IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Jeroen Poeze et al.
`In re Patent of:
`U.S. Patent No.: 10,588,554
`Issue Date:
`March 17, 2020
`Appl. Serial No.: 16/544,713
`Filing Date:
`August 19, 2019
`Title:
`MULTI-STREAM DATA COLLECTION SYSTEM FOR
`NONINVASIVE MEASUREMENT OF BLOOD CONSTITU-
`ENTS
`
`Attorney Docket No.: 50095-0013IP2
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 10,588,554 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 3
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 3
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 3
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 4
`D. Service Information .................................................................................. 4
`PETITIONER HAS STANDING TO REQUEST IPR ................................... 5
`II.
`III. OVERVIEW OF THE ’554 PATENT ............................................................ 5
`A. Brief Description ....................................................................................... 5
`B. Level of Ordinary Skill in the Art ........................................................... 10
`C. Claim Construction ................................................................................. 11
`IV. APPLICATION OF PRIOR ART TO THE ’554 PATENT CLAIMS ......... 11
`A. Asserted Grounds and References .......................................................... 11
`B. GROUND 1: Claims 1-7 and 20-28 are obvious over Aizawa, Inokawa,
`Ohsaki, and Mendelson-2006 ................................................................. 13
`1. Overview of Aizawa ...................................................................... 13
`2. Overview of Inokawa .................................................................... 16
`3. Overview of Ohsaki....................................................................... 19
`4. Overview of Mendelson-2006 ....................................................... 20
`5.
`Combination of Aizawa, Inokawa, Ohsaki, and Mendelson-2006
` ....................................................................................................... 22
`6. Manner in which Aizawa, Inokawa, Ohsaki, and Mendelson-2006
`render obvious Claims 1-7 and 20-28 ........................................... 41
`C. GROUND 2: Claims 8-19 are obvious over Aizawa, Inokawa, Ohsaki,
`Mendelson-2006, and Bergey ................................................................. 87
`1. Overview of Bergey ...................................................................... 87
`2.
`Combination of Aizawa, Inokawa, Ohsaki, Mendelson-2006 and
`Bergey............................................................................................ 88
`3. Manner in which Aizawa, Inokawa, Ohsaki, Mendelson-2006, and
`Bergey render obvious Claims 8-19 .............................................. 89
`PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION .......... 98
`A. Factor 1: Institution Will Increase Likelihood of Stay ........................... 99
`B. Factor 2: District Court Schedule ........................................................... 99
`C. Factor 3: Apple’s Investment in IPR Outweighs Forced Investment in
`Litigation to Date ..................................................................................100
`D. Factor 4: The Petition Raises Unique Issues ........................................101
`
`V.
`
`i
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`E. Factor 5: The Petition Enables the Board to Resolve Invalidity of Claims
`that Might Otherwise be Reasserted .....................................................102
`F. Factor 6: Other Circumstances Support Institution ..............................102
`VI. CONCLUSION ............................................................................................103
`VII. PAYMENT OF FEES – 37 C.F.R. § 42.103 ...............................................103 
`
`
`
`ii
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`
`EXHIBITS
`
`APPLE-1001
`
`US Patent No. 10,588,554
`
`APPLE-1002
`
`File History for U.S. Patent No. 10,588,554
`
`APPLE-1003
`
`Declaration of Dr. Kenny
`
`APPLE-1004
`
`Curriculum Vitae of Dr. Kenny
`
`APPLE-1005
`
`Masimo Corporation, et al. v. Apple Inc., Complaint, Civil Ac-
`tion No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1006
`
`US Pub. No. 2002/0188210 (“Aizawa”)
`
`APPLE-1007
`
`JP Pub. No. 2006/296564 (“Inokawa”)
`
`APPLE-1008
`
`Certified English Translation of Inokawa and Translator’s Dec-
`laration
`
`APPLE-1009
`
`US Pub. No. 2001/0056243 (“Ohsaki”)
`
`APPLE-1010
`
`“A Wearable Reflectance Pulse Oximeter for Remote Physio-
`logical Monitoring,” Y. Mendelson, et al.; Proceedings of the
`28th IEEE EMBS Annual International Conference, 2006; pp.
`912-915 (“Mendelson-2006”)
`
`APPLE-1011
`
`RESERVED
`
`APPLE-1012
`
`US Patent No. 6,801,799 (“Mendelson799”)
`
`APPLE-1013
`
`US Pub. No. 2004/0054291 (“Schulz”)
`
`APPLE-1014
`
`RESERVED
`
`APPLE-1015
`
`RESERVED
`
`APPLE-1016
`
`US Patent No. 3,789,601 (“Bergey”)
`
`iii
`
`

`

`APPLE-1017
`
`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`“Design and Evaluation of a New Reflectance Pulse Oxime-ter
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic In-stitute,
`Biomedical Engineering Program, Worcester, MA 01609; As-
`sociation for the Advancement of Medical Instru-mentation,
`vol. 22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`
`APPLE-1018
`
`RESERVED
`
`APPLE-1019
`
`Excerpts from Design of Pulse Oximeters, J.G. Webster; Insti-
`tution of Physics Publishing, 1997 (“Webster”)
`
`APPLE-1020
`
`QuickSpecs; HP iPAQ Pocket PC h4150 Series
`
`APPLE-1021
`
`Excerpts from How to Do Everything with Windows Mobile,
`Frank McPherson; McGraw Hill, 2006 (“McPherson”)
`
`APPLE-1022
`
`Excerpts from Master Visually Windows Mobile 2003, Bill
`Landon, et al.; Wiley Publishing, Inc., 2004 (“Landon”)
`
`APPLE-1023
`
`RESERVED
`
`APPLE-1024
`
`US Pub. No. 2008/0194932 (“Ayers”)
`
`APPLE-1025
`
`U.S. Patent No. 7,031,728 (“Beyer”)
`
`APPLE-1026
`
`US Pub. No. 2007/0145255 (“Nishikawa”)
`
`APPLE-1027
`
`National Instruments LabVIEW User Manual
`
`APPLE-1028 to 1030
`
`RESERVED
`
`APPLE-1031
`
`Scheduling Order, Masimo v. Apple et al., Case 8:20-cv-00048,
`Paper 37 (April 17, 2020)
`
`APPLE-1032
`
`Stipulation by Apple
`
`APPLE-1033
`
`Telephonic Status Conference, Masimo v. Apple et al., Case
`8:20-cv-00048, Paper 78 (July 13, 2020)
`
`iv
`
`

`

`APPLE-1034
`
`APPLE-1035
`
`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`Joseph Guzman, “Fauci says second wave of coronavirus is ‘in-
`evitable’”, TheHill.com (Apr. 29, 2020), available at:
`https://thehill.com/changing-america/resilience/natural-disas-
`ters/495211-fauci-says-second-wave-of-coronavirus-is
`
`“Tracking the coronavirus in Los Angeles County,”
`LATimes.com (Aug. 20, 2020), available at
`https://www.latimes.com/projects/california-coronavirus-cases-
`tracking-outbreak/los-angeles-county/
`
`APPLE-1036
`
`Declaration of Jacob R. Munford
`
`
`
`
`
`
`
`
`
`v
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) of claims 1-28 (“the Challenged Claims”) of U.S. Patent No. 10,588,554
`
`(“’554 patent”). As explained in this Petition, there exists a reasonable likelihood
`
`that Apple will prevail with respect to at least one of the Challenged Claims.
`
`The ’554 Patent describes and claims a purported improvement to a “physio-
`
`logical sensor device” included within a “physiological measurement system”: a
`
`cover with “a single protruding convex surface” that is configured to be located be-
`
`tween “at least four” detectors and user tissue, and that is sufficiently rigid to cause
`
`user tissue to conform to the surface when the sensor is worn. APPLE-1001, 14:3-
`
`10, 36:30-41, 44:50-45:21 (claim 1), FIGS. 1, 14D. Each detector “can be imple-
`
`mented using one or more photodiodes, phototransistors, or the like,” “can capture
`
`and measure light transmitted from [an] emitter … that has been attenuated or re-
`
`flected from the tissue,” and can “output a detector signal … responsive to the light
`
`….” Id., 14:3-10. Placement of a cover with a protrusion over the detectors is said
`
`to offer multiple benefits; the protrusion may, for example, “penetrate[] into the
`
`tissue and reduce[] the path length of the light ….” Id., 14:3-10, 24:16-35, 10:61-
`
`11:13.
`
`But the claimed sensor was not new. To the contrary, the ’554 Patent was
`
`granted without full consideration to the wide body of applicable prior art. See
`
`generally APPLE-1002. And, as Dr. Thomas Kenny explains in his accompanying
`
`1
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`declaration with respect to the prior art applied in this Petition, physiological sen-
`
`sor devices such as pulse rate detectors and pulse oximeters commonly included
`
`covers by the ’554 Patent’s earliest effective filing date, and a sensor including
`
`each feature of the sensor device of the Challenged Claims would have been obvi-
`
`ous to a POSITA. APPLE-1003, ¶¶[0001]-[0322]; APPLE-1001, 44:50-47:22.
`
`For example, Aizawa (APPLE-1006) describes a pulse wave sensor featur-
`
`ing “four photodetectors” disposed around a central light source and a “holder”
`
`that secures the light source and photodetectors. APPLE-1006, FIGS. 1(a), 1(b).
`
`And, similar to the ’554 Patent, Ohsaki (APPLE-1009) describes an optical sensor
`
`that features a cover with a protruding convex surface that is placed “in intimate
`
`contact with the surface of the user’s skin” when the sensor is worn. APPLE-1009,
`
`Title, Abstract, ¶¶[0016], [0017], FIGS. 1, 2. Ohsaki is not alone, as Inokawa (AP-
`
`PLE-1007, APPLE-1008) and other references likewise disclose covers with pro-
`
`truding convex surfaces for use in optical sensors. APPLE-1008, ¶¶14-15, FIGS. 2,
`
`3. And, as Dr. Kenny explains, a POSITA would have found it obvious to utilize
`
`such a cover in Aizawa’s sensor. APPLE-1003, ¶¶[0081]-[0110].
`
`In addition to the “physiological sensor device” described above, the ’554
`
`Patent’s claimed “physiological measurement system” includes “a handheld com-
`
`puting device in wireless communication with the physiological sensor device.”
`
`See, e.g., APPLE-1001, 45:4-22 (claim 1).
`
`2
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`Yet, physiological sensor devices commonly communicated with handheld
`
`computing devices by the ’554 Patent’s earliest effective filing date. Mendelson-
`
`2006, for example, describes a “wireless wearable pulse oximeter” system in which
`
`a body-worn pulse oximeter communicates wirelessly with a PDA. APPLE-1010,
`
`Abstract, 1-4, FIGS. 1-3. Moreover, and as Dr. Kenny explains, the claimed
`
`“handheld computing device” is a generic computing device, and each of its recited
`
`components are generic computing components. APPLE-1003, ¶¶[0040]-[0059];
`
`APPLE-1001, 2:45-48, 15:60-16:11, 18:9-28, FIGS. 1, 2D.
`
`The Challenged Claims are unpatentable based on teachings set forth in at
`
`least the references presented in this Petition. Apple respectfully submits that an
`
`IPR should be instituted, and that the Challenged Claims should be canceled as un-
`
`patentable.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Apple Inc. is the real party-in-interest (RPI).
`
`
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Patent Owner filed a complaint on January 9, 2020 in the U.S. District Court
`
`for the Central District of California (CDCA) (Case No. 8:20-cv-00048) against
`
`Apple, alleging infringement by Apple of the ’554 patent. The complaint was
`
`served to Apple on January 13, 2020.
`
` This Petition is being filed concurrently with another petition for IPR of the
`
`3
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`’554 Patent (IPR2020-01538),1 and with a petition for IPR of related U.S. Patent
`
`10,292,628 (IPR2020-01521). No other petitions for IPR of the ’554 Patent have
`
`been filed. On August 31, 2020, Apple filed petitions for IPR of related U.S. Pa-
`
`tents 10,588,553 (IPR2020-01536 and IPR2020-01537) and 10,258,265 (IPR2020-
`
`01520).
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Apple provides the following designation of counsel.
`
`LEAD COUNSEL
`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR50095-0013IP2@fr.com
`
`
`BACKUP COUNSEL
`Andrew B. Patrick, Reg. No. 63,471
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: PTABInbound@fr.com
`
`D. Service Information
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR50095-0013IP2@fr.com
`
`
`
` 1
`
` Pursuant to the Trial Practice Guide, both petitions for IPR of the ’554 Patent are
`
`being filed with a paper providing a succinct explanation of the differences be-
`
`tween the petitions, why the issues addressed by the differences are material, and
`
`why the Board should exercise its discretion to institute both petitions.
`
`4
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`(referencing No. 50095-0013IP2 and cc’ing PTABInbound@fr.com, axf-
`
`ptab@fr.com and patrick@fr.com).
`
`II.
`
`PETITIONER HAS STANDING TO REQUEST IPR
`Apple certifies that the ’554 patent is available for IPR. This Petition is be-
`
`ing filed within one year of service of a complaint against Apple in Masimo Cor-
`
`poration et al. v. Apple Inc., Case No. 8:20-cv-00048 (C.D. Cal.). Apple is not
`
`barred or estopped from requesting this review challenging the Challenged Claims
`
`on the below-identified grounds.
`
`III. OVERVIEW OF THE ’554 PATENT
`A. Brief Description
`The system described by the ’554 Patent includes, in one embodiment, “a
`
`noninvasive sensor and a patient monitor communicating with the noninvasive sen-
`
`sor.” APPLE-1001, 2:38-40. The ’554 Patent explains that “[t]he non-invasive
`
`sensor may include different architectures,” adding that “an artisan will recognize
`
`that the non-invasive sensor may include or may be coupled to other components,
`
`such as a network interface, and the like.” Id., 2:40-44. The “patient monitor”
`
`with which the sensor communicates may “include a display device,” and “a net-
`
`work interface communicating with any one or combination of a computer net-
`
`work, a handheld computing device, a mobile phone, the Internet, or the like.” Id.,
`
`2:45-48.
`
`5
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`In more detail, the ’554 Patent’s FIG. 1 (reproduced below) includes the ex-
`
`emplary physiological measurement system 100 that includes “a sensor 101 … that
`
`is coupled to a processing device or physiological monitor 109.” Id., 5:35-38,
`
`11:47-49.
`
`
`
`APPLE-1001, FIG. 1.
`
` “In an embodiment, the sensor 101 and the monitor 109 are integrated to-
`
`gether into a single unit.” Id., 11:49-51. “In another embodiment, the sensor 101
`
`and the monitor 109 are separate from each other and communicate one with an-
`
`other in any suitable manner, such as via a wired or wireless connection.” Id.,
`
`11:51-57; see also 17:40-44; APPLE-1003, ¶[0046].
`
`6
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`The ’554 Patent’s FIGS. 2A-2D (reproduced below) illustrate “example
`
`monitoring devices 200 in which the data collection system 100 can be housed.”
`
`APPLE-1001, 5:39-42, 16:20-31.
`
`
`
`APPLE-1001, FIGS. 2A-2D.
`
`Each of the “monitoring devices 200” include a sensor 201 and a monitor
`
`209. Id., FIGS. 2A-2D, 16:20-18:28. From this and related description, a POSITA
`
`would have understood that the sensor and monitor described by the ’554 Patent
`
`together act as components of a physiological sensor device, regardless of whether
`
`7
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`they are integrated into a single unit, or are instead separated but configured to
`
`communicate with each other. APPLE-1003, ¶[0049]; APPLE-1001, 2:38-48,
`
`11:49-57, 16:20-18:28, FIGS. 1, 2A-2D.
`
`FIG. 2D illustrates a “monitoring device 200D [that] includes a finger clip
`
`sensor 201d connected to a monitor 209d via a cable 212,” in addition to “an op-
`
`tional universal serial bus (USB) port 216 and an Ethernet port 218 [that] can be
`
`used, for example, to transfer information between the monitor 209d and a com-
`
`puter (not shown) via a cable.” APPLE-1001, 18:9-28.
`
`From this and related description, a POSITA would have understood that the
`
`sensor 201 and monitor 209 are components of a physiological sensor device, and
`
`that that device is part of a larger system including a computer with which the
`
`physiological sensor device communicates. APPLE-1003, ¶[0050]; APPLE-1001,
`
`2:38-48, 11:49-57, 16:20-18:28, FIGS. 1, 2A-2D.
`
`The sensor in the physiological sensor device “may include different archi-
`
`tectures”; the ’554 Patent describes several potential architectures with respect to
`
`FIGS. 14A-14I. APPLE-1001, 6:38-49, 35:36-38:20. For example, the ’554 Pa-
`
`tent’s FIG. 14C (reproduced below) illustrates a sensor featuring a “detector sub-
`
`mount 1400c … positioned under [a] protrusion 605b in a detector subassembly
`
`1450 illustrated in FIG. 14D” (also reproduced below).
`
`8
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`
`
`
`APPLE-1001, FIGS. 14C, 14D.
`
`As illustrated in FIG. 14D, a housing 1430 including “a transparent cover
`
`1432, upon which the protrusion 605b is disposed” surrounds each of the detectors
`
`1410c. APPLE-1001, 36:30-41. As illustrated in FIG. 14F (reproduced below),
`
`the sensor may also include a “shielding enclosure 1490” featuring a window
`
`1492a corresponding to each of “the detectors 1410c, which allows light to be
`
`transmitted onto the detectors 1410c.” Id., 37:9-17; see also id., 23:61-63, FIGS.
`
`4A-4C; APPLE-1003, ¶¶[0040]-[0059].
`
`9
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`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`
`APPLE-1001, FIG. 14F.
`
`
`
`B. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art relating to the subject matter of the ’554
`
`Patent as of July 3, 2008 (“POSITA”) would have been a person with a working
`
`knowledge of physiological monitoring technologies. The person would have had
`
`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 technol-
`
`ogies. APPLE-1003, ¶¶[0001]-[0018], [0020]-[0021]. Additional education in a
`
`10
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`relevant field or industry experience may compensate for one of the other aspects
`
`of the POSITA characteristics stated above. Id.
`
`C. Claim Construction
`Petitioner submits that all claim terms should be construed according to the
`
`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
`
`C.F.R. § 42.100. Here, based on the evidence below and the prior art’s description
`
`of the claimed elements being similar to that of the ’554 patent specification, no
`
`formal claim constructions are necessary in this proceeding because “claim terms
`
`need only be construed to the extent necessary to resolve the controversy.” Well-
`
`man, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); APPLE-
`
`1003, ¶[0022].
`
`IV. APPLICATION OF PRIOR ART TO THE ’554 PATENT CLAIMS
`A. Asserted Grounds and References
`The Challenged Claims are invalid based on the ground noted in the table
`
`below, as further explained in this Petition. Accompanying explanations and sup-
`
`port are provided in the Declaration of Dr. Thomas Kenny (APPLE-1003). See
`
`APPLE-1003, ¶¶[0001]-[0322].
`
`
`
`
`
`
`
`11
`
`

`

`Ground
`1
`
`Claims
`1-7 and 20-28
`
`2
`
`8-19
`
`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`Basis for Rejection
`Obvious (§ 103) based on Aizawa in
`combination with Inokawa, Ohsaki, and
`Mendelson-2006
`Obvious (§ 103) based on Aizawa in
`combination with Inokawa, Ohsaki,
`Mendelson-2006, and Bergey
`
`Each applied reference pre-dates U.S. provisional application 61/078,207,
`
`filed on July 3, 2008, which is the earliest filed application from which the ’554
`
`patent claims priority. Apple does not take a position as to whether the ’554 patent
`
`is entitled to the priority date of July 3, 2008 (hereinafter “Critical Date” or “Earli-
`
`est Effective Filing Date”), but has applied references that pre-date the Critical
`
`Date and qualify as prior art as shown in the table below.
`
`Reference
`
`Date
`
`Sec-
`tion
`
`Aizawa
`
`Inokawa
`
`Ohsaki
`
`US 2002/0188210
`
`12/12/2002 (published)
`
`102(b)
`
`JP 2006/296564
`
`11/02/2006 (published)
`
`102(b)
`
`US 2001/0056243
`
`12/27/2001 (published)
`
`102(b)
`
`Mendelson-2006
`
`(NPL)
`
`09/2006 (published)
`
`Bergey
`
`US 3,789,601
`
`02/05/1974 (issued)
`
`102(b)
`
`102(b)
`
`
`
`
`
`
`12
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`B. GROUND 1: Claims 1-7 and 20-28 are obvious over
`Aizawa, Inokawa, Ohsaki, and Mendelson-2006
`1. Overview of Aizawa
`Aizawa discloses a “pulse wave sensor…detecting light output from a light
`
`emitting diode and reflected from the artery of a wrist of a subject.” APPLE-1006,
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`Abstract. Aizawa’s sensor includes “four photodetectors disposed around the light
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`emitting diode” and a “holder” that secures the light emitting diode (LED) and
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`photodetectors. Id., ¶[0023]; FIGS. 1(a), 1(b).
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`The sensor can be worn by a subject with the LED facing toward the sub-
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`ject’s wrist, and fastened using a belt. Id., ¶[0026]. In operation, the LED irradi-
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`ates an artery of the wrist “with light having a wavelength of an infrared range,”
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`and the optical sensor non-invasively detects “the pulse wave…from light reflected
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`from a red corpuscle in the artery.” APPLE-1006, ¶¶[0002], [0008]-[0018]; AP-
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`PLE-1003, ¶¶[0055]-[0060].
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`In more detail, and as shown in Aizawa’s FIGS. 1(a) and 1(b), Aizawa’s
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`“pulse wave detector” includes an optical sensor featuring “an LED 21,” four pho-
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`todetectors 22 disposed symmetrically on a circle concentric to the LED 21, and
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`“a holder 23 for storing the above light emitting diode 21 and the photodetectors
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`13
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`

`

`22.”2 APPLE-1006, ¶[0023].
`
`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`
`APPLE-1006, FIGS. 1(a) (top, annotated), 1(b) (bottom, annotated)
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`As illustrated, Aizawa’s pulse rate detector also includes “a drive detection
`
`
`
`
`
` 2
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` Throughout this Petition, bolding in quotations is added for emphasis, unless oth-
`
`erwise indicated.
`
`14
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`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`circuit 24 for detecting a pulse wave by amplifying the outputs of the photodetec-
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`tors 22,” “an arithmetic circuit [3] for computing a pulse rate from the detected
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`pulse wave data,” and “a transmitter [4] for transmitting the above pulse rate data
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`to an unshown display.” APPLE-1006, ¶[0023].
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`Aizawa’s pulse wave sensor transmits its data to an “unshown display,” and
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`can be “coupled to devices making use of bio signals” and/or a device that per-
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`forms computations. Id., ¶¶[0023], [0028], [0035].
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`To improve adhesion between the sensor and the subject’s wrist, Aizawa’s
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`sensor also includes an acrylic transparent plate positioned between the photode-
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`tectors and the wrist. APPLE-1006, ¶[0034]. For example, Aizawa’s FIG. 1(b)
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`shows the plate in contact with the user’s wrist. Id., FIG. 1(b); APPLE-1003,
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`¶¶[0061]-[0063].
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`APPLE-1006, FIG. 1(b) (annotated)
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`15
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`
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`
`2. Overview of Inokawa
`Inokawa discloses a wearable optical sensing system that gathers “various
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`kinds of vital sign information.” APPLE-1008, ¶[0001]. Inokawa’s system in-
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`cludes a sensor and a base device. Id., ¶¶[0055]-[0066]. The sensor includes a
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`“pair of light-emitting elements,” the reflected light of which is used to “sense
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`the pulse” of the subject by detecting hemoglobin change in the capillary artery
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`and to sense “body motion.,” A photodiode receives the light from the light-
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`emitting elements that is reflected. Id., ¶¶[0058]-[0059]; FIG. 2. A convex lens
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`(highlighted in light blue) is placed between the photodiode and the subject’s
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`skin. Id. The lens is sufficiently rigid to make the tissue conform to the convex
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`surface of the lens.
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`
`
`APPLE-1008, FIG. 2 (annotated)
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`16
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`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`The base device is “a charger with communication functionality that is
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`used when the pulse sensor…is mounted.” Id., ¶(0060); FIG. 3. When the sen-
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`sor is mounted onto the base device, “vital sign information…such as pulse and
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`body motion, is transmitted to the base device…using the…infrared LED.” Id.,
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`¶(0076); APPLE-1003, ¶[0065].
`
`
`
`APPLE-1008, FIG. 3
`
`17
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`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`With reference to FIG. 19 below, Inokawa teaches that two LEDs, instead
`
`of one, improve data transmission accuracy. APPLE-1003, ¶[0065]. In particu-
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`lar, Inokawa describes that “the presence of two pairs of light-emitting and
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`light-receiving elements makes it possible to efficiently transmit information,”
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`including increasing the “accuracy of data…by transmitting and receiving a
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`checksum signal using, for example, the S-side green LED 165 and the other
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`B-side PD 157.” APPLE-1008, ¶¶[0111], [0044], [0048]; APPLE-1003,
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`¶¶[0064]-[0065].
`
`
`
`APPLE-1008, FIG. 19 (annotated)
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`18
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`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`
`3. Overview of Ohsaki
`As illustrated in Ohsaki’s FIG. 2 (reproduced below), Ohsaki discloses a
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`wrist-worn “pulse wave sensor” (APPLE-1009, ¶[0016]) featuring a “light emitting
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`element” and a “light receiving element.” Id., ¶[0017]. Ohsaki’s sensor addresses
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`problems such as user discomfort and sensor movement by using a “translucent
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`board” with a convex surface that is “in intimate contact with the surface of the
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`user’s skin” to prevent slippage. Id., ¶¶[0009]-[0010]. Because the intensity of the
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`light received by the detecting element “largely varies depending on the shift
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`amount,” or amount of movement of the detecting element, Ohsaki’s convex sur-
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`face reduces the “variation of the amount of reflected light which is emitted” from
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`the LED and reaches the detecting element after reflection from the user’s skin.
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`Id., ¶[0025], FIG. 2; APPLE-1003, ¶[0066].
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`19
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`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`
`APPLE-1009, FIG. 2
`
`
`
`4. Overview of Mendelson-2006
`Mendelson-2006 discloses a “wireless wearable pulse oximeter” system that
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`is used to monitor a subject’s physiological signals such as SpO2 and heart rate.
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`APPLE-1010, Abstract, 1. Mendelson-2006 explains that by wirelessly transmit-
`
`ting the collected data, the condition of a subject can be determined “remotely”
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`without requiring the healthcare provider to be physically present. Id.
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`20
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`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`Mendelson-2006’s system includes a sensor module, a receiver module, and
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`a PDA. Id., 2. As shown in Mendelson-2006’s FIGS. 1 and 2, the sensor module
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`includes an “optical reflectance transducer” having two LEDs and a photodiode
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`that “processes the [photoplethysmographic (PPG)] signals” and transmits signals
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`wirelessly to the PDA through the receiver module. Id.; FIGS. 1 and 2.
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`
`
`APPLE-1010, FIG. 1 (left) and FIG. 2 (right)
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`The PDA is a handheld device that provides a “touch screen” interface and a
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`simple graphical user interface (GUI) “configured to present the input and output
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`information to the user and allow[ for] easy activation of various functions.” AP-
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`PLE-1010, FIG. 3; see also APPLE-1021, Cover, xvii-xviii, 10-12, 17, 63, 363;
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`APPLE-1022, 4-11, 30-31; APPLE-1036, APPLE-1003, ¶¶[0067]-[0069].
`
`21
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`
`APPLE-1010, FIG. 3
`
`
`
`5. Combination of Aizawa, Inokawa, Ohsaki, and Mendel-
`son-2006
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`Plurality of emitters
`
`As described in Section IV.B.1, Aizawa discloses a pulse wave sensor in
`
`which multiple detectors are disposed around a centrally located LED/emitter.
`
`APPLE-1006, ¶[0023]. Aizawa explains that “[t]he arrangement of the light
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`emitting diode 21 and the photodetectors 22 is not limited” to that shown or de-
`
`scribed in connection with any particular embodiment. APPLE-1006, ¶[0032].
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`In particular, Aizawa describes arrangements in which multiple light emitting
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`diodes 21 are employed. Id., ¶¶[0032]-[0033].
`
`A POSITA would have combined the teachings of Aizawa and Inokawa
`
`22
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`such that Aizawa’s pulse wave sensor would have been modified to include an
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`additional LED as taught by Inokawa to improve the detected pulse wave by
`
`distinguishing between blood flow detection and body movement. APPLE-
`
`1008, ¶(0059) (describing the use of the “S-side green LED 21…to sense the
`
`pulse from the light reflected off of the body (e.g., change in the amount of he-
`
`moglobin in the capillary artery), while the S-side infrared LED 23 serves to
`
`sense body motion from the change in this reflected light”); APPLE-1006,
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`¶[0006] (recognizing the problem of weak signals from a wearable sensor be-
`
`cause the sensor “detects the motion of a red corpuscle…and is easily affected
`
`by noise caused by the shaking of the body of the subject), ¶[0028] (describing a
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`device for “computing the amount of motion load” such that the motion can be
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`compensated for); APPLE-1003, ¶¶[0061]-[0063], [0071]-[0072].
`
`A POSITA would also have looked to Inokawa’s disclosure of two LEDs
`
`emitting light of different wavelengths, in part, because it provides additional
`
`functionality, including that of a wireless communication method. Id. In-
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`okawa’s base device 17 receives, for example, “pulse and body motion” data
`
`through “the S-side infrared LED 23 of the pulse sensor 1 and the B-side PD 45
`
`of the base device 17.” APPLE-1008, ¶[0076]. The LEDs eliminate the need
`
`for “a special wireless communication circuit or a communication cable as pre-
`
`viously” and allows “vital sign information to the base device 17 accurately,
`
`23
`
`

`

`Attorney Docket No. 50095-0013IP2
`IPR of U.S. Patent No. 10,588,554
`easily, and without malfunction.” Id., ¶[0077]. In other words, the LEDs pro-
`
`vided on the sensor can be used not only to detect pulse rate but also to “accu-
`
`rately, easily, and without malfunction” transmit the sensed data to a base sta-
`
`tion. APPLE-1003, ¶[0073].
`
`Intrinsic and extrinsic records confirm that a POSITA would have natu-
`
`rally looked to another wearable physiological sensor, as disclosed in Inokawa,
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`for transmission details. APPLE-1003, ¶[0074]. Aizawa discloses uploading
`
`data to a base device but is silent about how such transmission would be imple-
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`mented. APPLE-1006, ¶¶[0023], [0028]; APPLE-1003, ¶[0074]. A POSITA
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`would have recognized that Aizawa’s LED could have been used for wireless
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`data communication with a personal computer to eliminate problems associated
`
`with a physical cable, and, as taught by Inokawa, without requiring a separate
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`RF circuit. APPLE-1003, ¶[0074]. A POSITA would have further recognized
`
`that using two LEDs to perform such communication would result in enhanced
`
`accuracy of the transmitted information. Id.
`
`To obtain the advantages described by Inokawa (e.g., to improve the de-
`
`tected pulse wave by enabling the sensor to distinguish between blood flow de-
`
`tection and body movement, in addition to e