IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Jeroen Poeze, et al.
`In re Patent of:
`10,631,765 Attorney Docket No.: 50095-0024IP2
`U.S. Patent No.:
`April 28, 2020
`
`Issue Date:
`Appl. Serial No.: 16/725,478
`
`Filing Date:
`December 23, 2019
`
`Title:
`MULTI-STREAM DATA COLLECTION SYSTEM FOR NONIN-
`VASIVE MEASUREMENT OF BLOOD CONSTITUENTS
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 10,631,765 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 3
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 3
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 3
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 4
`D. Service Information .................................................................................. 5
`PETITIONER HAS STANDING TO REQUEST IPR ................................... 5
`II.
`III. OVERVIEW OF THE ’765 PATENT ............................................................ 5
`A. Brief Description ....................................................................................... 5
`B. Level of Ordinary Skill in the Art ............................................................. 8
`C. Claim Construction ................................................................................... 9
`IV. APPLICATION OF PRIOR ART TO THE ’765 PATENT CLAIMS ........... 9
`A. Asserted Grounds and References ............................................................ 9
`B. GROUND 1: Claims 1-8, 10-13, and 15-29 are obvious over Aizawa,
`Inokawa, Ohsaki, and Mendelson-2006 ................................................. 11
`1. Overview of Aizawa ...................................................................... 11
`2. Overview of Inokawa .................................................................... 13
`3. Overview of Ohsaki....................................................................... 16
`4. Overview of Mendelson-2006 ....................................................... 17
`5.
`Combination of Aizawa, Inokawa, Ohsaki, and Mendelson-2006
` ....................................................................................................... 19
`6. Analysis ......................................................................................... 38
`C. GROUND 2: Claim 9 is obvious over Aizawa, Inokawa, Ohsaki,
`Mendelson-2006, and Bergey ................................................................. 93
`1. Overview of Bergey ...................................................................... 93
`2.
`Combination of Aizawa, Inokawa, Ohsaki, Mendelson-2006 and
`Bergey............................................................................................ 94
`D. GROUND 3: Claim 14 is obvious over Aizawa, Inokawa, Ohsaki,
`Mendelson-2006, and Goldsmith ............................................................ 96
`1. Overview of Goldsmith ................................................................. 96
`2.
`Combination of Aizawa, Inokawa, Ohsaki, Mendelson-2006 and
`Goldsmith ...................................................................................... 98
`PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION ........101
`V.
`VI. CONCLUSION ............................................................................................106
`VII. PAYMENT OF FEES – 37 C.F.R. § 42.103 ...............................................107
`
`
`i
`
`

`

`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 10,631,765
`
`APPLE-1002
`
`File History for the ‘765 Patent
`
`APPLE-1003
`
`Declaration of Dr. Kenny
`
`APPLE-1004
`
`Curriculum Vitae of Dr. Kenny
`
`APPLE-1005
`
`Masimo Corporation, et al. v. Apple Inc., Complaint, Civil Ac-
`tion No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1006
`
`US Pub. No. 2002/0188210 (“Aizawa”)
`
`APPLE-1007
`
`JP Pub. No. 2006/296564 (“Inokawa”)
`
`APPLE-1008
`
`Certified English Translation of Inokawa and Translator’s Dec-
`laration
`
`APPLE-1009
`
`US Pub. No. 2001/0056243 (“Ohsaki”)
`
`APPLE-1010
`
`“A Wearable Reflectance Pulse Oximeter for Remote Physio-
`logical Monitoring,” Y. Mendelson, et al.; Proceedings of the
`28th IEEE EMBS Annual International Conference, 2006; pp.
`912-915 (“Mendelson-2006”)
`
`APPLE-1011
`
`US Pub. No. US 2007/0093786 (“Goldsmith”)
`
`APPLE-1012
`
`US Patent No. 6,801,799 (“Mendelson-799”)
`
`APPLE-1013
`
`US Pub. No. 2004/0054291 (“Schulz”)
`
`APPLE-1014
`
`RESERVED
`
`APPLE-1015
`
`RESERVED
`
`APPLE-1016
`
`US Patent No. 3,789,601 (“Bergey”)
`
`ii
`
`

`

`APPLE-1017
`
`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic Institute,
`Biomedical Engineering Program, Worcester, MA 01609; As-
`sociation for the Advancement of Medical Instrumentation, vol.
`22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`
`APPLE-1018
`
`“Skin Reflectance Pulse Oximetry: In Vivo Measurements from
`the Forearm and Calf,” Y. Mendelson, et al.; Journal of Clinical
`Monitoring, vol. 7, No. 1, January 1991 (“Mendelson 1991”)
`
`APPLE-1019
`
`Excerpts from Design of Pulse Oximeters, J.G. Webster; Insti-
`tution of Physics Publishing, 1997 (“Webster”)
`
`APPLE-1020
`
`QuickSpecs; HP iPAQ Pocket PC h4150 Series
`
`APPLE-1021
`
`Excerpts from How to Do Everything with Windows Mobile,
`Frank McPherson; McGraw Hill, 2006 (“McPherson”)
`
`APPLE-1022
`
`Excerpts from Master Visually Windows Mobile 2003, Bill
`Landon, et al.; Wiley Publishing, Inc., 2004 (“Landon”)
`
`APPLE-1023
`
`“Stimulating Student Learning with a Novel ‘In-House’ Pulse
`Oximeter Design,” J. Yao and S. Warren; Proceedings of the
`2005 American Society for Engineering Education Annual
`Conference & Exposition, 2005 (“Yao”)
`
`APPLE-1024
`
`US Pub. No. 2008/0194932 (“Ayers”)
`
`APPLE-1025
`
`U.S. Patent No. 7,031,728 (“Beyer”)
`
`APPLE-1026
`
`RESERVED
`
`APPLE-1027
`
`National Instruments LabVIEW User Manual
`
`APPLE-1028 to 1030
`
`RESERVED
`
`APPLE-1031
`
`Scheduling Order, Masimo v. Apple et al., Case 8:20-cv-00048,
`Paper 37 (April 17, 2020)
`
`iii
`
`

`

`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`
`APPLE-1032
`
`Stipulation by Apple
`
`APPLE-1033
`
`Telephonic Status Conference, Masimo v. Apple et al., Case
`8:20-cv-00048, Paper 78 (July 13, 2020)
`
`APPLE-1034
`
`APPLE-1035
`
`Joseph Guzman, “Fauci says second wave of coronavirus is ‘in-
`evitable’”, TheHill.com (Apr. 29, 2020), available at:
`https://thehill.com/changing-america/resilience/natural-disas-
`ters/495211-fauci-says-second-wave-of-coronavirus-is
`
`“Tracking the coronavirus in Los Angeles County,”
`LATimes.com (Aug. 20, 2020), available at
`https://www.latimes.com/projects/california-coronavirus-cases-
`tracking-outbreak/los-angeles-county/
`
`APPLE-1036
`
`
`APPLE-1037
`
`Order Amending Scheduling Order, Masimo et al. v. True
`Wearables et al., Case 8:18-CV-02001 (July 7, 2020)
`
`Masimo Corporation, et al. v. Apple Inc., Second Amended
`Complaint, Civil Action No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1038
`
`U.S. Patent No. 7,558,622 (“Tran”)
`
`APPLE-1039
`
`Declaration of Jacob R. Munford
`
`APPLE-1040
`
`Order Granting Stipulation to Amend the Scheduling Order,
`Masimo v. Apple et al., Case 8:20-cv-00048, Paper 201 (Sep-
`tember 21, 2020)
`
`APPLE-1041
`
`U.S. Patent No. 7,251,513 (“Kondoh”)
`
`APPLE-1042
`
`JP Pub. No. 2005-270543 (“Tanagi”)
`
`APPLE-1043
`
`Certified English Translation of Tanagi and Translator’s Decla-
`ration
`
`
`
`
`iv
`
`

`

`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 129 (“the
`
`Challenged Claims”) of U.S. Patent No. 10,631,765 (“the ’765 Patent”). As ex-
`
`plained in this petition, there exists a reasonable likelihood that Apple will prevail
`
`with respect to at least one of the Challenged Claims.
`
`The ’765 Patent describes and claims a purported improvement to a “physio-
`
`logical sensor device” included within a “physiological measurement system”: a
`
`cover with a rigid “protruding convex surface” that is configured to be located
`
`above “at least four” detectors. APPLE-1001, 10:61-11:14, 14:3-10, 24:16-35,
`
`36:30-41, 44:51-45:15 (claim 1), FIGS. 1, 14D. Each detector “can be imple-
`
`mented using one or more photodiodes, phototransistors, or the like,” “can capture
`
`and measure light transmitted from [an] emitter…that has been attenuated or re-
`
`flected from the tissue,” and can “output a detector signal…responsive to the
`
`light….”
`
`The claimed sensor was not new. To the contrary, the ’765 Patent was
`
`granted without full consideration to the wide body of applicable prior art. See
`
`generally APPLE-1002. And, as Dr. Thomas Kenny explains in his accompanying
`
`declaration, devices incorporating pulse rate detectors and pulse oximeters with co-
`
`vers were already known by the ’765 Patent’s earliest effective filing date, and
`
`each feature recited in the Challenged Claims would have been obvious to a
`
`1
`
`

`

`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`POSITA. APPLE-1003, ¶¶[20], [111]-[123]; APPLE-1001, 44:50-47:22.
`
`For example, Aizawa (APPLE-1006) describes a pulse wave sensor featur-
`
`ing “four photodetectors” disposed around a central light source and a “holder”
`
`that secures the light source and photodetectors. APPLE-1006, FIGS. 1(a), 1(b).
`
`And, similar to the ’765 Patent, Ohsaki (APPLE-1009) renders obvious an optical
`
`sensor that features a cover with a protruding convex surface that is placed “in inti-
`
`mate contact with the surface of the user’s skin” when the sensor is worn. APPLE-
`
`1009, Title, Abstract, ¶¶[0016], [0017], FIGS. 1, 2. Ohsaki is not alone, as In-
`
`okawa (APPLE-1007, APPLE-1008) and other references likewise render obvious
`
`covers with protruding convex surfaces for use in optical sensors. APPLE-1008,
`
`¶¶14-15, FIGS. 2, 3. And, as Dr. Kenny explains, a POSITA would have found it
`
`obvious to utilize such a cover in Aizawa’s sensor. APPLE-1003, ¶¶[98]-[102].
`
`In addition to the “physiological sensor device” described above, the ’765
`
`Patent’s claimed “physiological measurement system” includes “a handheld com-
`
`puting device in wireless communication with the physiological sensor device.”
`
`See, e.g., APPLE-1001, 44:51-45:15 (claim 1).
`
`Yet, physiological sensor devices commonly communicated with handheld
`
`computing devices by the ’765 Patent’s earliest effective filing date. Mendelson-
`
`2006, for example, describes a “wireless wearable pulse oximeter” system in which
`
`a body-worn pulse oximeter communicates wirelessly with a PDA. APPLE-1010,
`
`2
`
`

`

`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`Abstract, 1-4, FIGS. 1-3. Moreover, and as Dr. Kenny explains, the claimed
`
`“handheld computing device” is a generic computing device, and each of its recited
`
`components are generic computing components. APPLE-1003, ¶¶[58]-[60]; AP-
`
`PLE-1001, 2:45-48, 15:60-16:11, 18:9-28, FIGS. 1, 2D.
`
`The Challenged Claims are unpatentable based on teachings set forth in at
`
`least the references presented in this Petition. Apple respectfully submits that an
`
`IPR should be instituted, and that the Challenged Claims should be canceled as un-
`
`patentable.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Apple Inc. is the real party-in-interest (RPI).
`
`
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Patent Owner filed a second amended complaint on July 24, 2020 in the U.S.
`
`District Court for the Central District of California (CDCA) (Case No. 8:20-cv-
`
`00048) against Apple, in which Masimo alleged, for the first time, infringement of
`
`the ’765 Patent by Apple. The initial complaint in the case, which did not allege
`
`infringement of the ’765 patent, was served to Apple on January 13, 2020.
`
`This Petition is being filed concurrently with another petition for IPR of the
`
`3
`
`

`

`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`’765 Patent (IPR2020-01714),1 and IPRs challenging claims of related U.S. Patents
`
`10,702,194, 10,702,195, 10,709,366, and 10,624,564 are being filed concurrently
`
`or imminently. No other petitions for IPR of the ’765 Patent have been filed. On
`
`August 31, 2020, Apple filed petitions for IPR of related U.S. Patents 10,258,265
`
`(IPR2020-01520), 10,588,553 (IPR2020-01536 and IPR2020-01537). On Septem-
`
`ber 2, 2020, Apple filed petitions for IPR of related U.S. Patents 10,292,628
`
`(IPR2020-01521) and 10,588,554 (IPR2020-01538 and IPR2020-01539).
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Apple provides the following designation of counsel.
`
`Lead Counsel
`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR50095-0024IP2@fr.com
`
`Backup counsel
`Andrew B. Patrick, Reg. No. 63,471
`Usman Khan, Reg. No. 70,439
`Grace J. Kim, Reg. No. 71,977
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`PTABInbound@fr.com
`
`
`
`1 Pursuant to the Trial Practice Guide, both petitions for IPR of the ’765 Patent are
`
`being filed with a paper providing a succinct explanation of the differences be-
`
`tween the petitions, why the issues addressed by the differences are material, and
`
`why the Board should exercise its discretion to institute both petitions.
`
`4
`
`

`

`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`
`D. Service Information
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR50095-0024IP2@fr.com
`
`(referencing No. 50095-0024IP2 and cc’ing PTABInbound@fr.com, axf-
`
`ptab@fr.com, patrick@fr.com , gkim@fr.com, and khan@fr.com).
`
`II.
`
`PETITIONER HAS STANDING TO REQUEST IPR
`Apple certifies that the ’765 Patent is available for IPR. This present Peti-
`
`tion is being filed within one year of service of a complaint against Apple in
`
`Masimo Corporation et al. v. Apple Inc., Case No. 8:20-cv-00048 (C.D. Cal.). Ap-
`
`ple is not barred or estopped from requesting this review challenging the Chal-
`
`lenged Claims on the below-identified grounds.
`
`III. OVERVIEW OF THE ’765 PATENT
`A. Brief Description
`An exemplary physiological measurement system 100 illustrated by the ’765
`
`
`
`Patent’s FIG. 1 (reproduced below) includes “a sensor 101…that is coupled to a
`
`processing device or physiological monitor 109.” APPLE-1001, 2:38-40, 5:35-38,
`
`11:47-49.
`
`5
`
`

`

`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`
`APPLE-1001, FIG. 1.
`
`
`
`
`
`“In an embodiment, the sensor 101 and the monitor 109 are integrated to-
`
`gether into a single unit.” Id., 11:49-51. “In another embodiment, the sensor 101
`
`and the monitor 109 are separate from each other and communicate one with an-
`
`other in any suitable manner, such as via a wired or wireless connection.” Id.,
`
`11:51-57; 17:40-44. The ’765 Patent’s FIGS. 2A-2D (reproduced below) illustrate
`
`“example monitoring devices 200 in which the data collection system 100 can be
`
`housed.” APPLE-1001, 5:39-42, 16:20-31.
`
`6
`
`

`

`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`
`APPLE-1001, FIGS. 2A-2D.
`
`
`
`
`
`Each of the illustrated “monitoring devices 200” include a sensor 201 and a
`
`monitor 209, which act together as components of a physiological sensor device.
`
`Id., FIGS. 2A-2D, 16:20-18:28, 2:38-48, 11:49-57; APPLE-1003, ¶¶[41]-[51]. In
`
`at least one embodiment (depicted in FIG. 2D) that device is part of a larger system
`
`including a computer with which the physiological sensor device communicates.
`
`Id.; APPLE-1001, 2:38-48, 11:49-57, 16:20-18:28, FIGS. 1, 2A-2D.
`
`The ’765’s sensor “may include different architectures.” APPLE-1001,
`
`6:38-49, 35:36-38:20, FIGS. 14A-14I. For example, FIG. 14C (reproduced below)
`
`7
`
`

`

`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`illustrates a sensor featuring a “detector submount 1400c…positioned under [a]
`
`protrusion 605b in a detector subassembly 1450 illustrated in FIG. 14D” (also re-
`
`produced below).
`
`APPLE-1001, FIGS. 14C, 14D.
`
`
`
`
`
`As illustrated in FIG. 14D, a housing 1430 including “a transparent cover
`
`1432, upon which the protrusion 605b is disposed” surrounds each of the detectors
`
`1410c. APPLE-1001, 36:30-41; APPLE-1003, ¶¶[52]-[60].
`
`B. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art relating to the subject matter of the ’765
`
`Patent as of July 3, 2008 (“POSITA”) would have been a person with a working
`
`knowledge of physiological monitoring technologies. The person would have had
`
`a Bachelor of Science degree in an academic discipline emphasizing the design of
`
`electrical, computer, or software technologies, in combination with training or at
`
`8
`
`

`

`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`least one to two years of related work experience with capture and processing of
`
`data or information, including but not limited to physiological monitoring technol-
`
`ogies. APPLE-1003, ¶¶[21]-[22]. 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.
`
`C. Claim Construction
` Petitioner submits that all claim terms should be construed according to the
`
`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
`
`C.F.R. § 42.100. Here, based on the evidence below and the prior art’s description
`
`of the claimed elements being similar to that of the ’765 Patent specification, no
`
`formal claim constructions are necessary in this proceeding because “claim terms
`
`need only be construed to the extent necessary to resolve the controversy.” Well-
`
`man, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). APPLE-
`
`1003, ¶[23].
`
`
`
`IV. APPLICATION OF PRIOR ART TO THE ’765 PATENT CLAIMS
`A. Asserted Grounds and References
`The Challenged Claims are invalid based on the grounds noted in the table
`
`below, as further explained in this Petition. Accompanying explanations and sup-
`
`port are provided in the Declaration of Dr. Thomas Kenny. APPLE-1003, ¶¶[1]-
`
`[204].
`
`9
`
`

`

`Ground
`1
`
`Claims
`1-8, 10-13, 15-29
`
`
`
`
`
`9
`
`14
`
`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`Basis for Rejection
`Obvious (§ 103) based on Aizawa in
`combination with Inokawa, Ohsaki, and
`Mendelson-2006
`Obvious (§ 103) based on Aizawa in
`combination with Inokawa, Ohsaki,
`Mendelson-2006, and Bergey
`Obvious (§ 103) based on Aizawa in
`combination with Inokawa, Ohsaki,
`Mendelson-2006, and Goldsmith
`
`
`
`Each applied reference pre-dates U.S. provisional application 61/078,207,
`
`filed on July 3, 2008, which is the earliest filed application from which the ’765
`
`Patent claims priority. Petitioner does not take a position as to whether the ’765
`
`Patent is entitled to the priority date of July 3, 2008 (hereinafter “Critical Date” or
`
`“Earliest Effective Filing Date”), but has applied references that pre-date the Criti-
`
`cal Date and qualify as prior art as shown in the table below.
`
`Reference
`
`Date
`
`Section
`
`Aizawa
`
`Inokawa
`
`Ohsaki
`
`US 2002/0188210
`
`12/12/2002 (published)
`
`JP 2006/296564
`
`11/02/2006 (published)
`
`US 2001/0056243
`
`12/27/2001 (published)
`
`Mendelson-2006
`
`(NPL)
`
`09/2006 (published)
`
`Bergey
`
`US 3,789,601
`
`02/05/1974 (issued)
`
`Goldsmith
`
`US 2007/0093786
`
`4/26/2007 (published)
`
`102(b)
`
`102(b)
`
`102(b)
`
`102(b)
`
`102(b)
`
`102(b)
`
`
`
`10
`
`

`

`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`B. GROUND 1: Claims 1-8, 10-13, and 15-29 are obvious over
`Aizawa, Inokawa, Ohsaki, and Mendelson-2006
`1. Overview of Aizawa2
`Aizawa discloses a “pulse wave sensor…detecting light output from a light
`
`emitting diode and reflected from the artery of a wrist of a subject.” APPLE-1006,
`
`Abstract. In the embodiment, Aizawa’s sensor includes an optical sensor featuring
`
`“an LED 21,” four photodetectors 22 disposed symmetrically on a circle concen-
`
`tric to the LED 21, and “a holder 23 for storing the” LED and photodetectors 22.”3
`
`APPLE-1006, ¶¶[0002], [0008]-[0018], [0023], FIGS. 1(a), 1(b); APPLE-1003,
`
`¶[62]. The sensor can be worn by a subject with the LED facing toward the sub-
`
`ject’s wrist, and fastened using a belt. APPLE-1006, ¶[0026].
`
`
`
`
`2 General descriptions provided for this and other references and combinations
`
`thereof are incorporated into each subsection and mapping of the claims that in-
`
`cludes citations to these references.
`
`3 Throughout this Petition, bolding in quotations is added for emphasis, unless oth-
`
`erwise indicated.
`
`11
`
`

`

`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`
`
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`APPLE-1006, FIGS. 1(a) (top, annotated), 1(b) (bottom, annotated).
`
`As illustrated, Aizawa’s pulse rate detector also includes “a drive detection
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`circuit 24 for detecting a pulse wave by amplifying the outputs of the photodetec-
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`tors 22,” “an arithmetic circuit [3] for computing a pulse rate from the detected
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`pulse wave data,” and “a transmitter [4] for transmitting the above pulse rate data
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`12
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`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`to an unshown display.” APPLE-1006, ¶[0023]. Aizawa’s sensor transmits its
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`data to an “unshown display,” and can be “coupled to devices making use of bio
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`signals” and/or a device that performs computations. Id., ¶¶[0023], [0028], [0035].
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`To improve adhesion between the sensor and the subject’s wrist, Aizawa’s
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`sensor also includes an acrylic transparent plate positioned between the photode-
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`tectors and the wrist. APPLE-1006, ¶[0034]. For example, Aizawa’s FIG. 1(b)
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`shows the plate in contact with the user’s wrist. Id., FIG. 1(b); APPLE-1003,
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`¶¶[63]-[67].
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`
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`APPLE-1006, FIG. 1(b) (annotated).
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`2. Overview of Inokawa
`Inokawa discloses a wearable optical sensing system that gathers “various
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`kinds of vital sign information.” APPLE-1008, ¶[0001]. Inokawa’s system in-
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`cludes a sensor and a base device. Id., ¶¶[0055]-[0066]. The sensor includes a
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`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`“pair of light-emitting elements” and a photodiode that receives reflected light,
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`which is used to detect pulse and body motion. Id., ¶¶[0058]-[0059]; FIG. 2. A
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`rigid convex lens is placed between the photodiode and the subject’s skin. Id.
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`
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`APPLE-1008, FIG. 2 (annotated).
`
`The base device is “a charger with communication functionality that is
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`used when the pulse sensor…is mounted.” Id., ¶[0060]; FIG. 3. “[V]ital sign
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`information…such as pulse and body motion, is transmitted to the base de-
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`vice…using the…infrared LED.” Id., ¶[0076]; APPLE-1003, ¶¶[68]-[69].
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`14
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`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`
`
`
`APPLE-1008, FIG. 3.
`With reference to FIG. 19 (reproduced below), Inokawa explains that “the
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`presence of two pairs of light-emitting and light-receiving elements makes it
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`possible to efficiently transmit information,” including increasing the “accuracy
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`of data…by transmitting and receiving a checksum signal….” APPLE-1008,
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`¶¶[0111], [0044], [0048]; APPLE-1003, ¶[70].
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`15
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`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`
`APPLE-1008, FIG. 19 (annotated).
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`
`
`
`
`3. Overview of Ohsaki
`As illustrated in Ohsaki’s FIG. 2 (reproduced below), Ohsaki discloses a
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`wrist-worn “pulse wave sensor” (APPLE-1009, ¶[0016]) featuring a “light emitting
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`element” and a “light receiving element.” Id., ¶[0017].
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`Ohsaki’s sensor addresses problems such as user discomfort and sensor
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`movement by using a “translucent board” with a convex surface that is “in intimate
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`contact with the surface of the user’s skin” to prevent slippage. Id., ¶¶[0009],
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`16
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`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`[0010], [0015], [0017], [0023]-[0025], FIGS. 1, 2, 4A, 4B; APPLE-1003, ¶[71].
`
`APPLE-1009, FIG. 2.
`
`
`
`4. Overview of Mendelson-2006
`Mendelson-2006 discloses a “wireless wearable pulse oximeter” system that
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`is used to monitor a subject’s physiological signals such as SpO2 and heart rate.
`
`APPLE-1010, Abstract, 1. Mendelson-2006 explains that by wirelessly transmit-
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`ting the collected data, the condition of a subject can be determined “remotely”
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`without requiring the healthcare provider to be physically present. Id.
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`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`Mendelson-2006’s system includes a sensor module, a receiver module, and
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`a PDA. Id., 2. As shown in Mendelson-2006’s FIGS. 1 and 2, the sensor module
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`includes an “optical reflectance transducer” having two LEDs and a photodiode
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`that “processes the [photoplethysmographic (PPG)] signals” and transmits signals
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`wirelessly to the PDA through the receiver module. Id.; FIGS. 1 and 2.
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`
`
`APPLE-1010, FIG. 1 (left) and FIG. 2 (right).
`
`The PDA is a handheld device that provides a “touch screen” interface and a
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`simple graphical user interface (GUI) “configured to present the input and output
`
`information to the user and allow[ for] easy activation of various functions.” AP-
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`PLE-1010, FIG. 3; see also APPLE-1021, Cover, xvii-xviii, 10-12, 17, 63, 363;
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`APPLE-1022, 4-11, 30-31; APPLE-1036, APPLE-1003, ¶¶[72]-[74].
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`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
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`
`
`APPLE-1010, FIG. 3.
`
`
`
`5.
`
`Combination of Aizawa, Inokawa, Ohsaki, and Men-
`delson-2006
`Improved emitter performance and functionality
`
`As described in Section IV.B.1, Aizawa discloses a pulse wave sensor in
`
`which multiple detectors are disposed around a centrally located LED/emitter.
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`APPLE-1006, ¶[0023]. Aizawa explains that “[t]he arrangement of the light
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`emitting diode 21 and the photodetectors 22 is not limited” to that shown or de-
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`scribed in connection with any particular embodiment. APPLE-1006, ¶[0032].
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`In particular, Aizawa describes arrangements in which multiple light emitting
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`19
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`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
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`diodes 21 are employed. Id., ¶¶[0032]-[0033].
`
`A POSITA would have combined the teachings of Aizawa and Inokawa
`
`such that Aizawa’s pulse wave sensor would have been modified to include an
`
`additional LED as taught by Inokawa to improve the detected pulse wave by
`
`distinguishing between blood flow detection and body movement. APPLE-
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`1008, ¶(0059) (describing the use of the “S-side green LED 21…to sense the
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`pulse from the light reflected off of the body (e.g., change in the amount of he-
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`moglobin in the capillary artery), while the S-side infrared LED 23 serves to
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`sense body motion from the change in this reflected light”); APPLE-1006,
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`¶[0006] (recognizing the problem of weak signals from a wearable sensor be-
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`cause the sensor “detects the motion of a red corpuscle…and is easily affected
`
`by noise caused by the shaking of the body of the subject), ¶[0028] (describing a
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`device for “computing the amount of motion load” such that the motion can be
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`compensated for); APPLE-1003, ¶¶[79]-[80].
`
`A POSITA would also have looked to Inokawa’s disclosure of two LEDs
`
`emitting light of different wavelengths, in part, because it provides additional
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`functionality, including that of a wireless communication method. Id., ¶[81].
`
`Inokawa’s base device 17 receives, for example, “pulse and body motion” data
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`through “the S-side infrared LED 23 of the pulse sensor 1 and the B-side PD 45
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`of the base device 17.” APPLE-1008, ¶[0076]. The LEDs eliminate the need
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`20
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`Attorney Docket No. 50095-0024IP2
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`for “a special wireless communication circuit or a communication cable as pre-
`
`viously” and allows “vital sign information to the base device 17 accurately,
`
`easily, and without malfunction.” Id., ¶[0077]. In other words, the LEDs pro-
`
`vided on the sensor can be used not only to detect pulse rate but also to “accu-
`
`rately, easily, and without malfunction” transmit the sensed data to a base sta-
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`tion. APPLE-1003, ¶[81].
`
`Intrinsic and extrinsic records confirm that a POSITA would have natu-
`
`rally looked to another wearable physiological sensor, as disclosed in Inokawa,
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`for transmission details. APPLE-1003, ¶[82]. Aizawa discloses uploading data
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`to a base device but is silent about how such transmission would be imple-
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`mented. APPLE-1006, ¶¶[0023], [0028]. A POSITA would have recognized
`
`that Aizawa’s LED could have been used for wireless data communication with
`
`a personal computer to eliminate problems associated with a physical cable,
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`and, as taught by Inokawa, without requiring a separate RF circuit. APPLE-
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`1003, ¶[82]. A POSITA would have further recognized that using two LEDs to
`
`perform such communication would result in enhanced accuracy of the transmit-
`
`ted information. Id.
`
`To obtain the advantages described by Inokawa (e.g., to improve the de-
`
`tected pulse wave by enabling the sensor to distinguish between blood flow de-
`
`21
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`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`tection and body movement, in addition to enabling wireless communication be-
`
`tween the sensor and a base station), a POSITA would have been motivated to
`
`modify Aizawa’s pulse wave sensor to include an additional LED. APPLE-
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`1003, ¶[83]; APPLE-1008, ¶¶[0058]-[0059]; APPLE-1008, ¶¶[0006], [0028].
`
`As illustrated below, the Aizawa-Inokawa sensor would have featured
`
`two LEDs in place of Aizawa’s LED 21. APPLE-1003, ¶[84].
`
`
`
`
`
`APPLE-1006, FIGS. 1(a) (top, annotated) and 1(b) (bottom, annotated).
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`22
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`Attorney Docket No. 50095-0024IP2
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`Aizawa-Inokawa would have utilized two LEDs that emit two different
`
`wavelengths. APPLE-1003, ¶[85]. Aizawa’s LED 21 would have been re-
`
`placed with two LEDs. In this manner, Aizawa’s sensor is improved by using a
`
`separate LED to account for motion load that the system already records and ac-
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`counts for. APPLE-1006, ¶¶[0006], [0028], [0035].
`
`A POSITA would have combined the teachings of Aizawa and Inokawa
`
`as doing so would have amounted to nothing more than the use of a known tech-
`
`nique to improve similar devices in the same way and combining prior art ele-
`
`ments according to known methods to yield predictable results. KSR v. Teleflex,
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`550 U.S. 398, 417 (2007); APPLE-1003, ¶[86]. Here, the Aizawa-Inokawa
`
`combination improves Aizawa’s pulse wave sensor as described above to detect
`
`and record body motion in addition to blood flow. Id. The elements of the Ai-
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`zawa-Inokawa system would each perform similar functions they had been
`
`known to perform prior to the combination. Id. For instance, in Aizawa-In-
`
`okawa, Aizawa’s photodetectors would still detect light emitted by the LEDs
`
`and reflected by the subject’s wrist, and two LEDs would still be used to emit
`
`light at different wavelengths. Id.
`
`Although Inokawa shows its two emitters emitting light toward a cen-
`
`trally located detector, a POSITA would have recognized that the same effect
`
`could have been achieved by having the emitters located centrally instead and
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`Attorney Docket No. 50095-0024IP2
`IPR of U.S. Patent No. 10,631,765
`emitting radially outward. Indeed, Aizawa itself recognizes this reversibility,
`
`stating that while the configurations depicted include a central emitter sur-
`
`rounded by detectors, the “same effect can be obtained when…a plurality of
`
`light emitting diodes 21 are disposed around the photodetector 22.” APPLE-
`
`1006, ¶[0033]; APPLE-1003, ¶[87].
`
`Transmission of information
`
`When Inokawa’s sensor is mounted onto the base station, “vital sign in-
`
`formation…such as pulse and body motion, is transmitted to the base de-
`
`vice…using the…infrared LED.” APPLE-1008, ¶[0076]. The “base device 17
`
`is connected to a PC 59