`571-272-7822
`
`Paper 8
`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.
`
`IPR2020-01538
`Patent 10,588,554 B2
`
`
`
`
`
`
`
`
`
`Before GEORGE R. HOSKINS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
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`IPR2020-01538
`Patent 10,588,554 B2
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`I.
`
`INTRODUCTION
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`A. Background
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`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
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`Corporation (“Patent Owner”) waived filing a Preliminary response. Paper 7
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`(“PO Waiver”).
`
`We have authority to determine whether to institute an inter partes
`
`review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review
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`may not be instituted unless it is determined that “the information presented
`
`in the petition filed under section 311 and any response filed under
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`section 313 shows that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Board
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`institutes the trial on behalf of the Director.”).
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`For the reasons provided below and based on the record before us, we
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`determine that Petitioner has demonstrated a reasonable likelihood that
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`Petitioner would prevail in showing the unpatentability of at least one of the
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`challenged claims. Accordingly, we institute an inter partes review on all
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`grounds set forth in the Petition.
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`B. Related Matters
`
`The parties identify the following matters related to the ’554 patent:
`
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
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`(C.D. Cal.) (filed Jan. 9, 2020) (“the parallel district court litigation”);
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`2
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`IPR2020-01538
`Patent 10,588,554 B2
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`Apple Inc. v. Masimo Corporation, IPR2020-01539 (PTAB Sept. 2,
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`2020) (challenging claims 1–28 of the ’554 patent);1
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`
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`Apple Inc. v. Masimo Corporation, IPR2020-01520 (PTAB Aug. 31,
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`2020) (challenging claims of U.S. Patent No. 10,258,265 B1);
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`Apple Inc. v. Masimo Corporation, IPR2020-01521 (PTAB Sept. 2,
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`2020) (challenging claims of U.S. Patent No. 10,292,628 B1);
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`Apple Inc. v. Masimo Corporation, IPR2020-01523 (PTAB Sept. 9,
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`2020) (challenging claims of U.S. Patent No. 8,457,703 B2);
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`Apple Inc. v. Masimo Corporation, IPR2020-01524 (PTAB Aug. 31,
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`2020) (challenging claims of U.S. Patent No. 10,433,776 B2);
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`Apple Inc. v. Masimo Corporation, IPR2020-01526 (PTAB Aug. 31,
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`2020) (challenging claims of U.S. Patent No. 6,771,994 B2);
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`Apple Inc. v. Masimo Corporation, IPR2020-01536 (PTAB Aug. 31,
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`2020) (challenging claims of U.S. Patent No. 10,588,553 B2); and
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`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB Aug. 31,
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`2020) (challenging claims of U.S. Patent No. 10,588,553 B2).
`
`Pet. 3–4; Paper 5, 1–3.
`
`
`1 Pursuant to the Board’s November 2019, Consolidated Trial Practice
`Guide, available at https://www.uspto.gov/TrialPracticeGuideConsolidated,
`Petitioner filed a Notice ranking its two petitions that challenge the
`’554 patent, ranking first the instant proceeding and ranking second
`IPR2020-01539. Paper 2, 2. We decline to exercise discretion to deny
`institution in this case where (1) Patent Owner does not request that we
`exercise discretion to deny due to the presence of multiple petitions,
`(2) the two petitions challenge different, albeit overlapping, claim sets, and
`(3) Petitioner represents that, at the time of the filing, Patent Owner had not
`yet narrowed the claims asserted in the parallel district court litigation.
`Paper 2, 2–3; Ex. 1033 (reduction in claims due after petitions were filed).
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`3
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`Patent Owner further identifies the following pending patent
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`applications, among other issued and abandoned applications, that claim
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`priority to, or share a priority claim with, the ’554 patent:
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`
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`
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`U.S. Patent Application No. 16/834,538;
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`U.S. Patent Application No. 16/449,143; and
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`U.S. Patent Application No. 16/805,605.
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`
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`Paper 5, 1–2.
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`C. The ’554 Patent
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`The ’554 patent is titled “Multi-Stream Data Collection System for
`
`Noninvasive Measurement of Blood Constituents,” and issued on March 17,
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`2020, from U.S. Patent Application No. 16/544,713, filed August 19, 2019.
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`Ex. 1001, codes (21), (22), (45), (54). The ’554 patent claims priority
`
`through a series of continuation and continuation-in-part applications to
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`Provisional Application Nos. 61/078,228 and 61/078,207, both filed July 3,
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`2008. Id. at codes (60), (63).
`
`The ’554 patent discloses a two-part data collection system including
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`a noninvasive sensor that communicates with a patient monitor. Id. at 2:38–
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`40. The sensor includes a sensor housing, an optical source, and several
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`photodetectors, and is used to measure a blood constituent or analyte, e.g.,
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`oxygen or glucose. Id. at 2:29–35, 64–65. The patient monitor includes a
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`display and a network interface for communicating with a handheld
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`computing device. Id. at 2:45–48.
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`4
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`Figure 1 of the ’554 patent is reproduced below.
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`
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`Figure 1 illustrates a block diagram of data collection system 100 including
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`sensor 101 and monitor 109. Id. at 11:47–58. Sensor 101 includes optical
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`emitter 104 and detectors 106. Id. at 11:59–63. Emitters 104 emit light that
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`is attenuated or reflected by the patient’s tissue at measurement site 102. Id.
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`at 14:3–7. Detectors 106 capture and measure the light attenuated or
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`reflected from the tissue. Id. In response to the measured light,
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`detectors 106 output detector signals 107 to monitor 109 through front-end
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`interface 108. Id. at 14:7–10, 26–32. Sensor 101 also may include tissue
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`shaper 105, which may be in the form of a convex surface that: (1) reduces
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`the thickness of the patient’s measurement site; and (2) provides more
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`surface area from which light can be detected. Id. at 11:2–14.
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`Monitor 109 includes signal processor 110 and user interface 112. Id.
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`at 15:16–18. “[S]ignal processor 110 includes processing logic that
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`determines measurements for desired analytes . . . based on the signals
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`received from the detectors.” Id. at 15:21–24. User interface 112 presents
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`the measurements to a user on a display, e.g., a touch-screen display. Id. at
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`15:46–56. The monitor may be connected to storage device 114 and
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`network interface 116. Id. at 15:60–16:11.
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`
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`The ’554 patent describes various examples of sensor devices.
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`Figures 14D and 14F, reproduced below, illustrate sensor devices.
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`
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`Figure 14D illustrates portions of a detector submount and Figure 14F
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`illustrates portions of a detector shell. Id. at 6:44–47. As shown in
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`Figure 14D, multiple detectors 1410c are located within housing 1430 and
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`under transparent cover 1432, on which protrusion 605b (or partially
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`cylindrical protrusion 605) is disposed. Id. at 35:36–39, 36:30–37.
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`Figure 14F illustrates a detector shell 306f including detectors 1410c on
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`substrate 1400c. Id. at 37:9–17. Substrate 1400c is enclosed by shielding
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`enclosure 1490 and noise shield 1403, which include window 1492a and
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`window 1492b, respectively, placed above detectors 1410c. Id.
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`Alternatively, cylindrical housing 1430 may be disposed under noise
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`shield 1403 and may enclose detectors 1410c. Id. at 37:47–48.
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`
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`Figures 4A and 4B, reproduced below, illustrate an alternative
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`example of a tissue contact area of a sensor device.
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`
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`Figures 4A and 4B illustrate arrangements of protrusion 405 including
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`measurement contact area 470. Id. at 23:18–24. “[M]easurement site
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`contact area 470 can include a surface that molds body tissue of a
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`measurement site.” Id. “For example, . . . measurement site contact area
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`470 can be generally curved and/or convex with respect to the measurement
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`site.” Id. at 23:39–43. The measurement site contact area may include
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`windows 420–423 that “mimic or approximately mimic a configuration of,
`
`or even house, a plurality of detectors.” Id. at 23:49–63.
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`D. Illustrative Claim
`
`Of the challenged claims, claims 1 and 20 are independent. Claim 1 is
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`illustrative and is reproduced below.
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`1. A physiological measurement system comprising:
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`[a] a physiological sensor device comprising:
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`[b] a plurality of emitters configured to emit light into tissue
`of a user;
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`[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;
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`[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
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`[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
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`[h] a handheld computing device in wireless communication
`with
`the physiological sensor device, wherein
`the
`handheld computing device comprises:
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`[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;
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`[j] a touch-screen display configured to provide a user
`interface,
`
`wherein:
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`[k] the user interface is configured to display indicia
`responsive to measurements of the physiological
`parameter, and
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`[l] an orientation of the user interface is configurable
`responsive to a user input; and
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`[m] a storage device configured to at least temporarily
`store at least the measurements of the physiological
`parameter.
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`Ex. 1001, 44:51–45:21 (bracketed identifiers a–m added). Independent
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`claim 20 includes limitations substantially similar to limitations [a]–[h] of
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`claim 1. Id. at 46:31–52.
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`E. Applied References
`
`Petitioner relies upon the following references:
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`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).
`
`F. Asserted Ground
`
`Petitioner asserts that claims 1–7 and 20–28 are unpatentable based
`
`upon the following ground:
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`Claims Challenged
`
`35 U.S.C. §
`
`1–7, 20–28
`
`103
`
`References/Basis
`Mendelson-799, Ohsaki,
`Schulz, Mendelson-2006
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`II. DISCUSSION
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`A. Claim Construction
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`For petitions filed on or after November 13, 2018, a claim shall be
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`construed using the same claim construction standard that would be used to
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`construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R.
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`§ 42.100(b) (2019). Petitioner submits that no claim term requires express
`
`construction. Pet. 11.
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`Based on our analysis of the issues in dispute at this stage of the
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`proceeding, we agree that no claim terms require express construction at this
`
`time. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868
`
`F.3d 1013, 1017 (Fed. Cir. 2017).
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`B. Principles of Law
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`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
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`between the subject matter sought to be patented and the prior art are such
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations, including (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of skill in the art; and (4) objective evidence of non-
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`obviousness.2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
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`evaluating a combination of teachings, we must also “determine whether
`
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`2 Patent Owner does not present objective evidence of non-obviousness at
`this stage.
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`there was an apparent reason to combine the known elements in the fashion
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`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
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`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior art
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`elements would have produced a predictable result weighs in the ultimate
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`determination of obviousness. Id. at 416–417.
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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). The
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`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
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`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.
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`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
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`technologies, in combination with training or at least one to two years of
`
`related work experience with capture and processing of data or information.”
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`Id. at 10–11 (citing Ex. 1003 ¶¶ 1–18, 20–21). “Alternatively, the person
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`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.
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`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 Specification and prior art.
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`D. Obviousness over the Combined Teachings of
`Mendelson-799, Ohsaki, Schulz, and Mendelson-2006
`
`Petitioner presents undisputed contentions 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.
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`1. Overview of Mendelson-799 (Ex. 1012)
`
`Mendelson-799 is a U.S. patent titled “Pulse Oximeter and Method of
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`Operation,” and discloses a sensor for non-invasive measurement of a blood
`
`parameter, which includes a sensor housing, a radiation source, and a
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`detector. Ex. 1012, codes (54), (57).
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`Figure 7 of Mendelson-799 is reproduced below.
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`
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`Figure 7 illustrates optical sensor 10 with light source 12, which includes
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`three closely spaced light emitting elements 12a, 12b, 12c. Id. at 9:22–28.
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`Optical sensor 10 includes an array of discrete detectors, i.e., “far”
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`detectors 16 and “near” detectors 18, “arranged in two concentric ring-like
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`arrangements . . . surrounding the light emitting elements.” Id. at 9:29–34.
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`“[L]ight shield 14 is positioned between the photodiodes and the light
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`emitting elements, and prevents direct optical coupling between them,
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`12
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`thereby maximizing the fraction of backscattered light passing through the
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`arterially perfused vascular tissue in the detected light.” Id. at 9:35–40.
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`Sensor housing 17 accommodates the light source, light shield, and
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`detectors. Id. at 9:34–35.
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`Figure 8 of Mendelson-799 is reproduced below.
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`
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`Figure 8 illustrates a block diagram of pulse oximeter 20 using sensor 10.
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`Id. at 10:16–17. Pulse oximeter 20 includes control unit 21, with electronic
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`block 22 connectable to sensor 10, microprocessor 24, and display 26, which
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`presents measurement results. Id. at 10:17–22. “The measured data (i.e.,
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`electrical output of the sensor 10 indicative of the detected light) is directly
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`processed in the block 22, and the converted signal 25 is further processed
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`by the microprocessor 24.” Id. at 10:22–25.
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`2. Overview of Ohsaki (Ex. 1009)
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`Ohsaki is a U.S. patent application publication titled “Wristwatch-type
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`Human Pulse Wave Sensor Attached on Back Side of User’s Wrist,” and
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`discloses an optical sensor for detecting a pulse wave of a human body.
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`Ex. 1009, code (54), ¶ 3. Figure 1 of Ohsaki is reproduced below.
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`
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`Figure 1 illustrates a cross-sectional view of pulse wave sensor 1 attached on
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`the back side of user’s wrist 4. Id. ¶¶ 12, 16. Pulse wave sensor 1 includes
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`detecting element 2 and sensor body 3. Id. ¶ 16.
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`
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`Figure 2 of Ohsaki, reproduced below, illustrates further detail of
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`detecting element 2.
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`Figure 2 illustrates a mechanism for detecting a pulse wave. Id. ¶ 13.
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`Detecting element 2 includes package 5, light emitting element 6, light
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`receiving element 7, and translucent board 8. Id. ¶ 17. Light emitting
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`element 6 and light receiving element 7 are arranged on circuit board 9
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`inside package 5. Id. ¶¶ 17, 19.
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`“[T]ranslucent board 8 is a glass board which is transparent to light,
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`and attached to the opening of the package 5. A convex surface is formed
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`on the top of the translucent board 8.” Id. ¶ 17. “[T]he convex surface of
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`the translucent board 8 is in intimate contact with the surface of the user’s
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`skin,” preventing detecting element 2 from slipping off the detecting
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`position of the user’s wrist. Id. ¶ 25. By preventing the detecting element
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`from moving, the convex surface suppresses “variation of the amount of the
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`reflected light which is emitted from the light emitting element 6 and
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`reaches the light receiving element 7 by being reflected by the surface of the
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`user’s skin.” Id. Additionally, the convex surface prevents penetration by
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`“noise such as disturbance light from the outside.” Id.
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`
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`Sensor body 3 is connected to detecting element 2 by signal line 13.
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`Id. ¶ 20. Signal line 13 connects detecting element 2 to drive circuit 11,
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`microcomputer 12, and a monitor display (not shown). Id. Drive circuit 11
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`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
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`calculate pulse rate. Id. “The monitor display shows the calculated pulse
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`rate.” Id.
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`3. 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
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`and a detector pad. Ex. 1013, codes (54), (57).
`
`Figure 19C of Schulz is reproduced below.
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`
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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
`
`
`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
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`windows 1919 and 1924 providing lenses 1920 and 1921.” Id. ¶ 67.
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`A “thin sheet of opaque material is located beneath window 1919 or
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`1924, and a window in the opaque material provides an aperture for
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`transmission of optical energy to or from the tissue site.” Id. ¶ 73. “The
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`opaque material blocks light, and the window in the opaque material can be
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`sized as needed to block the proper amount of light from entering the
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`aperture to, for example, avoid saturation of the light detector.” Id.
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`4. Mendelson-2006 (Ex. 1010)
`
`Mendelson-2006 is a journal article titled “A Wearable Reflectance
`
`Pulse Oximeter for Remote Physiological Monitoring,” and discloses a
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`wireless wearable pulse oximeter connected to a personal digital assistant
`
`(“PDA”). Ex. 1010, 1.4
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`Figure 1 of Mendelson-2006 is reproduced below.
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`
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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
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`photograph of a disassembled sensor module and receiver module (bottom).
`
`The sensor module includes an optical transducer, a stack of round printed
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`circuit boards, and a coin cell battery. Id. at 2.
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`
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`Figure 2 of Mendelson-2006 is reproduced below.
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`
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`Figure 2 depicts a system block diagram of the wearable, wireless, pulse
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`oximeter including the sensor module (top) and the receiver module
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`(bottom). Id. The sensor module includes at least one light-emitting diode
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`(“LED”), a photodetector, signal processing circuitry, an embedded
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`microcontroller, and an RF transceiver. Id. at 1–2. Mendelson-2006
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`discloses that a concentric array of discrete photodetectors could be used to
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`increase the amount of backscattered light detected by a reflectance type
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`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
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`module, and a wireless module for communicating with the PDA. Id. at 2.
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`As a PDA for use with the system, Mendelson-2006 discloses “the HP
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`iPAQ h4150 PDA because it can support both 802.11b and Bluetooth™
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`wireless communication” and “has sufficient computational resources.” Id.
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`at 3. Mendelson further discloses that
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`[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.
`
`Id.
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`The PDA is shown in Figure 3 of Mendelson-2006, reproduced below.
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`
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`Figure 3 illustrates a sample PDA and its graphical user interface (“GUI”).
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`Id. Mendelson-2006 explains that the GUI allows the user to interact with
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`the wearable system. Id. “The GUI was configured to present the input and
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`output information to the user and allows easy activation of various
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`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
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`the wearable device.” Id. For example, the GUI displays numerical oxygen
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`saturation (“SpO2”) and heart rate (“HR”) values. Id.
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`5. Independent Claim 1
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`Petitioner presents undisputed contentions that claim 1 would have
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`been obvious over the combined teachings of Mendelson-799, Ohsaki,
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`Schulz, and Mendelson-2006. Pet. 43–69.
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`i. “A physiological measurement system comprising”
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`On this record, the cited evidence supports Petitioner’s undisputed
`
`contention that the combination of Mendelson-799, Ohsaki, Schulz, and
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`Mendelson-2006 satisfies the subject matter of the preamble.5 Pet. 43–45;
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`see, e.g., Ex. 1012, code (57), 7:25–8:13, 8:37–41, 9:22–40, 10:16–22,
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`Fig. 7 (sensor device), 8; Ex. 1010, 1–4, Fig. 3 (handheld computing
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`device); Ex. 1003 ¶¶ 102–115.
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`ii.“[a] a physiological sensor device comprising”
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`On this record, the cited evidence supports Petitioner’s undisputed
`
`contention that Mendelson-799 discloses a physiological sensor device
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`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 and a method for
`
`non-invasive measurement of a blood parameter.”), 9:22–40 (describing
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`optical sensor 10), 10:16–30 (describing pulse oximeter 20, including
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`sensor 10), Fig. 7 (sensor 10), Fig. 8 (pulse oximeter 20).
`
`
`5 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.
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`iii. “[b] a plurality of emitters configured to emit light into
`tissue of a user”
`
`On this record, the cited evidence supports Petitioner’s undisputed
`
`contention that Mendelson-799 discloses light emitting elements 12a, 12b,
`
`and 12c 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 (LEDs or
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`laser sources 12a, 12b and 12c).
`
`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”
`
`On this record, the cited evidence supports Petitioner’s undisputed
`
`contentions regarding this limitation. Pet. 47–49. Specifically, Petitioner
`
`contends that Mendelson-799 discloses twelve photodetectors located within
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`a sensor housing. Pet. 48; see, e.g., Ex. 1012, 9:22–40 (“The sensor 10
`
`comprises . . . an array of discrete detectors (e.g., photodiodes).”), Fig. 7
`
`(depicting rings of six far detectors 16 and six near detectors 18). Petitioner
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`also contends that Schulz teaches “a sensor featuring ‘a thin sheet of opaque
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`material’ placed inside the sensor’s housing . . . with ‘a window in the
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`opaque material provid[ing] an aperture for transmission of optical energy to
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`or from the tissue site,” which blocks light and avoids saturation of the
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`sensor’s light detectors. Pet. 32 (quoting Ex. 1013 ¶ 73); see, e.g., Ex. 1013
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`¶ 73 (“[T]he window in the opaque material can be sized as needed.”).
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`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-
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`799’s sensor, as taught by Schulz, to avoid saturation and to prevent ambient
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`light from reaching the sensor’s detectors. Pet. 32–34; see, e.g., Ex. 1003
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`¶¶ 93–101, 122–131; Ex. 1019, 76 (“[I]t is important to minimize the effects
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`from light other than the optical signals of interest.”), 111. Petitioner
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`contends it would have been obvious for the opaque layer to block optical
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`paths to the detectors “other than at windows allowing light to pass through
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`to corresponding detectors.” Pet. 49; see, e.g., Ex. 1003 ¶¶ 122–131.
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`To illustrate its proposed modification, Petitioner includes an
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`annotated and modified view of Mendelson-799’s Figure 7, as well as an
`
`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.
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`Petitioner’s modified and added figures depict the sensor of Mendelson-799
`
`with an added opaque layer (illustrated in green), as Petitioner contends
`
`would have been rendered obvious by Schulz.6 Id. at 49.
`
`
`
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`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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`At this stage of the proceeding, Petitioner’s stated reasoning for the
`
`proposed modification is sufficiently supported, including by the unrebutted
`
`testimony of Dr. Kenny. See, e.g., Ex. 1003 ¶¶ 93–101, 122–131.
`
`v.“[d] a wall that surrounds at least the at least the four
`detectors”
`
`On this record, the cited evidence supports Petitioner’s undisputed
`
`contentions regarding this limitation. Pet. 50–53. Specifically, Petitioner
`
`contends that Mendelson-799 discloses sensor housing 17 that encircles
`
`detectors 16 and 18. Id. at 50; see, e.g., Ex. 1012, 9:23–40 (“All these
`
`elements are accommodated in a sensor housing 17.”), Fig. 7 (housing 17).
`
`Petitioner further acknowledges that Mendelson-799 does not depict a side
`
`view of the sensor and thus, to the extent Mendelson-799 does not explicitly
`
`teach that sensor housing 17 includes an opaque wall that circumscribes the
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`sensor components, a person of ordinary skill in the art would have found it
`
`obvious “to connect, to the illustrated portion of sensor housing 17, an
`
`opaque wall configured to circumscribe the array of discrete detectors,” to
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`shield the detectors from ambient light and to protect from external forces.
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`Pet. 14–15, 24–25, 50–52; see, e.g., Ex. 1003 ¶¶ 63, 69, 82, 134. Petitioner
`
`contends this is consistent with the purpose of Mendelson-799’s light
`
`shield 14, which prevents light from reaching the detectors (id. at 15 (citing
`
`Ex. 1012, 9:35–40)), as well as other prior art references cited in Mendelson-
`
`799 (id. at 15–17 (citing Exs. 1017, 1018)). See, e.g., Ex. 1003 ¶¶ 64–68,
`
`135–139. For example, Petitioner states that Ohsaki discloses a sensor
`
`including package 5 having a wall that surrounds light emitting element 6
`
`and light receiving element 7. Id. at 52; see, e.g., Ex. 1009 ¶ 17, Fig. 2
`
`(detector 7 surrounded by wall of package 5); Ex. 1003 ¶¶ 140–141.
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`To illustrate its proposed modification, Petitioner includes an
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`annotated and modified view of Mendelson-799’s Figure 7, as well as an
`
`added sectional view, both of which are reproduced below. Pet. 18; see also
`
`id. at 26 (same), 52 (similar figures with slightly different annotations).
`
`
`
`Petitioner’s modified and added figures depict the sensor of Mendelson-799
`
`with an added opaque wall (illustrated in green) connected to the planar
`
`substrate of housing 17 and encircling the sensor components, as Petitioner
`
`contends would have been obvious to a person of ordinary skill in the art.
`
`Id. at 18, 50–51; Ex. 1003 ¶¶ 82, 142–143.
`
`At this stage of the proceeding, Petitioner’s stated reasoning for the
`
`proposed modification is sufficiently supported, including by the unrebutted
`
`testimony of Dr. Kenny. See, e.g., Ex. 1003 ¶¶ 63–71, 82, 132–144.
`
`vi.“[e–g] 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: the cover
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`comprises a single protruding convex surface, and 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”
`
`On this record, the cited evidence supports Petitioner’s undisputed
`
`contentions regarding this limitation. Pet. 53–57. Specifically, Petitioner
`
`contends that although Men