Filed July 27, 2022
`
`By:
`
`
`On behalf of:
`Patent Owner Masimo Corporation
`Jarom D. Kesler (Reg. No. 57,046)
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jacob L. Peterson (Reg. No. 65,096)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Email: AppleIPR2021-0193-708@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2021-00193
`Patent 10,299,708
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`
`
`
`
`PATENT OWNER’S NOTICE OF APPEAL TO
`THE U.S. COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`
`
`
`
`
`By:
`
`
`On behalf of:
`Patent Owner Masimo Corporation
`Jarom D. Kesler (Reg. No. 57,046)
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jacob L. Peterson (Reg. No. 65,096)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Email: AppleIPR2021-0193-708@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2021-00193
`Patent 10,299,708
`
`
`
`
`
`PATENT OWNER’S NOTICE OF APPEAL TO
`THE U.S. COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`
`
`
`
`
`IPR2021-00193 – Patent 10,299,708
`Apple v. Masimo
`
`Pursuant to 28 U.S.C. § 1295(a)(4)(A), 35 U.S.C. §§ 141(c), 142, and 319,
`
`37 C.F.R. §§ 90.2(a) and 90.3, and Rule 4(a) of the Federal Rules of Appellate
`
`Procedure, Patent Owner Masimo Corporation (“Masimo”) hereby appeals to the
`
`United States Court of Appeals for the Federal Circuit from the Judgment – Final
`
`Written Decision (Paper 30) entered on June 1, 2022 (Attachment A) and from all
`
`underlying orders, decisions, rulings, and opinions that are adverse to Masimo
`
`related thereto and included therein, including those within the Decision Granting
`
`Institution of Inter Partes Review, entered June 3, 2021 (Paper 7). Masimo
`
`appeals the Patent Trial and Appeal Board’s determination that claims 1-29 of U.S.
`
`Patent 10,299,708 are unpatentable, and all other findings and determinations,
`
`including but not limited to claim construction, as well as all other issues decided
`
`adverse to Masimo’s position or as to which Masimo is dissatisfied in IPR2021-
`
`00193 involving Patent 10,299,708.
`
`Masimo is concurrently providing true and correct copies of this Notice of
`
`Appeal, along with the required fees, to the Director of the United States Patent
`
`and Trademark Office and the Clerk of the United States Court of Appeals for the
`
`Federal Circuit.
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`
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`-1-
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`
`
`IPR2021-00193 – Patent 10,299,708
`Apple v. Masimo
`
`Dated: July 27, 2022
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`By: /Jarom Kesler/
`Jarom D. Kesler (Reg. No. 57,046)
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jacob L. Peterson (Reg. No. 65,096)
`
`Attorneys for Patent Owner
`Masimo Corporation
`
`
`
`-2-
`
`
`
`
`
`
`
`
`ATTACHMENT A
`ATTACHMENT A
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 30
`Date: June 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2021-00193
`Patent 10,299,708 B1
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2021-00193
`Patent 10,299,708 B1
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) pursuant to
`
`35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1–29
`
`(“challenged claims”) of U.S. Patent No. 10,299,708 B1 (Ex. 1001, “the
`
`’708 patent”). We instituted the petitioned review (Paper 7, “Institution
`
`Decision” or “Inst. Dec.”).
`
`Masimo Corporation (“Patent Owner”) filed a Patent Owner Response
`
`(Paper 14, “PO Resp.”) to oppose the Petition. Petitioner filed a Reply
`
`(Paper 16, “Pet. Reply”) to the Patent Owner Response. Patent Owner filed
`
`a Sur-reply (Paper 19, “Sur-reply”) to the Reply. We conducted an oral
`
`hearing on March 15, 2022. A transcript has been entered into the record
`
`(Paper 29, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(b)(4) and § 318(a). This
`
`Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R.
`
`§ 42.73 as to the patentability of claims 1–29 of the ’708 patent. We
`
`determine Petitioner has shown by a preponderance of the evidence that
`
`those claims are unpatentable.
`
`B. Related Matters
`
`The parties identify the following matters related to the ’708 patent:
`
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`
`(C.D. Cal.) (filed Jan. 9, 2020);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01520 (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);
`
`2
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`IPR2021-00193
`Patent 10,299,708 B1
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`Apple Inc. v. Masimo Corporation, IPR2020-01523 (PTAB Sept. 9,
`
`2020) (challenging claims of U.S. Patent No. 8,457,703 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01524 (PTAB Aug. 31,
`
`2020) (challenging claims of U.S. Patent No. 10,433,776 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01526 (PTAB Aug. 31,
`
`2020) (challenging claims of U.S. Patent No. 6,771,994 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01536 (PTAB Aug. 31,
`
`2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB Aug. 31,
`
`2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01538 (PTAB Sept. 2,
`
`2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01539 (PTAB Sept. 2,
`
`2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01713 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,624,564 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01714 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01715 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01716 (PTAB Sept. 30,
`
`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);
`
`3
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`IPR2021-00193
`Patent 10,299,708 B1
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`Apple Inc. v. Masimo Corporation, IPR2020-01733 (PTAB Sept. 30,
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`2020) (challenging claims of U.S. Patent No. 10,702,195 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01737 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,709,366 B1)
`
`Apple Inc. v. Masimo Corporation, IPR2021-00195 (PTAB Nov. 20,
`
`2020) (challenging claims of U.S. Patent No. 10,376,190 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2021-00208 (PTAB Nov. 20,
`
`2020) (challenging claims of U.S. Patent No. 10,258,266 B1); and
`
`Apple Inc. v. Masimo Corporation, IPR2021-00209 (PTAB Nov. 20,
`
`2020) (challenging claims of U.S. Patent No. 10,376,191 B1).
`
`Pet. 97–98; Paper 3, 3–4.
`
`
`
`Patent Owner further identifies the following pending patent
`
`applications, among other issued and abandoned applications, that claim
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`priority to, or share a priority claim with, the ’708 patent:
`
`
`
`
`
`
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`
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`U.S. Patent Application No. 16/834,538;
`
`U.S. Patent Application No. 17/031,407;
`
`U.S. Patent Application No. 17/031,316;
`
`U.S. Patent Application No. 17/031,356;
`
`U.S. Patent Application No. 16/449,143; and
`
`U.S. Patent Application No. 16/805,605.
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`
`
`Paper 3, 2–3.
`
`C. The ’708 Patent
`
`The ’708 patent is titled “Multi-Stream Data Collection System for
`
`Noninvasive Measurement of Blood Constituents,” and issued on May 28,
`
`2019, from U.S. Patent Application No. 16/261,366, filed Jan. 29, 2019.
`
`Ex. 1001, codes (21), (22), (45), (54). The ’708 patent claims priority
`
`4
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`IPR2021-00193
`Patent 10,299,708 B1
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`through a series of continuation and continuation-in-part applications to
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`Provisional Application Nos. 61/078,228 and 61/078,207, both filed July 3,
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`2008. Id. at codes (60), (63).
`
`The ’708 patent discloses a two-part data collection system including
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`a noninvasive sensor that communicates with a patient monitor. Id. at 2:31–
`
`33. The sensor includes a sensor housing, an optical source, and several
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`photodetectors, and is used to measure a blood constituent or analyte, e.g.,
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`oxygen or glucose. Id. at 2:22–28, 2:57–58. The patient monitor includes a
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`display and a network interface for communicating with a handheld
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`computing device. Id. at 2:38–40.
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`Figure 1 of the ’708 patent is reproduced below.
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`Figure 1 illustrates a block diagram of data collection system 100 including
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`sensor 101 and monitor 109. Id. at 11:36–47. Sensor 101 includes optical
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`emitter 104 and detectors 106. Id. at 11:48–52. Emitters 104 emit light that
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`5
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`IPR2021-00193
`Patent 10,299,708 B1
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`is attenuated or reflected by the patient’s tissue at measurement site 102. Id.
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`at 13:60–67. Detectors 106 capture and measure the light attenuated or
`
`reflected from the tissue. Id. In response to the measured light,
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`detectors 106 output detector signals 107 to monitor 109 through front-end
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`interface 108. Id. at 13:64–66, 14:16–22. Sensor 101 also may include
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`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
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`more surface area from which light can be detected. Id. at 10:61–11:3.
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`Monitor 109 includes signal processor 110 and user interface 112. Id.
`
`at 15:6–8. “[S]ignal processor 110 includes processing logic that determines
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`measurements for desired analytes . . . based on the signals received from
`
`the detectors.” Id. at 15:10–14. User interface 112 presents the
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`measurements to a user on a display, e.g., a touch-screen display. Id. at
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`15:38–48. The monitor may be connected to storage device 114 and
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`network interface 116. Id. at 15:52–16:3.
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`
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`The ’708 patent describes various examples of sensor devices.
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`Figures 14D and 14F, reproduced below, illustrate sensor devices.
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`
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`6
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`IPR2021-00193
`Patent 10,299,708 B1
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`Figure 14D illustrates portions of a detector submount and Figure 14F
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`illustrates portions of a detector shell. Id. at 6:34–37. As shown in
`
`Figure 14D, multiple detectors 1410c are located within housing 1430 and
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`under transparent cover 1432, on which protrusion 605b (or partially
`
`cylindrical protrusion 605) is disposed. Id. at 35:23–25, 36:17–24.
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`Figure 14F illustrates a detector shell 306f including detectors 1410c on
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`substrate 1400c. Id. at 36:63–37:4. Substrate 1400c is enclosed by shielding
`
`enclosure 1490 and noise shield 1403, which include window 1492a and
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`window 1492b, respectively, placed above detectors 1410c. Id.
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`Alternatively, cylindrical housing 1430 may be disposed under noise
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`shield 1403 and may enclose detectors 1410c. Id. at 37:34–36.
`
`
`
`Figures 4A and 4B, reproduced below, illustrate an alternative
`
`example of a tissue contact area of a sensor device.
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`
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`Figures 4A and 4B illustrate arrangements of protrusion 405 including
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`measurement contact area 470. Id. at 23:8–14. “[M]easurement site contact
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`area 470 can include a surface that molds body tissue of a measurement
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`site.” Id. “For example, . . . measurement site contact area 470 can be
`
`generally curved and/or convex with respect to the measurement site.” Id. at
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`23:31–33. The measurement site contact area may include windows 420–
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`7
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`IPR2021-00193
`Patent 10,299,708 B1
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`423 that “mimic or approximately mimic a configuration of, or even house, a
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`plurality of detectors.” Id. at 23:39–53.
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`D. Illustrative Claim
`
`Of the challenged claims, claims 1 and 19 are independent. Claim 1 is
`
`illustrative and is reproduced below.
`
`1. A noninvasive optical physiological
`comprising:
`
`sensing system
`
`[a] a platform including a planar surface;
`
`[b] a housing including a raised edge portion extending from
`and enclosing at least a portion of the planar surface;
`
`[c] at least four detectors arranged on the planar surface of the
`platform and within the housing, wherein the at least four
`detectors are arranged in a grid pattern such that a first detector
`and a second detector are arranged across from each other on
`opposite sides of a central point along a first axis, and a third
`detector and a fourth detector are arranged across from each other
`on opposite sides of the central point along a second axis which
`is perpendicular to the first axis; and
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`[d] the housing including a protruding light permeable cover.
`
`Ex. 1001, 44:36–50 (bracketed identifiers [a]–[d] added). Independent
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`claim 19 includes limitations similar to limitations [a]–[d] of claim 1 but
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`also requires distinct limitations discussed more below. Id. at 45:53–46:11
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`(reciting a “platform,” “at least four detectors,” and a “light permeable cover
`
`. . . protruding above the raised wall”).
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`8
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`IPR2021-00193
`Patent 10,299,708 B1
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`E.
`
`Evidence Relied Upon
`
`Petitioner relies on the following references:
`
`Reference
`
`Publication/Patent Number
`
`Aizawa
`
`Inokawa
`
`Ohsaki
`
`Mendelson-
`2006
`
`U.S. Patent Application Publication No.
`2002/0188210 A1, filed May 23, 2002, published
`December 12, 2002.
`Japanese Patent Application Publication No. 2006-
`296564 A, filed April 18, 2005, published
`November 2, 2006.
`U.S. Patent Application Publication No.
`2001/0056243 A1, filed May 11, 2001, published
`December 27, 2001.
`“A Wearable Reflectance Pulse Oximeter for
`Remote Physiological Monitoring,” Proceedings of
`the 28th IEEE EMBS Annual International
`Conference, 912–915 (2006).
`U.S. Patent No. 7,031,728 B2 issued April 18,
`2006.
`Goldsmith U.S. Patent Application Publication No.
`2007/0093786 A1, filed July 31, 2006, published
`April 26, 2007.
`U.S. Patent Application Publication No.
`2004/0138568 A1, filed June 15, 2003, published
`July 15, 2004.
`“Design and Evaluation of a New Reflectance Pulse
`Oximeter Sensor,” Worcester Polytechnic
`Institution, Biomedical Engineering Program,
`Worcester, MA 01609; Association for the
`Advancement of Medical Instrumentation, Vol. 22,
`No. 4, 1988, 167–173.
`
`Beyer
`
`Lo
`
`Mendelson-
`1988
`
`Exhibit
`
`1006
`
`1007,
`10081
`
`1014
`
`1016
`
`1019
`
`1027
`
`1028
`
`1015
`
`
`Pet. 1–2.
`
`Petitioner also relies on the declaration testimony of Thomas W.
`
`Kenny, Ph.D. (Exhibits 1003 and 1047). Patent Owner relies on the
`
`
`1 Exhibit 1008 is an English translation of Exhibit 1007.
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`9
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`IPR2021-00193
`Patent 10,299,708 B1
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`declaration testimony of Vijay K. Madisetti, Ph.D. (Exhibit 2004). The
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`parties also provide deposition testimony from Dr. Kenny and Dr. Madisetti,
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`including from this and other proceedings. See Exs. 1034–1036, 2006–
`
`2009, 2027.
`
`F.
`
`Asserted Grounds
`
`We instituted an inter partes review based on the following grounds:
`
`Claim(s) Challenged 35 U.S.C. §
`
`References/Basis
`
`1–9, 11, 13–15, 19–22,
`24–27
`
`1–9, 11, 13–15, 19–22,
`24–27
`
`16, 27, 28
`
`17, 18, 29
`
`16–18, 27–29
`
`10
`
`1–9, 11–15, 19–26
`
`16, 27, 28
`
`17, 18, 29
`
`103
`
`Aizawa, Inokawa
`
`103
`
`Aizawa, Inokawa, Ohsaki
`
`103
`
`Aizawa, Inokawa, Mendelson-2006
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`Aizawa, Inokawa, Mendelson-2006,
`Beyer
`
`Aizawa, Inokawa, Goldsmith, Lo
`
`Aizawa, Inokawa, Al-Ali
`
`Mendelson-1988, Inokawa
`
`Mendelson-1988, Inokawa,
`Mendelson-2006
`
`Mendelson-1988, Inokawa,
`Mendelson-2006, Beyer
`
`II. ANALYSIS
`
`A.
`
`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
`
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`10
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`Patent 10,299,708 B1
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`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations, including (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of skill in the art; and (4) objective evidence of non-
`
`obviousness.2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
`
`evaluating a combination of teachings, we must also “determine whether
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`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.
`
`B.
`
`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
`
`technologies, in combination with training or at least one to two years of
`
`related work experience with capture and processing of data or information,
`
`
`2 The parties do not present objective evidence of non-obviousness based on
`the final record.
`
`11
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`including but not limited to physiological monitoring technologies.” Pet. 4–
`
`5 (citing Ex. 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.
`
`Patent Owner does not challenge using Petitioner’s asserted level of
`
`skill, but notes that “asserted level of skill (1) requires no coursework,
`
`training or experience with optics or optical physiological monitors;
`
`(2) requires no coursework, training or experience in physiology; and
`
`(3) focuses on data processing and not sensor design.” PO Resp. 9–10
`
`(citing Pet. 4–5; Ex. 2004 ¶¶ 35–38).
`
`We adopt Petitioner’s assessment for the person of ordinary skill in
`
`the art (“POSITA”) as set forth above, which appears consistent with the
`
`level of skill reflected in the Specification and prior art.
`
`C. 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). Although both parties contend that no claim term
`
`requires express construction (Pet. 4; PO Resp. 9), the substance of the
`
`parties’ briefing demonstrates that there is a dispute regarding the claim term
`
`“cover.”
`
`1. “cover”
`
`Each of independent claims 1 and 19 requires “a light permeable
`
`cover.” Ex. 1001, 44:50, 46:10.
`
`12
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`IPR2021-00193
`Patent 10,299,708 B1
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`Patent Owner argues that the claimed “cover” excludes “an optically
`
`clear adhesive/epoxy” and a “resin on a surface.” PO Resp. 45–47.
`
`According to Patent Owner, “the ’708 Patent distinguishes a resin on a
`
`surface from a cover, explaining: ‘the cylindrical housing 1430 (and
`
`transparent cover 1432) . . . can protect the detectors 1410c and conductors
`
`1412c more effectively than currently-available resin epoxies.’” Id. at 45
`
`(quoting Ex. 1001, 36:37–46).
`
`Patent Owner alleges that Dr. Kenny also “distinguished a sealing
`
`resin from a cover, acknowledging a ‘layer of sealing resin’ is ‘one way to
`
`protect the components without using a cover.’” Id. at 45–46 (quoting
`
`Ex. 2009, 395:22–396:17). Patent Owner argues its understanding is
`
`consistent with the prior art cited by Petitioner. Id. at 46 (citing Ex. 1008
`
`¶ 103, Fig. 17; Ex. 1023 ¶ 35; Ex. 1012, 5:2–6, Fig. 2B; Ex. 1013 ¶ 32, Fig.
`
`2; Ex. 1027 ¶ 85, Fig. 9B; Ex. 2004 ¶ 104).
`
`Petitioner replies that “there is nothing in the specification or the
`
`prosecution history [of the ’708 patent] that would lead a [person of ordinary
`
`skill in the art] to conclude that ‘cover’ should be interpreted based on
`
`anything other than its plain meaning.” Pet. Reply 21 (citing Thorner v.
`
`Sony Computer Entertainment America LLC, 669 F.3d 1362, 1368 (Fed. Cir.
`
`2012)). That plain meaning, according to Petitioner, is that “a cover is
`
`merely ‘something that protects, shelters, or guards.’” Id. at 21 (quoting
`
`Ex. 1050; citing Pet. 74–75; Ex. 1047 ¶ 43). Petitioner argues that Patent
`
`Owner’s reliance on the ’708 patent Specification takes text out of context
`
`and, when context is considered, it is clear that “the epoxy resin to which the
`
`’708 patent compares its cover is not [an] epoxy cover . . . but rather epoxy
`
`that is applied to solder joints.” Id. at 21–22 (citing Ex. 1001, 36:37–46;
`
`Ex. 1047 ¶ 45).
`
`13
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`Patent 10,299,708 B1
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`Petitioner also contends that Patent Owner “mischaracterizes
`
`Dr. Kenny’s deposition testimony to say he agreed that ‘sealing resin’ is
`
`somehow distinguished from a cover.” Id. at 21. Petitioner contends that
`
`Dr. Kenny simply “clarified that using a sealing resin is ‘a pretty common
`
`way to protect electronic components.’” Id. (citing Ex. 2009, 395:22–
`
`396:17; Ex. 1047 ¶ 44). Moreover, Petitioner contends that “such extrinsic
`
`evidence would not justify departure from plain meaning under Thorner.”
`
`Id.
`
`In its Sur-reply, Patent Owner maintains that the ’708 patent
`
`“specifically distinguishes a ‘resin’ on a surface from a ‘cover,’” and
`
`Petitioner’s opposing reading is not persuasive. Sur-reply 19–21.
`
`Upon review of the record, we disagree with Patent Owner’s limiting
`
`construction of “cover” to exclude epoxy and resin. The plain and ordinary
`
`meaning of the term does not support Patent Owner’s view. A “cover”
`
`ordinarily connotes “something that protects, shelters, or guards.”
`
`Ex. 1050,3 288. That plain and ordinary meaning is consistent with the
`
`’708 patent’s description of “flex circuit cover 360, which can be made of
`
`plastic or another suitable material . . . [and] can cover and thereby protect a
`
`flex circuit (not shown).” Ex. 1001, 22:63–65. It also is consistent with the
`
`’708 patent’s description and illustration of “transparent cover 1432” in
`
`Figure 14D, which covers and protects detectors 1410c and
`
`conductors 1412c, and which “can be fabricated from glass or plastic, among
`
`other materials.” See id. at 36:23–32 (emphasis added), Figs. 14D–14E.
`
`This is not the situation in which a special definition for a claim term
`
`has been set forth in the specification with reasonable clarity, deliberateness,
`
`
`3 Merriam-Webster’s Collegiate Dictionary, 11th ed. (©2005).
`
`14
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`Patent 10,299,708 B1
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`and precision, so as to give notice of the inventor’s own lexicography. See
`
`Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir.
`
`2005); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Nor do we
`
`discern that Patent Owner “demonstrate[d] an intent to deviate from the
`
`ordinary and accustomed meaning of a claim term by including in the
`
`specification expressions of manifest exclusion or restriction, representing a
`
`clear disavowal of claim scope.” Teleflex, Inc. v. Ficosa North America
`
`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).
`
`Here, based upon our review of the intrinsic evidence, no such special
`
`definition or express disavowal of the term “cover” to exclude epoxy and
`
`resin exists. Patent Owner relies on the following description of Figure 14D
`
`in that regard:
`
`In certain embodiments, the cylindrical housing 1430 (and
`transparent cover 1432) forms an airtight or substantially airtight
`or hermetic seal with the submount 1400c. As a result, the
`cylindrical housing 1430 can protect the detectors 1410c and
`conductors 1412c from fluids and vapors that can cause
`in certain embodiments,
`the
`corrosion. Advantageously,
`cylindrical housing 1430 can protect the detectors 1410c and
`conductors 1412c more effectively than currently-available resin
`epoxies, which are sometimes applied to solder joints between
`conductors and detectors.
`
`Ex. 1001, 36:37–46 (emphases added). First, the sentence cited by Patent
`
`Owner begins with the phrase “[i]n certain embodiments,” which indicates
`
`the claimed invention is not limited and is open to other embodiments, so
`
`there is no lexicography or disavowal here. Second, we agree with
`
`Petitioner’s reading of this passage as distinguishing the prior art from the
`
`claimed invention based on the location of the material (applied only to
`
`solder joints between conductors and detectors in the prior art, as opposed to
`
`covering the conductors and detectors in the invention) and not the type of
`
`15
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`Patent 10,299,708 B1
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`material. Third, at best, the ’708 patent expresses a preference for a cover to
`
`be made of glass or plastic, because such materials provide “more
`
`effective[]” protection than resin epoxies that were known when the ’708
`
`patent was filed. See id. at 36:39–45. But even this reading recognizes that
`
`resin epoxies provide some amount of protection, albeit perhaps a lesser
`
`amount than glass or plastic, and are not excluded from forming the material
`
`of a cover.
`
`Dr. Kenny’s deposition testimony cited by Patent Owner also does not
`
`persuade us that, in the context of the ’708 patent, epoxy or resin is excluded
`
`from the material of a cover. Dr. Kenny testifies that “a layer of sealing
`
`resin” “[c]ould” be used to protect the electronic components in a sensor
`
`(Ex. 2009, 395:22–396:8). He was then asked “So that would be one way to
`
`protect the components without using a cover, correct?” to which he
`
`answered “[t]here are many ways to protect the elements other than using a
`
`cover” and maintained that the proposed combination of prior art has a
`
`“cover” to achieve purposes other than protecting electronic components,
`
`i.e., “to improve adhesion and to improve light gathering for the operation of
`
`the system.” Id. at 396:9–17. He did not squarely testify that sealing resin
`
`may never be a cover.
`
`Accordingly, in the context of the ’708 patent, we do not construe the
`
`claimed “cover” to exclude epoxy and resin.
`
`2. Other Claim Terms
`
`Upon consideration of the entirety of the arguments and evidence
`
`presented, we conclude no further explicit construction of any claim term is
`
`needed to resolve the issues presented by the arguments and evidence of
`
`record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.
`
`16
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`Patent 10,299,708 B1
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`Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need
`
`to be construed “only to the extent necessary to resolve the controversy”
`
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999))).
`
`D. Obviousness over Aizawa and Inokawa
`
`Petitioner contends that claims 1–9, 11, 13–15, 19–22, and 24–27 of
`
`the ’708 patent would have been obvious over the combined teachings of
`
`Aizawa and Inokawa. Pet. 7–40.
`
`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 worn on
`
`a user’s wrist 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.
`
`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
`
`
`
`17
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`
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`IPR2021-00193
`Patent 10,299,708 B1
`
`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.
`
`
`
`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.
`
`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.
`
`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
`
`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.
`
`18
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`IPR2021-00193
`Patent 10,299,708 B1
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`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. Acrylic transparent plate 6 is disposed between holder 23 and the
`
`user’s wrist 10. Id. ¶¶ 23, 26, 30. Furthermore, “belt 7 is fastened such that
`
`the acrylic transparent plate 6 becomes close to the artery 11 of the wrist
`
`10.” Id. ¶ 26. “Since the acrylic transparent plate 6 is provided on the
`
`detection face 23a of the holder 23, adhesion between the pulse rate
`
`detector 1 and the wrist 10 can be improved, thereby further improving the
`
`detection efficiency of a pulse wave.” Id. ¶ 30.
`
`2.
`
`Overview of Inokawa (Ex. 1008)
`
`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 that
`
`may be worn on a user’s wrist. Ex. 1008, code (54), ¶ 56.4
`
`
`4 Exhibit 1008 is an English translation of Exhibit 1007. In this Decision, all
`citations are to the English translation.
`
`19
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`IPR2021-00193
`Patent 10,299,708 B1
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`Figure 1 of Inokawa is reproduced below.
`
`
`
`
`
`Figure 1 illustrates a perspective 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
`
`
`
`20
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`IPR2021-00193
`Patent 10,299,708 B1
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`light-emitting elements, i.e., green LED5 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.
`
`Pulse sensor 1 includes lens 27, which “makes it possible to increase
`
`the light-gathering ability of the LED as well as to protect the LED or
`
`PD[6].” Id. ¶¶ 15, 58. Pulse sensor 1 also uses LEDs 21 and 23 to download
`
`data to a b
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