Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: May 5, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01713
`Patent 10,624,564 B1
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`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`KINDER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Entered: May 5, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01713
`Patent 10,624,564 B1
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`KINDER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
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`IPR2020-01713
`Patent 10,624,564 B1
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`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–30 (“challenged claims”) of U.S. Patent No. 10,624,564
`B1 (Ex. 1001, “the ’564 patent”). Paper 2 (“Pet.”). Masimo Corporation
`(“Patent Owner”) waived filing a preliminary response. Paper 6 (“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
`may not be instituted unless it is determined that “the information presented
`in the petition filed under section 311 and any response filed under section
`313 shows that there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (2020) (“The Board
`institutes the trial on behalf of the Director.”).
`For the reasons provided below and based on the record before us, we
`determine that Petitioner has demonstrated a reasonable likelihood that
`Petitioner would prevail in showing the unpatentability of at least one of the
`challenged claims. Accordingly, we institute an inter partes review on all
`grounds set forth in the Petition.
`
`B. Related Matters
`The parties identify the following matters related to the ’564 patent:
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`(C.D. Cal.);
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`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);
`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01538 (PTAB Sept. 2,
`2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01539 (PTAB Sept. 2,
`2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01714 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01715 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01716 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,702,194 B1);
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`Apple Inc. v. Masimo Corporation, IPR2020-01722 (PTAB Oct. 2,
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01723 (PTAB Oct. 2,
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01733 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,702,195 B1); and
`Apple Inc. v. Masimo Corporation, IPR2020-01737 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,709,366 B1).
`Pet. 3; Paper 3, at 1, 3–4.
`
`Patent Owner further identifies certain issued patent applications, as
`well as other pending and abandoned applications, that claim priority to, or
`share a priority claim with, the ’564 patent. Paper 3, at 1–2.
`
`C. The ’564 Patent
`The ’564 patent is titled “Multi-Stream Data Collection System for
`Noninvasive Measurement of Blood Constituents,” and issued on April 21,
`2020, from U.S. Patent Application No. 16/725,292, filed December 23,
`2019. Ex. 1001, codes (21), (22), (45), (54). The ’564 patent claims priority
`through a series of continuation and continuation-in-part applications to
`Provisional Application Nos. 61/086,060, 61/086,108, 61/086,063, and
`61/086,057, each filed on August 4, 2008, as well as 61/091,732 filed on
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`August 25, 2008, and 61/078,228 and 61/078,207 both filed on July 3,
`2008.1 Id. at codes (60), (63).
`The ’564 patent discloses a two-part data collection system including
`a noninvasive sensor that communicates with a patient monitor. Id. at 2:47–
`51. 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 2:38–46, 3:4–6. The patient monitor includes a
`display and a network interface for communicating with a handheld
`computing device. Id. at 2:54–57.
`
`
`1 The Office has made the prior determination that the application leading to
`the ’564 patent is not designated as an “AIA (FITF)” application. See
`Ex. 1002 at 102 (Notice of Allowability of March 3, 2020). We determine
`that based on this prior determination, and the lack of any contrary evidence
`before us, the Petition was not required to be filed more than nine months
`after the date of the grant of the patent. See 37 C.F.R. § 42.102(a)(1).
`Instead, based on the record before us, 37 C.F.R. § 42.102(a)(2) should
`apply, which allows a petition to be filed after “the date of the grant of the
`patent.”
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`Figure 1 of the ’564 patent is reproduced below.
`
`
`
`Figure 1 illustrates a block diagram of data collection system 100 including
`sensor 101 and monitor 109. Id. at 11:56–67. Sensor 101 includes emitter
`104 and detectors 106. Id. at 12:1–5. Emitter 104 emits light that is
`attenuated or reflected by the patient’s tissue at measurement site 102. Id. at
`14:11–16. Detectors 106 capture and measure the light attenuated or
`reflected from the tissue. Id. In response to the measured light,
`detectors 106 output detector signal 107 to monitor 109 through front-end
`interface 108. Id. at 14:16–19, 36–42. 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 11:7–23.
`Monitor 109 includes signal processor 110 and user interface 112. Id.
`at 15:27–29. “[S]ignal processor 110 includes processing logic that
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`determines measurements for desired analytes . . . based on the signals
`received from the detectors 106.” Id. at 15:32–35. User interface 112
`presents the measurements to a user on a display, e.g., a touch-screen
`display. Id. at 15:57–61. In response to user input or device orientation,
`user interface 112 can “reorient its display indicia.” Id. at 15:63–67. The
`monitor may be connected to storage device 114 and network interface 116.
`Id. at 16:4–22. In some embodiments, the monitor, including the display, is
`attached to the patient by a strap. Id. at 17:56–59, 18:16–19.
`
`The ’564 patent describes various examples of sensor devices.
`Figures 14D and 14F, reproduced below, illustrate sensor devices.
`
`
`
`
`Figure 14D illustrates a detector submount and Figure 14F illustrates
`portions of a detector shell. Id. at 6:54–57. As shown in Figure 14D,
`multiple detectors 1410c are located within housing 1430 and under
`transparent cover 1432, on which protrusion 605b is disposed. Id. at 36:40–
`47. Figure 14F illustrates detector shell 306f including detectors 1410c on
`substrate 1400c. Id. at 37:20–21. In some embodiments, the detector shell
`includes walls to separate individual photodiode arrays and to “prevent or
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`reduce mixing of light signals.” Id. at 22:46–53. 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. at 22:20–36.
`
`Figures 4A and 4B, reproduced below, illustrate an alternative
`example of a tissue contact area of a sensor device.
`
`
`
`Figures 4A and 4B illustrate arrangements of protrusion 405 including
`measurement site contact area 470. Id. at 23:30–36. “[M]easurement site
`contact area 470 can include a surface that molds body tissue of a
`measurement site.” Id. “For example, the measurement site contact area
`470 can be generally curved and/or convex with respect to the measurement
`site.” Id. at 23:53–55. The measurement site contact area includes windows
`420–423 that “mimic or approximately mimic a configuration of, or even
`house, a plurality of detectors.” Id. at 23:61–24:8.
`
`D. Illustrative Claim
`Of the challenged claims, claim 1 is independent. Claim 1 is
`illustrative and is reproduced below.
`1. A user-worn physiological measurement device
`comprising:
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`[a] one or more emitters configured to emit light into tissue
`of a user;
`[b] at least four detectors arranged on a substrate;
`[c] a cover comprising a protruding convex surface,
`wherein the protruding convex surface extends over all of the at
`least four detectors arranged on the substrate, wherein at least a
`portion of the protruding convex surface is rigid;
`[d] one or more processors configured to: receive one or
`more signals from at least one of the at least four detectors, the
`one or more signals responsive to at least a physiological
`parameter of the user; and process the one or more signals to
`determine measurements of the physiological parameter;
`[e] a network interface configured to communicate with a
`mobile phone;
`[f] a touch-screen display configured to provide a user
`interface,
`[g] wherein: the user interface is configured to display
`indicia responsive to the measurements of the physiological
`parameter, and
`[h] an orientation of the user interface is configurable
`responsive to a user input;
`[i] a wall that surrounds at least the at least four detectors,
`wherein the wall operably connects to the substrate and the
`cover;
`[j] a storage device configured to at least temporarily store
`at least the measurements of the physiological parameter; and
`[k] a strap configured to position the physiological
`measurement device on the user.
`Ex. 1001, 44:63–45:29 (bracketed lettering [a]–[k] added).
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`E. Applied References
`Petitioner relies upon the following references:
`Sherman et al., U.S. Patent No. 4,941,236, filed July 6, 1989,
`issued July 17, 1990 (Ex. 1013, “Sherman”);
`Ali et al., U.S. Patent No. 6,584,336 B1, filed March 1, 2000,
`issued June 24, 2003 (Ex. 1019, “Ali”);
`Ohsaki et al., U.S. Patent Application Publication No.
`2001/0056243 A1, filed May 11, 2001, published December 27, 2001
`(Ex. 1009, “Ohsaki”);
`Aizawa, U.S. Patent Application Publication No.
`2002/0188210 A1, filed May 23, 2002, published December 12, 2002
`(Ex. 1006, “Aizawa”);
`Rantala et al., U.S. Patent No. 6,912,413 B2, filed
`September 12, 2003, issued June 28, 2005 (Ex. 1022, “Rantala”); and
`Goldsmith et al., U.S. Patent Application Publication No.
`2007/0093786 A1, filed July 31, 2006, published April 26, 2007
`(Ex. 1011, “Goldsmith).
`Pet. 10.
`
`Petitioner also submits, inter alia, the Declaration of Thomas W.
`Kenny, Ph.D. (Ex. 1003).
`
`F. Asserted Grounds
`Petitioner asserts that claims 1–30 are unpatentable based upon the
`following grounds (Pet. 9):
`Claim(s) Challenged
`35 U.S.C. §
`1–10 and 13–30
`103
`11
`103
`
`References/Basis
`Aizawa, Ohsaki, and Goldsmith
`Aizawa, Ohsaki, Goldsmith,
`and Sherman
`Aizawa, Ohsaki, Goldsmith,
`and Rantala
`Aizawa, Ohsaki, Goldsmith,
`and Ali
`Aizawa, Ohsaki, Goldsmith,
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`12
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`1–10 and 13–30
`11
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`103
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`103
`103
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`Claim(s) Challenged
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`35 U.S.C. §
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`103
`
`References/Basis
`Ali, and Sherman
`Aizawa, Ohsaki, Goldsmith,
`Ali, and Rantala
`
`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) (2020). Accordingly, we construe the claims according to the
`standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
`Based on our analysis of Petitioner’s challenges presented at this stage of the
`proceeding, we find that one claim term requires express construction.
`
`Petitioner raises the issue of the proper scope of the claim term
`“processor” to a person of ordinary skill in the art. Pet. 51. Petitioner
`submits “[t]he ’564 patent does not define ‘processor,’” but argues that a
`person of ordinary skill in the art would understand the term to mean “part
`of a computer system that operates on data,” consistent with the definition
`provided in Merriam-Webster’s Collegiate Dictionary.2 Id.; Ex. 1012, 5.
`First, we observe that the claim language provides an understanding
`of the functions of the claimed one or more processers, which are
`“configured to:” “receive one or more signals” and “process the one or more
`signals to determine measurements of the physiological parameter.”
`
`
`2 Petitioner adds page numbers 1–6 to Exhibit 1012. We refer to the added
`page numbers when citing to Exhibit 1012 in this Decision.
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`Ex. 1001, 45:6–12. The Specification describes several distinct processors,
`but it also describes a “signal processor” as the device used for processing
`signals. See, e.g., id. at 9:50–55, 14:36–42, 15:27–56, 33:36–47. Based on
`the current record before us, we adopt Petitioner’s definition of the term
`“processor.” See Ex. 1012, 5. This definition is consistent with the general
`operation of the signal processor in the ’564 patent, where the signal
`processor is described to include “processing logic that determines
`measurements . . . based on the signals received from the detectors.”
`Ex. 1001, 15:31–35; 15:35–39 (“signal processor 110 can be implemented
`using one or more microprocessors or subprocessors . . ., digital signal
`processors, application specific integrated circuits (ASICs), field
`programmable gate arrays (FPGAs), combinations of the same”).
`We also offer guidance as to the meaning of “an orientation of the
`user interface is configurable responsive to a user input” also found in
`claim 1. To determine the meaning of the claim limitation “an orientation of
`the user interface is configurable responsive to a user input,” we look to the
`Specification of the ’564 patent. The Specification states “the user
`interface 112 can include a flip screen, a screen that can be moved from one
`side to another on the monitor 109, or can include an ability to reorient its
`display indicia responsive to user input or device orientation.” Ex. 1001,
`15:63–67. Based on the evidence before us, and based on limited discussion
`of “orientation” in the ’564 patent, we understand the claim limitation “an
`orientation of the user interface is configurable responsive to a user input” to
`at least encompass reorienting the display indicia responsive to user input.
`Based on our analysis of the issues in dispute at this stage of the
`proceeding, we conclude that no further claim terms require express
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`construction at this time. Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of non-
`obviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
`evaluating a combination of teachings, we must also “determine whether
`there was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior art
`elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`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
`
`
`3 Patent Owner does not present objective evidence of non-obviousness at
`this stage.
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`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`Petitioner identifies the appropriate level of skill in the art as that
`possessed by a person having “a Bachelor of Science degree in an academic
`discipline emphasizing the design of electrical, computer, or software
`technologies, in combination with training or at least one to two years of
`related work experience with capture and processing of data or information.”
`Pet. 8 (citing Ex. 1003 ¶¶ 21–22). Petitioner also notes that “[a]dditional
`education in a relevant field or industry experience may compensate for one
`of the other aspects of the [person of ordinary skill in the art]” described
`above. Id.
`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.
`
`D. Obviousness over the Combined Teachings of
`Aizawa, Ohsaki, and Goldsmith
`Petitioner presents undisputed contentions that claims 1–10 and 13–30
`of the ’564 patent would have been obvious over the combined teachings of
`Aizawa, Ohsaki, and Goldsmith. Pet. 10–91.
`1. Overview of Aizawa (Ex. 1006)
`Aizawa is a U.S. patent application publication titled “Pulse Wave
`Sensor and Pulse Rate Detector,” and discloses a pulse wave sensor that
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`detects light output from a light emitting diode and reflected from a patient’s
`artery. Ex. 1006, codes (54), (57).
`Figure 1(a) of Aizawa is reproduced below.
`
`
`Figure 1(a) is a plan view of a pulse wave sensor. Id. ¶ 23. As shown in
`Figure 1(a), pulse wave sensor 2 includes light emitting diode (“LED”) 21,
`four photodetectors 22 symmetrically disposed around LED 21, and
`holder 23 for storing LED 21 and photodetectors 22. Id. Aizawa discloses
`that, “to further improve detection efficiency, . . . the number of the
`photodetectors 22 may be increased.” Id. ¶ 32, Fig. 4(a). “The same effect
`can be obtained when the number of photodetectors 22 is 1 and a plurality of
`light emitting diodes 21 are disposed around the photodetector 22.” Id. ¶ 33.
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`Figure 1(b) of Aizawa is reproduced below.
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`Figure 1(b) is a sectional view of the pulse wave sensor. Id. ¶ 23. As shown
`in Figure 1(b), pulse wave sensor 2 includes drive detection circuit 24 for
`detecting a pulse wave by amplifying the outputs of photodetectors 22. Id.
`¶ 23. Arithmetic circuit 3 computes a pulse rate from the detected pulse
`wave and transmitter 4 transmits the pulse rate data to an “unshown
`display.” Id. The pulse rate detector further includes outer casing 5 for
`storing pulse wave sensor 2, acrylic transparent plate 6 mounted to detection
`face 23a of holder 23, and attachment belt 7. Id.
`Aizawa discloses LED 21 and photodetectors 22 “are stored in
`cavities 23b and 23c formed in the detection face 23a” of the pulse wave
`sensor. Id. ¶ 24. Detection face 23a “is a contact side between the holder 23
`and a wrist 10, respectively, at positions where the light emitting face 21s of
`the light emitting diode 21 and the light receiving faces 22s of the
`photodetectors 22 are set back from the above detection face 23a.” Id.
`Aizawa further discloses that “a subject carries the above pulse rate detector
`1 on the inner side of his/her wrist 10 with a belt in such a manner that the
`light emitting face 21s of the light emitting diode 21 faces down (on the
`wrist 10 side).” Id. ¶ 26. Furthermore, “the above belt 7 is fastened such
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`that the acrylic transparent plate 6 becomes close to the artery 11 of the wrist
`10. Thereby, adhesion between the wrist 10 and the pulse rate detector 1 is
`improved.” Id. ¶¶ 26, 34.
`
`2. 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. Figure 1 of Ohsaki is reproduced below.
`
`
`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.
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`Figure 2 of Ohsaki, reproduced below, illustrates further detail of
`
`detecting element 2.
`
`
`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.
`“[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. “[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. Ohsaki describes that when a translucent board has a
`flat surface, the detected pulse wave may be adversely affected by
`movement of the user’s wrist. Id. By preventing the detecting element from
`slipping, 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
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`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.
`
`3. Overview of Goldsmith (Ex. 1011)
`Goldsmith is a U.S. patent application publication titled “Watch
`Controller for a Medical Device,” and discloses a watch controller device
`that communicates with an infusion device to “provid[e] convenient
`monitoring and control of the infusion pump device.” Ex. 1011, codes (54),
`(57).
`Goldsmith’s Figure 9A and 9B are reproduced below.
`
`
`
`19
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`Figure 9A and Figure 9A are respective front and rear views of a combined
`watch and controller device. Id. ¶¶ 30–31. As shown in Figure 9A, watch
`controller 900 includes housing 905, transparent member 950, display 910,
`input devices 925a–c, scroll wheel 930, and wrist band 940. Id. ¶¶ 85–86.
`Figure 9B shows rear-side cover 960, and a rear view of housing 905, scroll
`wheel 930, and wrist band 940. Id.
`Goldsmith discloses the watch controller may interact with one or
`more devices, such as infusion pumps or analyte monitors. Id. ¶ 85; see also
`id. ¶ 88 (“The analyte sensing device 1060 may be adapted to receive data
`from a sensor, such as a transcutaneous sensor.”). Display 910 “may display
`at least a portion of whatever information and/or graph is being displayed on
`the infusion device display or on the analyte monitor display,” such as, e.g.,
`levels of glucose. Id. ¶ 86. The display is customizable in a variety of
`configurations including user-customizable backgrounds, languages, sounds,
`font (including font size), and wall papers. Id. ¶¶ 102, 104. Additionally,
`the watch controller may communicate with a remote station, e.g., a
`computer, to allow data downloading. Id. ¶ 89 (including wireless). The
`remote station may also include a cellular telephone to be “used as a conduit
`for remote monitoring and programming.” Id.
`
`4. Independent Claim 1 (Aizawa, Ohsaki, and Goldsmith)
`Petitioner presents undisputed contentions that claim 1 would have
`been obvious over the combined teachings of Aizawa, Ohsaki, and
`Goldsmith. Pet. 10–63.
`
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`
`i.“[pre] A user-worn physiological measurement device
`comprising”
`On this record, the cited evidence supports Petitioner’s undisputed
`contentions that Aizawa discloses this limitation. Pet. 41–42.
`Figure 2 of Aizawa shows a user wearing a pulse wave sensor on the
`inner side of his/her wrist. Ex. 1006 ¶ 0026. Accordingly, Petitioner’s
`reliance on Figure 2 of Aizawa and the corresponding disclosure sufficiently
`disclose the subject matter of the preamble.4 See Pet. 42.
`At this stage of the proceeding, Petitioner’s stated reasoning is
`sufficiently supported.5
`
`ii.“[a] one or more emitters configured to emit light into
`tissue of a user”
`On this record, the cited evidence supports Petitioner’s undisputed
`contentions that Aizawa discloses a pulse wave sensor including LED 21
`that emits light into a user’s tissue. Pet. 42–43; Ex. 1006 ¶ 23 (“LED 21 . . .
`for emitting light having a wavelength of a near infrared range”), ¶ 27
`(explaining that light is emitted toward the wrist), Fig. 1(b) (depicting
`
`4 Whether the preamble is limiting need not be resolved at this stage of the
`proceeding, because Petitioner shows sufficiently for purposes of institution
`that the recitation in the preamble is satisfied by the prior art.
`
` Petitioner further contends that the subject matter of the preamble is taught
`by the combination of Aizawa, Ohsaki, and Goldsmith. Pet. 41–42 (arguing
`that it would have been obvious to incorporate the pulse wave sensor of
`Aizawa (as modified by Ohsaki) into the wrist-worn watch controller device
`in Figures 9A and 9B of Goldsmith, to realize a user-worn physiological
`measurement device). Because Figure 2 of Aizawa teaches a user-worn
`physiological measurement device, further analysis of the combination of
`Aizawa, Ohsaki, and Goldsmith is not necessary for this particular claim
`limitation.
`
` 5
`
`21
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`LED 21 facing user wrist 10), Fig. 2 (depicting a pulse wave sensor worn on
`a user’s wrist).
`At this stage of the proceeding, Petitioner’s stated reasoning is
`sufficiently supported.
`
`iii.“[b] at least four detectors arranged on a substrate”
`
`
`
`On this record, the cited evidence supports Petitioner’s undisputed
`contentions regarding this limitation. Pet. 44–46.
`Petitioner contends that pulse wave sensor depicted in Figure 1(a) of
`Aizawa discloses four photodetectors 22. Pet. 44; see e.g., Ex. 1006 ¶ 27
`(“[F]our photodetectors 22 are disposed around the light emitting diode
`21.”).
`Relying on the cross-section view of Figure 1(b) of the pulse wave
`detector of Aizawa, Petitioner further contends photodetectors 22 are
`secured on a substrate illustrated in Petitioner’s annotated Figure 1(b).
`Pet. 24, 45. Petitioner’s annotated Figure 1(b) of Aizawa is reproduced
`below.
`
`
`Annotated Figure 1(b) depicts a structure, identified by Petitioner with
`brown highlight and the added label “Substrate,” arranged in proximity to
`photodetectors 22. Pet. 45. Petitioner concedes that Aizawa “does not label
`
`22
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`or describe” a substrate, but contends a person of ordinary skill in the art
`(“POSITA”) would have understood that “Aizawa’s photodetectors are
`secured to the [physiological measure device] . . . through such [as] a
`substrate” depicted in annotated Figure 1(b). Pet. 24. Dr. Thomas W.
`Kenny testifies that “[a] POSITA would have understood that the substrate
`provides physical support and electrical connectivity and is connected to the
`holder 23.” Ex. 1003 ¶ 71; see also Pet. 24 (citing to testimony of Dr.
`Kenny). On the current record, Petitioner has sufficiently shown that the
`structure identified in annotated Figure 1(b) of Aizawa is a substrate, and
`that photodetectors 22 are arranged on the substrate.
`Petitioner further contends that if Aizawa is found not to disclose a
`substrate, then Ohsaki teaches this feature. Pet. 25. Similar to the device of
`Aizawa, Ohsaki teaches a pulse wave sensor comprising a light emitting
`element 6 (e.g., a LED) and a light receiving element (e.g., a photodetector).
`Ex. 1009 ¶ 17. “The light emitting element 6 and light receiving element 7
`are . . . arranged on the circuit board 9.” Id. Relying on the testimony of
`Dr. Kenny, Petitioner contends a POSITA would have modified the pulse
`wave sensor of Aizawa to include a substrate, such as circuit board 9 of
`Ohsaki, to secure the photodetectors of Aizawa and enable the detectors to
`send signals to other elements in the device. Pet. 25 (citing Ex. 1003 ¶¶ 72–
`73; Ex. 1006 ¶¶ 2–5, 8–16, 23, 27–29, 32–33, Figs. 1, 2, 3, 4(a); Ex. 1009
`¶ 17, Fig. 2).
`At this stage of the proceeding, Petitioner’s stated reasoning is
`sufficiently supported, including by the unrebutted testimony of Dr. Kenny.
`
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`
`iv. “[c] a cover comprising a protruding convex surface,
`wherein the protruding convex surface extends over all
`of the at least four detectors arranged on the substrate,
`wherein at least a portion of the protruding convex
`surface is rigid”
`On this record, the cited evidence supports Petitioner’s undisputed
`contentions regarding these limitations. Pet. 19–23, 47–49.
`Petitioner contends the pulse wave sensor depicted in Figure 1(b) of
`Aizawa comprises “a flat transparent plate 6 that contacts the user’s wrist.”
`Pet. 19; see, e.g., Ex. 1006 ¶ 26 (“[T]he acrylic transparent plate 6 becomes
`close to the artery 11 of the wrist 10.”). In Petitioner’s view, the flat plate of
`Aizawa is unfavorable, in that it “would have slipped along the user’s wrist,
`resulting in variations in the light detected by the photodetectors.” Pet. 20.
`Petitioner proposes modifying the flat acrylic plate of Aizawa, with
`the convex translucent board 8 depicted in Figure 2 of Ohsaki. Specifically,
`Petitioner relies on Ohsaki’s teaching:
`Ohsaki explains that “if the translucent board 8 has a flat
`surface, the detected pulse wave is adversely affected by t
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