IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Al-Ali
`In re Patent of:
`10,470,695 Attorney Docket No.: 50095-0004IP2
`U.S. Patent No.:
`November 12, 2019
`
`Issue Date:
`Appl. Serial No.: 16/226,249
`
`Filing Date:
`December 19, 2018
`
`Title:
`ADVANCED PULSE OXIMETRY SENSOR
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`
`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. 10,470,695 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
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`Attorney Docket No. 50095-0004IP2
`IPR of U.S. Patent No. 10,470,695
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`TABLE OF CONTENTS
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`REQUIREMENTS FOR IPR .......................................................................... 2 
`  Grounds for Standing ................................................................................. 2 
`  Challenge and Relief Requested ................................................................. 3 
`THE ’695 PATENT ......................................................................................... 4 
`  Brief Description ........................................................................................ 4 
`  Level of Ordinary Skill in the Art .............................................................. 5 
`  Claim Construction ..................................................................................... 6 
`  UNPATENTABILITY GROUNDS ................................................................ 6 
`  GROUND 1A: Claims 1-5, 8, 9, 11-13, 15-19, and 22-30 are obvious
`based on Mendelson-799 and Venkatraman .............................................. 6 
`1.  Overview of Mendelson-799 ................................................................. 6 
`2.  Overview of Venkatraman .................................................................. 10 
`3.  The combination of Mendelson-799 and Venkatraman ...................... 14 
`4.  Reasons to combine Mendelson-799 and Venkatraman ..................... 14 
`5.  Analysis ............................................................................................... 18 
`  GROUND 1B: Claims 6, 14, and 21 are obvious based on Mendelson-
`799, Venkatraman, and Chin .................................................................... 52 
`1.  Overview of Chin ................................................................................ 52 
`2.  The combination of Mendelson-799, Venkatraman, and Chin ........... 53 
`3.  Reasons to combine Mendelson-799, Venkatraman, and Chin .......... 53 
`4.  Analysis ............................................................................................... 55 
`  GROUND 2A: Claims 1-5, 8, 9, 11-13, 15-19, and 22-30 are obvious
`based on Mendelson-799 and Mio Alpha................................................. 56 
`1.  Overview of Mio Alpha ...................................................................... 56 
`2.  The combination of Mendelson '799 and Mio Alpha ......................... 58 
`3.  Reasons to combine Mendelson-799 and Mio Alpha ......................... 59 
`4.  Analysis ............................................................................................... 61 
`  GROUND 2B: Claims 3, 12, and 23 are obvious based on Mendelson-
`799, Mio Alpha, and Mendelson 2006 ..................................................... 68 
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`Attorney Docket No. 50095-0004IP2
`IPR of U.S. Patent No. 10,470,695
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`1.  Overview of Mendelson 2006 ............................................................. 68 
`2.  The combination of Mendelson-799, Mio Alpha, and Mendelson 2006
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`3.  Reasons to combine Mendelson-799, Mio Alpha, and Mendelson
`2006 ..................................................................................................... 69 
`4.  Analysis ............................................................................................... 70 
`  GROUND 2C: Claims 6, 14, and 21 are obvious based on Mendelson-
`799, Mio Alpha, and Chin ........................................................................ 72 
`1.  The combination of Mendelson-799, Mio Alpha, and Chin ............... 72 
`2.  Reasons to combine Mendelson '799, Mio Alpha, and Chin .............. 73 
`3.  Analysis ............................................................................................... 74 
`  GROUND 2D: Claims 18, 27, and 30 are obvious based on Mendelson-
`799, Mio Alpha, and Venkatraman .......................................................... 75 
`1.  The combination of Mendelson-799, Mio Alpha, and Venkatraman . 75 
`2.  Reasons to combine Mendelson '799, Mio Alpha, and Venkatraman 76 
`3.  Analysis ............................................................................................... 77 
`  PAYMENT OF FEES ................................................................................... 78 
`CONCLUSION .............................................................................................. 78 
`  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 79 
`  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................... 79 
`  Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 79 
`  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................... 79 
`  Service Information .................................................................................. 79 
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`APPLE-1001
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`APPLE-1002
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`APPLE-1003
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`APPLE-1004
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`APPLE-1005
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`APPLE-1006
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`APPLE-1007
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`APPLE-1008
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`APPLE-1009
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`APPLE-1010
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`APPLE-1011
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`Attorney Docket No. 50095-0004IP2
`IPR of U.S. Patent No. 10,470,695
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`EXHIBITS
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`U.S. Patent No. 10,470,695 to Al-Ali (“the ’695 Patent”)
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`Prosecution History of the ’695 Patent
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`Declaration of Brian W. Anthony, Ph.D.
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`U.S. Patent No. 6,801,799 to Mendelson (“Mendelson-799”)
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`U.S. Patent No. 8,998,815 to Venkatraman et al.
`(“Venkatraman”)
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`U.S. Patent No. 6,343,223 to Chin et al. (“Chin”)
`
`Mio ALPHA Complete User Guide,
`https://www.medisana.com/out/pictures/media/manual/mio_alp
`ha_user_guide_en.pdf (2014)
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`DC RAINMAKER, Mio Alpha Optical Heart Rate Monitor In-
`Depth Review, https://www.dcrainmaker.com/2013/02/monitor-
`bluetooth-smartant.html (Feb. 12, 2013)
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`Reserved
`
`Mendelson et al, A Wearable Reflectance Pulse Oximeter for
`Remote Physiological Monitoring, Proceedings of the 28th
`IEEE EMBS Annual International Conference (September
`2006) (“Mendelson 2006”)
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`U.S. Patent Application Publication No. 2007/0271009 to
`Conroy (“Conroy”)
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`U.S. Patent No. 7,008,380 to Rees et al. (“Rees”)
`
`QuickSpecs; HP iPAQ Pocket PC h4150 Series
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`APPLE-1012
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`APPLE-1013
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`APPLE-1014 to Reserved
`APPLE-1016
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`Attorney Docket No. 50095-0004IP2
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`Declaration of Jacob Munford
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`APPLE-1017
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`Attorney Docket No. 50095-0004IP2
`IPR of U.S. Patent No. 10,470,695
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`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
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`(“IPR”) under 35 U.S.C. §§311–319 and 37 C.F.R. §42 of claims 1-6, 8, 9, 11-19,
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`and 21-30 (“the Challenged Claims”) of U.S. Patent No. 10,470,695 (“the ’695
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`Patent”). The ’695 Patent describes a purported improvement to a “pulse oximetry
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`sensor” to “limit[] the effect of multiple scattering of photons” by the patient’s
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`tissue on measurement accuracy. APPLE-1001, 2:24-32. According to the ’695
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`Patent, the addition of a circular light blocker improves the sensor’s measurement
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`accuracy by “ensur[ing] that the only light detected by” the pulse oximetry sensor
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`“is light that” has been emitted by the sensor and “is reflected from the” patient’s
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`tissue. Id., 11:17-20. The prosecution history makes clear that the circular light
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`blocker and similarly circular array of photodetectors were the features Patent
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`Owner relied on to overcome the prior art cited by the Office. See APPLE-1002,
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`135 (examiner interview summary indicating the amendments that led to allowance
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`were intended to “capture the subject matter of figure 7,” which shows the circular
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`light block configuration).
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`But this “improvement” was not new. To the contrary, the ’695 Patent was
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`granted without full consideration to the wide body of applicable art. As Dr. Brian
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`Anthony explains in his accompanying declaration with respect to the applied prior
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`art, pulse oximeters commonly included these and other features by the ’695
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`Patent’s earliest effective filing date, and a wrist-worn physiological monitoring
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`Attorney Docket No. 50095-0004IP2
`IPR of U.S. Patent No. 10,470,695
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`device including each feature of the Challenged Claims would have been obvious
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`to a POSITA. APPLE-1003, ¶¶21-103. For example, much like the ’695 Patent,
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`Mendelson-799 describes a pulse oximetry sensor including a “light shield …
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`between the photodiodes and the light emitting elements” to “prevent[] direct
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`optical coupling between them, thereby maximizing the fraction of backscattered
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`light passing through the arterially perfused vascular tissue in the detected light.”
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`APPLE-1004, 9:33-40. Mendelson-799’s light shield and photodetectors are
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`arranged in a circular configuration surrounding a central light source. Id., 9:22-
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`33.
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`Accordingly, Apple respectfully submits that an IPR should be instituted,
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`and that the Challenged Claims should be canceled as unpatentable.
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`
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`REQUIREMENTS FOR IPR
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` Grounds for Standing
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`Apple certifies that the ’695 Patent is available for IPR. The present Petition
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`is being filed within one year of service of a complaint against Apple in Masimo
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`Corporation et al. v. Apple Inc., Case No. 8:20-cv-00048 (C.D. Cal.). The ’695
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`Patent was originally asserted in this case, but has since been dropped from the
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`case by Masimo. Apple is not barred or estopped from requesting this review
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`challenging the Challenged Claims on the below-identified grounds.
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`Attorney Docket No. 50095-0004IP2
`IPR of U.S. Patent No. 10,470,695
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` Challenge and Relief Requested
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`Apple requests an IPR of the Challenged Claims on the grounds set forth in
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`the table below. An explanation of how these claims are unpatentable under the
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`statutory grounds identified below is provided in the form of a detailed description
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`that follow. Additional explanation and support for each ground of rejection is set
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`forth in the Declaration of Brian W. Anthony, Ph.D. (APPLE-1003), referenced
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`throughout this Petition.
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`Ground
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`Claims
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`§103 Basis
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`1-5, 8, 9, 11-13, 15-
`19, and 22-30
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`Mendelson-799 (APPLE-1004) and
`Venkatraman (APPLE-1005)
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`6, 14, and 21
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`1, 2, 4, 5, 8, 9, 11, 13,
`15-17, 19, 22, 24-26,
`28, and 29
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`3, 12, and 23
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`Mendelson-799, Venkatraman, and Chin
`(APPLE-1006)
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`Mendelson-799 and Mio Alpha (NPL)
`(APPLE-1007, 1008)
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`Mendelson-799, Mio Alpha (NPL), and
`Mendelson 2006 (APPLE-1010)
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`6, 14, and 21
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`Mendelson-799, Mio Alpha (NPL), and Chin
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`18, 27, and 30
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`Mendelson-799, Mio Alpha (NPL), and
`Venkatraman
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`1A
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`1B
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`2A
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`2B
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`2C
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`2D
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`Each reference pre-dates the provisional application (filed 7/2/2015) and
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`qualifies as prior art:
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`IPR of U.S. Patent No. 10,470,695
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`Reference
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`Date
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`Mendelson-799
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`10/5/2004 (issued)
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`Venkatraman
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`4/7/2015 (issued)
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`Chin
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`1/29/2002 (issued)
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`Section
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`102(a1),(a2)
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`102(a1),(a2)
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`102(a1),(a2)
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`Mio Alpha
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`Articles published in 2013 and 20141
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`102(a1)
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`Mendelson 2006
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`10/1/1999 (published)
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`102(a1)
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`None of these references were cited in any office action by the examiner
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`during prosecution.
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` THE ’695 PATENT
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` Brief Description
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`The ’695 patent, entitled “Advanced Pulse Oximetry Sensor,” issued from
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`an application filed on December 19, 2018, and claims priority to an earlier
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`provisional application filed on July 2, 2015 (hereinafter the “Critical Date”). See
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`APPLE-1001, Face, page 2. The ’695 patent describes a “reflective pulse oximetry
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`1 The Mio Alpha and Mendelson 2006 references were publicly available on
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`the dates listed, and the exhibits as filed are true and correct copies of the original
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`references. See generally APPLE-1017 (Declaration of Jacob Munford).
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`sensor” that emits light towards a “tissue measurement site” on a user’s body, such
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`as their wrist, and “detects the emitted light that is reflected by the tissue
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`measurement site.” Id., 10:40-45. The sensor includes “emitter” components (e.g.,
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`light emitting diodes (LEDs)) used to emit light into the tissue measurement site,
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`and “detector” components (e.g., photodiodes, phototransistors) that detect the
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`reflected light and provide a corresponding signal to a processor or other
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`component representing the intensity of the reflected light. Id., 10:52-64, 11:31-
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`43. Based on fluctuations in the intensity of the reflected light, various
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`physiological parameters (e.g., pulse rate, blood oxygen saturation) can be
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`calculated. Id., 12:1-15. A “light blocker” separates the emitters from the
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`detectors in order to “ensure[] that the only light detected by the detector 710 is
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`light that is reflected from the tissue measurement site.” Id., 11:19-20.
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`Level of Ordinary Skill in the Art
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`A person of ordinary skill in the art relating to, and at the time of, the
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`invention of the ’695 Patent (“POSITA”) would have been a person with a working
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`knowledge of physiological monitoring technologies. The person would have had
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`a Bachelor of Science degree in an academic discipline emphasizing the design of
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`electrical, computer, or software technologies, in combination with training or at
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`least one to two years of related work experience with capture and processing of
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`data or information, including but not limited to physiological monitoring
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`IPR of U.S. Patent No. 10,470,695
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`technologies. APPLE-1003, ¶¶17-19. Alternatively, the person could have also
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`had a Master of Science degree in a relevant academic discipline with less than a
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`year of related work experience in the same discipline. Id.
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` Claim Construction
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`Petitioner submits that all claim terms should be construed according to the
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`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
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`C.F.R. § 42.100. Here, based on the evidence below and the prior art’s description
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`of the claimed elements being similar to that of the ’695 patent specification, no
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`formal claim constructions are necessary in this proceeding because “claim terms
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`need only be construed to the extent necessary to resolve the controversy.”
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`Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011).
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` UNPATENTABILITY GROUNDS
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` GROUND 1A: Claims 1-5, 8, 9, 11-13, 15-19, and 22-30 are
`obvious based on Mendelson-799 and Venkatraman
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`1. Overview of Mendelson-7992
`Mendelson-799 describes a reflectance pulse oximetry sensor and
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`2 General descriptions provided for the references and combinations are hereby
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`incorporated into each subsection addressing/applying those references, as are the
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`discussions of combinations.
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`Attorney Docket No. 50095-0004IP2
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`corresponding control circuitry to measure and “compute the [blood] oxygen
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`saturation value, which is then presented on the display” to a user.” APPLE-1004,
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`Abstract, 10:22-30. In more detail, Mendelson-799’s FIG. 8 (reproduced below)
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`“illustrates a block-diagram of a pulse oximeter 20 utilizing … sensor 10.” Id.,
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`8:39-40, 10:16-17.
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`APPLE-1004, Detail of FIG. 8 (annotated).
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`As shown, “[t]he pulse oximeter typically includes a control unit 21, which
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`is composed of an electronic block 22 including A/D and D/A converters
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`connectable to the sensor 10, a microprocessor 24 for analyzing measured data,
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`and a display 26 for presenting measurement results.” Id., 10:16-22. “The
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`measured data (i.e., electrical output of the sensor 10 indicative of the detected
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`light) is directly processed in the block 22, and the converted signal is further
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`processed by the microprocessor 24,” which “is operated by a suitable software
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`model for analyzing the measured data and utilizing reference data (i.e., calibration
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`curve stored in a memory) to compute the oxygen saturation value, which is then
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`presented on the display 26.” Id., 10:22-30.
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`Mendelson-799’s FIG. 7 (reproduced below) illustrates the configuration of
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`the optical sensor 10. Id., 8:37-39.
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`APPLE-1004, Detail of FIG. 7 (annotated).
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`The optical sensor 10 includes “a light source 12 composed of three closely
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`spaced light emitting elements (e.g., LEDs or laser sources) 12a, 12b and 12c
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`generating light of three different wavelengths,” “an array of discrete detectors
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`(e.g., photodiodes),” including “a ‘far’ detector 16 and a ‘near’ detector 18,
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`arranged in two concentric ring-like arrangements … surrounding the light
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`emitting elements; and a light shield 14.”3 Id., 9:22-33. “All these elements are
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`accommodated in a sensor housing 17,” with “[t]he light shield 14 [being]
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`positioned between the photodiodes and the light emitting elements” so as to
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`“prevent[] direct optical coupling between them, thereby maximizing the fraction
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`of backscattered light passing through the arterially perfused vascular tissue in the
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`detected light.” Id., 9:33-40. “This arrangement allows for measuring SaO2 from
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`multiple convenient locations on the body (e.g., the head, torso, or upper limbs),
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`where convenient transmission mode measurements are not feasible.” Id., 2:14-28;
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`see also Id., 3:19-28 (“measurements are made from sensors attached to the
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`forehead, chest, or the buttock area”), 3:35-44, 4:29-32 (“forehead, forearm and
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`the calf on humans”).
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`In sum, Mendelson-799 depicts and describes a physiological measurement
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`and monitoring device configured to measure blood oxygen saturation of a user at
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`an external a tissue measurement site. Id., Abstract (“The sensor includes sensor
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`housing, a source of radiation coupled to the housing, and a detector assembly
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`coupled to the housing … the detector assembly is adapted to detect reflected
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`radiation at least one predetermined frequency and to generate respective signals
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`… used to determine the parameter of the blood”), 7:25-8:13 (“There is thus
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`3 All emphasis added unless otherwise indicated.
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`Attorney Docket No. 50095-0004IP2
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`provided ... a sensor for use in an optical measurement device for non-invasive
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`measurements of blood parameters”), 2:14-28 (“This arrangement allows for
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`measuring SaO2 from multiple convenient locations on the body (e.g., the head,
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`torso, or upper limbs), where convenient transmission mode measurements are not
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`feasible”), 8:37-41, 9:22-40, 10:16-30, FIGS. 7, 8; APPLE-1003, ¶¶21-25.
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`2. Overview of Venkatraman
`Venkatraman teaches a portable biometric monitoring device with a
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`touchscreen display that can be worn on the wrist like a watch. APPLE-1005,
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`12:16-21, 15:19-26, 52:23-53:18. In particular, Venkatraman describes a
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`“biometric monitoring device[] ... adapted to be worn or carried on the body of a
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`user ... including [an] optical heart rate monitor” designed to “be a wrist-worn or
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`arm-mounted accessory such as a watch or bracelet.” APPLE-1005, 37:29-33.
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`Venkatraman’s monitoring device is “small in size so as to be unobtrusive for the
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`wearer” and “designed to be able to be worn without discomfort for long periods of
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`time and to not interfere with normal daily activity.” APPLE-1005, 14:28-36.
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`Venkatraman device also includes a digital display with “uses capacitive touch
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`detection,” as shown in FIG. 6B, to display data acquired or stored locally on the
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`wristwatch. APPLE-1005, 53:19-55:51.
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`Attorney Docket No. 50095-0004IP2
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`APPLE-1005, Detail of FIGS. 6A, 6B (annotated).
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`Wrist-worn
`monitoring
`device
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`APPLE-1005, Detail of FIG. 7 (annotated).
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`Like Mendelson-799, Venkatraman’s biometric monitoring device employs
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`LEDs and photo detectors to obtain user data such as heart rate and blood oxygen
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`saturation of a user. APPLE-1005, 1:54-:57 (“The disclosure also provides
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`methods for operating the LED and photo detector of heart rate monitors to obtain
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`accurate reading of heart rate tailored for different user characteristics such as skin
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`colors.”), see also 33:14-20 (“optical sensors may sample, acquire and/or detect
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`physiological data which may then be processed or analyzed . . . to obtain data that
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`is representative of for example, a user's heart rate, respiration, heart rate
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`variability, oxygen Saturation (SpO), blood volume, blood glucose, skin
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`moisture, and/or skin pigmentation level.”), see also 17:1-38, 19:32-37.
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`Venkatraman’s biometric monitoring device uses emitters (LEDs) to emit radiation
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`onto the user’s body, detectors to receive the reflected radiation from the user’s
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`body, and an optical wall/light shield between the emitters and detectors to prevent
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`the detectors from detecting radiation directly from the emitters. APPLE-1005,
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`33:4-20, 36:38-56, FIGS. 3A, 3B (reproduced below). Venkatraman monitoring
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`device also includes a light concentrator in the form of a lens to facilitate light
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`collection and minimize losses. Id., 34:5-20 (“the light-transmissive structures
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`may employ a material and/or optical design to facilitate low light loss (for
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`example, the light-transmissive structures may include a lens to facilitate light
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`collection …)”).
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`Attorney Docket No. 50095-0004IP2
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`Emitters
`Light shield
`Photodetectors
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`APPLE-1005, FIG. 3A, 3B (annotated).
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`The sensor in the biometric monitoring device that performs the
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`measurements is placed on the bottom side of the device facing the wrist, as shown
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`in FIGS. 2B and 2C. APPLE-1005, 15:35-54.
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`APPLE-1005, FIGS. 2B (left), 2C (right).
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`Attorney Docket No. 50095-0004IP2
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`3.
`The combination of Mendelson-799 and Venkatraman
`A POSITA would have found it obvious to modify Mendelson-799’s pulse
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`oximeter to be wrist-worn, and to include a touch screen, based on the teachings of
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`Venkatraman. APPLE-1004, 2:14-28, 10:16-30, 9:22-40; APPLE-1005, 33:4-20,
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`36:38-37:40. Additionally, in light of Venkatraman’s teaching a POSITA would
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`have found it obvious to incorporate the “lens to facilitate light collection” of
`
`Venkatraman as a light concentrator in the optical oximetery sensor taught by
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`Mendelson-799. APPLE-1004, 9:22-40, FIG. 7; APPLE-1005, 34:5-20; APPLE-
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`1003, ¶¶21-29.
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`4.
`
`Reasons to combine Mendelson-799 and
`Venkatraman
`It would have been obvious to a POSITA to combine the teachings of
`
`Mendelson-799 and Venkatraman in the manner described above because doing so
`
`would have amounted to nothing more than the use of a known technique to
`
`improve similar devices in the same way and combining prior art elements
`
`according to known methods to yield predictable results. See KSR v. Teleflex, 550
`
`U.S. 398, 417 (2007); APPLE-1003, ¶30. Mendelson-799 and Venkatraman are
`
`both related to obtaining physiological parameters by emitting radiation (e.g.,
`
`visible or infrared light) and detecting reflected radiation from human tissue.
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`APPLE-1004, 2:14-28, 10:16-30, 9:22-40; APPLE-1005, 33:4-20, 36:38-37:40,
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`Attorney Docket No. 50095-0004IP2
`IPR of U.S. Patent No. 10,470,695
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`FIGS. 3A, 3B. Implementing Mendelson-799’s sensor to be wrist-worn like
`
`Venkatraman’s biometric monitoring device would minimize discomfort and
`
`interference in daily activities caused by the sensor, “which a POSITA would have
`
`recognized as beneficial.” APPLE-1003, ¶30; APPLE-1005, 14:28-36. In
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`addition, the POSITA would have understood that integrating Mendelson-799’s
`
`sensor 10 and control unit 21 in a single, wrist-worn device, as taught by
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`Venkatraman, results “in a simpler, less-cluttered configuration with fewer devices
`
`and external connections, which can be cumbersome to the user.” APPLE-1003,
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`¶30; APPLE-1005, 50:36-51:45; see In re Larson, 340 F.2d 965, 968 (CCPA 1965)
`
`(integrating known components into a single device is “merely a matter of obvious
`
`engineering choice”). In addition, a POSITA would have understood that by
`
`“integrating the components into a single device, issues with poorly connected
`
`wires between the sensors and processing units can be mitigated, and the
`
`components and connections between them can be protected within the housing of
`
`the wrist-worn device, thereby resulting in a device that is more robust and
`
`resistant to damage.” APPLE-1003, ¶30; see, e.g., APPLE-1005, 50-36-51:61.
`
`For example, in the combination, components of Mendelson-799’s pulse oximeter
`
`(e.g., processors, emitters, detectors, etc.) are implemented by electronic circuits on
`
`discrete chips or a packaged chip connected to or integrated with a PCB, as shown
`
`in Venkatraman’s FIGS. 2C, 3A, and 3B. APPLE-1003, ¶30; APPLE-1005, 50:36-
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`Attorney Docket No. 50095-0004IP2
`IPR of U.S. Patent No. 10,470,695
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`51:45, FIGS. 2C, 3A, 3B. Thus, a POSITA would have been motivated to perform
`
`the combination, for example, because the resulting Mendelson-799-Venkatraman
`
`wrist-worn optical sensor would (i) make it easier and more convenient for the user
`
`to monitor physiological data (e.g., heart rate, oxygen level) throughout the day,
`
`(ii) minimize clutter caused by multiple devices, and (iii) be more robust and
`
`resistant to damage. APPLE-1003, ¶30.
`
`Additionally, it would have been obvious to a POSITA to implement a touch
`
`screen in the Mendelson-799-Venkatraman wrist-worn physiological monitoring
`
`device as doing so would allow a user to easily navigate a display and provide
`
`inputs such as activating functions in a convenient manner. APPLE-1003, ¶31; see
`
`also APPLE-1010, 4; supra §III.A.3. By implementing a touch screen, additional
`
`input devices such as a microphone for audio input or physical buttons
`
`implemented on device housing or in a connected computer can be avoided,
`
`thereby conserving space and providing a clutter free and user-friendly
`
`environment to use the physiological monitoring device. APPLE-1003, ¶31.
`
`Consequently, implementing the display of the Mendelson-799-Venkatraman
`
`device as a touch screen is nothing more than the straight forward use of a known
`
`technique to improve similar devices in the same way and a straight forward
`
`substitution of prior art elements according to known methods to yield predictable
`
`results. See KSR, 550 U.S. at 417; APPLE-1003, ¶31.
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`Attorney Docket No. 50095-0004IP2
`IPR of U.S. Patent No. 10,470,695
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`A POSITA would have had a reasonable expectation of success in
`
`implementing this combination at least because miniaturization techniques (like
`
`those employed to configure Mendelson-799’s device to be wrist-worn) were well-
`
`known and widely utilized in the art during the relevant timeframe. APPLE-1003,
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`¶32 (noting the 11 year gap in the filing dates of Venkatraman and Mendelson-799
`
`during which the size of circuits decreased significantly and the industry followed
`
`the trend set by Moore’s law which indicates at least 10x greater density). In fact,
`
`Venkatraman itself teaches a wrist-worn device that incorporates emitters,
`
`detectors, and processors in configurations similar to the proposed combination.
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`APPLE-1005, 50:36-51:61; APPLE-1003, ¶32.
`
`Note that, in the combined device, the operations of Mendelson-799’s LEDs,
`
`photodetectors, light shield, and data processing are unchanged. APPLE-1003,
`
`¶33. Indeed, the elements of the combined system would each perform similar
`
`functions in similar ways to those taught in Mendelson-799 and Venkatraman. Id.
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`For example, the sensor would still be performing the same sensor operations, the
`
`processor would still be performing the same processing operations, and the
`
`display would still be performing the same display operations. Id. Accordingly,
`
`the Mendelson-799-Venkatraman combination would have been predictable to a
`
`POSITA, and the POSITA would have had a reasonable expectation of success in
`
`performing the combination. Id.
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`Attorney Docket No. 50095-0004IP2
`IPR of U.S. Patent No. 10,470,695
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`5.
`
`Analysis
` Claim 1
`1[p]: “A wrist-worn physiological monitoring device configured for placement
`on a user at a tissue measurement site, the device comprising:”
`In the combination, Mendelson-799 describes a pulse oximeter device that
`
`uses a sensor placed on user tissue to obtain physiological measurements of the
`
`user. APPLE-1004, 10:15-30 (“FIG. 8 illustrates a block diagram of a pulse
`
`oximeter 20 utilizing ... sensor 10”); Abstract (“sensor for use in an optical
`
`measurement device and a method for non-invasive measurement of a blood
`
`parameter”); 5:49-59, 8:37-41, 9:22-40 (“Referring to FIG. 7, there is illustrated an
`
`optical sensor 10 … aimed at minimizing some of the measurement inaccuracies in
`
`a reflectance pulse oximeter”); APPLE-1003, ¶34. The sensor is configured for
`
`placement on a user at a tissue measurement site and includes a “sensor housing, a
`
`source of radiation coupled to the housing, and a detector assembly coupled to the
`
`housing[.]” APPLE-1004, Abstract. “[T]he detector assembly is adapted to detect
`
`reflected radiation at least one predetermined frequency and to generate respective
`
`signals … used to determine the parameter of the blood.” Id. This “reflection
`
`mode…arrangement allows for measuring SaO2 [oxygen saturation]from multiple
`
`convenient locations on the body (e.g., the head, torso, or upper limbs), where
`
`convenient transmission mode measurements are not feasible.” APPLE-1004,
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`2:14-21, 10:16-30, FIGS. 7, 8; APPLE-1003, ¶34.
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`Attorney Docket No. 50095-0004IP2
`IPR of U.S. Patent No. 10,470,695
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`Also in the combination, Venkatraman teaches that a portable biometric
`
`monitoring device can be wrist-worn, as shown in FIGS. 6A, 6B, and 7
`
`(reproduced below). APPLE-1005, 12:16-21, 15:19-26, 52:23-53:18.
`
`APPLE-1005, FIGS. 6A, 6B (annotated).
`
`
`
`
`
`Wrist-worn
`monitoring
`device
`
`
`APPLE-1005, Detail of FIG. 7 (annotated).
`
`Venkatraman explains that “[b]iometric monitoring devices … are typically
`
`small in size so as to be unobtrusive for the wearer.” APPLE-1005, 14:28-30.
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`Attorney Docket No. 50095-0004IP2
`IPR of U.S. Patent No. 10,470,695
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`“Biometric monitoring devices are typically designed to be able to be worn without
`
`discomfort for long periods of time and to not interfere with normal daily activity.”
`
`APPLE-1005, 14:30-36. Venkatraman also teaches the use of a digital display, as
`
`shown in FIG. 6B, to display data acquired or stored locally on the device.
`
`APPLE-1005, 53:19-55:51.
`
`As previously explained (supra, § III.A.4), a POSITA would have found it
`
`obvious to implement Mendelson-799’s pulse oximeter in the convenient and
`
`comfortable wrist-worn configuration taught by Venkatraman. APPLE-1005,
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`14:28-36; APPLE-1003, ¶¶29-33.
`
`1[a]: “a light emission source comprising a plurality of emitters configured to
`irradiate the tissue measurement site by emitting light towards the tissue
`measurement site,”
`In the combination, Mendelson-799 describes a noninvasive optical
`
`physiological sensor that includes “a 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, respectively ….” APPLE-1004,
`
`Abstract, 2:65-3:15, 7:25-8:13, 8:37-41, 9:22-40, 10:16-30, FIGS. 7, 8; APPLE-
`
`1003, ¶37; supra, §III.A.1.
`
`In more detail, the light emitting elements