IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Jeroen Poeze et al.
`In re Patent of:
`10,624,564 Attorney Docket No.: 50095-0023IP1
`U.S. Patent No.:
`April 21, 2020
`
`Issue Date:
`Appl. Serial No.: 16/725,292
`
`Filing Date:
`December 23, 2019
`
`Title:
`MULTI-STREAM DATA COLLECTION SYSTEM FOR NONIN-
`VASIVE MEASUREMENT OF BLOOD CONSTITUENTS
`
`
`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. 10,624,564 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`TABLE OF CONTENTS
`
` 
`
`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) ..................... 3 
`D.  Service Information .................................................................................. 4 
`PETITIONER HAS STANDING TO REQUEST IPR ................................... 4 
`’564 PATENT OVERVIEW ........................................................................... 5 
`A.  Brief Description ....................................................................................... 5 
`B.  Level of Ordinary Skill in the Art ............................................................. 8 
`  APPLICATION OF PRIOR ART TO THE ’564 PATENT CLAIMS ........... 9 
`A.  Asserted Grounds and References ............................................................ 9 
`B.  GROUND 1: Claims 1-10 and 13-30 are obvious over Aizawa, Ohsaki,
`and Goldsmith ......................................................................................... 10 
`1.  Overview of Aizawa ...................................................................... 10 
`2.  Overview of Ohsaki....................................................................... 13 
`3.  Overview of Goldsmith ................................................................. 15 
`4. 
`Combination of Aizawa, Ohsaki, and Goldsmith ......................... 19 
`5.  Manner in which Aizawa, Ohsaki, and Goldsmith render obvious
`Claims 1-10 and 13-30 .................................................................. 41 
`C.  GROUND 2 – Claim 11 is obvious over AOG and Sherman ................ 91 
`1.  Overview of Sherman .................................................................... 91 
`2. 
`Combination of AOG and Sherman .............................................. 93 
`3.  Manner in which AOG and Sherman render obvious Claim 11 ... 94 
`D.  GROUND 3 – Claim 12 is obvious over AOG and Rantala .................. 95 
`1.  Overview of Rantala ...................................................................... 95 
`2. 
`Combination of AOG and Rantala ................................................ 97 
`3.  Manner in which AOG and Rantala render obvious Claim 12 ..... 99 
`E.  GROUND 4 – Claims 1-10 and 13-30 are obvious over Aizawa, Ohsaki,
`Goldsmith, and Ali .................................................................................. 99 
`1.  Overview of Ali ...........................................................................100 
`2. 
`Combination of AOG and Ali and Manner in which AOG-Ali
`renders obvious [1h] ....................................................................101 
`F.  GROUND 5 – Claim 11 is obvious over Aizawa, Ohsaki, Goldsmith,
`Ali, and Sherman; GROUND 6 – Claim 12 is obvious over Aizawa,
`Ohsaki, Goldsmith, Ali, and Rantala ....................................................102 
`PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION ........103 
`
` 
`
` 
`
` 
`
`i
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`  CONCLUSION ............................................................................................108 
`  PAYMENT OF FEES – 37 C.F.R. § 42.103 ...............................................108 
`
`
`
`
`
`
`ii
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 10,624,564 to Jeroen Poeze, et al. (“the ‘564
`patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ‘564 Patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Thomas Kenny
`
`APPLE-1004
`
`RESERVED
`
`APPLE-1005
`
`RESERVED
`
`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
`
`US Pub. No. 2007/0093786 (“Goldsmith”)
`
`APPLE-1012
`
`processor, Merriam Webster’s Collegiate Dictionary, 10th Ed.,
`Merriam Webster Inc., 1999
`
`APPLE-1013
`
`US Patent No. 4,941,236 (“Sherman”)
`
`APPLE-1014
`
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al., Medical Instrumentation, Vol.
`22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`
`iii
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
` US Pub. No. 2008/0194932 (“Ayers”)
`
`APPLE-1015
`
`APPLE-1016
`
` U.S. Patent No. 7,558,622 (“Tran”)
`
`APPLE-1017
`
` U.S. Patent No. 6,351,217 (“Kuhn”)
`
`APPLE-1018
`
` U.S. Patent No. 7,656,393 (“King”)
`
`APPLE-1019
`
` U.S. Patent No. 6,584,336 (“Ali”)
`
`APPLE-1020
`
`US Pub. No. 2004/0054291 (“Schulz”)
`
`APPLE-1021
`
`Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`
`APPLE-1022
`
`U.S. Patent No. 6,912,413 (“Rantala”)
`
`APPLE-1023
`
`U.S. Patent No. 7,251,513 (“Kondoh”)
`
`APPLE-1024
`
`US Pub. No. 2004/0152957 (“Stivoric”)
`
`APPLE-1025
`
`JP Pub. No. 2005-270543 (“Tanagi”)
`
`APPLE-1026
`
`Certified English Translation of Tanagi and Translator’s Decla-
`ration
`
`APPLE-1027
`
`Declaration of Jacob Munford
`
`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. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`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
`
`
`APPLE-1037
`
`Order Amending Scheduling Order, Masimo et al. v. True
`Wearables et al., Case 8:18-CV-02001 (July 7, 2020)
`
`Masimo Corporation, et al. v. Apple Inc., Second Amended
`Complaint, Civil Action No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1038 to 1039
`
`RESERVED
`
`APPLE-1040
`
`Order Granting Stipulation to Amend the Scheduling Order,
`Masimo v. Apple et al., Case 8:20-cv-00048, Paper 201 (Sep-
`tember 21, 2020)
`
`APPLE-1041
`
`U.S. Patent No. 8,040,758 (“Dickinson”)
`
`
`
`
`
`v
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) of claims 1-30 (“the Challenged Claims”) of U.S. Patent No. 10,624,564
`
`(“’564 patent”). As explained in this Petition, there exists a reasonable likelihood
`
`that Apple will prevail with respect to the Challenged Claims.
`
`The ’564 patent describes and claims a purported improvement to a “physio-
`
`logical measurement device” (“PMD”) that includes one or more emitters, a cover
`
`including “a protruding convex surface” that extends over “at least four” detectors
`
`arranged on a substrate, and that is at least partially rigid. APPLE-1001, 14:11-19,
`
`36:40-51, 44:63-45:29, 20:25-60, 27:10-24, FIGS. 1, 3E, 7A, 7B, 11A, 11C, 14D.
`
`Each detector “can be implemented using one or more photodiodes, phototransis-
`
`tors,” “can capture and measure light transmitted from [an] emitter…that has been
`
`attenuated or reflected from the tissue,” and can “output a detector signal…respon-
`
`sive to the light ….” Id., 14:11-19.
`
`The PMD was not new. To the contrary, the ’564 patent was granted with-
`
`out full consideration to the wide body of applicable prior art. See generally AP-
`
`PLE-1002 (no office actions issued during prosecution). As Dr. Thomas Kenny
`
`explains in his declaration (APPLE-1003), PMDs commonly included covers by
`
`the ’564 patent’s earliest effective filing date, and a monitoring device including
`
`each feature of the PMD of the Challenged Claims would have been obvious to a
`
`1
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`POSITA. APPLE-1003, ¶¶[0020]-[0037]; APPLE-1001, 44:63-47:26.
`
`For example, Aizawa (APPLE-1006) describes a sensor featuring “four pho-
`
`todetectors” 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 ’564 patent, Ohsaki (APPLE-1009) renders obvious an optical sensor that fea-
`
`tures 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, as does Inokawa (AP-
`
`PLE-1007, APPLE-1008). APPLE-1009, Title, Abstract, ¶¶[0016], [0017], FIGS.
`
`1, 2; 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, ¶¶[0066]-[0070].
`
`The ’564 Patent’s claimed PMD also includes, e.g., a network interface and
`
`a touch-screen display configured to provide a user interface. APPLE-1001, 45:1-
`
`29. Yet, as Dr. Kenny explains, such features were common in PMDs prior to the
`
`’564 Patent’s earliest effective filing date. APPLE-1003, ¶¶[0074]-[0097]. Gold-
`
`smith, for example, implemented these and other features in a PMD to facilitate
`
`user interaction and remote monitoring of the user’s health. Id.; see infra Sections
`
`IV.B.3-IV.B.5.
`
`Apple respectfully submits that an IPR should be instituted, and that the
`
`Challenged Claims should be canceled as unpatentable.
`
`2
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
` 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 second amended complaint on July 24, 2020 in the U.S.
`
`District Court for the Central District of California (CDCA) (Case No. 8:20-cv-
`
`00048) against Apple, in which Masimo alleged, for the first time, infringement of
`
`the ’564 patent by Apple. The initial complaint in the case, which did not allege
`
`infringement of the ’564 patent, was served to Apple on January 13, 2020.
`
` IPRs challenging claims of related U.S. Patents 10,702,194, 10,702,195,
`
`10,709,366, and 10,631,765 are being filed concurrently or imminently. No other
`
`petitions for IPR of the ’564 Patent have been filed. On August 31, 2020, Apple
`
`filed petitions for IPR of related U.S. Patents 10,258,265 (IPR2020-01520),
`
`10,588,553 (IPR2020-01536 and IPR2020-01537). On September 2, 2020, Apple
`
`filed petitions for IPR of related U.S. Patents 10,292,628 (IPR2020-01521) and
`
`10,588,554 (IPR2020-01538 and IPR2020-01539).
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Apple provides the following designation of counsel.
`
`
`
`
`
`3
`
`

`

`LEAD COUNSEL
`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 56402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR50095-0023IP1@fr.com
`
`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
`BACKUP COUNSEL
`Andrew B. Patrick, Reg. No. 63,471
`Usman A. Khan, Reg. No. 70,439
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 56402
`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 IPR50095-0023IP1@fr.com
`
`(referencing No. 50095-0023IP1 and cc’ing PTABInbound@fr.com, axf-
`
`ptab@fr.com, patrick@fr.com and khan@fr.com.
`
`
`
` PETITIONER HAS STANDING TO REQUEST IPR
`Apple certifies that the ’564 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.). See supra Sec-
`
`tion I.B. Apple is not barred or estopped from requesting this review challenging
`
`the Challenged Claims on the below-identified grounds.
`
`
`
`
`
`4
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
` ’564 PATENT OVERVIEW
`A. Brief Description
`The’564 patent discloses “a noninvasive sensor and a patient monitor com-
`
`municating with the noninvasive sensor.” APPLE-1001, 2:47-60. The sensor
`
`“may include or be coupled to other components, such as a display device, [and] a
`
`network interface.” Id., 3:46-56. The “patient monitor” with which the sensor
`
`communicates may “include a display device,” and “a network interface communi-
`
`cating with any of a computer network, a handheld computing device, a mobile
`
`phone, [or] the Internet.” Id., 2:54-58; APPLE-1003, ¶¶[0038]-[0042].
`
`An exemplary system 100 shown in the ’564 patent’s FIG. 1 (reproduced be-
`
`low) includes “a sensor 101…that is coupled to a processing device or physiologi-
`
`cal monitor 109.” APPLE-1001, 11:56-67, 5:44-48. “In an embodiment, the sen-
`
`sor 101 and the monitor 109 are integrated together into a single unit.” APPLE-
`
`1001, 11:56-67.
`
`5
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
`
`
`APPLE-1001, FIG. 1.
`
`The ’564 patent’s FIGS. 2A-2D (reproduced below) illustrate “example
`
`monitoring devices 200 in which the data collection system 100 can be housed.”
`
`APPLE-1001, 16:31-42, 5:48-51. Each of the “monitoring devices 200” include a
`
`sensor 201 and a monitor 209. Id., FIGS. 2A-2D, 16:31-18:38.
`
`6
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
`
`
`APPLE-1001, FIGS. 2A-2D.
`
`The ’564 patent describes several potential architectures with respect to the
`
`detector submount and sensor as shown in FIGS. 14A-14I. APPLE-1001, 6:48-59,
`
`35:45-38:32. For example, in FIG. 14D, a housing 1430 including “a transparent
`
`cover 1432, upon which the protrusion 605b is disposed” surrounds each of the de-
`
`tectors 1410c. APPLE-1001, 36:40-51; APPLE-1003, ¶¶[0043]-[0045].
`
`7
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
`APPLE-1001, FIG. 14D.
`
`
`
`B. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art relating to the subject matter of the ’564
`
`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, ¶¶[0021]-[0022]. Additional education in a relevant field or
`
`industry experience may compensate for one of the other aspects of the POSITA
`
`characteristics stated above. Id.
`
`8
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
`APPLICATION OF PRIOR ART TO THE ’564 PATENT
`CLAIMS
`A. Asserted Grounds and References
`The Challenged Claims are invalid based on the 35 U.S.C § 103 (obvious-
`
`ness) grounds noted in the table below. Accompanying explanations and support
`
`are provided in Dr. Thomas Kenny’s Declaration (APPLE-1003). See APPLE-
`
`1003, ¶¶[0001]-[0188].
`
`Ground
`1
`
`Claims
`1-10 and 13-30
`
`2
`
`3
`
`4
`
`5
`
`6
`
`11
`
`12
`
`1-10 and 13-30
`
`11
`
`12
`
`103 Basis
`Aizawa in combination with Ohsaki and
`Goldsmith
`Aizawa in combination with Ohsaki,
`Goldsmith, and Sherman
`Aizawa in combination with Ohsaki,
`Goldsmith, and Rantala
`Aizawa in combination with Ohsaki,
`Goldsmith, and Ali
`Aizawa in combination with Ohsaki,
`Goldsmith, Ali, and Sherman
`Aizawa in combination with Ohsaki,
`Goldsmith, Ali, and Rantala
`
`As shown in the table below, each applied reference pre-dates U.S. provi-
`
`sional application 61/078,207, filed on July 3, 2008, which is the earliest filed ap-
`
`plication from which the ’564 patent claims priority. Apple does not take a posi-
`
`tion as to whether the ’564 patent is entitled to the priority date of July 3, 2008
`
`(hereinafter “Critical Date” or “Earliest Effective Filing Date”).
`
`9
`
`

`

`Reference
`
`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`Date
`Sec-
`tion
`
`Aizawa
`
`Ohsaki
`
`US 2002/0188210
`
`12/12/2002 (published)
`
`102(b)
`
`US 2001/0056243
`
`12/27/2001 (published)
`
`102(b)
`
`Goldsmith
`
`US 2007/0093786
`
`4/26/2007 (published)
`
`102(b)
`
`Sherman
`
`Ali
`
`Rantala
`
`US 4,941,236
`
`US 6,584,336
`
`US 6.912,413
`
`07/17/1990 (issued)
`
`06/24/2003 (issued)
`
`06/28/2005 (issued)
`
`102(b)
`
`102(b)
`
`102(b)
`
`
`
`B. GROUND 1: Claims 1-10 and 13-30 are obvious over Ai-
`zawa, Ohsaki, and Goldsmith
`1. Overview of Aizawa1
`Aizawa discloses a wrist-worn “sensor…detecting light output from a light
`
`emitting diode and reflected from the artery of a wrist of a subject.” APPLE-1006,
`
`Abstract, ¶¶[0002], [0026]. In more detail, and as shown in Aizawa’s FIGS. 1(a)
`
`and 1(b), Aizawa’s “pulse wave detector” includes an optical sensor featuring “an
`
`LED 21,” four photodetectors 22 disposed…symmetrically on a circle concentric
`
`
`1 General descriptions provided for this and other references and combinations
`
`thereof are incorporated into each subsection and mapping of the claims that in-
`
`cludes citations to these references.
`
`10
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`to the LED 21, and “a holder 23 for storing the above light emitting diode 21 and
`
`the photodetectors 22.”2 APPLE-1006, ¶¶[0002], [0008]-[0018], [0023]; FIGS.
`
`1(a), 1(b).
`
`APPLE-1006, FIG. 1(a).3
`
`
`
`
`2 Throughout this Petition, bolding in quotations is added for emphasis, unless oth-
`
`erwise indicated.
`
`3 Annotations to the figures throughout this petition are shown in color.
`
`11
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
`APPLE-1006, FIG. 1(b).
`
`
`
`As illustrated, Aizawa’s sensor also includes “a drive detection circuit 24
`
`for detecting a pulse wave by amplifying the outputs of the photodetectors 22,” “an
`
`arithmetic circuit [3] for computing a pulse rate from the detected pulse wave
`
`data,” and “a transmitter [4] for transmitting the above pulse rate data to an un-
`
`shown display.” APPLE-1006, ¶¶[0023], [0028], [0035].
`
`Aizawa’s sensor also includes a transparent plate positioned between the
`
`photodetectors and the wrist. APPLE-1006, ¶[0034]. Aizawa’s FIG. 1(b) shows
`
`the plate in contact with the user’s wrist. Id., FIG. 1(b); APPLE-1003, ¶¶[0047]-
`
`[0051].
`
`12
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
`APPLE-1006, FIG. 1(b).
`
`
`
`2. Overview of Ohsaki
`Ohsaki discloses a wrist-worn “sensor” 1 featuring a “detecting element”
`
`2 and a translucent board 8 with a 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], FIG. 1.
`
`13
`
`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
`APPLE-1009, FIG. 1.
`
`
`
`
`
`As illustrated below in Ohsaki’s FIG. 2, “detecting element” 2 includes “a
`
`package 5, a light emitting element 6 (e.g., LED), a light receiving element 7
`
`(e.g., PD), and a translucent board 8.” APPLE-1009, ¶[0017]. “The package 5
`
`has an opening and includes a” substrate in the form of “circuit board 9,” on
`
`which light emitting element 6 and light receiving element 7 are arranged. Id.;
`
`APPLE-1003, ¶¶[0052]-[0053].
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`14
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`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
`
`
`
`
`APPLE-1009, FIG. 2.
`
`Translucent board 8 is “attached to the opening of the package 5” and when
`
`the sensor is worn “on the user’s wrist…the convex surface of the translucent
`
`board…is in intimate contact with the surface of the user’s skin.” APPLE-1009,
`
`¶¶[0009], [0010], [0015], [0017], [0023]-[0025], FIGS. 1, 2, 4A, 4B. This contact
`
`prevents slippage, which increases the detectable signal strength. Id.; APPLE-
`
`1003, ¶[0054].
`
`3. Overview of Goldsmith
`Goldsmith discloses a medical watch controller device (“WCD”) 900. AP-
`
`PLE-1011, ¶¶[0085], [0095], [0098], [0104], [0010], claim 6. As illustrated below
`
`in Goldsmith’s FIGS. 9A and 9B, the WCD includes a wrist band 940 that enables
`
`15
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`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`the WCD 900 to be worn “like a watch.” Id., ¶¶[0085], [0095]; APPLE-1003,
`
`¶[0055].
`
`
`
`APPLE-1011, FIG. 9A (left), 9B (left).
`
`
`
`Goldsmith’s WCD can “be used with any number of...diagnostic devices”
`
`including “cardiac and other sensors” to obtain physiological measurements in-
`
`cluding user temperature, blood glucose level, oxygen level, and heart rate. AP-
`
`PLE-1011, ¶¶[0082]-[0084], [0095], [0037], [0038], claims 25, 26.
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`16
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`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`The WCD’s housing 905 includes a display 910 on its front side, which may
`
`be “a touchscreen display.” Id., ¶¶[0085], [0086], [0093], claims 5, 53. Display
`
`910 may display data received “from a sensor transmitter on the patient’s skin,”
`
`from “any number of therapy/diagnostic devices,” and/or from user input. Id.,
`
`¶¶[0082], [0087], [0095], [0102]. Goldsmith’s WCD can, for example, monitor
`
`and display “heart rate,” “the patient’s temperature...or other characteristic[s].” Id.,
`
`¶¶[0002], [0013], [0014], [0035]-[0037], [0082], [0087], [0088], [0095], [0102];
`
`APPLE-1003, ¶¶[0056]-[0057].
`
`Goldsmith’s FIG. 10 (reproduced below) depicts exemplary components in-
`
`cluded in the WCD. APPLE-1011, ¶[0088].
`
`
`
`APPLE-1011, FIG. 10.
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`17
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`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`Among other components, the WCD includes a memory, processor, trans-
`
`
`
`ceiver, and display (e.g., a touch-screen). APPLE-1011, FIG. 10, ¶¶[0088], [0091],
`
`[0093], [0095], [0085]-[0087], [0090], [0093], [0102], [0104], claims 9, 10, 12, 13,
`
`26, 43-45. A “processor 1012…is adapted to process data and commands inputted
`
`by the user, and a transmitter/transceiver 1018…coupled to the processor 1012
`
`transmits” communications, including data indicative of a user’s physiological pa-
`
`rameters, to other devices (e.g., a computer, cellular phone, and/or PDA). APPLE-
`
`1011, ¶¶[0007], [0016]-[0018], [0035], [0052], [0087]-[0089], [0097], [0101]. The
`
`transceiver may, e.g., receive diagnostic information from sensors included within
`
`the WCD’s housing, and transmit that information to other devices. Id., ¶¶[0052],
`
`[0088], [0094], [0087], [0034], [0036]; APPLE-1003, ¶¶[0058]-[0059]. The
`
`memory can store data such as heart rate data. APPLE-1011, ¶¶[0037], [0044],
`
`[0091], [0095], [0097].
`
`In some embodiments, the processor is implemented as a custom integrated
`
`circuit (IC), as shown in FIG. 8. APPLE-1011, ¶[0052]; APPLE-1003, ¶[0060].
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`18
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`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
`APPLE-1011, FIG. 8.
`
`
`
`4. Combination of Aizawa, Ohsaki, and Goldsmith
`(a) Aizawa and Ohsaki
`
`Convex surface
`Aizawa and Ohsaki are directed to physiological measurement devices
`
`(“PMD”) that include pulse sensors. APPLE-1006, Abstract, ¶[0002]; APPLE-
`
`1009, ¶[0016]. Aizawa’s PMD can be worn by a user like a watch including an
`
`emitter (LED) facing the user’s wrist. APPLE-1006, ¶[0026]; see supra Section
`
`IV.B.1. Aizawa’s sensor has a flat transparent plate 6 that contacts the user’s
`
`wrist. Id., FIG. 1(b); APPLE-1003, ¶[0066].
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`19
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`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
`APPLE-1006, FIG. 1(b).
`
`
`
`A POSITA would have recognized that with a flat plate 6, Aizawa’s wrist-
`
`worn PMD would have slipped along the user’s wrist, resulting in variations in the
`
`light detected by the photodetectors, as explained by Ohsaki. APPLE-1009,
`
`¶[0025]; APPLE-1003, ¶[0067]. Accordingly, a POSITA would have found it ob-
`
`vious to modify Aizawa’s sensor to include a cover having a protruding convex
`
`surface, improving adhesion between a surface of the sensor and the user’s wrist.
`
`APPLE-1009, ¶[0025]; APPLE-1003, ¶[0067]. Doing so would have amounted to
`
`nothing more than the use of a known technique to improve similar devices in the
`
`same way and combining prior art elements according to known methods to yield
`
`predictable results. See KSR v. Teleflex, 550 U.S. 398, 417 (2007); APPLE-1003,
`
`¶[67].
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`20
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`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`Ohsaki’s translucent board 8 is arranged such that, when Ohsaki’s PMD is
`
`worn “the convex surface of the translucent board…is in intimate contact with
`
`the…user’s skin”; this contact prevents slippage, which increases the strength of
`
`the obtainable signals. APPLE-1009, ¶¶[0015], [0017], [0025], FIGS. 1, 2, 4A,
`
`4B; APPLE-1003, ¶[0068].
`
`APPLE-1009, FIG. 2.
`
`
`
`Ohsaki explains that “if the translucent board 8 has a flat surface, the de-
`
`tected pulse wave is adversely affected by the movement of the user’s wrist as
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`21
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`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`shown in FIG. 4B,” but that if “the translucent board 8 has a convex surface…vari-
`
`ation of the amount of the reflected light…that reaches the light receiving element
`
`7 is suppressed.” APPLE-1009, ¶[0025]. Thus, when a protruding convex cover is
`
`used, “the pulse wave can be detected without being affected by the movement of
`
`the user’s wrist 4 as shown in FIG. 4A.” Id.
`
`APPLE-1009, FIGS. 4A, 4B.
`
`
`
`As shown below, a POSITA would have modified Aizawa’s flat cover to in-
`
`22
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`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`clude a protruding convex surface, similar to Ohsaki’s, to improve adhesion be-
`
`tween the user’s wrist and the sensor, improve detection efficiency, and protect the
`
`elements within the housing. APPLE-1003, ¶¶[0069]-[0070]; APPLE-1009,
`
`¶[0025]; APPLE-1015, ¶¶[0012], [0024], [0033], [0035], FIG. 6.
`
`
`
`
`
`APPLE-1006, FIG. 1(b) (after modification).
`
`
`
`Substrate
`A POSITA would have understood that Aizawa’s PMD includes a substrate
`
`to accommodate the LED 21 and phototransistors 22. APPLE-1006, ¶ [0023]; AP-
`
`PLE-1003, ¶[0071]. However, to the extent that the Patent Owner contends that
`
`23
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`

`

`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`Aizawa does not disclose a substrate, it would have been obvious to arrange Ai-
`
`zawa’s photodetectors on a substrate. APPLE-1003, ¶[0071]. For example, a
`
`POSITA would have understood that Aizawa’s photodetectors are secured to the
`
`PMD, provided with power by a power source (not shown), and can transmit sig-
`
`nals to other portions of the PMD through such a substrate. Id. A POSITA would
`
`have understood that the substrate provides physical support and electrical connec-
`
`tivity and is connected to the holder 23. Id. Indeed, a POSITA would have found
`
`it obvious to use such a substrate because it provides a simpler manufacturing pro-
`
`cess and more compact design than using and routing wires would allow. Id. Ai-
`
`zawa’s FIG. 1(b) illustrates a substrate, but does not label or describe such a struc-
`
`ture. Id.
`
`
`
`APPLE-1006, FIG. 1(b).
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`24
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`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`To the extent that Aizawa does not include a substrate, a POSITA would
`
`have modified Aizawa to incorporate a substrate, such as Ohsaki’s circuit board 9,
`
`to secure photodetectors 22 and enable photodetectors 22 to send signals to other
`
`PMD elements. APPLE-1003, ¶¶[0072]-[0073]; APPLE-1006, Abstract, ¶¶[0002],
`
`[0005], [0008]-[0016], [0023], [0027]-[0029], [0032]-[00 33], FIGS. 1, 2, 3, 4(a);
`
`APPLE-1009, ¶[0017], FIG. 2.
`
`APPLE-1009, FIG. 2
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`
`
`
`
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`25
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`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`
`(b) Aizawa, Ohsaki, and Goldsmith
`Aizawa acknowledges an interest in real-time heart rate measurement “at the
`
`time of exercise,” and describes its wrist-worn pulse wave sensor as being “easily
`
`attached,” and “capable of detecting a pulse wave accurately.” APPLE-1006,
`
`¶¶[0004], [0008]. Aizawa goes on to state that its sensor includes “a transmitter
`
`for transmitting…pulse rate data to an unshown display,” and that its “pulse rate
`
`detector…can be coupled to devices making use of bio signals.” APPLE-1006,
`
`¶¶[0023], [0035]. Accordingly, a POSITA would have understood that Aizawa’s
`
`sensor transmits data to a display and/or another device to which that sensor is cou-
`
`pled; further, the above-noted and related disclosure would have motivated a
`
`POSITA to implement Aizawa’s pulse rate sensor as part of a device that can mon-
`
`itor and display heart rate during exercise. APPLE-1003, ¶[0074]; APPLE-1006,
`
`¶¶[0004], [0008], [0023], [0026], [0035], FIGS. 1(a), 1(b), 2.
`
`As explained above in Section IV.B.3, Goldsmith describes a WCD that can
`
`be used with diagnostic devices including sensors to obtain, display, and communi-
`
`cate physiological measurements such as user temperature heart rate. APPLE-
`
`1011, ¶¶[0082]-[0084], [0095], [0037], [0038], claims 25, 26. Goldsmith’s WCD
`
`has a wrist band and can be worn like a watch such that it can monitor and display
`
`data “received from a sensor transmitter on the patient’s skin” and “communicate
`
`26
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`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`with a remote station.” APPLE-1011, ¶¶[0085], [0087], [0089], [0095], FIGS. 9A,
`
`9B, 10.
`
`From this and related description, a POSITA would have understood that
`
`Goldsmith’s WCD is capable of receiving heart rate data directly from the trans-
`
`mitter in Aizawa’s sensor, which is worn on the user’s skin, and that Goldsmith’s
`
`WCD can both display that data on its included touch-screen display, and wire-
`
`lessly communicate that data to additional devices, including cellular phones, for
`
`remote monitoring. APPLE-1003, ¶¶[0075]-[0076]; APPLE-1011, ¶¶[0017],
`
`[0034], [0036], [0082]-[0085], [0087]-[0089], [0095], [0097], FIGS. 9A, 9B, 10;
`
`APPLE-1006, ¶¶[0023], [0026], FIGS. 1(a), 1(b), 2.
`
`As explained in more detail below, a POSITA would have found it obvious
`
`to incorporate Aizawa’s wrist-worn pulse wave sensor with a protruding convex
`
`surface (“Aizawa-Ohsaki sensor”) into Goldsmith’s integrated wrist-worn WCD
`
`that includes, among other features, a touch screen, network interface, storage de-
`
`vice, and temperature sensor. APPLE-1003, ¶[0077]; APPLE-1011, FIG. 10,
`
`¶¶[0085]-[0088], [0090]-[0095], [0102], [0104], [0011], [0013], [0014], [0018],
`
`[0022]-[0024], [0035], [0043], [0046], [0050], [0052], FIGS. 8, 10, claims 5, 9, 10,
`
`12, 13, 26, 43-45 53.
`
`Indeed, Goldsmith states that its WCD may receive data “directly from a
`
`sensor transmitter on the patient’s skin,” adding that “the controller device may
`
`27
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`Attorney Docket No. 50095-0023IP1
`IPR of U.S. Patent No. 10,624,564
`monitor heart rate,” and a POSITA would have understood that Goldsmith’s heart
`
`rate sensor could be implemented by integrating the Aizawa-Ohsaki sensor into
`
`Goldsmith’s WCD, which would have enhanced the sensor’s utility and improved
`
`the user’s experience in many ways. APPLE-1003, ¶[0078]; APPLE-1011,
`
`¶¶[0087], [0095]. For example, and as explained in more detail below, a POSITA
`
`would incorporated the Aizawa-Ohsaki sensor into Goldsmith’s WCD