Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: June 3, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Date: June 3, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
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`IPR2021-00209
`Patent 10,376,191 B1
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`
`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
`(“PO Waiver”).
`We have authority to determine whether to institute an inter partes
`review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review
`may not be instituted unless it is determined that “the information presented
`in the petition filed under section 311 and any response filed under section
`313 shows that there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes
`the trial on behalf of the Director.”).
`For the reasons provided below and based on the record before us, we
`determine that Petitioner has demonstrated a reasonable likelihood that
`Petitioner would prevail in showing the unpatentability of at least one of the
`challenged claims. Accordingly, we institute an inter partes review on all
`grounds set forth in the Petition.
`
`B. Related Matters
`The parties identify the following matters related to the ’191 patent:
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`(C.D. Cal.) (filed Jan. 9, 2020);
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`Apple Inc. v. Masimo Corporation, IPR2020-01520 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 10,258,265 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01521 (PTAB Sept. 2,
`2020) (challenging claims of U.S. Patent No. 10,292,628 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01523 (PTAB Sept. 9,
`2020) (challenging claims of U.S. Patent No. 8,457,703 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01524 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 10,433,776 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01526 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 6,771,994 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01536 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01538 (PTAB Sept. 2,
`2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`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);
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`Apple Inc. v. Masimo Corporation, IPR2020-01722 (PTAB Oct. 2,
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01723 (PTAB Oct. 2,
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01733 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,702,195 B1);
`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.
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`
`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,
`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.
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`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
`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 sensor devices.
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`Figure 14D illustrates portions of a detector submount and Figure 14F
`illustrates portions of a detector shell. Id. at 6:40–43. As shown in
`Figure 14D, multiple detectors 1410c are located within housing 1430 and
`under transparent cover 1432, on which protrusion 605b (or partially
`cylindrical protrusion 605) is disposed. Id. at 35:36–40, 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
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`include windows 420–423 that “mimic or approximately mimic a
`configuration of, or even house, a plurality of detectors.” Id. at 23:44–58.
`
`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” and “at least four detectors” arranged in a “grid
`pattern” on the planar surface).
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`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”);
`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).
`
`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). Petitioner submits that no claim term requires express
`construction. Pet. 3–4.
`Based on our analysis of the issues in dispute at this stage of the
`proceeding, we agree that no claim terms require express construction at this
`time. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017).
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`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
`
`
`2 Patent Owner does not present objective evidence of non-obviousness at
`this stage.
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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.
`
`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
`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.
`For purposes of this Decision, we generally adopt Petitioner’s
`assessment as set forth above, which appears consistent with the level of
`skill reflected in the Specification and prior art.
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`D. Obviousness over the Combined Teachings of
`Aizawa and Inokawa
`Petitioner presents undisputed contentions 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).
`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
`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.
`
`
`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
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`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.
`Figure 1 of Inokawa is reproduced below.
`
`
`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.
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`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
`photodiode 25 and lens 27. Id. In various embodiments, Inokawa discloses
`that the sensor-side lens is convex. See id. ¶¶ 99, 107. Green LED 21
`senses “the pulse from the light reflected off of the body (i.e.[,] change in the
`amount of hemoglobin in the capillary artery),” and infrared LED 23 senses
`body motion from the change in reflected light. Id. ¶ 59. The pulse sensor
`stores this information in memory. Id. ¶ 68. To read and store information,
`the pulse sensor includes a CPU that “performs the processing to sense
`pulse, body motion, etc. from the signal . . . and temporarily stores the
`analysis data in the memory.” Id. ¶ 69.
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`Figure 3 of Inokawa is reproduced below.
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`Figure 3 illustrates a schematic view of a pulse sensor mounted to a base
`device. Id. ¶ 60. Pulse sensor 1 is depicted as mounted to base device 17,
`which “is a charger with communication functionality.” Id. When so
`mounted, sensor optical device component 11 and base optical device
`component 41 face each other in close proximity. Id. ¶ 66. In this position,
`pulse sensor 1 can output information to the base device through the coupled
`optical device components. Id. ¶ 67. Specifically, the pulse sensor CPU
`performs the controls necessary to transmit pulse information using infrared
`LED 23 to photodetector 45 of base device 17. Id. ¶¶ 67, 70, 76. In an
`alternative embodiment, additional sensor LEDs and base photodetectors can
`be used to efficiently transmit data and improve accuracy. Id. ¶ 111.
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`3. Independent Claim 1
`Petitioner presents undisputed contentions 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”
`On this record, the cited evidence supports Petitioner’s undisputed
`contention that Aizawa discloses 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”
`On this record, the cited evidence supports Petitioner’s undisputed
`contentions regarding this limitation. Specifically, Petitioner contends that
`Aizawa discloses LED 21. Pet. 7; see, e.g., Ex. 1006 ¶ 23 (“LED 21 . . . for
`emitting light having a wavelength of a near infrared range”). Petitioner also
`contends that Inokawa discloses using two emitters of different wavelengths
`and that “work can be divided between the various means, with an infrared
`LED used to detect vital signs and transmit vital sign information, and a
`green LED used to detect pulse.” Pet. 10–11, 17; see, e.g., Ex. 1008 ¶¶ 14
`(quoted), 58 (a pair of LEDs 21, 23), 59 (detecting pulse and body motion).
`Petitioner also contends that when Inokawa’s sensor is mounted on its base
`device, vital information is transmitted to the base device through the LEDs.
`Pet. 12–13; see, e.g., Ex. 1008 ¶¶ 76–77 (explaining that “vital sign
`information stored in the memory 63 [of the sensor], such as pulse and body
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`motion, is transmitted to the base device 17 using the S-side infrared
`LED 23 of the pulse sensor 1 and the B-side PD 45 of the base device 17,”
`such that “there is no need to use a special wireless communication circuit or
`a communication cable”).
`Petitioner further contends that a person of ordinary skill in the art
`would have been motivated to “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
`corrects for inaccurate readings stemming from body movement.” Pet. 17–
`18, 24; see also id. at 19–22, 24 (contending the combination also would
`have provided for wireless communication through the LEDs); Ex. 1003
`¶¶ 71–73.
`To illustrate its proposed modification, Petitioner includes annotated
`and modified views of Aizawa’s Figure 1(b), reproduced below. Pet. 18; see
`also id. at 23 (same); Ex. 1003 ¶ 72.
`
`Petitioner’s modified figures depict the sensor of Aizawa in which the single
`emitter has been divided into two emitters operating at two different
`wavelengths, as Petitioner contends would have been rendered obvious by
`Inokawa. Id. at 18–19, 23–24.
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`At this stage of the proceeding, Petitioner’s stated reasoning for the
`proposed modification is sufficiently supported, including by the unrebutted
`testimony of Dr. Kenny. See, e.g., Ex. 1003 ¶¶ 69–81.
`
`iii.“[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”
`On this record, the cited evidence supports Petitioner’s undisputed
`contention that Aizawa discloses at least four detectors 22 that detect light
`that has been emitted by LED 21 and attenuated by body tissue. Pet. 24–25;
`see, e.g., Ex. 1006 ¶ 27 (disclosing that light emitted from LED 21 “is
`reflected by a red corpuscle running through the artery 11 of the wrist 10 and
`. . . is detected by the plurality of photodetectors 22 so as to detect a pulse
`wave”); Ex. 1003 ¶¶ 82–83.
`
`iv.“[c] a housing configured to house at least the plurality
`of detectors in a circular portion of the housing”
`On this record, the cited evidence supports Petitioner’s undisputed
`contention that Aizawa discloses holder 23, which houses the detectors in a
`circular portion of the housing. Pet. 25; see, e.g., Ex. 1006 ¶ 23 (“holder 23
`for storing . . . light emitting diode 21 and the photodetectors 22”),
`Figs. 1(a)–(b) (depicting circular holder 23 surrounding detectors 22).
`
`19
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`
`v. “[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”
`On this record, the cited evidence supports Petitioner’s undisputed
`contentions regarding this limitation. Pet. 13–17, 26–29. Specifically,
`Petitioner contends that Aizawa discloses a cover in the form of an “acrylic
`transparent plate” that is mounted at the detector face of the sensor. Id. at 8–
`9, 26; Ex. 1006 ¶¶ 23, 34 (“[A]crylic transparent plate 6 is provided on the
`detection face 23a of the holder 23 to improve adhesion to the wrist 10.”),
`Fig. 1(b) (depicting flat, transparent plate 6 between sensor 2 and wrist 10).
`Petitioner contends that Aizawa does not provide detail regarding the shape
`of the cover. Pet. 13–14. However, Petitioner contends that Inokawa
`teaches lens 27 positioned between its sensor and the wearer’s skin, which
`increases the light gathering ability of the sensor. Id. at 11; see, e.g.,
`Ex. 1008 ¶¶ 15 (“This lens makes it possible to increase the light-gathering
`ability of the LED as well as to protect the LED or PD.”), 58 (disclosing “a
`single photodiode (S-side PD) 25 that receives the reflected light from these
`[LEDs], and an S-side lens 27”), Fig. 2.
`In light of these teachings, Petitioner contends that a person of
`ordinary skill in the art would have found it obvious to modify the flat
`acrylic plate of Aizawa to “incorporate an Inokawa-like lens into the cover
`of Aizawa to increase the light collection efficiency, which would lead to
`
`20
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`more reliable pulse detection.” Pet. 14–15, 27; Ex. 1003 ¶¶ 86–89.
`Petitioner provides annotated and modified views of Aizawa’s Figure 1(b),
`reproduced below.
`
`
`Pet. 14–15, 27; Ex. 1003 ¶ 89. Petitioner’s annotated and modified figures
`depict Aizawa’s sensor including its flat transparent plate (left) and a
`modified version of Aizawa’s sensor in which the plate includes a convex
`protruding lens. Pet. 15, 23, 27; see also id. at 28–29 (depicting tissue
`conforming against convex protruding lens).
`Petitioner contends this modification would have enjoyed a reasonable
`expectation of success because, for example, Inokawa teaches that the cover
`may be flat, like that of Aizawa, to reduce scratches, or in the form of a lens,
`as in Petitioner’s proposed modification, to increase light gathering ability.
`Id. at 15–16; see, e.g., Ex. 1008 ¶¶ 15 (“This lens makes it possible to
`increase the light-gathering ability.”), 106 (“[B]ecause the surface of the
`covers 123, 131 is flat, the surface is less prone to scratches than when the
`lens protrudes.”); Ex. 1003 ¶ 90.
`At this stage of the proceeding, Petitioner’s stated reasoning for the
`proposed modification is sufficiently supported, including by the unrebutted
`testimony of Dr. Kenny. See, e.g., Ex. 1003 ¶¶ 85–93.
`
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`
`vi. Summary
`For the foregoing reasons, we are persuaded that Petitioner’s cited
`evidence and reasoning demonstrates a reasonable likelihood that Petitioner
`would prevail in its contentions regarding claim 1.
`
`4. Independent Claim 9
`Independent claim 9 consists of limitations that are substantially
`similar to elements [a]–[d] of claim 1. Compare Ex. 1001, 44:50–67, with
`id. at 45:26–36 (reciting a “planar surface” and “at least four detectors”
`arranged in a “grid pattern” on the planar surface).
`In asserting that claim 9 also would have been obvious over the
`combined teachings of Aizawa and Inokawa, Petitioner refers to
`substantially the same arguments presented as to claim 1. See Pet. 35–38;
`Ex. 1003 ¶¶ 106–113. For the same reasons discussed above, we are
`persuaded that Petitioner’s cited evidence and reasoning demonstrates a
`reasonable likelihood that Petitioner would prevail in its contentions
`regarding claim 9. See supra II.D.3.i–v.
`
`5. Dependent Claims 2–6, 8, 10–16, 18, and 19
`Petitioner presents undisputed contentions that claims 2–6, 8, 10–16,
`18, and 19, which depend directly or indirectly from independent claim 1 or
`9, are unpatentable over the combined teachings of Aizawa and Inokawa,
`and provides arguments explaining how the references teach the limitations
`of these claims. Pet. 29–34, 38–43; Ex. 1003 ¶¶ 94–105, 114–124. Patent
`Owner does not offer, at this stage, any arguments addressing Petitioner’s
`substantive showing. PO Waiver. We have reviewed Petitioner’s arguments
`
`22
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`and the cited evidence, and we determine Petitioner has demonstrated a
`reasonable likelihood of prevailing as to these contentions.
`Moreover, as discussed in detail above, Petitioner has demonstrated a
`reasonable likelihood of prevailing on the challenge to claims 1 and 9.
`Therefore, pursuant to USPTO policy implementing the decision in SAS Inst.
`Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“SAS”), we institute as to all claims
`challenged in the petition and on all grounds in the petition. See PTAB
`Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated Guide”)3, 5–
`6, 64.
`
`E. Other Grounds
`Petitioner provides arguments and evidence, including the Kenny
`Declaration, in support of Petitioner’s two other grounds challenging claims
`1–6, 8–16, 18, and 19 of the ’191 patent. Pet. 43–70; Ex. 1003 ¶¶ 125–175.
`Patent Owner does not offer, at this stage, any arguments addressing
`Petitioner’s substantive showing. PO Waiver. We have reviewed
`Petitioner’s arguments and the cited evidence, and we determine Petitioner
`has demonstrated a reasonable likelihood of prevailing as to these
`contentions. We institute review of all of these challenges. See SAS, 138 S.
`Ct. 1348; Consolidated Practice Guide, 5–6, 64.
`
`III. CONCLUSION
`The Supreme Court held that a final written decision under 35 U.S.C.
`§ 318(a) must decide the patentability of all claims challenged in the
`petition. SAS, 138 S. Ct. 1348. After considering the evidence and
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
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`arguments presented in the Petition, we determine that Petitioner has
`demonstrated a reasonable likelihood of success in proving that at least
`claims 1 and 26 of the ’191 patent are unpatentable. Accordingly, we
`institute an inter partes review of all claims and all grounds set forth in the
`Petition.
`At this stage of the proceeding, we have not made a final
`determination as to the patentability of any challenged claim or as to the
`construction of any claim term.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–6, 8–16, 18, and 19 of the ’191 patent is instituted with
`respect to all grounds set forth in the Petition; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37
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