Trials@uspto.gov
`571-272-7822
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` Paper 34
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` Date: April 6, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01714
`Patent 10,631,765 B1
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
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`
`
`
`
`
`
`
` Paper 34
`
` Date: April 6, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01714
`Patent 10,631,765 B1
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1–29 (“challenged claims”) of U.S. Patent No. 10,631,765
`
`B1 (Ex. 1001, “the ’765 patent”). Paper 2 (“Pet.”). Masimo Corporation
`
`(“Patent Owner”) waived filing a preliminary response. Paper 7 (“PO
`
`Waiver”). We instituted an inter partes review of all challenged claims 1–
`
`29 on all grounds of unpatentability, pursuant to 35 U.S.C. § 314. Paper 8
`
`(“Inst. Dec.”).
`
`After institution, Patent Owner filed a Response (Paper 16, “PO
`
`Resp.”) to the Petition, Petitioner filed a Reply (Paper 20, “Pet. Reply”), and
`
`Patent Owner filed a Sur-reply (Paper 25, “PO Sur-reply”). An oral hearing
`
`was held on January 19, 2022, and a transcript of the hearing is included in
`
`the record. Paper 33 (“Tr.”).
`
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons set forth below, Petitioner has met
`
`its burden of showing, by a preponderance of the evidence, that challenged
`
`claims 1–29 of the ’765 patent are unpatentable.
`
`B. Related Matters
`
`The parties identify the following matters related to the ’765 patent:
`
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`
`(C.D. Cal.) (filed Jan. 9, 2020);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01715 (PTAB Sept. 30,
`
`2020) (challenging claims 1–29 of the ’765 patent);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01520 (PTAB Aug. 31,
`
`2020) (challenging claims of U.S. Patent No. 10,258,265 B1);
`
`
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`2
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`IPR2020-01714
`Patent 10,631,765 B1
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`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, IPR2020-01713 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,624,564 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01716 (PTAB Sept. 2,
`
`2020) (challenging claims of U.S. Patent No. 10,702,194 B1);
`
`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
`
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`IPR2020-01714
`Patent 10,631,765 B1
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`Apple Inc. v. Masimo Corporation, IPR2020-01737 (PTAB Sept. 30,
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`2020) (challenging claims of U.S. Patent No. 10,709,366 B1).
`
`Pet. 4–5; Paper 5, 1–4.
`
`
`
`Patent Owner further identifies the following pending patent
`
`applications, among other issued and abandoned applications, that claim
`
`priority to, or share a priority claim with, the ’765 patent:
`
`
`
`
`
`
`
`U.S. Patent Application No. 16/834,538;
`
`U.S. Patent Application No. 16/449,143; and
`
`U.S. Patent Application No. 16/805,605.
`
`
`
`Paper 5, 1–2.
`
`C. The ’765 Patent
`
`The ’765 patent is titled “Multi-Stream Data Collection System for
`
`Noninvasive Measurement of Blood Constituents,” and issued on April 28,
`
`2020, from U.S. Patent Application No. 16/725,478, filed December 23,
`
`2019. Ex. 1001, codes (21), (22), (45), (54). The ’765 patent claims priority
`
`through a series of continuation and continuation-in-part applications to
`
`Provisional Application Nos. 61/078,228 and 61/078,207, both filed July 3,
`
`2008. Id. at codes (60), (63).
`
`The ’765 patent discloses a two-part data collection system including
`
`a noninvasive sensor that communicates with a patient monitor. Id. at 2:38–
`
`40. The sensor includes a sensor housing, an optical source, and several
`
`photodetectors, and is used to measure a blood constituent or analyte, e.g.,
`
`oxygen or glucose. Id. at 2:29–35, 64–65. The patient monitor includes a
`
`display and a network interface for communicating with a handheld
`
`computing device. Id. at 2:45–48.
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`4
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`Patent 10,631,765 B1
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`Figure 1 of the ’765 patent is reproduced below.
`
`
`
`Figure 1 illustrates a block diagram of data collection system 100 including
`
`sensor 101 and monitor 109. Id. at 11:47–58. Sensor 101 includes optical
`
`emitter 104 and detectors 106. Id. at 11:59–63. Emitters 104 emit light that
`
`is attenuated or reflected by the patient’s tissue at measurement site 102. Id.
`
`at 14:3–7. Detectors 106 capture and measure the light attenuated or
`
`reflected from the tissue. Id. In response to the measured light,
`
`detectors 106 output detector signals 107 to monitor 109 through front-end
`
`interface 108. Id. at 14:7–10, 26–32. Sensor 101 also may include tissue
`
`shaper 105, which may be in the form of a convex surface that: (1) reduces
`
`the thickness of the patient’s measurement site; and (2) provides more
`
`surface area from which light can be detected. Id. at 11:2–14.
`
`Monitor 109 includes signal processor 110 and user interface 112. Id.
`
`at 15:16–18. “[S]ignal processor 110 includes processing logic that
`
`determines measurements for desired analytes . . . based on the signals
`
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`5
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`received from the detectors.” Id. at 15:21–24. User interface 112 presents
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`the measurements to a user on a display, e.g., a touch-screen display. Id. at
`
`15:46–56. The monitor may be connected to storage device 114 and
`
`network interface 116. Id. at 15:60–16:11.
`
`
`
`The ’765 patent describes various examples of sensor devices.
`
`Figures 14D and 14F, reproduced below, illustrate detector portions of
`
`sensor devices.
`
`
`
`Figure 14D illustrates portions of a detector submount and Figure 14F
`
`illustrates portions of a detector shell. Id. at 6:44–47. As shown in
`
`Figure 14D, multiple detectors 1410c are located within housing 1430 and
`
`under transparent cover 1432, on which protrusion 605b (or partially
`
`cylindrical protrusion 605) is disposed. Id. at 35:36–39, 36:30–37.
`
`Figure 14F illustrates a detector shell 306f including detectors 1410c on
`
`substrate 1400c. Id. at 37:9–17. Substrate 1400c is enclosed by shielding
`
`enclosure 1490 and noise shield 1403, which include window 1492a and
`
`window 1492a, respectively, placed above detectors 1410c. Id.
`
`Alternatively, cylindrical housing 1430 may be disposed under noise
`
`shield 1403 and may enclose detectors 1410c. Id. at 37:47–48.
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`
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`6
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`
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`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
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`measurement contact area 470. Id. at 23:18–24. “[M]easurement site
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`contact area 470 can include a surface that molds body tissue of a
`
`measurement site.” Id. “For example, . . . measurement site contact
`
`area 470 can be generally curved and/or convex with respect to the
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`measurement site.” Id. at 23:39–43. The measurement site contact area may
`
`include windows 420–423 that “mimic or approximately mimic a
`
`configuration of, or even house, a plurality of detectors.” Id. at 23:49–63.
`
`D. Illustrative Claim
`
`Of the challenged claims, claims 1 and 21 are independent. Claim 1 is
`
`illustrative and is reproduced below.
`
`1. A physiological measurement system comprising:
`
`[a] a physiological sensor device comprising:
`
`[b] one or more emitters configured to emit light into tissue
`of a user;
`
`[c] at least four detectors, wherein each of the at least four
`detectors has a corresponding window that allows light
`to pass through to the detector;
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`Patent 10,631,765 B1
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`[d] a wall that surrounds at least the at least four detectors;
`and
`
`[e] a cover comprising a protruding convex surface, wherein
`the protruding convex surface is above all of the at least
`four detectors, wherein at least a portion of the
`protruding convex surface is rigid, and wherein the
`cover operably connects to the wall; and
`
`[f] a handheld computing device in wireless communication with
`the physiological sensor device, wherein the handheld
`computing device comprises:
`
`[g] one or more processors configured to wirelessly
`receive one or more signals from the physiological
`sensor device, the one or more signals responsive to
`at least a physiological parameter of the user;
`
`[h] a touch-screen display configured to provide a user
`interface, wherein:
`
`[i] the user interface is configured to display indicia
`responsive to measurements of the physiological
`parameter, and
`
`[j] an orientation of the user interface is configurable
`responsive to a user input; and
`
`[k] a storage device configured to at least temporarily store
`at least the measurements of the physiological
`parameter.
`
`Ex. 1001, 44:51–15 (bracketed identifiers a–k added). Independent claim 21
`
`includes limitations substantially similar to limitations [a]–[f] of claim 1. Id.
`
`at 46:31–49.
`
`E. Applied References
`
`Petitioner relies upon the following references:
`
`Bergey, U.S. Patent No. 3,789,601, filed July 15, 1971, issued
`February 5, 1974 (Ex. 1016, “Bergey);
`
`
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`8
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`Mendelson, U.S. Patent No. 6,801,799 B2, filed February 6,
`2003, issued October 5, 2004 (Ex. 1012, “Mendelson-799”);
`
`Ohsaki et al., U.S. Patent Application Publication No.
`2001/0056243 A1, filed May 11, 2001, published December 27, 2001
`(Ex. 1009, “Ohsaki”);
`
`Aizawa, U.S. Patent Application Publication No.
`2002/0188210 A1, filed May 23, 2002, published December 12, 2002
`(Ex. 1006, “Aizawa”);
`
`Schulz et al., U.S. Patent Application Publication No.
`2004/0054291 A1, filed July 31, 2003, published March 18, 2004
`(Ex. 1013, “Schulz”);
`
`Goldsmith et al., U.S. Patent Application Publication
`No. 2007/0093786 A1, filed July 31, 2006, published April 26, 2007
`(Ex. 1011, “Goldsmith”); and
`
`Y. Mendelson et al., “A Wearable Reflectance Pulse Oximeter
`for Remote Physiological Monitoring,” Proceedings of the 28th IEEE
`EMBS Annual International Conference, 912–915 (2006) (Ex. 1010,
`“Mendelson-2006”).
`
`Pet. 11.
`
`Petitioner also submits, inter alia, the Declaration of Thomas W.
`
`Kenny, Ph.D. (Ex. 1003), and the Second Declaration of Thomas W. Kenny
`
`(Ex. 1047). Patent Owner submits, inter alia, the Declaration of Vijay K.
`
`Madisetti, Ph.D. (Ex. 2004). The parties also provide deposition testimony
`
`from Dr. Kenny and Dr. Madisetti, including from this proceeding and
`
`others. See Exs. 1052–1054, 2006–2009, 2027.
`
`
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`9
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`F. Asserted Grounds of Unpatentability
`
`We instituted an inter partes review based on the following grounds.
`
`Inst. Dec. 10, 34.
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`References/Basis
`
`1–8, 10–13, 15–16,
`20–29
`
`9
`
`14
`
`17–19
`
`103
`
`103
`
`103
`
`103
`
`Mendelson-799, Ohsaki,
`Schulz, Mendelson-2006
`Mendelson-799, Ohsaki,
`Schulz, Mendelson-2006,
`Bergey
`Mendelson-799, Ohsaki,
`Schulz, Mendelson-2006,
`Goldsmith
`Mendelson-799, Ohsaki,
`Schulz, Mendelson-2006,
`Aizawa
`
`II. DISCUSSION
`
`A. Claim Construction
`
`For petitions filed on or after November 13, 2018, a claim shall be
`
`construed using the same claim construction standard that would be used to
`
`construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R.
`
`§ 42.100(b) (2019). Petitioner submits that no claim term requires express
`
`construction. Pet. 9–10. Patent Owner submits that claim terms should be
`
`given their ordinary and customary meaning, consistent with the
`
`Specification. PO Resp. 10–11.
`
`We agree that no claim terms require express construction. Nidec
`
`Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013,
`
`1017 (Fed. Cir. 2017).
`
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`B. Principles of Law
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`
`between the subject matter sought to be patented and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations, including (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of skill in the art; and (4) objective evidence of
`
`nonobviousness.1 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
`
`elements would have produced a predictable result weighs in the ultimate
`
`determination of obviousness. Id. at 416–417.
`
`In an inter partes review, the petitioner must show with particularity
`
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To
`
`prevail, Petitioner must support its challenge by a preponderance of the
`
`evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`
`1 Patent Owner has not presented objective evidence of non-obviousness.
`
`
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`11
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`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 with “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. 9 (citing Ex. 1003 ¶¶ 20–21). “Alternatively, the person could have also
`
`had a Master of Science degree in a relevant academic discipline with less
`
`than a year of related work experience in the same discipline.” Id.
`
`Patent Owner makes several observations regarding Petitioner’s
`
`identified level of skill in the art but, “[f]or this proceeding, [Patent Owner]
`
`nonetheless applies Petitioner’s asserted level of skill.” PO Resp. 10 (citing
`
`Ex. 2004 ¶¶ 32–35).
`
`We adopt Petitioner’s assessment as set forth above, which appears
`
`consistent with the level of skill reflected in the Specification and prior art.
`
`D. Obviousness over the Combined Teachings of
`Mendelson-799, Ohsaki, Schulz, and Mendelson-2006
`
`Petitioner contends that claims 1–8, 10–13, 15, 16, and 20–29 of the
`
`’765 patent would have been obvious over the combined teachings of
`
`Mendelson-799, Ohsaki, Schulz, and Mendelson-2006. Pet. 11–87; see also
`
`generally Pet. Reply. Patent Owner disagrees. PO Resp. 12–62; see also
`
`generally PO Sur-reply.
`
`Based on our review of the parties’ arguments and the cited evidence
`
`of record, we determine that Petitioner has met its burden of showing by a
`
`
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`preponderance of evidence that claims 1–8, 10–13, 15, 16, and 20–29 are
`
`unpatentable.
`
` Overview of Mendelson-799 (Ex. 1012)
`
`Mendelson-799 is a U.S. patent titled “Pulse Oximeter and Method of
`
`Operation,” and discloses a sensor for non-invasive measurement of a blood
`
`parameter, which includes a sensor housing, a radiation source, and a
`
`detector. Ex. 1012, codes (54), (57).
`
`Figure 7 of Mendelson-799 is reproduced below.
`
`
`
`Figure 7 illustrates optical sensor 10 with light source 12, which includes
`
`three closely spaced light emitting elements 12a, 12b, 12c. Id. at 9:22–28.
`
`Optical sensor 10 includes an array of discrete detectors, i.e., “far”
`
`detectors 16 and “near” detectors 18, “arranged in two concentric ring-like
`
`arrangements . . . surrounding the light emitting elements.” Id. at 9:29–34.
`
`“[L]ight shield 14 is positioned between the photodiodes and the light
`
`emitting elements, and prevents direct optical coupling between them,
`
`thereby maximizing the fraction of backscattered light passing through the
`
`arterially perfused vascular tissue in the detected light.” Id. at 9:35–40.
`
`
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`13
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`Sensor housing 17 accommodates the light source, light shield, and
`
`detectors. Id. at 9:34–35.
`
`Figure 8 of Mendelson-799 is reproduced below.
`
`
`
`Figure 8 illustrates a block diagram of pulse oximeter 20 using sensor 10.
`
`Id. at 10:16–17. Pulse oximeter 20 includes control unit 21, with electronic
`
`block 22 connectable to sensor 10, microprocessor 24, and display 26, which
`
`presents measurement results. Id. at 10:17–22. “The measured data (i.e.,
`
`electrical output of the sensor 10 indicative of the detected light) is directly
`
`processed in the block 22, and the converted signal 25 is further processed
`
`by the microprocessor 24.” Id. at 10:22–25.
`
` Overview of Ohsaki (Ex. 1009)
`
`Ohsaki is a U.S. patent application publication titled “Wristwatch-type
`
`Human Pulse Wave Sensor Attached on Back Side of User’s Wrist,” and
`
`discloses an optical sensor for detecting a pulse wave of a human body.
`
`Ex. 1009, code (54), ¶ 3.
`
`
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`14
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`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.
`
`
`
`Figure 2 of Ohsaki, reproduced below, illustrates further detail of
`
`detecting element 2.
`
`
`
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`15
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`Figure 2 illustrates a mechanism for detecting a pulse wave. Id. ¶ 13.
`
`Detecting element 2 includes package 5, light emitting element 6, light
`
`receiving element 7, and translucent board 8. Id. ¶ 17. Light emitting
`
`element 6 and light receiving element 7 are arranged on circuit board 9
`
`inside package 5. Id. ¶¶ 17, 19.
`
`“[T]ranslucent board 8 is a glass board which is transparent to light,
`
`and attached to the opening of the package 5. A convex surface is formed
`
`on the top of the translucent board 8.” Id. ¶ 17. “[T]he convex surface of
`
`the translucent board 8 is in intimate contact with the surface of the user’s
`
`skin,” preventing detecting element 2 from slipping off the detecting
`
`position of the user’s wrist. Id. ¶ 25. By preventing the detecting element
`
`from moving, the convex surface suppresses “variation of the amount of the
`
`reflected light which is emitted from the light emitting element 6 and
`
`reaches the light receiving element 7 by being reflected by the surface of the
`
`user’s skin.” Id. Additionally, the convex surface prevents penetration by
`
`“noise such as disturbance light from the outside.” Id.
`
`
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`Sensor body 3 is connected to detecting element 2 by signal line 13.
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`Id. ¶ 20. Signal line 13 connects detecting element 2 to drive circuit 11,
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`microcomputer 12, and a monitor display (not shown). Id. Drive circuit 11
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`drives light emitting element 6 to emit light toward wrist 4. Id. Detecting
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`element 2 receives reflected light which is used by microcomputer 12 to
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`calculate pulse rate. Id. “The monitor display shows the calculated pulse
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`rate.” Id.
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`16
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` Overview of Schulz (Ex. 1013)
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`Schulz is a U.S. patent application publication titled “Pulse Oximetry
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`Ear Sensor,” and discloses an ear sensor assembly including an emitter pad
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`and a detector pad. Ex. 1013, codes (54), (57).
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`Figure 19C of Schulz is reproduced below.
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`
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`Figure 19C illustrates an exploded top perspective view of an ear sensor clip.
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`Id. ¶ 31. Each sensor clip 1900 includes “opposingly positioned
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`housings 1902 and 1903 that house one or more sensor optical components.”
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`Id. ¶ 65. Each housing includes respective inward facing shells 1905 and
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`1906.2 Id. ¶ 65. “[I]nward facing shells 1905 and 1906 further include
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`windows 1919 and 1924 that provide an aperture for transmission of optical
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`2 Figure 19C appears to label inward facing shell 1906 as 1916. See id. at
`Fig. 19B.
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`17
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`energy to or from a tissue site. Translucent silicone material covers
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`windows 1919 and 1924 providing lenses 1920 and 1921.” Id. ¶ 67.
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`A “thin sheet of opaque material is located beneath window 1919 or 1924,
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`and a window in the opaque material provides an aperture for transmission
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`of optical energy to or from the tissue site.” Id. ¶ 73. “The opaque material
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`blocks light, and the window in the opaque material can be sized as needed
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`to block the proper amount of light from entering the aperture to, for
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`example, avoid saturation of the light detector.” Id.
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` Mendelson-2006 (Ex. 1010)
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`Mendelson-2006 is a journal article titled “A Wearable Reflectance
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`Pulse Oximeter for Remote Physiological Monitoring,” and discloses a
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`wireless wearable pulse oximeter connected to a personal digital assistant
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`(“PDA”). Ex. 1010, 1.3
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`Figure 1 of Mendelson-2006 is reproduced below.
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`
`
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`3 Petitioner cites to the page numbers added to Exhibit 1010, rather than the
`native page numbering that accompanies the article. See, e.g., Pet. 23–25.
`We follow Petitioner’s numbering scheme.
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`18
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`Figure 1 illustrates a sensor module attached to the skin (top), and a
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`photograph of a disassembled sensor module and receiver module (bottom).
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`The sensor module includes an optical transducer, a stack of round printed
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`circuit boards, and a coin cell battery. Id. at 2.
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`
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`Figure 2 of Mendelson-2006 is reproduced below.
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`
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`Figure 2 depicts a system block diagram of the wearable, wireless, pulse
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`oximeter including the sensor module (top) and the receiver module
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`(bottom). Id. The sensor module includes at least one light-emitting diode
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`(“LED”), a photodetector, signal processing circuitry, an embedded
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`microcontroller, and an RF transceiver. Id. at 1–2. Mendelson-2006
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`discloses that a concentric array of discrete photodetectors could be used to
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`increase the amount of backscattered light detected by a reflectance type
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`pulse oximeter sensor. Id. at 4. The receiver module includes an embedded
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`19
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`microcontroller, an RF transceiver for communicating with the sensor
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`module, and a wireless module for communicating with the PDA. Id. at 2.
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`As a PDA for use with the system, Mendelson-2006 discloses “the HP
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`iPAQ h4150 PDA because it can support both 802.11b and Bluetooth™
`
`wireless communication” and “has sufficient computational resources.” Id.
`
`at 3. Mendelson-2006 further discloses that
`
`[t]he use of a PDA as a local terminal also provides a low-cost
`touch screen interface. The user-friendly touch screen of the
`PDA offers additional flexibility. It enables multiple controls to
`occupy the same physical space and the controls appear only
`when needed. Additionally, a touch screen reduces development
`cost and time, because no external hardware is required. . . . The
`PDA can also serve to temporarily store vital medical
`information received from the wearable unit.
`
`Id.
`
`The PDA is shown in Figure 3 of Mendelson-2006, reproduced below.
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`
`
`Figure 3 illustrates a sample PDA and its graphical user interface (“GUI”).
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`Id. Mendelson-2006 explains that the GUI allows the user to interact with
`
`the wearable system. Id. “The GUI was configured to present the input and
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`output information to the user and allows easy activation of various
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`functions.” Id. “The GUI also displays the subject’s vital signs, activity
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`
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`20
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`level, body orientation, and a scrollable PPG waveform that is transmitted by
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`the wearable device.” Id. For example, the GUI displays numerical oxygen
`
`saturation (“SpO2”) and heart rate (“HR”) values. Id.
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` Independent Claim 1
`
`Petitioner contends that claim 1 would have been obvious over the
`
`combined teachings of Mendelson-799, Ohsaki, Schulz, and Mendelson-
`
`2006. Pet. 11–61. Below, we set forth how the combination of prior art
`
`references teaches or suggests the claim limitations that are not disputed by
`
`the parties. For those limitations and reasons for combining the references
`
`that are disputed, we examine each of the parties’ contentions and then
`
`provide our analysis.
`
`i. “A physiological measurement system comprising”
`
`The cited evidence supports Petitioner’s undisputed contention that
`
`the combination of Mendelson-799, Ohsaki, Schulz, and Mendelson-2006
`
`satisfies the subject matter of the preamble.4 Pet. 40–42; see, e.g., Ex. 1012,
`
`code (57), 8:37–41, 9:22–40, 10:15–22, Fig. 7 (sensor device), 8 (pulse
`
`oximeter); Ex. 1010, 1–4, Fig. 3 (handheld computing device); Ex. 1003
`
`¶¶ 89–118, 121–122.
`
`ii. “[a] a physiological sensor device comprising”
`
`The cited evidence supports Petitioner’s undisputed contention that
`
`Mendelson-799 discloses a physiological sensor device including sensor 10
`
`and pulse oximeter 20. Pet. 42; see, e.g., Ex. 1012, code (57) (“A sensor for
`
`
`4 Whether the preamble is limiting need not be resolved because Petitioner
`shows sufficiently that the preamble’s subject matter is satisfied by the art.
`
`
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`21
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`use in an optical measurement device.”), 9:22–40 (describing sensor 10),
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`10:16–30 (describing pulse oximeter 20, including sensor 10), Figs. 7–8.
`
`iii. “[b] one or more emitters configured to emit light into tissue of a user”
`
`The cited evidence supports Petitioner’s undisputed contention that
`
`Mendelson-799 discloses one or more light emitting elements 12a–c that
`
`emit light into a user’s tissue. Pet. 43–44; see, e.g., Ex. 1012, 9:22–40 (“The
`
`sensor 10 comprises . . . light source 12 composed of three closely spaced
`
`light emitting elements (e.g., LEDs or laser sources) 12a, 12b and 12c
`
`generating light of three different wavelengths.”), Fig. 7.
`
`iv. “[c] at least four detectors,
`wherein each of the at least four detectors has a corresponding window
`that allows light to pass through to the detector”
`
`Petitioner’s Undisputed Contentions
`
`Petitioner contends that Mendelson-799 discloses twelve
`
`photodetectors located within a sensor housing. Pet. 44–45. Patent Owner
`
`does not dispute this contention, and we agree with Petitioner. Mendelson-
`
`799 discloses that “sensor 10 comprises . . . an array of discrete detectors
`
`(e.g., photodiodes),” including six far detectors 16 and six near detectors 18.
`
`See, e.g., Ex. 1012, 9:22–40, Fig. 7.
`
`Petitioner does not contend that Mendelson-799 discloses the claimed
`
`windows. Rather, Petitioner contends that Schulz teaches “a sensor
`
`featuring ‘a thin sheet of opaque material’ placed inside the sensor’s housing
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`. . . with ‘a window in the opaque material provid[ing] an aperture for
`
`transmission of optical energy to or from the tissue site,’” wherein the
`
`opaque material blocks light and avoids saturation of the sensor’s detectors.
`
`
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`22
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`Pet. 30. Patent Owner does not dispute this contention, and we agree with
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`Petitioner. Schulz discloses that a “thin sheet of opaque material” can be
`
`placed between the optical components of the sensor and the sensor’s
`
`housing. Ex. 1013 ¶ 73. Schulz explains that the opaque material includes a
`
`window that allows for transmission of optical energy to the detector. Id.
`
`According to Schulz, the “opaque material blocks light, and the window in
`
`the opaque material can be sized as needed to block the proper amount of
`
`light from entering the aperture to, for example, avoid saturation of the light
`
`detector.” Id.
`
`Petitioner’s Disputed Contentions
`
`Petitioner further contends that a person of ordinary skill in the art
`
`would have been motivated “to add a layer of opaque material” to
`
`Mendelson-799’s sensor, as taught by Schulz, “and to size windows in the
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`opaque material as appropriate to avoid saturation of each of the sensor’s
`
`detectors.” Pet. 30 (citing, e.g., Ex. 1003 ¶¶ 103–109), 45–46 (citing, e.g.,
`
`Ex. 1003 ¶¶ 89–109). According to Petitioner, errors are reduced by
`
`minimizing the amount of ambient light that reaches the detectors, for
`
`example, by decreasing the angle of incidence to the detectors. Id. at 31
`
`(citing Ex. 1019, 76, 79–80, 94). Petitioner contends that a person of
`
`ordinary skill in the art would have understood that “Schulz’s opaque layer
`
`limits errors by decreasing the angle of incidence to the photodiode to that
`
`enabled by the window included within the layer, and by otherwise
`
`preventing ambient light from reaching the photodiode.” Id. (citing, e.g.,
`
`Ex. 1003 ¶¶ 104–105). Petitioner also contends that a skilled artisan would
`
`have recognized that, when applying Schulz’s teachings to a sensor with
`
`
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`23
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`multiple detectors, multiple windows would have been employed. Id. at 31–
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`32 (citing, e.g., Ex. 1003 ¶¶ 106–109).
`
`To illustrate its proposed modification, Petitioner includes an
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`annotated and modified view of Mendelson-799’s Figure 7, as well as an
`
`added sectional view, both of which are reproduced below. Pet. 34; see also
`
`id. at 46 (similar figures with slightly different annotations); Ex. 1003
`
`¶¶ 108–109.
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`Petitioner’s modified figure and added sectional view depict the sensor of
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`Mendelson-799 with an added opaque layer (illustrated in green) having
`
`windows, as Petitioner contends would have been rendered obvious by
`
`Schulz.5 Pet. 34, 46.
`
`
`
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`5 Petitioner’s annotated figures also include an added opaque wall and an
`added top cover as discussed infra at Sections II.D.5.v and II.D.5.vi.
`
`
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`24
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`Patent Owner’s Arguments
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`Patent Owner argues that a person of ordinary skill in the art would
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`not have been motivated to modify Mendelson-799 as proposed because
`
`adding an opaque layer would decrease signal strength, especially for a
`
`reflectance pulse oximeter like Mendelson-799, which Patent Owner alleges
`
`has a weak signal already. PO Resp. 47–48 (citing, e.g., Ex. 2004 ¶¶ 83–
`
`84); PO Sur-reply 22–24. According to Patent Owner, Schulz uses the
`
`window in the opaque material only to reduce “desired” light to a “proper”
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`level, i.e., only to reduce the light generated by the emitter that passes
`
`through the user’s tissue before reaching the detector, but the wind
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