Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Date: April 13, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 8
`Date: April 13, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`
`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 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) (“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 ’765 patent:
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`(C.D. Cal.) (filed Jan. 9, 2020) (“the parallel district court litigation”);
`
`2
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`Apple Inc. v. Masimo Corporation, IPR2020-01715 (PTAB Sept. 30,
`2020) (challenging claims 1–29 of the ’765 patent);1
`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);
`
`
`1 Pursuant to the Board’s November 2019, Consolidated Trial Practice
`Guide, available at https://www.uspto.gov/TrialPracticeGuideConsolidated,
`Petitioner filed a Notice ranking its two petitions that challenge the
`’765 patent, ranking first the instant proceeding and ranking second
`IPR2020-01715. Paper 3, 2. We decline to exercise discretion to deny
`institution in this case where (1) Patent Owner does not request that we
`exercise discretion to deny due to the presence of multiple petitions, (2) the
`two petitions challenge a large claim set, and (3) Petitioner represents that, at
`the time of the filing, Patent Owner had not yet narrowed the claims asserted
`in the parallel district court litigation. Paper 2, 2–3; Ex. 1040, 1 (reduction
`in claims due after petitions were filed).
`
`3
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`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
`Apple Inc. v. Masimo Corporation, IPR2020-01737 (PTAB Sept. 30,
`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,
`
`4
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`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.
`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.
`
`5
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`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
`received from the detectors.” Id. at 15:21–24. User interface 112 presents
`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 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
`
`6
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`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.
`
`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 contact area 470. Id. at 23:18–24. “[M]easurement site
`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 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.
`
`7
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`
`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;
`[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
`
`8
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`[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);
`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).
`
`9
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`
`F. Asserted Grounds
`Petitioner asserts that claims 1–29 are unpatentable based upon the
`following grounds:
`Claim(s) Challenged
`1–8, 10–13, 15–16,
`20–29
`
`35 U.S.C. §
`103
`
`References/Basis
`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
`
`9
`
`14
`
`17–19
`
`103
`
`103
`
`103
`
`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.
`Based on our analysis of the issues in dispute at this stage of the
`proceeding, we agree that no claim terms require express construction at this
`time. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868
`F.3d 1013, 1017 (Fed. Cir. 2017).
`
`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
`
`10
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`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.2 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
`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 with “a Bachelor of Science degree in an academic
`
`
`2 Patent Owner does not present objective evidence of non-obviousness at
`this stage.
`
`11
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`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.”
`Id. at 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.
`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
`Mendelson-799, Ohsaki, Schulz, and Mendelson-2006
`Petitioner presents undisputed contentions 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.
`
`1. 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).
`
`12
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`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.
`Sensor housing 17 accommodates the light source, light shield, and
`detectors. Id. at 9:34–35.
`
`13
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`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.
`
`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.
`
`14
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`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.
`
`
`Figure 2 illustrates a mechanism for detecting a pulse wave. Id. ¶ 13.
`Detecting element 2 includes package 5, light emitting element 6, light
`
`15
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`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.
`
`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 Schulz (Ex. 1013)
`Schulz is a U.S. patent application publication titled “Pulse Oximetry
`Ear Sensor,” and discloses an ear sensor assembly including an emitter pad
`and a detector pad. Ex. 1013, codes (54), (57).
`
`16
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`Figure 19C of Schulz is reproduced below.
`
`
`Figure 19C illustrates an exploded top perspective view of an ear sensor clip.
`Id. ¶ 31. Each sensor clip 1900 includes “opposingly positioned
`housings 1902 and 1903 that house one or more sensor optical components.”
`Id. ¶ 65. Each housing includes respective inward facing shells 1905 and
`1906.3 Id. ¶ 65. “[I]nward facing shells 1905 and 1906 further include
`windows 1919 and 1924 that provide an aperture for transmission of optical
`energy to or from a tissue site. Translucent silicone material covers
`windows 1919 and 1924 providing lenses 1920 and 1921.” Id. ¶ 67.
`A “thin sheet of opaque material is located beneath window 1919
`or 1924, and a window in the opaque material provides an aperture for
`transmission of optical energy to or from the tissue site.” Id. ¶ 73. “The
`
`
`3 Figure 19C appears to label inward facing shell 1906 as 1916. See id. at
`Fig. 19B.
`
`17
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`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.
`
`4. Mendelson-2006 (Ex. 1010)
`Mendelson-2006 is a journal article titled “A Wearable Reflectance
`Pulse Oximeter for Remote Physiological Monitoring,” and discloses a
`wireless wearable pulse oximeter connected to a personal digital assistant
`(“PDA”). Ex. 1010, 1.4
`Figure 1 of Mendelson-2006 is reproduced below.
`
`
`Figure 1 illustrates a sensor module attached to the skin (top), and a
`photograph of a disassembled sensor module and receiver module (bottom).
`The sensor module includes an optical transducer, a stack of round printed
`circuit boards, and a coin cell battery. Id. at 2.
`
`
`4 Petitioner cites to the page numbers added to Exhibit 1010, rather than the
`native page numbering that accompanies the article. See, e.g., Pet. 23–25.
`We follow Petitioner’s numbering scheme.
`
`18
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`
`Figure 2 of Mendelson-2006 is reproduced below.
`
`
`Figure 2 depicts a system block diagram of the wearable, wireless, pulse
`oximeter including the sensor module (top) and the receiver module
`(bottom). Id. The sensor module includes at least one light-emitting diode
`(“LED”), a photodetector, signal processing circuitry, an embedded
`microcontroller, and an RF transceiver. Id. at 1–2. Mendelson-2006
`discloses that a concentric array of discrete photodetectors could be used to
`increase the amount of backscattered light detected by a reflectance type
`pulse oximeter sensor. Id. at 4. The receiver module includes an embedded
`microcontroller, an RF transceiver for communicating with the sensor
`module, and a wireless module for communicating with the PDA. Id. at 2.
`As a PDA for use with the system, Mendelson-2006 discloses “the HP
`iPAQ h4150 PDA because it can support both 802.11b and Bluetooth™
`
`19
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`wireless communication” and “has sufficient computational resources.” Id.
`at 3. Mendelson 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.
`
`
`Figure 3 illustrates a sample PDA and its graphical user interface (“GUI”).
`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
`output information to the user and allows easy activation of various
`functions.” Id. “The GUI also displays the subject’s vital signs, activity
`level, body orientation, and a scrollable PPG waveform that is transmitted by
`the wearable device.” Id. For example, the GUI displays numerical oxygen
`saturation (“SpO2”) and heart rate (“HR”) values. Id.
`
`20
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`
`5. Independent Claim 1
`Petitioner presents undisputed contentions that claim 1 would have
`been obvious over the combined teachings of Mendelson-799, Ohsaki,
`Schulz, and Mendelson-2006. Pet. 40–61.
`
`i. “A physiological measurement system comprising”
`On this record, 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.5 Pet. 40–42;
`see, e.g., Ex. 1012, code (57), 7:25–8:13, 8:37–41, 9:22–40, 10:16–22,
`Fig. 7 (sensor device), Fig. 8 (pulse oximeter); Ex. 1010, 1–4, Fig. 3
`(handheld computing device); Ex. 1003 ¶¶ 89–122.
`
`ii.“[a] a physiological sensor device comprising”
`On this record, the cited evidence supports Petitioner’s undisputed
`contention that Mendelson-799 discloses a physiological sensor device
`including sensor 10 and pulse oximeter 20. Pet. 42–43; see, e.g., Ex. 1012,
`code (57) (“A sensor for use in an optical measurement device and a method
`for non-invasive measurement of a blood parameter.”), 9:22–40 (describing
`optical sensor 10), 10:16–30 (describing pulse oximeter 20, including
`sensor 10), Fig. 7 (sensor 10), Fig. 8 (pulse oximeter 20).
`
`
`5 Whether the preamble is limiting need not be resolved at this stage of the
`proceeding because Petitioner shows sufficiently for purposes of institution
`that the recitation in the preamble is satisfied by the prior art.
`
`21
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`iii. “[b] one or more emitters configured to emit light into
`tissue of a user”
`On this record, the cited evidence supports Petitioner’s undisputed
`contention that Mendelson-799 discloses light emitting elements 12a, 12b,
`and 12c that emit light into a user’s tissue. Pet. 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 (LEDs or
`laser sources 12a, 12b and 12c).
`
`iv.“[c] at least four detectors, wherein each of the at least
`four detectors has a corresponding window that allows
`light to pass through to the detector”
`On this record, the cited evidence supports Petitioner’s undisputed
`contentions regarding this limitation. Pet. 44–46. Specifically, Petitioner
`contends that Mendelson-799 discloses twelve photodetectors located within
`a sensor housing. Pet. 45; see, e.g., Ex. 1012, 9:22–40 (“The sensor 10
`comprises . . . an array of discrete detectors (e.g., photodiodes).”), Fig. 7
`(depicting rings of six far detectors 16 and six near detectors 18). Petitioner
`also contends that Schulz teaches “a sensor featuring ‘a thin sheet of opaque
`material’ placed inside the sensor’s housing . . . with ‘a window in the
`opaque material provid[ing] an aperture for transmission of optical energy to
`or from the tissue site,” which blocks light and avoids saturation of the
`sensor’s light detectors. Pet. 30 (quoting Ex. 1013 ¶ 73); see, e.g., Ex. 1013
`¶ 73 (“[T]he window in the opaque material can be sized as needed.”).
`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, to avoid saturation and to prevent ambient
`
`22
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`light from reaching the sensor’s detectors. Pet. 30–31, 34; see, e.g.,
`Ex. 1003 ¶¶ 101–109, 128–131; Ex. 1019, 79 (“[I]t is important to minimize
`the effects from light other than the optical signals of interest.”), 111.
`Petitioner contends it would have been obvious for the opaque layer to block
`optical paths to the detectors “other than at windows allowing light to pass
`through to corresponding detectors.” Pet. 45–46; see, e.g., Ex. 1003 ¶¶ 108–
`109.
`
`To illustrate its proposed modification, Petitioner includes an
`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.
`
`
`Petitioner’s modified and added figures depict the sensor of Mendelson-799
`with an added opaque layer, as Petitioner contends would have been
`rendered obvious by Schulz.6 Id. at 33–34, 45–46.
`
`
`6 Petitioner’s annotated figures also include an added opaque wall and an
`added cover as discussed infra at Sections II.D.5.v and II.D.5.vi.
`
`23
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`At this stage of the proceeding, Petitioner’s stated reasoning for the
`proposed modification is sufficiently supported, including by the unrebutted
`testimony of Dr. Kenny. See, e.g., Ex. 1003 ¶¶ 101–109, 128–131.
`
`v.“[d] a wall that surrounds at least the at least the four
`detectors”
`On this record, the cited evidence supports Petitioner’s undisputed
`contentions regarding this limitation. Pet. 47–48. Specifically, Petitioner
`contends that Mendelson-799 discloses sensor housing 17 that encircles
`detectors 16 and 18. Id. at 50; see, e.g., Ex. 1012, 9:23–40 (“All these
`elements are accommodated in a sensor housing 17.”), Fig. 7 (housing 17).
`Petitioner further acknowledges that Mendelson-799 does not depict a side
`view of the sensor and thus, to the extent Mendelson-799 does not explicitly
`teach that sensor housing 17 includes an opaque wall that circumscribes the
`sensor components, a person of ordinary skill in the art would have found it
`obvious “to connect, to the illustrated portion of sensor housing 17, an
`opaque wall configured to circumscribe the array of discrete detectors,” to
`shield the detectors from ambient light and to protect from external forces.
`Pet. 12–13, 23–24, 47–48; see, e.g., Ex. 1003 ¶¶ 64–66, 90, 132, 134.
`Petitioner contends this is consistent with the purpose of Mendelson-799’s
`light shield 14, which prevents light from reaching the detectors (id. at 13
`(citing Ex. 1012, 9:35–40)), as well as other prior art references cited in
`Mendelson-799 (id. at 13–17 (citing Exs. 1017, 1018)). See, e.g., Ex. 1003
`¶¶ 65–70, 134. For example, Dr. Kenny states that Ohsaki discloses a sensor
`including package 5 having a wall that surrounds light emitting element 6
`and light receiving element 7. Ex. 1003 ¶ 135; see, e.g., Ex. 1009 ¶ 17,
`Fig. 2 (detector 7 surrounded by wall of package 5).
`
`24
`
`
`
`IPR2020-01714
`Patent 10,631,765 B1
`To illustrate its proposed modification, Petitioner includes an
`annotated and modified view of Mendelson-799’s Figure 7, as well as an
`added sectional view, both of which are reproduced below. Pet. 16; see also
`id. at 24 (same), 47 (similar figures with slightly different annotations).
`
`
`Petitioner’s modified and added figures depict the sensor of Mendelson-799
`with an added opaque wall connected to the planar substrate of housing 17
`and encircling the sensor components, as Petitioner contends would have
`been obvious to a person of ordinary skill in the art. Id. at 15–16, 23–24, 47;
`Ex. 1003 ¶¶ 70, 90, 134.
`At this stage of the
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
