IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Poeze et al.
`In re Patent of:
`Attorney Docket No. 50095-0044IP2
`
`10,945,648
`U.S. Patent No.:
`
`March 16, 2021
`Issue Date:
`
`Appl. Serial No.: 17/031,316
`
`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. 10,945,648 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`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 ’648 PATENT ............................................................. 1 
`A.  Brief Description ....................................................................................... 1 
`B.  Level of Ordinary Skill in the Art ............................................................. 2 
`C.  Claim Construction ................................................................................. 2 
`IV.  THE CHALLENGED CLAIMS ARE UNPATENTABLE ............................ 3 
`A.  Asserted Grounds and References ............................................................ 3 
`B.  [GROUND 1A] – CLAIMS 8-9 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 .................... 9 
`3.  Kotanagi describes an optical sensor that protrudes from a bottom
`surface of a wristband ................................................................... 11 
`The combination of Lumidigm, Scharf, and Kotanagi ................. 13 
`4. 
`Reasons to combine Lumidigm, Scharf, and Kotanagi ................. 20 
`5. 
`6.  Analysis ......................................................................................... 33 
`C.  [GROUND 1B] – CLAIMS 1-7, 10, AND 12-30 ARE OBVIOUS
`OVER LUMIDIGM, SCHARF, KOTANAGI, AND TRAN ................ 49 
`1. 
`Tran describes a portable multi-function electronic device with a
`network interface that measures oxygen, oxygen saturation, and
`temperature, and includes a touch screen display ......................... 50 
`The combination of Lumidigm, Scharf, Kotanagi, and Tran ........ 53 
`2. 
`Reasons to combine Lumidigm, Scharf, Kotanagi, and Tran ....... 55 
`3. 
`4.  Analysis ......................................................................................... 57 
`D.  [GROUND 1C] – CLAIM 11 IS OBVIOUS OVER LUMIDIGM,
`SCHARF, KOTANAGI, TRAN, AND FORSTALL ............................. 87 
`1. 
`Forstall describes a touch screen display having a user interface
`orientation that is configurable responsive to a user input............ 87 
`Combination of Lumidigm, Scharf, Kotanagi, Tran, and Forstall 88 
`Reasons to combine Lumidigm, Scharf, Kotanagi, Tran, and
`Forstall ........................................................................................... 88 
`
`2. 
`3. 
`
`i
`
`

`

`Attorney Docket No. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`4.  Analysis ......................................................................................... 89 
`E.  [GROUND 1D] – CLAIM 18 IS OBVIOUS OVER LUMIDIGM,
`SCHARF, KOTANAGI, AND ANDERSON ........................................ 90 
`1.  Anderson describes a transparent substrate with a thin-film coating
`containing a conductive material ................................................... 90 
`The combination of Lumidigm, Scharf, Kotanagi, and Anderson 90 
`Reasons to combine Lumidigm, Scharf, Kotanagi, and Anderson
` ....................................................................................................... 91 
`4.  Analysis ......................................................................................... 92 
`PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION .......... 93 
`A.  314(a) – Fintiv......................................................................................... 93 
`VI.  PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................. 94 
`VII.  CONCLUSION .............................................................................................. 94 
`VIII.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 94 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 94 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 94 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 95 
`D.  Service Information ................................................................................ 96 
`
`V. 
`
`
`
`
`
`
`2. 
`3. 
`
`
`
`ii
`
`

`

`Attorney Docket No. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`
`
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 10,945,648
`
`APPLE-1002
`
`U.S. Patent No. 10,945,648 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
`
`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. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`
`APPLE-1016
`
`RESERVED
`
`APPLE-1017
`
`US Pat. No. 9,001,047 (“Forstall”)
`
`APPLE-1018
`
`US Pat. No. 5,952,084 (“Anderson”)
`
`APPLE-1019
`
`US Pat. Appl. Pub. 2005/0030629 (“Kursawe”)
`
`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. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`CLAIM LISTING
`
`Limitation
`[1pre]
`
`[1a]
`[1b]
`
`[1c]
`
`[1d]
`
`[2]
`
`[3]
`
`[4]
`
`[5]
`
`[6pre]
`[6a]
`
`Claim Language
`A user-worn device configured to non-invasively determine
`measurements of physiological parameter of a user, the user-
`worn device comprising:
`a plurality of light emitting diodes (LEDs);
`four photodiodes configured to receive light emitted by the
`LEDs, the four photodiodes being arranged to capture light at
`different quadrants of tissue of a user;
`a protrusion comprising a convex surface and a plurality of
`openings extending through the protrusion, the openings
`arranged over the photodiodes and configured to allow light to
`pass through the protrusion to the photodiodes; and
`one or more processors configured to receive one or more
`signals from at least one of the photodiodes and determine
`measurements of oxygen saturation of the user.
`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 indicating a
`positioning of the user-worn device.
`The user-worn device of claim 1 further comprising optically
`transparent glass windows, each window extending across a
`different one of the openings.
`The user-worn device of claim 1, wherein the plurality of LEDs
`and the photodiodes are positioned on a same side of tissue of
`the user.
`The user-worn device of claim 1, wherein the protrusion further
`comprises an opaque material, and wherein the one or more
`signals are substantially free of noise caused by light piping.
`A user-worn device comprising:
`a first set of light emitting diodes (LEDs), the first set of LEDs
`comprising at least an LED configured to emit light at a first
`wavelength and an LED configured to emit light at a second
`wavelength;
`
`v
`
`

`

`Limitation
`[6b]
`
`[6c]
`
`[6d]
`
`[6e]
`[6f]
`[6g]
`
`[6h]
`[6i]
`
`[7]
`
`[8pre]
`
`[8a]
`
`[8b]
`
`Attorney Docket No. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`Claim Language
`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;
`four photodiodes arranged on a surface and configured to
`receive light after at least a portion of the light has been
`attenuated by tissue of a user;
`a protrusion arranged above the surface, the protrusion
`comprising a convex surface including windows, the windows
`extending across the four photodiodes, wherein light passes
`through the protrusion to the four photodiodes via at least the
`windows;
`a thermistor configured to provide a temperature signal; and
`one or more processors configured to:
`receive one or more signals from at least one of the
`photodiodes;
`receive the temperature signal; and
`adjust operation of the user-worn device responsive to the
`temperature signal.
`The user-worn device of claim 6, wherein the protrusion further
`comprises an opaque material, the opaque material extending
`from the convex surface of the protrusion to an interior surface
`of the protrusion opposite the convex surface.
`A user-worn device configured to non-invasively determine
`measurements of a physiological parameter of a user, the user-
`worn device comprising:
`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 at least 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 an LED configured to emit
`light at the first wavelength and an LED configured to emit light
`at the second wavelength;
`
`vi
`
`

`

`Limitation
`[8c]
`[8d]
`
`[8e]
`
`[8f]
`
`[8g]
`
`[8h]
`[8i]
`
`[9]
`
`[10]
`
`[11]
`
`[12]
`
`[13]
`
`[14]
`
`[15]
`
`Attorney Docket No. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`Claim Language
`
`four photodiodes;
`a protrusion comprising a convex surface, at least a portion of
`the protrusion comprising an opaque material;
`a plurality of openings provided through the protrusion and the
`convex surface, the openings aligned with the photodiodes;
`a separate optically transparent window extending across each
`of the openings;
`one or more processors configured to receive one or more
`signals from at least one of the photodiodes and output
`measurements of a physiological parameter of a user;
`a housing; and
`a strap configured to position the housing proximate tissue of
`the user when the device is worn.
`The user-worn device of claim 8 further comprising a network
`interface configured to wirelessly communicate the
`measurements of the physiological parameter to at least one of a
`mobile phone or a computer network.
`The user-worn device of claim 9 further comprising a user
`interface including a touch-screen display configured to display
`indicia responsive to the measurements of the physiological
`parameter.
`The user-worn device of claim 10, wherein an orientation of the
`user interface is configurable responsive to a user input.
`The user-worn device of claim 8, wherein the physiological
`parameter comprises oxygen or oxygen saturation.
`The user-worn device of claim 8 further comprising a storage
`device configured to at least temporarily store at least the
`measurements of the physiological parameter.
`The user-worn device of claim 8, wherein the physiological
`parameter comprises pulse rate.
`The user-worn device of claim 8 further comprising a
`thermistor.
`
`vii
`
`

`

`Limitation
`[16]
`
`[17]
`
`[18]
`
`[19]
`
`[20pre]
`
`[20a]
`[20b]
`
`[20c]
`
`[20d]
`
`[21]
`
`[22]
`
`[23]
`
`Attorney Docket No. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`Claim Language
`The user-worn device of claim 8, wherein the openings are
`configured to prevent light piping.
`The user-worn device of claim 8, wherein the housing
`hermetically seals at least a portion of an interior of the user-
`worn device.
`The user-worn device of claim 8, wherein the windows
`comprise a conductive material.
`The user-worn device of claim 8, wherein the windows are
`arranged on the protrusion configured to be in contact with
`tissue of the user.
`A user-worn device configured to non-invasively determine
`measurements of a user’s tissue, the user-worn device
`comprising:
`a plurality of light emitting diodes (LEDs);
`at least four photodiodes configured to receive light emitted by
`the LEDs, the four photodiodes being arranged to capture light
`at different quadrants of tissue of a user;
`a protrusion comprising a convex surface and a plurality of
`through holes, each through hole including a window and
`arranged over a different one of the at least four photodiodes;
`and
`one or more processors configured to receive one or more
`signals from at least one of the photodiodes and determine
`measurements of oxygen saturation of the user.
`The user-worn device of claim 20, wherein the one or more
`processors are further configured to process the one or more
`signals to determine a bulk measurement indicating a
`positioning of the user-worn device.
`The user-worn device of claim 20, wherein the plurality of
`LEDs and the photodiodes are positioned on a same side of the
`user's tissue.
`The user-worn device of claim 20, wherein the one or more
`signals are substantially free of noise caused by light piping.
`
`viii
`
`

`

`Limitation
`[24]
`
`[25]
`
`[26]
`
`[27]
`
`[28]
`
`[29]
`
`[30]
`
`Attorney Docket No. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`Claim Language
`The user-worn device of claim 20, wherein the protrusion
`comprises opaque material configured to substantially prevent
`light piping.
`The user-worn device of claim 20, further comprising gaps
`between the photodiodes and the windows.
`The user-worn device of claim 20, wherein the photodiodes are
`arranged in a quadrant configuration.
`The user-worn device of claim 26, further comprising opaque
`walls surrounding the photodiodes.
`The user-worn device of claim 27, wherein the walls are
`configured to reduce mixing of light from distinct quadrants of
`the tissue.
`The user-worn device of claim 20, wherein the protrusion
`further comprises one or more extensions.
`The user-worn device of claim 20, wherein the protrusion
`further comprises one or more chamfered edges.
`
`
`
`
`
`ix
`
`

`

`Attorney Docket No. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`
`I.
`INTRODUCTION
`Apple Inc. (“Apple” or “Petitioner”) petitions for IPR of claims 1-30
`
`(“Challenged Claims”) of U.S. Patent No. 10,945,648 (“the ’648 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)
`Apple Inc. certifies that the ’648 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 ’648 PATENT
`A. Brief Description
`The system described by the ’648 Patent is said to include, in one
`
`embodiment, “a noninvasive sensor and a patient monitor communicating with the
`
`noninvasive sensor.” APPLE-1001, 2:46-59. The ’648 Patent describes several
`
`sensor configurations. See APPLE-1001, 6:43-46, 35:36-38:20, FIGS. 14A-14I,
`
`1
`
`

`

`Attorney Docket No. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`
`APPLE-1003, ¶¶42-44.1
`
`B.
`Level of Ordinary Skill in the Art
`A person of ordinary skill in the art relating to the subject matter of the ’648
`
`Patent as of July 3, 2008 (“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.
`
`C. Claim Construction
`Petitioner submits that all claim terms should be construed according to the
`
`
`1 As Apple noted in the parallel ITC investigation, the ’648 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. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
`
`C.F.R. § 42.100. 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.
`
`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).
`
`
`2 Apple asserts that the ’648 Patent is invalid on multiple grounds in addition to
`
`those presented herein, including by 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 ’648 Patent.
`
`3
`
`

`

`APPLE-1003, ¶¶1-276.
`
`Ground
`1A
`
`Claims
`8-9
`
`1B
`
`1C
`
`1D
`
`1-5, 6-7, 10, 12-17, 19,
`20-30
`
`11
`
`18
`
`Attorney Docket No. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`
`Basis for Rejection
`Obvious (§103) based on Lumidigm in
`combination with Scharf and Kotanagi
`Obvious (§103) based on Lumidigm in
`combination with Scharf, Kotanagi, and
`Tran
`Obvious (§103) based on Lumidigm in
`combination with Scharf, Kotanagi,
`Tran, and Forstall
`Obvious (§103) based on Lumidigm in
`combination with Scharf, Kotanagi, and
`Anderson
`
`Each applied reference pre-dates U.S. provisional application 61/078,207,
`
`filed on July 3, 2008, the earliest priority date of the ’648 Patent. Petitioner does
`
`not take a position as to whether the ’648 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 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
`
`Forstall
`
`US9,820,658
`
`US9,001,047
`
`8/30/2006 (filed)
`
`1/4/2008 (filed)
`
`102(e)
`
`102(e)
`
`4
`
`

`

`Reference
`
`Attorney Docket No. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`Date
`Section
`
`US5,952,084
`
`9/14/1999 (published)
`
`102(b)
`
`Anderson
`
`
`B.
`
`[GROUND 1A] – CLAIMS 8-9 ARE OBVIOUS OVER
`LUMIDIGM, SCHARF, AND KOTANAGI
`A brief introduction is provided to Lumidigm, Scharf, Kotanagi, and the
`
`combination thereof.4
`
`1.
`
`Lumidigm describes a wristwatch having an optical
`sensor
`Lumidigm describes “electro-optical sensors” for “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.”
`
`Id., 11:61-64, Fig. 8B (infra). Lumidigm’s sensor obtains data indicative of
`
`spectroscopic characteristics of a user’s blood or skin, which are used to determine
`
`physiological parameters of the user. Id., 3:44-45, 19:16-40; APPLE-1003, ¶46.
`
`
`4 Petitioner incorporates this discussion into Grounds 1A-1D.
`
`5
`
`

`

`Attorney Docket No. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
`
`
`
`Lumidigm, Fig. 8B
`Lumidigm describes various “sensor geometries” for the wristwatch.
`
`APPLE-1006, 11:66-12:2. The sensor’s illumination and detection systems are
`
`“built into” the wristwatch and “collect[] and digitiz[e] the spectral information.”
`
`Id., 11:35-38; see 11:64-65; APPLE-1003, ¶47.
`
`Fig. 2 shows a cross-section of a sensor head in contact with tissue. APPLE-
`
`1006, 7:5-7. The sensor head includes multiple light sources (red), such as light
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`emitting diodes (LEDs) or “sets of LEDs,” and “one or more detectors” (blue). Id.,
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`6:22-24, 6:38-64, 7:9-10; APPLE-1003, ¶48.
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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.” Id., 42-52 in Fig. 2, 7:8-11; APPLE-1003,
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`¶49.
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`The detector is recessed from the sensor surface “in optically opaque
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`material,” green, with an opening extending above the detector to the sensor
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`surface to allow light to reach the detector. Id., 7:64-8:4. This placement
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`“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; see 7:58-63; APPLE-1003, ¶50.
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`Lumidigm describes various light source and detector arrangements.
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`APPLE-1006, 6:43-62, 8:33-9:57, Figs. 3-7B. The light sources “can each have
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`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; APPLE-1003,
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`¶51. Figs. 6 and 7A-7B, infra, show example arrangements. In Fig. 6, “each of
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`three different light sources,” red “is positioned relative to three detectors,” blue.
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`APPLE-1006, 9:15-17. The Fig. 7A sensor “includes a row of detectors,” blue,
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`“surrounded on either side by rows of light sources,” red; and in FIG. 7B,
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`“multiple light sources” red, “are placed at the perimeter of a detector array,” blue.
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`APPLE-1006, 9:28-39; APPLE-1003, ¶52.
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`Lumidigm, Figs. 6 and 7A-7B (annotated)
`2.
`Scharf describes pulse oximeters having glass covers
`Scharf describes “a pulse oximeter using two green light sources to detect
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`the oxygen saturation of hemoglobin in a volume of intra vascular blood.”
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`APPLE-1025, 1:10-13. In Fig. 4, infra, Scharf’s oximeter includes “[s]urface
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`mount LEDs,” red; and a “photodiode 26 of a light-to-frequency converter (LFC)
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`28,” blue. Id., 8:38-41, 5:19-23; APPLE-1003, ¶53.
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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 “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; see 9:13-15;
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`APPLE-1003, ¶54.
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`Scharf, Fig. 4 (annotated)
`3. Kotanagi describes an optical sensor that protrudes
`from a bottom surface of a wristband
`Kotanagi describes a device for “measuring biological information such as
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`pulse rate while mounted to the wrist.” APPLE-1007, [0001]. This device,
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`illustrated in Fig. 5, infra, has a housing with “a protruding part 4 [purple] which
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`protrudes from the lower surface 2a” of the housing. Id., [0045]. A sensor on the
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`protruding part includes an LED (red) and photodetector (blue) “for receiving
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`reflected light from the living body … and generating a pulse signal” based on the
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`received light. Id., [0046]. Pulse rate is detected “based on the generated pulse
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`signal.” Id., [0047]; APPLE-1003, ¶55.
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`Attorney Docket No. 50095-0044IP2
`IPR of U.S. Patent No. 10,945,648
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`
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`Kotanagi, Fig. 5 (annotated)
`In Fig. 10, infra, “a curved surface” is “formed from the center toward the
`
`outer edge of the lower surface 4a of the protruding part 4.” APPLE-1007, [0080].
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`The watch is “mounted in a state in which the living body surface B deforms
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`smoothly and the contact pressure of the center part of the lower surface 4a is
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`increased, which further enhances adherence.” Id., [0080]; APPLE-1003, ¶56.
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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 of the combination is shown infra. APPLE-
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`1003, ¶¶57-58:
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` Composite figure5
`The following description of the combined sensor references this composite
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`
`
`figure.
`
`In the combination, the optical sensor is “built into the case of a wristwatch,”
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`and includes LEDs or sets of LEDs (red), and detectors (blue) “recessed from the
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`sensor surface 39 in optically opaque material” (green). APPLE-1006, 8:1-10,
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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, ¶57.
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`11:60-12:1; see 6:38-63; APPLE-1003, ¶59.
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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
`
`semiconductor-based photodetectors are photodiodes. See APPLE-1006, 6:58-63;
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`APPLE-1003, ¶60. Alternatively or additionally, Lumidigm’s photodetectors are
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`implemented as photodiodes based on Scharf’s teachings of photodiodes for
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`reflectance pulse oximetry. See APPLE-1025, 2:63-65, 3:5-9, 5:19-21; APPLE-
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`1003, ¶60.
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`The optical surface of the combined device is a “curved surface … formed
`
`from the center toward the outer edge” of the optical surface of the sensor, as
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`described in Kotanagi. APPLE-1007, [0080]; see APPLE-1006, 7:58-63. This
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`curved optical surface forms a protrusion with a convex outer surface extending
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`over the photodiodes and LEDs of the sensor. See APPLE-1007, [0080], Fig. 10.
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`Thus, the optically opaque material (green; see APPLE-1006, 8:3-4) extends from
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`the bottom surface of the sensor to the convex surface of the protrusion. APPLE-
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`1003, ¶61.
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`The photodiodes are recessed into the protrusion, with the recesses
`
`extending from the bottom surface of the sensor, through the protrusion, and to the
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`convex surface. See APPLE-1006, 7:5-10, 8:1-10. This positioning “minimizes
`
`the amount of light that can be detected after reflecting off the first (epidermal)
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`surface of the tissue.” Id., 8:4-7. The LEDs are also recessed, as indicated by the
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`dashed lines. 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
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`protrusion are chamfered. APPLE-1003, ¶62.
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`A “clear face,” as taught by Scharf, is disposed on the convex surface.
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`APPLE-1025, 8:57-66. The face is implemented as a single glass piece, or
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`alternatively, as discrete covers (orange in the figure, supra) formed over the
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`recesses, e.g., substantially flush with the convex surface. Id., 8:57-9:15; APPLE-
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`1003, ¶63.
`
`LED and photodiode arrangements in the combination device
`In the combination, the light sources and photodiodes are arranged according
`
`to Lumidigm’s Fig. 7A, or alternatively, according to a modified version of
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`Lumidigm’s Fig. 6, or still alternatively, according to a modified version Fig. 7B,
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`or other similar arrangements. See APPLE-1006, 9:32-34 (“other numbers and
`
`arrangements of the sources 93 and detectors 95 may alternatively be used”);
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`APPLE-1003, ¶64.
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`With respect to Fig. 7A, in the combination, the sensor “includes a row of
`
`detectors surrounded on either side by rows of light sources,” i.e., LEDs or sets of
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`LEDs. APPLE-1006, 9:26-34, FIG. 7A. Top and cross-sectional views are shown
`
`in the following figures. APPLE-1003, ¶65.
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`Left: Lumidigm, Fig. 7A (annotated); Right: Composite figure based on B-Bʹ
`cross-section (not to scale)
`With respect to Fig. 6, the sensor includes “each of three different light
`
`sources,” i.e., LEDs or sets of LEDs, “positioned relative to three detectors.” Id.,
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`9:15-17, FIG. 6. In the combination, this arrangement is modified to introduce an
`
`additional detector-light source pair such that there are four pairs of photodiodes
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`(blue) and LEDs (red) arranged in a quadrant arrangement, as shown infra. See
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`APPLE-1006, 9:12-25; APPLE-1003, ¶66.
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`Attorney Docket No. 50095-0044IP2
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`
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`Left: Composite figure based on Lumidigm, Fig. 6 (annotated); Right: Composite
`figure based on A-Aʹ cross-section (not to scale)
`With respect to Fig. 7B, Lumidigm describes that a sensor includes
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`“multiple light sources … placed at the perimeter of a detector array.” APPLE-
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`1006, 9:34-39. In the combination, this arrangement is modified to include fewer
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`than all of the photodiodes in the array, as shown infra. APPLE-1003, ¶67; see
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`APPLE-1006, 9:42-45.
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`Attorney Docket No. 50095-0044IP2
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`Left: Composite figure based on Lumidigm, Fig. 7B; Right: Composite figure
`based on C-Cʹ cross-section (not to scale)
`In each alternative arrangement, each photodiode (blue) is separately
`
`recessed into the protrusion (green), and a cover (orange) extends over e