties. For those limitations and reasons for combining the references
`that are disputed, we examine each of the parties’ contentions and then
`provide our analysis.
`
`i. “A physiological measurement system comprising”
`The cited evidence supports Petitioner’s undisputed contention that
`the combination of Mendelson-799, Ohsaki, Schulz, and Mendelson-2006
`satisfies the subject matter of the preamble.5 Pet. 43–45; see, e.g., Ex. 1012,
`code (57), 7:25–8:13, 8:37–41, 9:22–40, 10:16–22, Fig. 7 (sensor device), 8;
`Ex. 1010, 1–4, Fig. 3 (handheld computing device); Ex. 1003 ¶¶ 102–115.
`
`ii. “[a] a physiological sensor device comprising”
`The cited evidence supports Petitioner’s undisputed contention that
`Mendelson-799 discloses a physiological sensor device including sensor 10
`and pulse oximeter 20. Pet. 46; see, e.g., Ex. 1012, code (57) (“A sensor for
`use in an optical measurement device.”), 9:22–40 (describing sensor 10),
`10:16–30 (describing pulse oximeter 20, including sensor 10), Figs. 7–8.
`
`
`5 Whether the preamble is limiting need not be resolved because Petitioner
`shows sufficiently that the preamble’s subject matter is satisfied by the art.
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`iii. “[b] a plurality of emitters configured to emit light into tissue of a user”
`The cited evidence supports Petitioner’s undisputed contention that
`Mendelson-799 discloses a plurality of light emitting elements 12a–c that
`emit light into a user’s tissue. Pet. 46–47; see, e.g., Ex. 1012, 9:22–40 (“The
`sensor 10 comprises . . . light source 12 composed of three closely spaced
`light emitting elements (e.g., LEDs or laser sources) 12a, 12b and 12c
`generating light of three different wavelengths.”), Fig. 7.
`
`iv. “[c] at least four detectors,
`wherein each of the at least four detectors has a corresponding window
`that allows light to pass through to the detector”
`Petitioner’s Undisputed Contentions
`
`Petitioner contends that Mendelson-799 discloses twelve
`photodetectors located within a sensor housing. Pet. 48. Patent Owner does
`not dispute this contention, and we agree with Petitioner. Mendelson-799
`discloses that “sensor 10 comprises . . . an array of discrete detectors (e.g.,
`photodiodes),” including six far detectors 16 and six near detectors 18. See,
`e.g., Ex. 1012, 9:22–40, Fig. 7.
`Petitioner does not contend that Mendelson-799 discloses the claimed
`windows. Rather, Petitioner contends that Schulz teaches “a sensor
`featuring ‘a thin sheet of opaque material’ placed inside the sensor’s housing
`. . . with ‘a window in the opaque material provid[ing] an aperture for
`transmission of optical energy to or from the tissue site,” wherein the opaque
`material blocks light and avoids saturation of the sensor’s detectors. Pet. 32
`(quoting Ex. 1013 ¶ 73). Patent Owner does not dispute this contention, and
`we agree with Petitioner. Schulz discloses that a “thin sheet of opaque
`material” can be placed between the optical components of the sensor and
`
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`the sensor’s housing. Ex. 1013 ¶ 73. Schulz explains that the opaque
`material includes a window that allows for transmission of optical energy to
`the detector. Id. According to Schulz, the “opaque material blocks light,
`and the window in the opaque material can be sized as needed to block the
`proper amount of light from entering the aperture to, for example, avoid
`saturation of the light detector.” Id.
`
`Petitioner’s Disputed Contentions
`
`Petitioner further contends that a person of ordinary skill in the art
`would have been motivated “to add a layer of opaque material” to
`Mendelson-799’s sensor, as taught by Schulz, “and to size windows in the
`opaque material as appropriate to avoid saturation of each of the sensor’s
`detectors.” Pet. 33 (citing, e.g., Ex. 1003 ¶¶ 93–101), 49 (citing, e.g.,
`Ex. 1003 ¶¶ 122–131). According to Petitioner, errors are reduced by
`minimizing the amount of ambient light that reaches the detectors, for
`example, by decreasing the angle of incidence to the detectors. Id. at 33
`(citing Ex. 1019, 76, 79–80, 94). Petitioner contends that a person of
`ordinary skill in the art would have understood that “Schulz’s opaque layer
`limits errors by decreasing the angle of incidence to the photodiode to that
`enabled by the window included within the layer, and by otherwise
`preventing ambient light from reaching the photodiode.” Id. at 34 (citing,
`e.g., Ex. 1003 ¶¶ 93–97). Petitioner also contends that a skilled artisan
`would have recognized that, when applying Schulz’s teachings to a sensor
`with multiple detectors, multiple windows would have been employed. Id.
`at 34 (citing, e.g., Ex. 1003 ¶ 98).
`To illustrate its proposed modification, Petitioner includes an
`annotated and modified view of Mendelson-799’s Figure 7, as well as an
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`added sectional view, both of which are reproduced below. Pet. 36; see also
`id. at 49 (similar figures with slightly different annotations); Ex. 1003 ¶100.
`
`
`Petitioner’s modified figure and added sectional view depict the sensor of
`Mendelson-799 with an added opaque layer (illustrated in green) having
`windows, as Petitioner contends would have been rendered obvious by
`Schulz.6 Pet. 49.
`
`Patent Owner’s Arguments
`
`Patent Owner argues that a person of ordinary skill in the art would
`not have been motivated to modify Mendelson-799 as proposed because
`adding an opaque layer would decrease signal strength, especially for a
`reflectance pulse oximeter like Mendelson-799, which Patent Owner alleges
`has a weak signal already. PO Resp. 47–48 (citing, e.g., Ex. 2004 ¶¶ 83–
`84); PO Sur-reply 23–24. According to Patent Owner, Schulz uses the
`
`
`6 Petitioner’s annotated figures also include an added opaque wall and an
`added top cover as discussed infra at Sections II.D.5.v and II.D.5.vi.
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`window in the opaque material only to reduce “desired” light to a “proper”
`level, i.e., only to reduce the light generated by the emitter that passes
`through the user’s tissue before reaching the detector, but the window in the
`opaque material does not reduce ambient light. PO Resp. 50 (“Schulz uses a
`separate cover—not the window [in the opaque material]—to block ambient
`light.”) (citing Ex. 1013 ¶ 41); PO Sur-reply 21–23 (citing, e.g., Ex. 2004
`¶¶ 83–88). Thus, according to Patent Owner, use of a windowed opaque
`material in Mendelson-799’s sensor would make its weak signal even
`weaker by limiting the light from the emitter. PO Sur-reply 23. Patent
`Owner argues that decreasing signal strength in this way would have been
`inconsistent with Petitioner’s additional modification to add a convex cover
`to the sensor of Mendelson-799, to increase signal strength. PO Resp. 47–
`48; PO Sur-reply 26; see infra § II.D.5.vi.
`Moreover, Patent Owner argues that the motivation put forth by
`Petitioner—to avoid saturation—is not shown to have been a problem for the
`sensor of Mendelson-799. PO Resp. 47. Patent Owner also argues that
`there were “easier approaches for addressing saturation of the detectors,”
`such as “adjusting gain or LED brightness.” Id. at 48.
`
`Patent Owner also argues aspects of Schulz individually. For
`example, Patent Owner argues that Schulz is directed to an ear sensor, and
`that there are physiological differences in measurement locations that are not
`accounted for by Petitioner. PO Resp. 49 (citing, e.g., Ex. 2004 ¶ 85).
`Additionally, Patent Owner argues that Schulz discloses only a single
`window, not multiple windows as claimed. Id.; PO Sur-reply 26.
`
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`Finally, Patent Owner criticizes