IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Poeze et al.
`In re Patent of:
`Attorney Docket No. 50095-0042IP2
`
`10,912,501
`U.S. Patent No.:
`
`February 9, 2021
`Issue Date:
`
`Appl. Serial No.: 17/031,356
`
`Filing Date:
`September 24, 2020
`Title:
`USER-WORN DEVICE FOR NONINVASIVELY MEASURING
`A PHYSIOLOGICAL PARAMETER OF A USER
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 10,912,501 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`TABLE OF CONTENTS
`
`
`
`I. 
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`PETITIONER HAS STANDING TO REQUEST IPR UNDER 37 C.F.R. §
`42.104 .............................................................................................................. 1 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 1 
`III.  SUMMARY OF THE ’501 PATENT ............................................................. 1 
`A.  Brief Description ....................................................................................... 1 
`B.  Level of Ordinary Skill in the Art ............................................................. 2 
`C.  Claim Construction ................................................................................... 3 
`IV.  THE CHALLENGED CLAIMS ARE UNPATENTABLE ............................ 4 
`A.  Asserted Grounds and References ............................................................ 4 
`B.  [GROUND 1A] – CLAIMS 1, 2, 5, 7-8, 11-19, 22, AND 25 ARE
`OBVIOUS OVER LUMIDIGM, SCHARF, AND KOTANAGI ............ 5 
`1. 
`Lumidigm describes a wristwatch having an optical sensor ........... 5 
`2. 
`Scharf describes pulse oximeters having glass covers .................. 10 
`3.  Kotanagi describes an optical sensor that protrudes from a bottom
`surface of a wristwatch .................................................................. 11 
`The combination of Lumidigm, Scharf, and Kotanagi ................. 13 
`4. 
`Reasons to combine Lumidigm, Scharf, and Kotanagi ................. 19 
`5. 
`6.  Analysis ......................................................................................... 29 
`C.  [GROUND 1B] – CLAIMS 3-4, 6, 9-10, 20-21, 23-24, AND 26-30
`ARE OBVIOUS OVER LUMIDIGM, SCHARF, KOTANAGI, AND
`TRAN ...................................................................................................... 71 
`1. 
`Tran describes measuring oxygen, oxygen saturation, and
`temperature, and using a touch screen display .............................. 71 
`The combination of Lumidigm, Scharf, Kotanagi, and Tran ........ 74 
`2. 
`Reasons to combine Lumidigm, Scharf, Kotanagi, and Tran ....... 76 
`3. 
`4.  Analysis ......................................................................................... 80 
`PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION .......... 90 
`A.  314(a) – Fintiv......................................................................................... 90 
`VI.  PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................. 91 
`VII.  CONCLUSION .............................................................................................. 92 
`VIII.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 92 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 92 
`
`V. 
`
`i
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`

`

`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 92 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 93 
`D.  Service Information ................................................................................ 93 
`
`
`
`
`
`
`
`
`ii
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`

`

`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`
`
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 10,912,501 (“the ’501 Patent”)
`
`APPLE-1002
`
`U.S. Patent No. 10,912,501 File History
`
`APPLE-1003
`
`Declaration of Dr. Kenny
`
`APPLE-1004
`
`Curriculum Vitae of Dr. Kenny
`
`APPLE-1005
`
`Masimo Corporation, et al. v. Apple Inc., Redacted Complaint,
`ITC Inv. No. 37-TA-1276
`
`APPLE-1006
`
`US Pat. No. 7,620,212 (“Lumidigm”)
`
`APPLE-1007
`
`PCT Application Pub. No. WO 2005/092182 (“Kotanagi”)
`
`APPLE-1008
`
`US Pat. Appl. Pub. No. 9,820,658 (“Tran”)
`
`APPLE-1009
`
`US Pat. No. 5,766,131 (“Kondo”)
`
`APPLE-1010
`
`US Pat. No. 4,224,948 (“Cramer”)
`
`APPLE-1011
`
`US Pat. No. 7,060,963 (“Maegawa”)
`
`APPLE-1012
`
`Rachel A. Yotter and Denise Michelle Wilson, “A Review of
`Photodetectors for Sensing Light-Emitting Reporters in
`Biological Systems,” IEEE Sensors Journal, vol. 3, no. 3, pp.
`288-303, June 2003 (“Yotter”)
`
`APPLE-1013
`
`Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`
`APPLE-1014
`
`US Pat. No. 4,880,304 (“Nippon”)
`
`APPLE-1015
`
`US Pat. No. 5,893,364 (“Haar”)
`
`iii
`
`

`

`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`
`APPLE-1016-1019
`
`RESERVED
`
`APPLE-1020
`
`US Pat. No. 6,527,711 (“Stivoric”)
`
`
`
`APPLE-1021
`
`US Pat. Appl. Pub. No. 2005/0007582 (“Villers”)
`
`APPLE-1022
`
`US Pat. No. 5,137,364 (“McCarthy”)
`
`APPLE-1023
`
`US Pat. No. 6,801,799 (“Mendelson ’799”)
`
`APPLE-1024
`
`US Pat. Appl. Pub. No. 2002/0188210 (“Aizawa”)
`
`APPLE-1025
`
`US Pat. No. 6,330,468 (“Scharf”)
`
`APPLE-1026
`
`US Pat. No. 7,613,504 (“Rowe”)
`
`APPLE-1027
`
`Declaration of June Ann Munford
`
`
`
`APPLE-1028
`
`Second Declaration of June Ann Munford
`
`APPLE-1029
`
`Updated Joint Proposed Claim Construction Chart (Feb. 23,
`2022)
`
`APPLE-1030
`
`RESERVED
`
`APPLE-1031
`
`RESERVED
`
`APPLE-1032
`
`Interim Procedure for Discretionary Denials in AIA Post-Grant
`Proceedings with Parallel District Court Litigation, issued June
`21, 2022 (“Interim Guidance”)
`
`
`
`
`
`iv
`
`

`

`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`
`CLAIM LISTING
`
`Limitation
`[1pre]
`
`[1a]
`[1b]
`
`[1c-1]
`
`[1c-2]
`
`[1c-3]
`
`[1d]
`
`[2]
`
`[3pre]
`[3a]
`
`[3b]
`
`[3c]
`
`[3d]
`[4pre]
`
`Claim Language
`A user-worn device configured to non-invasively measure a
`physiological parameter of a user, the user-worn device
`comprising:
`at least three light emitting diodes (LEDs);
`at least three photodiodes arranged on an interior surface of the
`user-worn device and configured to receive light attenuated by
`tissue of the user;
`a protrusion arranged over the interior surface, the protrusion
`comprising a convex surface and
`a plurality of openings extending through the protrusion and
`positioned over the three photodiodes, the openings each
`comprising an opaque lateral surface,
`the plurality of openings configured to allow light to reach the
`photodiodes, the opaque lateral surface configured to avoid light
`piping through the protrusion; and
`one or more processors configured to receive one or more signals
`from the photodiodes and calculate a measurement of the
`physiological parameter of the user.
`The user-worn device of claim 1, wherein glass covers each of the
`openings.
`The user-worn device of claim 1 further comprising:
`a network interface configured to wirelessly communicate the
`measurement of the physiological parameter to a mobile phone;
`a user interface comprising a touch-screen display, wherein the
`user interface is configured to display indicia responsive to the
`measurement of the physiological parameter;
`a memory configured to at least temporarily store at least the
`measurement; and
`a strap configured to position the user-worn device on the user.
`The user-worn device of claim 1 further comprising:
`
`v
`
`

`

`Limitation
`[4a]
`
`[4b]
`
`[4c]
`
`[4d]
`[5]
`
`[6]
`
`[7]
`
`[8]
`
`[9pre]
`[9a]
`[9b]
`
`[10]
`
`[11]
`
`[12]
`
`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`Claim Language
`a network interface configured to wirelessly communicate the
`measurement of the physiological parameter to a computer
`network;
`a user interface comprising a touch-screen display, wherein the
`user interface is configured to display indicia responsive to the
`measurement of the physiological parameter;
`a memory configured to at least temporarily store at least the
`measurement; and
`a strap configured to position the user-worn device on the user.
`The user-worn device of claim 1 further comprising: at least one
`wall extending between the interior surface and the protrusion,
`wherein at least the interior surface, the wall and the protrusion
`form one or more cavities, wherein the photodiodes are arranged
`within the cavities.
`The user-worn device of claim 1, wherein the physiological
`parameter comprises oxygen or oxygen saturation.
`The user-worn device of claim 1, wherein the physiological
`parameter comprises pulse rate.
`The user-worn device of claim 1, wherein the physiological
`parameter comprises trending information.
`The user-worn device of claim 1 further comprising:
`a thermistor configured to output a temperature signal,
`wherein the one or more processors are further configured to:
`receive the temperature signal; and adjust operation of the user-
`worn device responsive to the temperature signal.
`The user-worn device of claim 9, wherein the temperature signal is
`responsive to a temperature of the tissue of the user.
`The user-worn device of claim 1, wherein the LEDs and the
`photodiodes are arranged on a same side of the tissue of the user.
`The user-worn device of claim 1, wherein the convex surface of the
`protrusion is an outermost surface configured to contact the tissue
`of the user and conform the tissue into a concave shape.
`
`vi
`
`

`

`Limitation
`[13]
`
`[14b]
`
`[15]
`
`[14pre]
`[14a]
`
`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`Claim Language
`The user-worn device of claim 1, wherein the one or more
`processors are further configured to process the one or more signals
`to determine a bulk measurement responsive to a positioning of the
`user-worn device.
`The user-worn device of claim 1, wherein:
`the at least three LEDs comprises at least six LEDs, a first set of
`LEDs includes three of the six LEDs, a second set of LEDs
`includes a different three of the six LEDs, the second set is spaced
`apart from the first set;
`a first of the three LEDs in the first set of LEDs is configured to
`emit light at a first wavelength and a second of the three LEDs in
`the first set of LEDs is configured to emit light at a second
`wavelength; and a first of the three LEDs in the second set of LEDs
`is configured to emit light at the first wavelength and a second of
`the three LEDs in the second set of LEDs is configured to emit
`light at the second wavelength.
`The user-worn device of claim 1, wherein the at least three
`photodiodes comprise four photodiodes arranged on the interior
`surface in a quadrant arrangement.
`The user-worn device of claim 1, wherein the protrusion further
`comprises one or more extensions.
`The user-worn device of claim 16, wherein the one or more
`extensions surround the convex surface.
`The user-worn device of claim 1, wherein the protrusion further
`comprises one or more chamfered edges.
`[19pre] A user-worn device comprising:
`[19a]
`a plurality of light emitting diodes (LEDs);
`[19b]
`at least three photodiodes arranged within the user-worn device and
`configured to receive light attenuated by tissue of a user;
`a protrusion extending over the three photodiodes and comprising a
`convex surface,
`
`[16]
`
`[17]
`
`[18]
`
`[19c-1]
`
`vii
`
`

`

`Limitation
`[19c-2]
`
`[19c-3]
`
`[19d-1]
`
`[19d-2]
`
`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`Claim Language
`the protrusion including a separate window associated with each of
`the three photodiodes, an opaque material lining a lateral surface of
`the windows and extending through the protrusion,
`the opaque material configured to reduce an amount of light
`reaching the photodiodes without being attenuated by the tissue;
`and
`one or more processors configured to receive one or more signals
`from at least one of the photodiodes,
`the one or more processors configured to output measurements
`responsive to the one or more signals, the measurements indicative
`of a physiological parameter of the user.
`The user-worn device of claim 19 further comprising a thermistor.
`The user-worn device of claim 20, wherein the one or more
`processors are further configured to receive a temperature signal
`from the thermistor and adjust operation of the user-worn device
`responsive to the temperature signal.
`The user-worn device of claim 19, wherein the opaque material is
`configured to reduce an amount of noise caused by light piping in
`the one or more signals.
`The user-worn device of claim 19 further comprising:
`a network interface configured to wirelessly communicate the
`measurements to another computing device;
`a user interface comprising a touch-screen display, wherein the
`user interface is configured to display indicia responsive to the
`measurements; and
`a memory configured to at least temporarily store at least the
`measurements.
`The user-worn device of claim 19, wherein the physiological
`parameter comprises an oxygen saturation or oxygen measurement.
`The user-worn device of claim 19, wherein the physiological
`parameter comprises a pulse rate.
`[26pre] A user-worn device configured to non-invasively measure a pulse
`rate of a user, the user-worn device comprising:
`
`[23pre]
`[23a]
`
`[20]
`[21]
`
`[22]
`
`[23b]
`
`[23c]
`
`[24]
`
`[25]
`
`viii
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`

`

`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`Claim Language
`a first set of light emitting diodes (LEDs), the first set comprising
`at least an LED configured to emit light at a first wavelength and
`an LED configured to emit light at a second wavelength;
`a second set of LEDs spaced apart from the first set of LEDs, the
`second set of LEDs comprising at least an LED configured to emit
`light at the first wavelength and an LED configured to emit light at
`the second wavelength;
`at least three photodiodes arranged on an interior surface of the
`user-worn device and configured to receive light attenuated by
`tissue of the user;
`a thermistor configured to provide a temperature signal;
`a protrusion arranged over the interior surface, the protrusion
`comprising a convex surface extending over the three photodiodes,
`the protrusion further comprising one or more sidewalls extending
`at least partially around a perimeter of the convex surface;
`a plurality of openings extending through the protrusion and
`aligned with the three photodiodes, each opening defined by an
`opaque surface extending through the protrusion and configured to
`reduce light piping;
`at least one wall extending between the interior surface and the
`protrusion, wherein at least the interior surface, the wall and the
`protrusion form one or more cavities, wherein the photodiodes are
`arranged within the cavities;
`one or more processors configured to receive one or more signals
`from the photodiodes and calculate a pulse rate measurement of the
`user;
`a user interface comprising a display, wherein the user interface is
`configured to display indicia responsive to the pulse rate
`measurement;
`a memory configured to at least temporarily store at least the pulse
`rate measurement; and
`a strap configured to position the user-worn device on the user.
`
`Limitation
`[26a]
`
`[26b]
`
`[26c]
`
`[26d]
`[26e]
`
`[26f]
`
`[26g]
`
`[26h]
`
`[26i]
`
`[26j]
`
`[26k]
`
`ix
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`

`

`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`Claim Language
`The user-worn device of claim 26, further comprising a network
`interface configured to wirelessly communicate the pulse rate
`measurement to a mobile phone.
`The user-worn device of claim 26, further comprising a network
`interface configured to wirelessly communicate the pulse rate
`measurement to a computer network without involving a mobile
`phone.
`The user-worn device of claim 26, wherein the protrusion further
`comprises one or more extensions.
`The user-worn device of claim 26, wherein the protrusion further
`comprises one or more chamfered edges.
`
`Limitation
`[27]
`
`[28]
`
`[29]
`
`[30]
`
`
`
`
`x
`
`

`

`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`
`I.
`INTRODUCTION
`Apple Inc. (“Apple” or “Petitioner”) petitions for IPR of claims 1-30
`
`(“Challenged Claims”) of U.S. Patent No. 10,912,501 (“the ’501 Patent”).
`
`Compelling evidence presented in this Petition demonstrates at least a reasonable
`
`likelihood that Apple will prevail with respect to at least one of the Challenged
`
`Claims.
`
`II.
`
`PETITIONER HAS STANDING TO REQUEST IPR UNDER 37
`C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’501 Patent is available for IPR. Petitioner is not
`
`barred or estopped from requesting this review challenging the Challenged Claims
`
`on the below-identified grounds.
`
`III. SUMMARY OF THE ’501 PATENT
`A. Brief Description
`The system described by the ’501 Patent is said to include, in one
`
`embodiment, “a noninvasive sensor and a patient monitor communicating with the
`
`noninvasive sensor.” APPLE-1001, 2:47-60. The ’501 Patent describes several
`
`1
`
`

`

`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`sensor configurations. See APPLE-1001, 6:48-51, 35:51-38:36, FIGS. 14A-14I,
`
`APPLE-1003, ¶¶42-45.1
`
`B.
`Level of Ordinary Skill in the Art
`A person of ordinary skill in the art relating to the subject matter of the ’501
`
`Patent as of July 3, 2008 (a “POSITA”) would have been a person with a working
`
`knowledge of physiological monitoring technologies. The person would have had
`
`a Bachelor of Science degree in an academic discipline emphasizing the design of
`
`electrical, computer, or software technologies, in combination with training or at
`
`least one to two years of related work experience with capture and processing of
`
`data or information, including but not limited to physiological monitoring
`
`technologies. APPLE-1003, ¶¶40-41. 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.
`
`
`1 As Apple noted in the parallel ITC investigation, the ’501 Patent neither depicts
`
`nor describes, for example, an embodiment featuring at least three light emitting
`
`diodes (LEDs), at least three photodiodes, and a protrusion comprising a convex
`
`surface and a plurality of openings extending through the protrusion and positioned
`
`over the three photodiodes. See generally APPLE-1001.
`
`2
`
`

`

`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`
`C. Claim Construction
`Petitioner submits that all claim terms should be construed according to the
`
`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
`
`C.F.R. § 42.100. Here, based on the evidence below and the prior art’s description
`
`of the claimed elements being similar to that of the ’501 Patent specification, no
`
`formal claim constructions are necessary in this proceeding because “claim terms
`
`need only be construed to the extent necessary to resolve the controversy.”
`
`Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011).
`
`Furthermore, Apple is not conceding that each challenged feature satisfies
`
`all statutory requirements such as 35 U.S.C. § 112. As this is an IPR petition,
`
`Apple is pursuing prior art-based grounds. Apple is not waiving any arguments
`
`concerning other grounds that can only be raised in district court.
`
`3
`
`

`

`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Asserted Grounds and References
`The Challenged Claims are invalid over the grounds identified in the table
`
`below, as further explained in this Petition.2,3 Accompanying explanations and
`
`support are provided in the Declaration of Dr. Thomas Kenny (APPLE-1003).
`
`APPLE-1003, ¶¶1-278.
`
`Ground
`1A
`
`1B
`
`Claims
`1, 2, 5, 7-8, 11-18,
`19, 22, 25
`3-4, 6, 9-10, 20-21, 23-
`24, 26-30
`
`Basis for Rejection
`Obvious (§103) based on Lumidigm,
`Scharf, Kotanagi
`Obvious (§103) based on Lumidigm,
`Scharf, Kotanagi, Tran
`
`Each applied reference pre-dates U.S. provisional application 61/078,207,
`
`filed on July 3, 2008, which is the earliest filed application from which the ’501
`
`Patent claims priority. Petitioner does not take a position as to whether the ’501
`
`Patent is entitled to the priority date of July 3, 2008 (hereinafter “Critical Date” or
`
`“Earliest Effective Filing Date”), but has applied references that pre-date the
`
`
`2 Apple asserts that the ’501 Patent is invalid on multiple grounds in addition to
`
`those presented herein, including Lumidigm alone and in other combinations as
`
`presented in the parallel ITC proceeding.
`
`3 The references relied upon herein are representative of the state of the prior art as
`
`of the Critical Date of the ’501 Patent.
`
`4
`
`

`

`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`Critical Date and qualify as prior art, as shown in the table below. APPLE-1003,
`
`¶¶15-39.
`
`Reference
`
`Date
`
`Section
`
`Lumidigm
`
`US7,620,212
`
`11/17/2009 (patented)
`
`102(e)
`
`Scharf
`
`US6,330,468
`
`12/11/2001 (patented)
`
`102(b)
`
`Kotanagi
`
`WO2005/092182
`
`10/6/2005 (published)
`
`102(b)
`
`Tran
`
`
`
`US9,820,658
`
`8/30/2006 (filed)
`
`102(e)
`
`B.
`
`[GROUND 1A] – CLAIMS 1, 2, 5, 7-8, 11-19, 22, AND 25
`ARE OBVIOUS OVER LUMIDIGM, SCHARF, AND
`KOTANAGI
`The sections below provide a brief introduction to Lumidigm, Scharf,
`
`Kotanagi, and the combination thereof.4
`
`1.
`
`Lumidigm describes a wristwatch having an optical
`sensor
`Lumidigm describes “electro-optical sensors for use in biometric analysis of
`
`optical spectra of tissue.” APPLE-1006, 1:53-56. These sensors are “built into the
`
`case of a wristwatch 112 and operate[] based upon signals detected from the skin
`
`in the area of the wrist.” Id., 11:61-64, Fig. 8B (infra). Lumidigm’s sensor is used
`
`to obtain data indicative of spectroscopic characteristics of a user’s blood or skin,
`
`
`4 Petitioner incorporates this discussion into Grounds 1A-1B.
`
`5
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`

`

`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`which are used to determine physiological parameters of the user. See id., 3:44-45,
`
`19:16-40; APPLE-1003, ¶47.
`
`
`
`Lumidigm, Fig. 8B
`Lumidigm describes various “sensor geometries” which can be implemented
`
`in the wristwatch. APPLE-1006, 11:66-12:2. Regardless of the particular sensor
`
`geometry, the “illumination 104 and detection system 106” of the sensor are “built
`
`into” the wristwatch, “as are the data collection and digitization devices for
`
`collecting and digitizing the spectral information.” Id., 11:35-38; see 11:64-65;
`
`APPLE-1003, ¶48.
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`Fig. 2, infra, shows a cross-section of a sensor head disposed in contact with
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`tissue of a user. See APPLE-1006, 7:5-7. The sensor head includes multiple light
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`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`sources (red), such as light emitting diodes (LEDs) or “sets of LEDs,” and “one or
`
`more detectors” (blue). See id., 6:22-24, 6:38-64, 7:9-10; APPLE-1003, ¶49.
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`
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`Lumidigm, Fig. 2 (annotated)
`The sensor “acquir[es] tissue spectral data” by detecting light from the light
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`sources that travels through the tissue and is reflected back to the detector, as
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`illustrated by the “mean optical paths” See id., 42-52 in Fig. 2, 7:8-11. The “signal
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`detected by detector 36 contains information about the tissue optical properties.”
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`Id., 7:26-29. “[T]he signals can be digitized and recorded” and “used for spectral
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`identification or verification.” Id., 9:58-63; APPLE-1003, ¶50.
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`The detector is recessed from the sensor surface 39 “in optically opaque
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`material 37,” green, with an opening extending above the detector to the sensor
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`surface 39 to allow light to reach the detector. Id., 7:64-8:4. This placement
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`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`“minimizes the amount of light that can be detected after reflecting off the first
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`(epidermal) surface of the tissue.” Id., 8:4-7. Lumidigm’s sensor head may “have
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`a compound curvature on the optical surface” “to incorporate ergonomic features
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`that allow for good optical and mechanical coupling with the tissue being
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`measured.” APPLE-1006, 7:58-63; APPLE-1003, ¶51.
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`Lumidigm describes various arrangements of light sources and detectors.
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`See APPLE-1006, 6:43-62, 8:33-9:57, Figs. 3-7B. The light sources “can each
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`have the same wavelength” or “can include some sources that have the same
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`wavelengths as others and some sources that are different,” and can be “sets of
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`LEDs … with differing wavelength characteristics.” Id., 6:43-48. The detector 36
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`“may comprise a single element, a plurality of discrete elements, or a one-or two-
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`dimensional array of elements.” Id., 6:54-56. “Differences in both wavelength
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`characteristics and source-detector separation provide useful information about the
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`optical characteristics of the tissue 40.” Id., 7:50-53; see 7:34-50; APPLE-1003,
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`¶52.
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`Example light source and detector arrangements are illustrated in Figs. 6 and
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`7A-7B, infra. In the Fig. 6 arrangement, “each of three different light sources 82,
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`84, 86 [red] is positioned relative to three detectors 81, 83, 85 [blue].” APPLE-
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`1006, 9:15-17. Fig. 7A shows a sensor that “includes a row of detectors 95,” blue,
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`“surrounded on either side by rows of light sources 93,” red; and FIG. 7B shows a
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`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`sensor in which “multiple light sources” 92-98, red, “are placed at the perimeter of
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`a detector array 99.” APPLE-1006, 9:28-39; APPLE-1003, ¶53.
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`
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`Lumidigm, Figs. 6 and 7A-7B (annotated)
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`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`2.
`Scharf describes pulse oximeters having glass covers
`Scharf is directed to “a pulse oximeter using two green light sources to
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`detect the oxygen saturation of hemoglobin in a volume of intra vascular blood.”
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`APPLE-1025, 1:10-13. Scharf’s oximeter includes “[s]urface mount LEDs,” red in
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`Fig. 4, infra, that emit light to generate backscattered signals that are detected by a
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`“photodiode 26 of a light-to-frequency converter (LFC) 28,” blue. Id., 8:38-41,
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`5:19-23; APPLE-1003, ¶54.
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`Scharf’s LEDs and photodiode are disposed within cavities covered by a
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`“face 88 of the oximeter probe.” APPLE-1025, 3:44-45. The “clear face,” orange,
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`“can be made in a single piece (including pieces 16, 18, and 91). Id., 8:57-66.
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`Alternatively, “[a]lthough shown as flat surfaces, face pieces 16, 18, and 91 can …
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`be shaped to form discrete lenses … to focus the radiant energy from the LEDs …
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`onto the skin … and from the skin 2 onto the photodiode.” Id., 9:1-5. The face
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`“can be made of glass.” Id., 9:13-15; APPLE-1003, ¶55.
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`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
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`
`
`
`
`Scharf, Fig. 4 (annotated)
`3. Kotanagi describes an optical sensor that protrudes
`from a bottom surface of a wristwatch
`Kotanagi describes a “device capable of measuring biological information
`
`such as pulse rate while mounted to the wrist.” APPLE-1007, [0001]. This device,
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`illustrated in Fig. 5, infra, has a housing 2 with “a protruding part 4 [circled in
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`green] which protrudes from the lower surface 2a” of the housing. Id., [0045]. “A
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`biological sensor part 8” “is disposed on the lower surface 4a of the protruding part
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`4.” Id., [0046]. The sensor part includes an LED (red) “for emitting light toward
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`the living body while in contact with the living body surface,” and a photodetector
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`(blue) “for receiving reflected light from the living body … and generating a pulse
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`signal (biological information signal)” based on the received light. Id., [0046].
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`Pulse rate is detected “based on the generated pulse signal.” Id., [0047]; APPLE-
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`1003, ¶56.
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`
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`Kotanagi, Fig. 5 (annotated)
`As illustrated in Fig. 10, infra, “a curved surface may be formed from the
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`center toward the outer edge of the lower surface 4a of the protruding part 4.”
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`APPLE-1007, [0080]. This convex profile allows the watch to be “mounted in a
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`state in which the living body surface B deforms smoothly and the contact pressure
`
`of the center part of the lower surface 4a is increased, which further enhances
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`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`adherence.” Id., [0080]. Moreover, with this convex profile, “pressure marks are
`
`unlikely to form, so the device is comfortable to wear.” Id., [0080]; APPLE-1003,
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`¶57.
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`
`
`Kotanagi, Fig. 10 (annotated)
`4.
`The combination of Lumidigm, Scharf, and Kotanagi
`The structure of the combination device
`A user-worn optical sensor based on Lumidigm-Scharf-Kotanagi is shown in
`
`the following composite figure. APPLE-1003, ¶¶58-59:
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`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`
` Composite figure5
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`
`
`The following description of the combined sensor references this composite
`
`figure.
`
`In the combination, the optical sensor is “built into the case of a wristwatch,”
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`and, as shown above, includes LEDs or sets of LEDs (red), and detectors (blue)
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`“recessed from the sensor surface 39 in optically opaque material” (green), as
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`
`5 This figure, as are the other composite figures provided herein, is one example
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`combination that a POSITA would have found to be obvious, and is provided for
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`illustrative purposes and are not precise engineering drawings with details shown
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`to scale. Other examples could be conceived that are also obvious and that would
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`similarly render the challenged claims obvious for similar reasons as discussed
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`herein. APPLE-1003, ¶58.
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`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`described in Lumidigm. APPLE-1006, 8:1-10, 11:60-12:1; see 6:38-63; APPLE-
`
`1003, ¶60.
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`Also in the combination, the detectors are implemented as photodiodes.
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`Indeed, a POSITA would have understood or found obvious that Lumidigm’s
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`semiconductor-based photodetectors are photodiodes. See APPLE-1006, 6:58-63;
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`APPLE-1003, ¶61. Alternatively or additionally, Lumidigm’s photodetectors are
`
`implemented as photodiodes based on Scharf’s teaching of the use of photodiodes
`
`in reflectance pulse oximetry. See APPLE-1025, 2:63-65, 3:5-9, 5:19-21; APPLE-
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`1003, ¶61.
`
`The optical surface of the combined device is implemented as a “curved
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`surface … formed from the center toward the outer edge” of the optical surface of
`
`the sensor, as described in Kotanagi. APPLE-1007, [0080]; see APPLE-1006,
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`7:58-63. Consistent with Kotanagi’s curved protruding part, this curved optical
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`surface forms a protrusion with a convex outer surface extending over the
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`photodiodes and LEDs of the sensor. See APPLE-1007, [0080], Fig. 10. That is,
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`in the combination device, the optically opaque material (green) that forms a
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`portion of the body of Lumidigm’s unmodified sensor (see APPLE-1006, 8:3-4)
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`extends from the bottom surface of the sensor to the convex surface of the
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`protrusion. APPLE-1003, ¶62.
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`Attorney Docket No. 50095-0042IP2
`IPR of U.S. Patent No. 10,912,501
`As described in Lumidigm, the photodiodes are recessed into the protrusion,
`
`and a recess aligned with each photodiode extends from the bottom surface of the
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`sensor, through the protrusion, and to the convex surface. See APPLE-1006, 7:5-
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`10, 8:1-10. This positioning “minimizes the amount of light that can be detected
`
`after reflecting off the first (epidermal) surface of the tissue.” Id., 8:4-7. The
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`LEDs are also recessed into the protrusion, as indicated by the dashed lines in the
`
`composite figure, supra. See id., 8:7-10 (“the same optical blocking effect could
`
`be produced … by recessing both the detector and the light sources”). The outer
`
`edges of the protrusion are chamfered. APPLE-1003, ¶63.
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`A “clear face,” as taught by Scharf, covers the convex surface of the
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`combination device. APPLE-1025, 8:57-66. The face is implemented as a si