Trials@uspto.gov Paper 8
`571-272-7822 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.
`
`IPR2020-01715
`Patent 10,631,765 B1
`
`
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`
`
`
`
`
`
`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 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.
`
`IPR2020-01715
`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
`
`
`
`
`
`
`
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`IPR2020-01715
`Patent 10,631,765 B1
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`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 3 (“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”);
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`Apple Inc. v. Masimo Corporation, IPR2020-01714 (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 IPR2020-01714, and ranking second this
`proceeding. Paper 2, 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).
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`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. 3–4; 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,
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`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
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`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
`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.
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`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 1492b, 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.
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`
`
`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
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`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;
`[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
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`[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”);
`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”);
`Inokawa et al., Japanese Patent Application Publication
`No. 2006-296564 A, filed April 18, 2005, published November 2,
`2006 (Ex. 1007, “Inokawa”);2 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. 10. Petitioner also submits, inter alia, the Declaration of Thomas W.
`Kenny, Ph.D. (Ex. 1003).
`
`
`2 Petitioner relies on a certified English translation of Inokawa (Ex. 1008).
`In this Decision, we also refer to the translation.
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`F. Asserted Grounds
`Petitioner asserts that claims 1–29 are unpatentable based upon the
`following grounds:
`Claim(s) Challenged
`1–8, 10–13, 15–29
`
`35 U.S.C. §
`103
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`103
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`103
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`References/Basis
`Aizawa, Inokawa, Ohsaki,
`Mendelson-2006
`Aizawa, Inokawa, Ohsaki,
`Mendelson-2006, Bergey
`Aizawa, Inokawa, Ohsaki,
`Mendelson-2006, Goldsmith
`
`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.
`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., 868 F.3d
`1013, 1017 (Fed. Cir. 2017).
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of non-
`obviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
`evaluating a combination of teachings, we must also “determine whether
`there was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior art
`elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`In an inter partes review, the petitioner must show with particularity
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`Petitioner identifies the appropriate level of skill in the art as that
`possessed by a person having “a Bachelor of Science degree in an academic
`discipline emphasizing the design of electrical, computer, or software
`
`
`3 Patent Owner does not present objective evidence of non-obviousness at
`this stage.
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`technologies, in combination with training or at least one to two years of
`related work experience with capture and processing of data or information.”
`Pet. 8–9 (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. at 9.
`For purposes of this Decision, we generally adopt Petitioner’s
`assessment as set forth above, which appears consistent with the level of
`skill reflected in the Specification and prior art.
`
`D. Obviousness over the Combined Teachings of
`Aizawa, Inokawa, Ohsaki, and Mendelson-2006
`Petitioner presents undisputed contentions that claims 1–7 and 20–28
`of the ’765 patent would have been obvious over the combined teachings of
`Aizawa, Inokawa, Ohsaki, and Mendelson-2006. Pet. 41–87.
`1. Overview of Aizawa (Ex. 1006)
`Aizawa is a U.S. patent application publication titled “Pulse Wave
`Sensor and Pulse Rate Detector,” and discloses a pulse wave sensor that
`detects light output from a light emitting diode and reflected from a patient’s
`artery. Ex. 1006, codes (54), (57).
`Figure 1(a) of Aizawa is reproduced below.
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`Figure 1(a) is a plan view of a pulse wave sensor. Id. ¶ 23. As shown in
`Figure 1(a), pulse wave sensor 2 includes light emitting diode (“LED”) 21,
`four photodetectors 22 symmetrically disposed around LED 21, and
`holder 23 for storing LED 21 and photodetectors 22. Id. Aizawa discloses
`that, “to further improve detection efficiency, . . . the number of the
`photodetectors 22 may be increased.” Id. ¶ 32, Fig. 4(a). “The same effect
`can be obtained when the number of photodetectors 22 is 1 and a plurality of
`light emitting diodes 21 are disposed around the photodetector 22.” Id. ¶ 33.
`
`Figure 1(b) of Aizawa is reproduced below.
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`
`Figure 1(b) is a sectional view of the pulse wave sensor. Id. ¶ 23. As shown
`in Figure 1(b), pulse wave sensor 2 includes drive detection circuit 24 for
`detecting a pulse wave by amplifying the outputs of photodetectors 22. Id.
`¶ 23. Arithmetic circuit 3 computes a pulse rate from the detected pulse
`wave and transmitter 4 transmits the pulse rate data to an “unshown
`display.” Id. The pulse rate detector further includes outer casing 5 for
`storing pulse wave sensor 2, acrylic transparent plate 6 mounted to detection
`face 23a of holder 23, and attachment belt 7. Id. ¶ 23.
`Aizawa discloses that LED 21 and photodetectors 22 “are stored in
`cavities 23b and 23c formed in the detection face 23a” of the pulse wave
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`sensor. Id. ¶ 24. Detection face 23a “is a contact side between the holder 23
`and a wrist 10, respectively, at positions where the light emitting face 21s of
`the light emitting diode 21 and the light receiving faces 22s of the
`photodetectors 22 are set back from the above detection face 23a.” Id. ¶ 24.
`Aizawa discloses that “a subject carries the above pulse rate detector 1 on
`the inner side of his/her wrist 10 . . . in such a manner that the light emitting
`face 21s of the light emitting diode 21 faces down (on the wrist 10 side).”
`Id. ¶ 26. Furthermore, “the above belt 7 is fastened such that the acrylic
`transparent plate 6 becomes close to the artery 11 of the wrist 10. Thereby,
`adhesion between the wrist 10 and the pulse rate detector 1 is improved.”
`Id. ¶¶ 26, 34.
`
`2. Overview of Inokawa (Ex. 1007)
`Inokawa is a Japanese published patent application titled “Optical
`Vital Sensor, Base Device, Vital Sign Information Gathering System, and
`Sensor Communication Method,” and discloses a pulse sensor device.
`Ex. 1008 ¶ 6.
`Figure 1 of Inokawa is reproduced below.
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`Figure 1 illustrates a schematic view of a pulse sensor. Id. ¶ 56. Pulse
`sensor 1 includes box-shaped sensor unit 3 and flexible annular wristband 5.
`Id. ¶ 57. Sensor unit 3 includes a top surface with display 7 and control
`switch 9, and a rear surface (sensor-side) with optical device component 11
`for optically sensing a user’s pulse. Id.
`Figure 2 of Inokawa is reproduced below.
`
`
`Figure 2 illustrates a schematic view of the rear surface of the pulse sensor.
`Id. ¶ 58. The rear-side (sensor-side) of pulse sensor 1 includes a pair of
`light-emitting elements, i.e., green LED 21 and infrared LED 23, as well as
`photodiode 25 and lens 27. Id. In various embodiments, Inokawa discloses
`that the sensor-side lens is convex. See id. ¶¶ 99, 107. Green LED 21
`senses “the pulse from the light reflected off of the body (i.e.[,] change in the
`amount of hemoglobin in the capillary artery),” and infrared LED 23 senses
`body motion from the change in reflected light. Id. ¶ 59. The pulse sensor
`stores this information in memory. Id. ¶ 68. To read and store information,
`the pulse sensor includes a CPU that “performs the processing to sense
`pulse, body motion, etc. from the signal . . . and temporarily stores the
`analysis data in the memory.” Id. ¶ 69.
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`Figure 3 of Inokawa is reproduced below.
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`Figure 3 illustrates a schematic view of a pulse sensor mounted to a base
`device. Id. ¶ 60. Pulse sensor 1 is depicted as mounted to base device 17,
`which “is a charger with communication functionality.” Id. When so
`mounted, sensor optical device component 11 and base optical device
`component 41 face each other in close proximity. Id. ¶ 66. In this position,
`pulse sensor 1 can output information to the base device through the coupled
`optical device components. Id. ¶ 67. Specifically, the pulse sensor CPU
`performs the controls necessary to transmit pulse information using infrared
`LED 23 to photodetector 45 of base device 17. Id. ¶¶ 67, 70, 76. In an
`alternative embodiment, additional sensor LEDs and base photodetectors can
`be used to efficiently transmit data and improve accuracy. Id. ¶ 111.
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`3. Overview of Ohsaki (Ex. 1009)
`Ohsaki is a U.S. patent application publication titled “Wristwatch-type
`Human Pulse Wave Sensor Attached on Back Side of User’s Wrist,” and
`discloses an optical sensor for detecting a pulse wave of a human body.
`Ex. 1009, code (54), ¶ 3. Figure 1 of Ohsaki is reproduced below.
`
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`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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`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.
`
`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.
`
`4. Mendelson-2006 (Ex. 1010)
`Mendelson-2006 is a journal article titled “A Wearable Reflectance
`Pulse Oximeter for Remote Physiological Monitoring,” and discloses a
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`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.
`
`Figure 2 of Mendelson-2006 is reproduced below.
`
`
`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. 20–22.
`We follow Petitioner’s numbering scheme.
`
`
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`19
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`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™
`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.
`
`
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`20
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`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.
`
`5. Independent Claim 1
`Petitioner presents undisputed contentions that claim 1 would have
`been obvious over the combined teachings of Aizawa, Inokawa, Ohsaki, and
`Mendelson-2006. Pet. 38–62.
`
`i. “A physiological measurement system comprising”
`On this record, the cited evidence supports Petitioner’s undisputed
`contention that Aizawa discloses a pulse sensor.5 Pet. 38; see, e.g., Ex. 1006
`¶ 2 (disclosing “a pulse wave sensor for detecting the pulse wave of a
`subject”).
`
`ii.“[a] a physiological sensor device comprising”
`On this record, the cited evidence supports Petitioner’s undisputed
`contention that Aizawa discloses a physiological sensor device including a
`
`
`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
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`pulse rate detector. Pet. 38–41; see, e.g., Ex. 1006 ¶ 23 (pulse wave
`sensor 2), Figs. 1(a)–(b) (depicting pulse wave sensor 2).
`
`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
`contentions regarding this limitation. Specifically, Petitioner contends that
`Aizawa discloses LED 21 and states that, in certain embodiments, multiple
`LEDs may be employed. Pet. 11, 19–20; see, e.g., Ex. 1006 ¶¶ 23 (“LED 21
`. . . for emitting light having a wavelength of a near infrared range”), 33
`(explaining that instead of having a plurality of photodetectors and one LED,
`“[t]he same effect can be obtained when the number of photodetectors 22 is
`1 and a plurality of light emitting diodes 21 are disposed around the
`photodetector 22”). Petitioner also contends that Inokawa discloses using
`two emitters of different wavelengths “to improve the detected pulse wave
`by distinguishing between blood flow detection and body movement.”
`Pet. 20, 41–43; see, e.g., Ex. 1008 ¶¶ 58 (a pair of LEDs 21, 23), 59
`(detecting pulse and body motion). Petitioner also contends that when
`Inokawa’s sensor is mounted on its base device, the infrared LED is used to
`transmit vital information to the base device. Pet. 14–16; see, e.g., Ex. 1008
`¶¶ 76–77 (explaining that “vital sign information stored in the memory 63
`[of the sensor], such as pulse and body motion, is transmitted to the base
`device 17 using the S-side infrared LED 23 of the pulse sensor 1 and the B-
`side PD 45 of the base device 17,” such that “there is no need to use a
`special wireless communication circuit or a communication cable”).
`Petitioner further contends that a person of ordinary skill in the art
`would have been motivated to modify Aizawa “to include an additional LED
`
`22
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`as taught by Inokawa to improve the detected pulse wave by distinguishing
`between blood flow detection and body movement.” Pet. 20, 42–43;
`Ex. 1003 ¶¶ 80. Petitioner contends that such a modification also would
`have provided “additional functionality, including that of a wireless
`communication method,” which would have “eliminate[d] the need for ‘a
`special wireless communication circuit or a communication cable as
`previously’ and allows ‘vital sign information to the base device 17
`accurately, easily, and without malfunction.’” Id. at 20–21 (quoting
`Ex. 1008 ¶ 77); Ex. 1003 ¶ 81.
`To illustrate its proposed modification, Petitioner includes annotated
`and modified views of Aizawa’s Figures 1(a) and 1(b), reproduced below.
`Pet. 22; see also id. at 42 (same figures); Ex. 1003 ¶ 84.
`
`
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`Petitioner’s modified figures depict the sensor of Aizawa with an added
`“LED B,” as Petitioner contends would have been rendered obvious by
`Inokawa. Pet. 22–23, 41–42.
`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 ¶¶ 79–87, 109–110.
`
`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
`contention that Aizawa discloses at least four detectors, each stored in a
`cavity 23c, which would have been understood to be “openings or windows
`that mirror specific detector placement layouts.” Pet. 43–46; see, e.g.,
`Ex. 1006 ¶¶ 23 (“four phototransistors 22”), 24 (“stored in cavities” and “set
`back from . . . detection face 23a”), Figs. 1(a)–1(b) (depicting cavities 23c
`housing detectors 22); Ex. 1003 ¶¶ 113–118.
`
`v. “[d] a wall that surrounds at least the at least four
`detectors”
`On this record, the cited evidence supports Petitioner’s undisputed
`contention that Aizawa discloses holder 23, which is a wall that surrounds
`detectors 22, as well as other elements. Pet. 50–51; see, e.g., Ex. 1006 ¶ 23
`(“holder 23 for storing . . . light emitting diode 21 and the
`photodetectors 22”), Fig. 1(b) (depicting holder 23 surrounding each
`detector 22).
`
`24
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`
`vi. “[e] a cover comprising a protruding convex surface,
`wherein the protruding convex surf
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