Trials@uspto.gov
`571-272-7822
`
`Paper No. 15
`Date: February 1, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2022-01291
`Patent 10,687,745 B1
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, NEIL T. POWELL, and JAMES A. TARTAL,
`Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2022-01291
`Patent 10,687,745 B1
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”)1 filed a Corrected Petition pursuant to
`35 U.S.C. §§ 311–319 requesting an inter partes review of claims 1, 9, 15,
`18, 20, and 27 (“the Challenged Claims”) of U.S. Patent No. 10,687,745 B1
`(Ex. 1001, “the ’745 patent”). Paper 10 (“Pet.”). Masimo Corporation
`(“Patent Owner”)2 filed a Preliminary Response. Paper 11.
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter
`partes review may not be instituted “unless . . . the information presented in
`the petition . . . 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(a). Upon consideration of the Petition, the
`Preliminary Response, and the evidence of record, we conclude that the
`information presented shows a reasonable likelihood that Petitioner would
`prevail in showing the unpatentability of at least one of the Challenged
`Claims. Accordingly, we authorize an inter partes review to be instituted as
`to the Challenged Claims of the ’745 patent on the grounds raised in the
`Petition. Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far (prior to Patent
`Owner’s Response). This is not a final decision as to patentability of claims
`for which inter partes review is instituted. Any final decision will be based
`on the record, as fully developed during trial.
`
`
`1 Petitioner identifies no additional real parties in interest. Pet. 47.
`2 Patent Owner identifies no additional real parties in interest. Paper 5, 2.
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`IPR2022-01291
`Patent 10,687,745 B1
`
`II. BACKGROUND
`The ’745 Patent
`A.
`The ’745 patent is titled “Physiological Monitoring Devices, Systems,
`and Methods,” and issued on June 23, 2020, from U.S. Patent Application
`No. 16/835,772, filed March 31, 2020. Ex. 1001, codes (21), (22), (45),
`(54). The ’745 patent summarizes its disclosure as follows:
`This disclosure describes embodiments of non-invasive
`methods, devices, and systems for measuring blood constituents,
`analytes, and/or substances such as, by way of non-limiting
`example, oxygen, carboxyhemoglobin, methemoglobin, total
`hemoglobin, glucose, proteins, lipids, a percentage therefor
`(e.g., saturation), pulse rate, perfusion index, oxygen content,
`total hemoglobin, Oxygen Reserve IndexTM (ORITM) or for
`measuring many other physiologically
`relevant patient
`characteristics. These characteristics can relate to, for example,
`pulse rate, hydration, trending information and analysis, and the
`like.
`Id. at 2:40–50.
`Figures 7A and 7B of the ’745 patent are reproduced below:
`
`
`
`Figures 7A and 7B above depict side and top views, respectively, of a three-
`dimensional pulse oximetry sensor according to an embodiment of the ’745
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`IPR2022-01291
`Patent 10,687,745 B1
`patent. Id. at 5:28–33. Sensor 700 includes emitter 702, light diffuser 704,
`light block (or blocker) 706, light concentrator 708, and detector 710. Id.
`at 10:49–51. The sensor functions to irradiate tissue measurement site 102,
`e.g., a patient’s wrist, and detects emitted light that is reflected by the tissue
`measurement site. Id. at 10:43–49. “[L]ight blocker 706 includes an annular
`ring having a cover portion 707 sized and shaped to form a light isolation
`chamber for the light concentrator 708 and the detector 710.” Id. at 11:10–
`12. “[L]ight blocker 706 and cover 707 ensures that the only light detected
`by the detector 710 is light that is reflected from the tissue measurement
`site.” Id. at 11:16–19.
`Figure 8 of the ’745 patent is reproduced below:
`
`Figure 8 above illustrates “a block diagram of an example pulse oximetry
`system capable of noninvasively measuring one or more blood analytes in a
`
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`IPR2022-01291
`Patent 10,687,745 B1
`monitored patient.” Id. at 5:34–37. Pulse oximetry system 800 includes
`sensor 801 (or multiple sensors) coupled to physiological monitor 809. Id.
`at 12:21–23. Sensor 801 includes emitter 804 and detector 806. Id.
`at 12:32–34. Monitor 809 includes signal processor 810, which “includes
`processing logic that determines measurements for desired analytes based on
`the signals received from the detector 806.” Id. at 13:33–40. Monitor 809
`also includes user interface 812 that provides “an output, e.g., on a display,
`for presentation to a user of pulse oximetry system 800.” Id. at 13:33–35,
`13:64–66.
`
`Illustrative Claim
`B.
`Petitioner challenges claims 1, 9, 15, 18, 20, and 27 of the ’745 patent.
`Pet. 1. Claims 1, 15, and 20 are independent. Claim 1 is illustrative of the
`claimed subject matter and is reproduced below.
`1. A physiological monitoring device comprising:
`a plurality of light-emitting diodes configured to emit light in
`a first shape;
`a material configured to be positioned between the plurality
`of light-emitting diodes and tissue on a wrist of a user
`when the physiological monitoring device is in use, the
`material configured to change the first shape into a second
`shape by which the light emitted from one or more of the
`plurality of light-emitting diodes is projected towards the
`tissue;
`a plurality of photodiodes configured to detect at least a
`portion of the light after the at least the portion of the light
`passes through the tissue, the plurality of photodiodes
`further configured to output at least one signal responsive
`to the detected light;
`a surface comprising a dark-colored coating, the surface
`configured to be positioned between the plurality of
`photodiodes and the tissue when the physiological
`monitoring device is in use, wherein an opening defined in
`the dark-colored coating is configured to allow at least a
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`IPR2022-01291
`Patent 10,687,745 B1
`portion of light reflected from the tissue to pass through
`the surface;
`a light block configured to prevent at least a portion of the
`light emitted from the plurality of light-emitting diodes
`from reaching the plurality of photodiodes without first
`reaching the tissue; and
`a processor configured to receive and process the outputted at
`least one signal and determine a physiological parameter
`of the user responsive to the outputted at least one signal.
`Ex. 1001, 15:32–61.
`Asserted Grounds of Unpatentability
`C.
`Petitioner asserts that the Challenged Claims are unpatentable based
`on the following grounds:
`References/Basis
`Claims Challenged 35 U.S.C. §3
`1, 9
`Iwamiya, 4 Sarantos5
`103
`Iwamiya, Sarantos, Venkatraman6
`15, 18, 20, 27
`103
`Sarantos, Shie7
`1, 9, 15, 18
`103
`Sarantos, Shie, Venkatraman
`15, 18, 20, 27
`103
`Pet. 2–3. Petitioner further relies on the supporting Declaration of Dr. Brian
`W. Anthony, dated July 22, 2022. Ex. 1003. Patent Owner relies on the
`Declaration of R. James Duckworth, dated November 4, 2022. Ex. 2002.
`
`
`3 The Leahy-Smith America Invents Act (“AIA”) included revisions
`to 35 U.S.C. § 103 that became effective on March 16, 2013. We apply
`the post-AIA version of § 103 here, because the earliest provisional
`application identified in the ’745 patent was filed after the effective date of
`the AIA. See Ex. 1001, code (60).
`4 U.S. Patent No. 8,670,819 B2, issued Mar. 11, 2014 (Ex. 1004,
`“Iwamiya”).
`5 U.S. Patent No. 9,392,946 B1, issued Jul. 19, 2016 (Ex. 1005, “Sarantos”).
`6 U.S. Pat. App. Pub. No. 2014/0275854 A1, published Sep. 18, 2014
`(Ex. 1006, “Venkatraman”).
`7 U.S. Patent No. 6,483,976 B2, issued Nov. 19, 2002 (Ex. 1007, “Shie”).
`
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`IPR2022-01291
`Patent 10,687,745 B1
`
`Related Proceedings
`D.
`Petitioner filed three other petitions challenging claims of the
`’745 patent in IPR2022-01292, IPR2022-01465, and IPR2022-01466.8
`Patent Owner identifies numerous additional patent applications, patents,
`and inter partes review proceedings as related to the ’745 patent. Paper 5,
`1–2; Paper 14, 2.
`The parties further identify the ’745 patent as a subject of Masimo
`Corporation, et al. v. Apple Inc., ITC Inv. No. 337-TA-1276. Pet. 47;
`Paper 5, 1. Petitioner also states that on December 12, 2022, Patent Owner
`asserted the ’745 patent against Petitioner in U.S. District Court for the
`District of Delaware (Case No. 1:22-cv-01378-MN), Paper 13, 1; see also
`Paper 14, 1 (identifying the same district court case).
`Additionally, the application that issued as the ’745 patent was a
`continuation of an application that issued as U.S. Patent No. 10,470,695
`(“the ’695 patent”). Ex. 1001, code (63). Petitioner states that through an
`inter partes review the Board found claims 6, 14, and 21 of the ’695 patent
`not patentable “after Patent Owner disclaimed the remaining claims of the
`’695 Patent following institution of the IPR.” Pet. 48–49 (citing Apple Inc.
`v. Masimo Corp., IPR2020-01722, Paper 29 at 2 (PTAB May 5, 2022)).
`Patent Owner further identifies Masimo Corporation v. Apple Inc., Case
`No. 22-01895, pending before the U.S. Court of Appeals for the Federal
`
`
`8 Petitioner filed a Notice Ranking Petitions requesting that we consider
`whether to institute review based on the Petition in this proceeding prior to
`considering any other petition. See Paper 3 (“NRP”). In the NRP Petitioner
`misidentifies what references are asserted in each petition; however,
`Petitioner’s discussion in the NRP of the references asserted in each petition
`makes clear that Petitioner seeks consideration of the Petition here prior to
`our consideration of any other petition. Id.
`
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`IPR2022-01291
`Patent 10,687,745 B1
`Circuit, as an “appeal from final written decision in an inter partes review
`proceeding involving a related patent,” and we understand the ’695 patent is
`at issue in that appeal. Paper 5, 2.
`III. ANALYSIS
`A. Discretionary Denial of Institution Under 35 U.S.C. § 325(d)
`A petition may be denied because “the same or substantially the same
`prior art or arguments previously were presented to the Office.” 35 U.S.C.
`§ 325(d). When applying Section 325(d), we utilize a two-part framework.
`See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Only if
`the same or substantially the same art or arguments were previously
`presented to the Office do we then consider whether petitioner has
`demonstrated a material error by the Office. Id. “At bottom, this framework
`reflects a commitment to defer to previous Office evaluations of the
`evidence of record unless material error is shown.” Id. at 9.
`First, we determine “whether the same or substantially the same art
`previously was presented to the Office or whether the same or substantially
`the same arguments previously were presented to the Office.” Id. at 8.
`Under the first part of our framework, we consider (i) the similarities and
`material differences between the asserted art and the prior art involved
`during examination; (ii) the cumulative nature of the asserted art and the
`prior art evaluated during examination; and (iii) the extent of the overlap
`between the arguments made during examination and the manner in which
`petitioner relies on the prior art or patent owner distinguishes the prior art.
`See Advanced Bionics, Paper 6 at 9 n.10, 10–11 (citing factors (a), (b),
`and (d) of Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-
`01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first
`
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`IPR2022-01291
`Patent 10,687,745 B1
`para.)). Second, “if either condition of [the] first part of the framework is
`satisfied,” we consider “whether the petitioner has demonstrated that the
`Office erred in a manner material to the patentability of challenged claims.”
`Id.
`
`In the Petition, to show the unpatentability of the challenged claims,
`Petitioner relies on the following four references: Iwamiya, Sarantos,
`Venkatraman, and Shie. Pet. 2–3. Petitioner argues that discretionary denial
`is not warranted, explaining that although Iwamiya was cited on the face of
`the ’745 patent, there is no indication in the file history that the examiner
`was aware of or considered Sarantos, Venkatraman, or Shie. Pet. 46 (citing
`Ex. 1002, 147–53). According to Petitioner, the examiner issued no
`rejections and entered a notice of allowance five weeks after the filing of the
`application that led to the ’745 patent. Id. Petitioner argues that “neither
`condition of the first prong of the Advanced Bionics framework is met,” and
`discretionary denial is not warranted. Id. at 47.
`Patent Owner does not discuss the relevant considerations for
`discretionary denial under Section 325(d) and Advanced Bionics. Instead,
`Patent Owner asserts that the examiner is presumed to have considered
`Iwamiya, and that Petitioner has “the burden to ‘overcom[e] the deference
`that is due’ to the USPTO.” Prelim. Resp. 34 (citations omitted). In light of
`Patent Owner’s failure to address the relevant considerations and the fact
`that three of the four asserted references were not previously presented to the
`Office, the first prong of the Advanced Bionics framework has not been met
`and no basis has been shown for the exercise of our discretion to deny the
`Petition.
`
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`IPR2022-01291
`Patent 10,687,745 B1
`Legal Standards for Obviousness
`B.
`A patent claim is unpatentable for obviousness if the differences
`between the claimed subject matter 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). In
`Graham v. John Deere Co., 383 U.S. 1 (1966), the Supreme Court set out a
`framework for assessing obviousness that requires consideration of four
`factors: (1) the “level of ordinary skill in the pertinent art,” (2) the “scope
`and content of the prior art,” (3) the “differences between the prior art and
`the claims at issue,” and (4) “secondary considerations” of nonobviousness
`such as “commercial success, long felt but unsolved needs, failure of
`others, etc.” Id. at 17–18; KSR, 550 U.S. at 407.
`“Whether an ordinarily skilled artisan would have been motivated to
`modify the teachings of a reference is a question of fact.” WBIP, LLC v.
`Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted).
`“[W]here a party argues a skilled artisan would have been motivated to
`combine references, it must show the artisan ‘would have had a reasonable
`expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier
`Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
`Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)).
`Level of Ordinary Skill in the Art
`C.
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
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`Patent 10,687,745 B1
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted).
`Petitioner contends a person of ordinary skill in the art would have
`had “a working knowledge of physiological monitoring technologies,” “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” or “a Master of Science degree in a
`relevant academic discipline with less than a year of related work experience
`in the same discipline.” Pet. 5–6 (citing Ex. 1003 ¶¶ 25–26). Patent Owner
`does not dispute the level of ordinary skill identified by Petitioner. See
`Prelim. Resp. 10.
`For purposes of this Decision, we find that the ’745 patent and the
`cited prior art references reflect the appropriate level of skill at the time of
`the claimed invention and that the level of appropriate skill reflected in these
`references and in the ’745 patent is consistent with the level of skill
`proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001). Accordingly, for purposes of this Decision, this is the
`definition for a person of ordinary skill in the art we adopt.
`D. Claim Construction
`We apply 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). Under that standard, claim terms “are generally given their
`ordinary and customary meaning” as would have been understood by a
`person of ordinary skill in the art at the time of the invention. Phillips v.
`AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)).
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`Patent 10,687,745 B1
`“In determining the meaning of the disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is
`“less significant than the intrinsic record in determining ‘the legally
`operative meaning of claim language.’” Phillips, 415 F.3d at 1317.
`Petitioner states that “[a]ll claim terms should be construed according
`to the Phillips standard.” Pet. 6. Further, according to Petitioner, “no claim
`terms need be construed to resolve issues of controversy in the present
`Petition.” Id.
`Patent Owner first argues that the Petition fails to identify “[h]ow the
`challenged claim is to be construed,” as required by 37 C.F.R.
`§ 42.104(b)(3). Prelim. Resp. 10–11. Patent Owner directs us to a portion
`of the Patent Trial and Appeal Board Consolidated Trial Practice Guide
`(Nov. 2019) (“CTPG”), which more fully states as follows:
`If a petitioner believes that a claim term requires an
`express construction, the petitioner must include a statement
`identifying a proposed construction of the particular term and
`where the intrinsic and/or extrinsic evidence supports that
`meaning. On the other hand, a petitioner may include a statement
`that the claim terms require no express construction. The patent
`owner may then respond to these positions and/or propose
`additional terms for construction, with corresponding statements
`identifying a proposed construction of any particular term or
`terms and where the intrinsic and/or extrinsic evidence supports
`those meanings.
`
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`IPR2022-01291
`Patent 10,687,745 B1
`CTPG 44–45.9 Patent Owner disregards the second sentence in the CTPG
`excerpt above, and instead asserts that the Petition “does not meet” some
`purported “requirement” of the first sentence of the excerpt. Prelim.
`Resp. 10–11. Patent Owner’s argument fails because the Petition makes
`clear, in conformance with 37 C.F.R. § 42.104(b)(3) and consistent with the
`CTPG, that Petitioner contends that the Phillips standard applies and that no
`claim term requires express construction. See Pet. 6.
`Second, Patent Owner disputes the sufficiency of Petitioner’s
`contentions with regard to “the material configured to change the first shape
`into a second shape,” as recited in claims 1 and 20. Prelim. Resp. 12–17;
`Ex. 1001, 15:32–61, 17:20–18:17. According to Patent Owner, the claim
`term “second shape” must be expressly construed because Petitioner agreed
`in an ITC proceeding that a difference in shape requires more than a
`difference in size. Prelim. 12. Patent Owner then argues that Petitioner fails
`to show how the proposed combination of Sarantos and Shie “would result
`in a change from a ‘first shape’ of light to a ‘second shape,’” and, thus, “the
`Petition should be denied.” Id. Relatedly, Patent Owner argues that the
`recited “material configured” is not properly equated or limited to “a diffuser
`only,” and that the material must be “configured to change the first shape
`into a second shape.” Prelim. Resp 16–17 (citing Ex. 2002 ¶¶45–46).
`Patent Owner fails to show any disagreement between the parties, at
`this stage of the proceeding, over the meaning of “material configured to
`change the first shape into a second shape.” Merely disputing whether a
`claimed feature is taught by one combination of art asserted by Petitioner
`does not show that the Petition must be denied because of an absence of an
`
`
`9 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`express construction of a claim term. We find that Patent Owner has not
`identified any dispute over the meaning of “the material configured to
`change the first shape into a second shape” and that no express construction
`is required for purposes of this Decision.
`Third, Patent Owner argues that we should “interpret the scope of
`[c]laim 15 as excluding arrangements of two or three photodiodes,” because
`claim 15 recites “the plurality of photodiodes are arranged in an array having
`a spatial configuration corresponding to a shape of the portion of the tissue
`measurement site encircled by the light block.” Prelim. Resp. 17–19;
`Ex. 1001, 16:36–17:3. Patent Owner reasons that during prosecution of a
`“parent application” with “a similarly phrased limitation,” it “explained that
`two and three photodiodes can only represent a line or a triangle,
`respectively and cannot represent a circular shape.” Id. at 18–19 (citing
`Ex. 2002 ¶¶ 47–48 Ex. 2057, 322). Patent Owner fails to present a dispute
`on the current record over the construction of the recited “plurality of
`photodiodes.” Whether a particular configuration of photodiodes taught by
`the prior art meets the claim limitation is a separate issue and we find no
`express construction necessary for purposes of this Decision on the current
`record.
`
`Alleged Obviousness Over Iwamiya and Sarantos
`E.
`Petitioner contends the subject matter of claims 1 and 9 of the ’745
`patent would have been obvious over Iwamiya and Sarantos. Pet. 6–20.
`Petitioner provides a detailed explanation of its contentions in the Petition,
`including a clause-by-clause analysis specifying how the combination of
`Iwamiya and Sarantos teaches each limitation, and those contentions are
`supported by the testimony of Dr. Anthony. Id.; Ex. 1064 ¶¶ 29–48.
`
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`Patent 10,687,745 B1
`Below we provide a brief summary of Iwamiya and Sarantos. We
`then focus our discussion on claim 1, including Patent Owner’s arguments in
`opposition directed primarily to the recited “surface comprising a dark-
`colored coating.” Prelim. Resp. 21, 43–47. 10
`Summary of Iwamiya
`1.
`Iwamiya, titled Optical Biological Information Detecting Apparatus
`and Optical Biological Information Detecting Method, is directed “an optical
`biological information detecting apparatus” comprised of the following:
`a light emitting unit which emits observation light of a
`specific wavelength band to optically observe a desired portion
`of a tissue of a skin of a human body; an annular light guide unit
`which guides the observation light to a desired area of a surface
`of the skin corresponding to the desired portion of the tissue of
`the skin, and which annularly irradiates the observation light onto
`the desired area of the surface of the skin; and a light receiving
`unit which is disposed at a position surrounded by the annular
`light guide unit, and which receives scattered light scattered by
`the desired portion of the tissue of the skin after the observation
`
`
`10 Patent Owner also argues that Petitioner fails to address known objective
`indicia of nonobviousness. Prelim. Resp. 22–33. Patent Owner’s arguments
`refer to “measuring oxygen saturation at the wrist,” “a pulse oximetry
`feature,” and specifically to claims 9 and 18, but not to claim 1. See, e.g., id.
`at 22, 24, 27. For objective indicia evidence to be accorded substantial
`weight, a nexus must exist between the proffered evidence and the merits of
`the invention as claimed. See Wyers v. Master Lock Co., 616 F.3d 1231
`(Fed. Cir. 2010). “Where the offered secondary consideration actually
`results from something other than what is both claimed and novel in the
`claim, there is no nexus to the merits of the claimed invention.” In re Kao,
`639 F.3d 1057 (Fed. Cir. 2011). Although Patent Owner expresses that there
`is a nexus between the identified objective indicia of non-obviousness and
`the claimed invention (Prelim. Resp. 32–33), the preliminary record before
`us does not appear complete on the matter. The parties may further address
`objective indicia of nonobviousness during trial.
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`light is annularly irradiated onto the desired area of the surface
`of the skin by the annular light guide unit.
`Ex. 1004, code (54), 2:32–46. The apparatus may be provided in “a central
`portion of the back cover” of a “wristwatch.” Id. at 5:54–66; Fig. 1. As an
`overview of Iwamiya, Petitioner provides the following annotated version of
`Figure 4 of Iwamiya illustrating “an enlarged cross-sectional view” of “a
`state where biological information, such as a pulse wave, is detected while
`the back cover of the wristwatch . . . contacts the skin of an arm”:
`
`
`Pet. 6–7; Ex. 1004, 4:13–16, Fig. 4. As explained by Petitioner, the
`annotated version of Figure 4 of Iwamiya above illustrates a device with
`“LEDs 6 (shown in green) that emit light (orange) that is ref[l]ected by the
`tissue of the wearer’s wrist (light pink) and detected by photodiodes 9
`(yellow).” Pet. 6 (citing Ex. 1003 ¶ 29).
`Summary of Sarantos
`2.
`Sarantos, titled Heart Rate Sensor with High-Aspect-Ratio
`Photodetector Element, relates to the use of “non-square photodetector
`elements” in photoplethysmographic (PPG) sensors “designed for use with
`wearable biometric monitoring devices” to obtain a “significant performance
`increase as compared with traditional PPG designs, which typically utilize
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`square photodetector elements.” Ex. 1005, code (54), 1:8–13, 6:66–7:7.
`Petitioner provides the following overview of Sarantos:
`Sarantos describes a “wristband-type wearable fitness
`monitor” that measures “physiological parameters” of the
`wearer, such as the person’s “heart rate” and “blood oxygenation
`levels.” [Ex. 1005], 2:5–14, 5:55–59, 7:12–14, 13:39–47. The
`monitor
`performs
`these
`measurements
`using
`a photoplethysmographic (PPG) sensor, which includes one or
`more light sources (e.g., LEDs) and an array of photodetectors.
`Id., 1:9–10, 43–47, 7:12–16, 15:23–43. Sarantos describes that
`when the monitor “is worn by a person in a manner similar to a
`wristwatch, the back face” of the monitor “may be pressed
`against the person’s skin, allowing the light sources” of the PPG
`sensor “to illuminate the person’s skin.” Id., 1:48–51, 7:12–23.
`The light “diffuses through the person's flesh and a portion of this
`light is then emitted back” (i.e., reflected) “out of the person's
`skin in close proximity to where the light was introduced into the
`flesh.” Id., 7:24–28; [Ex. 1003], [30]. The photodetector array
`of the PPG sensor measures the “intensity” of this reflected light,
`and provides signals representing the intensity to “control logic”
`of the monitoring device. [Ex. 1005], 2:5–14, 7:12–23, 13:39–
`47, The control logic can then calculate different physiological
`parameters based on characteristics of the reflected light signal.
`Id., 1:54–56, 7:12–23. For example, the person’s heart rate can
`be calculated based on “fluctuations in the amount of light from
`the light source that is emanated back out of the flesh” that
`correspond fluctuations in blood volume associated with each
`beat of the person’s heart. Id., 7:23–60; [Ex. 1003], [30].
`Pet. 7–8.
`Independent Claim 1
`3.
`Petitioner contends that each limitation of claim 1 is taught by the
`combination of Iwamiya and Sarantos and that a person of ordinary skill in
`the art would have been motivated to combine the references as asserted.
`Pet. 8–19. Petitioner contends that Iwamiya teaches, as shown in Figure 4
`reproduced above, “an ‘optical biological information detecting apparatus[,]’
`
`17
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`

`

`IPR2022-01291
`Patent 10,687,745 B1
`which is a physiological monitoring device,” including “light emitting
`units 6,” corresponding to a plurality of light emitting diodes, and annular
`light guide unit 7, which “changes the shape of the light emitted from
`individual light emitting units 6 to an annular shape (a second shape).” Id.
`at 8–13 (citing, e.g., Ex. 1003 ¶¶ 31, 34–36; Ex. 1004, 5:54–66, 6:7–14,
`6:22–45, 7:4–6, 7:61–65, 11:55–12:36, 15:30–33, Figs. 1–4, 12). With
`regard to the recited “plurality of photodiodes,” Petitioner directs us to light
`receiving units 9 of Iwamiya composed of a silicon photo diode. Id. at 13
`(citing Ex. 1004, 14:36–41, 8:20–23). Petitioner also contends that
`reflection layers 13 and 15 of Iwamiya correspond to the recited “light
`block,” and that Iwamiya teaches central processing unit 20 corresponding to
`the recited processor. Pet. 18–19 (citing, e.g., Ex. 1003 ¶¶ 45–47; Ex. 1004,
`6:62–7:3, 7:41–49, 8:61–9:7, 9:36–43, Fig. 3).
`The only limitation of claim 1 specifically addressed by Patent Owner
`under this ground at this stage of the proceeding regards the recited “surface
`comprising a dark-colored coating.” Petitioner first directs us to light
`shielding frame 18 of Iwamiya, which is positioned between photodiodes 9
`and the tissue, as shown in Figure 4 of Iwamiya reproduced above. Pet. 14–
`15. Petitioner does not suggest that Iwamiya expressly teaches the surface
`of light shielding frame 18 includes a dark-colored coating. Instead,
`Petitioner directs us to in-mold label 2276 of Sarantos, which Petitioner
`identifies as a “dark colored coating.” Id. at 15 (citing Ex. 1003 ¶ 41;
`Ex. 1005, 5:55–58, Fig. 22).
`
`18
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`

`IPR2022-01291
`Patent 10,687,745 B1
`Figure 22 of Sarantos is reproduced below.
`
`
`Figure 22 illustrates a cross section of a PPG sensor. Ex. 1005, 6:52–54.
`Sarantos further explains as follows:
`In FIG. 22, a substrate 2272 supports two HAR
`photodetector elements 2212 that are positioned on either side of
`a light source 2208. A window 2278 is offset from the
`substrate 2272. The window 2278, in this implementation, is
`made from a translucent or transparent material, such as
`transparent acrylic, with an in-mold label 2276 embedded within
`it. The in-mold label 2276 may be black or otherwise rendered
`opaque to light to prevent light from entering or exiting the PPG
`sensor through the window 2278 except through window regions
`2226. In other implementations, other masking techniques, such
`as a painted or silk-screened mask applied to the window 2278,
`may be used. Regardless of which technique is used, the in-mold
`label 2276 or the masking may prevent stray light from other
`sources, e.g., ambient
`light,
`from reaching
`the HAR
`photodetector elements 2212 and affecting the heart rate signal
`obtained by the PPG sensor.
`Ex. 1005, 17:1–16. Petitioner further reasons as follows:
`A [person of ordinary skill in the art] would have been
`motivated to employ an in-mold label or other black or opaque
`material as disclosed by Sarantos in the light shielding frame 18
`of Iwamiya to serve the purpose indicated by the component’s
`name: shielding the photodiodes 9 from stray light, and thereby
`ensuring accuracy of the sensor. APPLE-1003, [42]; see, e.g.,
`APPLE-1004, 8