Trials@uspto.gov
`571-272-7822
`
`Paper 32
`Date: May 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2021-00209
`Patent 10,376,191 B1
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`WIEKER, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 32
`Date: May 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2021-00209
`Patent 10,376,191 B1
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`WIEKER, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2021-00209
`Patent 10,376,191 B1
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–6, 8–16, 18, and 19 (“challenged claims”) of U.S. Patent
`No. 10,376,191 B1 (Ex. 1001, “the ’191 patent”). Paper 2 (“Pet.”). Masimo
`Corporation (“Patent Owner”) waived filing a preliminary response.
`Paper 6. We instituted an inter partes review of all challenged claims 1–6,
`8–16, 18, and 19 on all grounds of unpatentability, pursuant to 35 U.S.C.
`§ 314. Paper 7 (“Inst. Dec.”).
`After institution, Patent Owner filed a Response (Paper 15, “PO
`Resp.”) to the Petition, Petitioner filed a Reply (Paper 18, “Pet. Reply”), and
`Patent Owner filed a Sur-reply (Paper 22, “PO Sur-reply”). An oral hearing
`was held on March 15, 2022, and a transcript of the hearing is included in
`the record. Paper 31 (“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons set forth below, Petitioner has met
`its burden of showing, by a preponderance of the evidence, that challenged
`claims 1–6, 8–16, 18, and 19 of the ’191 patent are unpatentable.
`
`B. Related Matters
`The parties identify the following matters related to the ’191 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);
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`Apple Inc. v. Masimo Corporation, IPR2020-01521 (PTAB Sept. 2,
`2020) (challenging claims of U.S. Patent No. 10,292,628 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01523 (PTAB Sept. 9,
`2020) (challenging claims of U.S. Patent No. 8,457,703 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01524 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 10,433,776 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01526 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 6,771,994 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01536 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01538 (PTAB Sept. 2,
`2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`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. 2,
`2020) (challenging claims of U.S. Patent No. 10,702,194 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01722 (PTAB Oct. 2,
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
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`Apple Inc. v. Masimo Corporation, IPR2020-01723 (PTAB Oct. 2,
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01733 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,702,195 B1);
`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, IPR2021-00193 (PTAB Nov. 20,
`2020) (challenging claims of U.S. Patent No. 10,299,708 B1);
`Apple Inc. v. Masimo Corporation, IPR2021-00195 (PTAB Nov. 20,
`2020) (challenging claims of U.S. Patent No. 10,376,190 B1); and
`Apple Inc. v. Masimo Corporation, IPR2021-00208 (PTAB Nov. 20,
`2020) (challenging claims of U.S. Patent No. 10,258,266 B1).
`Pet. 71–72; Paper 3, 3–4.
`
`Patent Owner further identifies the following pending patent
`applications, among other issued and abandoned applications, that claim
`priority to, or share a priority claim with, the ’191 patent:
`
`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.
`
`
`Paper 3, 1–3.
`
`C. The ’191 Patent
`The ’191 patent is titled “Multi-Stream Data Collection System for
`Noninvasive Measurement of Blood Constituents,” and issued on August 13,
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`2019, from U.S. Patent Application No. 16/409,515, filed May 10, 2019.
`Ex. 1001, codes (21), (22), (45), (54). The ’191 patent claims priority
`through a series of continuation and continuation-in-part applications to
`Provisional Application Nos. 61/078,228 and 61/078,207, both filed July 3,
`2008. Id. at codes (60), (63).
`The ’191 patent discloses a two-part data collection system including
`a noninvasive sensor that communicates with a patient monitor. Id. at 2:35–
`37. The sensor includes a sensor housing, an optical source, and several
`photodetectors, and is used to measure a blood constituent or analyte, e.g.,
`oxygen or glucose. Id. at 2:26–32, 61–62. The patient monitor includes a
`display and a network interface for communicating with a handheld
`computing device. Id. at 2:42–45.
`Figure 1 of the ’191 patent is reproduced below.
`
`
`Figure 1 illustrates a block diagram of data collection system 100 including
`sensor 101 and monitor 109. Id. at 11:42–44. Sensor 101 includes optical
`emitter 104 and detectors 106. Id. at 11:54–56. Emitters 104 emit light that
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`is attenuated or reflected by the patient’s tissue at measurement site 102. Id.
`at 13:67–14:3. Detectors 106 capture and measure the light attenuated or
`reflected from the tissue. Id. In response to the measured light,
`detectors 106 output detector signals 107 to monitor 109 through front-end
`interface 108. Id. at 14:3–6, 14:22–28. Sensor 101 also may include tissue
`shaper 105, which may be in the form of a convex surface that: (1) reduces
`the thickness of the patient’s measurement site; and (2) provides more
`surface area from which light can be detected. Id. at 10:57–11:9.
`Monitor 109 includes signal processor 110 and user interface 112. Id.
`at 15:12–14. “[S]ignal processor 110 includes processing logic that
`determines measurements for desired analytes . . . based on the signals
`received from the detectors.” Id. at 15:17–20. User interface 112 presents
`the measurements to a user on a display, e.g., a touch-screen display. Id. at
`15:42–55. The monitor may be connected to storage device 114 and
`network interface 116. Id. at 15:56–62.
`
`The ’191 patent describes various examples of sensor devices.
`Figures 14D and 14F, reproduced below, illustrate detector portions of
`sensor devices.
`
`
`
`Figure 14D illustrates portions of a detector submount and Figure 14F
`illustrates portions of a detector shell. Id. at 6:40–43. As shown in
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`Figure 14D, multiple detectors 1410c are located within housing 1430 and
`under transparent cover 1432, on which protrusion 605b (or partially
`cylindrical protrusion 605) is disposed. Id. at 35:36–40, 36:30–37.
`Figure 14F illustrates a detector shell 306f including detectors 1410c on
`substrate 1400c. Id. at 37:9–17. Substrate 1400c is enclosed by shielding
`enclosure 1490 and noise shield 1403, which include window 1492a and
`window 1492b, respectively, placed above detectors 1410c. Id. at 37:18–25.
`Alternatively, cylindrical housing 1430 may be disposed under noise
`shield 1403 and may enclose detectors 1410c. Id. at 37:47–49.
`
`Figures 4A and 4B, reproduced below, illustrate an alternative
`example of a tissue contact area of a sensor device.
`
`
`
`Figures 4A and 4B illustrate arrangements of protrusion 405 including
`measurement contact area 470. Id. at 23:13–19. “[M]easurement site
`contact area 470 can include a surface that molds body tissue of a
`measurement site.” Id. “For example, . . . measurement site contact
`area 470 can be generally curved and/or convex with respect to the
`measurement site.” Id. at 23:36–38. The measurement site contact area may
`include windows 420–423 that “mimic or approximately mimic a
`configuration of, or even house, a plurality of detectors.” Id. at 23:44–58.
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`D. Illustrative Claim
`Of the challenged claims, claims 1 and 9 are independent. Claim 1 is
`illustrative and is reproduced below.
`1. A noninvasive optical physiological sensor comprising:
`[a] a plurality of emitters configured to emit light into tissue
`of a user;
`[b] a plurality of detectors configured to detect light that has
`been attenuated by tissue of the user, wherein the plurality
`of detectors comprise at least four detectors;
`[c] a housing configured to house at least the plurality of
`detectors in a circular portion of the housing; and
`[d] a lens configured to be located between tissue of the user
`and the plurality of detectors when the noninvasive optical
`physiological sensor is worn by the user, wherein the lens
`comprises a single outwardly protruding convex surface
`configured to cause tissue of the user to conform to at least
`a portion of the single outwardly protruding convex
`surface when the noninvasive optical physiological sensor
`is worn by the user and during operation of the
`noninvasive optical physiological sensor.
`Ex. 1001, 44:50–67 (bracketed identifiers [a]–[d] added). Independent
`claim 9 includes limitations similar to limitations [a]–[d] of claim 1. Id. at
`45:26–36 (reciting a “planar surface”; “at least four detectors” arranged in a
`“grid pattern” on the planar surface; and “a lens forming a cover of the
`housing”).
`
`E. Applied References
`Petitioner relies upon the following references:
`Ohsaki et al., U.S. Patent Application Publication
`No. 2001/0056243 A1, filed May 11, 2001, published December 27,
`2001 (Ex. 1014, “Ohsaki”);
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`Aizawa, U.S. Patent Application Publication
`No. 2002/0188210 A1, filed May 23, 2002, published December 12,
`2002 (Ex. 1006, “Aizawa”);
`Inokawa et al., Japanese Patent Application Publication
`No. 2006-296564 A, filed April 18, 2005, published November 2,
`2006 (Ex. 1007, “Inokawa”);1 and
`Y. Mendelson et al., “Design and Evaluation of a New
`Reflectance Pulse Oximeter Sensor,” Association for the
`Advancement of Medical Instrumentation, Vol. 22, No. 4, 167–173
`(1988) (Ex. 1015, “Mendelson-1988”).
`Pet. 3. Petitioner also submits, inter alia, the Declaration of Thomas W.
`Kenny, Ph.D. (Ex. 1003), and the Second Declaration of Thomas W. Kenny
`(Ex. 1047). Patent Owner submits, inter alia, the Declaration of Vijay K.
`Madisetti, Ph.D. (Ex. 2004). The parties also provide deposition testimony
`from Dr. Kenny and Dr. Madisetti, including from this and other
`proceedings. See Exs. 1034–1036, 2006–2009, 2020, 2027.
`
`F. Asserted Grounds
`Petitioner asserts that claims 1–6, 8–16, 18, and 19 are unpatentable
`based upon the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`1–6, 8–16, 18, 19
`103
`1–6, 8–16, 18, 19
`103
`1–6, 8–16, 18, 19
`103
`
`References/Basis
`Aizawa, Inokawa
`Aizawa, Inokawa, Ohsaki
`Mendelson-1988, Inokawa
`
`
`1 Petitioner relies on a certified English translation of Inokawa (Ex. 1008).
`In this Decision, we also refer to the translation.
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`II. DISCUSSION
`A. Claim Construction
`For petitions filed on or after November 13, 2018, a claim shall be
`construed using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R.
`§ 42.100(b) (2019).
`Although both parties contend that no claim term requires express
`construction (Pet. 3–4; PO Resp. 9), the substance of the parties’ briefing
`demonstrates that there is a dispute regarding the claim term “cover.”
`
`1. “cover”
`Independent claim 9 requires “a lens forming a cover of the housing.”
`Ex. 1001, 45:27–46:3. Although independent claim 1 also recites “a lens,” it
`does not recite a “cover.” Id. at 44:50–67.
`Patent Owner argues that the claimed “cover” excludes “an optically
`clear adhesive/epoxy” and a “resin on a surface.” PO Resp. 51. According
`to Patent Owner, “the ’191 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. (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 51–52 (quoting
`Ex. 2009, 395:22–396:17). Patent Owner argues its understanding is
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`consistent with the prior art cited by Petitioner. Id. at 52 (citing Ex. 1008
`¶ 103, Fig. 17; Ex. 1023 ¶ 35; Ex. 2004 ¶ 113).
`Petitioner replies that “there is nothing in the specification or the
`prosecution history [of the ’191 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 24 (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. (quoting
`Ex. 1050; Ex. 1047 ¶ 48). Petitioner argues that Patent Owner’s reliance on
`the ’191 patent Specification takes text out of context and, when context is
`considered, it is clear that “the epoxy resin to which the ’191 patent
`compares its cover is not [an] epoxy cover . . . but rather epoxy that is
`applied to solder joints.” Id. at 24–25 (citing Ex. 1001, 36:50–59; Ex. 1047
`¶ 50).
`
`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 24. 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, 395:22–396:8;
`Ex. 1047 ¶ 49). 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 ’191 patent
`“specifically distinguishes a ‘resin’ on a surface from a ‘cover,’” and
`Petitioner’s opposing reading is not persuasive. PO Sur-reply 20–21.
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`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
`(Merriam-Webster’s Collegiate Dictionary, 11th ed. (©2005)), 288. That
`plain and ordinary meaning is consistent with the ’191 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, 22:66–23:2. It is also consistent with the ’191 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 36:42–49
`(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,
`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
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`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
`corrosion.
` Advantageously, in certain embodiments, the
`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, 36:50–59 (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
`material. Third, at best, the ’191 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 ’191
`patent was filed. See id. at 36:55–59. 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 ’191 patent, epoxy or resin is excluded
`from the material of a cover. Dr. Kenny testifies that “a layer of sealing
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`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 ’191 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.
`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))).
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of non-
`obviousness.2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
`evaluating a combination of teachings, we must also “determine whether
`there was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior art
`elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`In an inter partes review, the petitioner must show with particularity
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`Petitioner identifies the appropriate level of skill in the art as that
`possessed by a person 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
`
`
`2 Patent Owner does not present objective evidence of non-obviousness.
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`related work experience with capture and processing of data or information.”
`Pet. 4 (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 makes several observations regarding Petitioner’s
`identified level of skill in the art but, “[f]or this proceeding, [Patent Owner]
`nonetheless applies Petitioner’s asserted level of skill.” PO Resp. 10 (citing
`Ex. 2004 ¶¶ 35–38).
`We adopt Petitioner’s assessment as set forth above, which appears
`consistent with the level of skill reflected in the Specification and prior art.
`
`D. Obviousness over the Combined Teachings of
`Aizawa and Inokawa
`Petitioner contends that claims 1–6, 8–16, 18, and 19 of the ’191
`patent would have been obvious over the combined teachings of Aizawa and
`Inokawa. Pet. 6–43.
`1. Overview of Aizawa (Ex. 1006)
`Aizawa is a U.S. patent application publication titled “Pulse Wave
`Sensor and Pulse Rate Detector,” and discloses a pulse wave sensor that
`detects light output from a light emitting diode and reflected from a patient’s
`artery. Ex. 1006, codes (54), (57).
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`Figure 1(a) of Aizawa is reproduced below.
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`Figure 1(a) is a plan view of a pulse wave sensor. Id. ¶ 23. As shown in
`Figure 1(a), pulse wave sensor 2 includes light emitting diode (“LED”) 21,
`four photodetectors 22 symmetrically disposed around LED 21, and
`holder 23 for storing LED 21 and photodetectors 22. Id. Aizawa discloses
`that, “to further improve detection efficiency, . . . the number of the
`photodetectors 22 may be increased.” Id. ¶ 32, Fig. 4(a). “The same effect
`can be obtained when the number of photodetectors 22 is 1 and a plurality of
`light emitting diodes 21 are disposed around the photodetector 22.” Id. ¶ 33.
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`Figure 1(b) of Aizawa is reproduced below.
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`Figure 1(b) is a sectional view of the pulse wave sensor. Id. ¶ 23. As shown
`in Figure 1(b), pulse wave sensor 2 includes drive detection circuit 24 for
`detecting a pulse wave by amplifying the outputs of photodetectors 22. Id.
`¶ 23. Arithmetic circuit 3 computes a pulse rate from the detected pulse
`wave and transmitter 4 transmits the pulse rate data to an “unshown
`display.” Id. The pulse rate detector further includes outer casing 5 for
`storing pulse wave sensor 2, acrylic transparent plate 6 mounted to detection
`face 23a of holder 23, and attachment belt 7. Id. ¶ 23.
`Aizawa discloses that LED 21 and photodetectors 22 “are stored in
`cavities 23b and 23c formed in the detection face 23a” of the pulse wave
`sensor. Id. ¶ 24. Detection face 23a “is a contact side between the holder 23
`and a wrist 10, respectively, at positions where the light emitting face 21s of
`the light emitting diode 21 and the light receiving faces 22s of the
`photodetectors 22 are set back from the above detection face 23a.” Id. ¶ 24.
`Aizawa discloses that “a subject carries the above pulse rate detector 1 on
`the inner side of his/her wrist 10 . . . in such a manner that the light emitting
`face 21s of the light emitting diode 21 faces down (on the wrist 10 side).”
`Id. ¶ 26. Furthermore, “the above belt 7 is fastened such that the acrylic
`transparent plate 6 becomes close to the artery 11 of the wrist 10. Thereby,
`adhesion between the wrist 10 and the pulse rate detector 1 is improved.”
`Id. ¶¶ 26, 34.
`
`2. Overview of Inokawa (Ex. 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.
`Ex. 1008 ¶ 6.
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`Figure 1 of Inokawa is reproduced below.
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`Figure 1 illustrates a schematic view of a pulse sensor. Id. ¶ 56. Pulse
`sensor 1 includes box-shaped sensor unit 3 and flexible annular wristband 5.
`Id. ¶ 57. Sensor unit 3 includes a top surface with display 7 and control
`switch 9, and a rear surface (sensor-side) with optical device component 11
`for optically sensing a user’s pulse. Id.
`Figure 2 of Inokawa is reproduced below.
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`Figure 2 illustrates a schematic view of the rear surface of the pulse sensor.
`Id. ¶ 58. The rear-side (sensor-side) of pulse sensor 1 includes a pair of
`light-emitting elements, i.e., green LED 21 and infrared LED 23, as well as
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`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.
`Figure 3 of Inokawa is reproduced below.
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`Figure 3 illustrates a schematic view of a pulse sensor mounted to a base
`device. Id. ¶ 60. Pulse sensor 1 is depicted as mounted to base device 17,
`which “is a charger with communication functionality.” Id. When so
`mounted, sensor optical device component 11 and base optical device
`component 41 face each other in close proximity. Id. ¶ 66. In this position,
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`pulse sensor 1 can output information to the base device through the coupled
`optical device components. Id. ¶ 67. Specifically, the pulse sensor CPU
`performs the controls necessary to transmit pulse information using infrared
`LED 23 to photodetector 45 of base device 17. Id. ¶¶ 67, 70, 76. In an
`alternative embodiment, additional sensor LEDs and base photodetectors can
`be used to efficiently transmit data and improve accuracy. Id. ¶ 111.
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`3. Independent Claim 1
`Petitioner contends that claim 1 would have been obvious over the
`combined teachings of Aizawa and Inokawa. Pet. 13–22 (combination), 22–
`29 (claim 1).
`
`i. “A noninvasive optical physiological sensor
`comprising”
`The cited evidence supports Petitioner’s undisputed contention that
`Aizawa discloses a noninvasive optical physiological measurement device,
`i.e., a pulse sensor. Pet. 22–23; see, e.g., Ex. 1006 ¶ 2 (“[A] pulse wave
`sensor for detecting the pulse wave of a subject from light reflected from a
`red corpuscle in the artery of a wrist of the subject by irradiating the artery
`of the wrist with light.”).
`
`ii. “[a] a plurality of emitters configured to emit light
`into tissue of a user”
`Petitioner’s Undisputed Contentions
`Petitioner contends that Aizawa discloses one emitter—LED 21—and
`also states that, in certain embodiments, multiple LEDs may be employed.
`Pet. 7, 17. Patent Owner does not dispute this contention, and we agree with
`Petitioner. See Ex. 1006 ¶¶ 23 (“LED 21”), 32 (“The arrangement of the
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`light emitting diode 21 and the photodetectors 22 is not limited to this.”).
`For example, Aizawa explains that “[t]he same effect can be obtained when
`the number of photodetectors 22 is 1 and a plurality of light emitting
`diodes 21 are disposed around the photodetector.” Id. ¶ 33.
`Petitioner also contends that Inokawa teaches a sensor with two
`LEDs, a green LED to sense pulse and an infrared LED to sense body
`motion. Pet. 10–11. Petitioner contends that when Inokawa’s sensor is
`mounted on a base device, the infrared LED is used to wirelessly transmit
`vital information to the base device. Id. at 12–13. Patent Owner does not
`dispute these contentions, and we agree with Petitioner. Inokawa teaches a
`pair of LEDs 21, 23, where “the basic function of the S-side green LED 21 is
`to sense the pulse from the light reflected off of the body . . ., while the S-
`side infrared LED 23 serves to sense body motion from the change in this
`reflected light.” Ex. 1008 ¶¶ 58–59. Inokawa also explains that “vital sign
`information stored in the memory 63 [of the sensor], such as pulse and body
`motion, is transmitted to the base device 17 using the S-side infrared
`LED 23 of the pulse sensor 1 and the B-side PD 45 of the base device 17,”
`such that “there is no need to use a special wireless communication circuit or
`a communication cable.” Id. ¶¶ 76–77.
`Petitioner’s Disputed Contentions
`Moreover, Petitioner contends that a person of ordinary skill in the art
`would have been motivated to “provid[e] an additional emitter to Aizawa
`[to] allow Aizawa’s device to use its existing infrared LED to detect body
`motion while using the added green LED to detect pulse,” which would have
`provided “more reliable pulse measurement that takes into account and
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`corrects for inaccurate readings stemming from body movement.” Pet. 17–
`18, 24; Ex. 1003 ¶¶ 71–73.
`As a second and independent motivation, Petitioner also contends that
`incorporating Inokawa’s teachings would have allowed for wireless data
`communication from Aizawa’s sensor, without the need for a physical
`communications cable or a separate wireless communication circuit.
`Pet. 20–21. Petitioner contends that although Aizawa discloses data
`transmission, Aizawa “is silent about how such transmission would be
`implemented.” Id. at 19–20. According to Petitioner, a skilled
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