Trials@uspto.gov
`571-272-7822
`
`Paper 75
`Date: January 30, 2024
`
`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, GEORGE R. HOSKINS, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`ORDER
`Denying Petitioner’s Motion to Exclude and
`Denying Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
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`IPR2022-01291
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`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ................................................................... 1
`BACKGROUND ..................................................................... 2
`A. Real Parties-in-Interest and Related Proceedings........................... 2
`B. The ’745 Patent Specification ..................................................... 4
`C. The Challenged Claims of the ’745 Patent ................................... 8
`D. Asserted Prior Art ..................................................................... 9
`E. Asserted Grounds ................................................................... 10
`F. Testimonial Evidence .............................................................. 10
`III.
`ANALYSIS OF PETITIONER’S GROUNDS ........................... 11
`A. Statement of Law.................................................................... 11
`B. Level of Ordinary Skill in the Art ............................................. 12
`C. Claim Construction ................................................................. 13
`D. Ground 1A — Obviousness over Iwamiya and Sarantos .............. 15
`1.
`Iwamiya ............................................................................. 15
`2.
`Sarantos ............................................................................. 18
`3. Claim 1 .............................................................................. 20
`a)
`Iwamiya vs. Claim 1 ........................................................ 21
`b) Sarantos vs. Claim 1 ........................................................ 29
`c) Motivation for Combining Iwamiya and Sarantos with a
`Reasonable Expectation of Success ........................................... 30
`(i) Petitioner’s Contentions (in the Petition) ......................... 30
`(ii) Patent Owner’s Opposition ........................................... 31
`(iii) Petitioner’s Reply ........................................................ 33
`(iv) Patent Owner’s Sur-reply .............................................. 36
`(v) Analysis and Determination as to Motivation to Combine
`with a Reasonable Expectation of Success .............................. 37
`d) Conclusion as to Claim 1 .................................................. 43
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`4. Claim 9 .............................................................................. 44
`a)
`Scope of Claim 9 ............................................................. 45
`b)
`Iwamiya and Sarantos vs. Claim 9 ..................................... 47
`Iwamiya vs. Claim 9 .................................................... 47
`(i)
`(ii) Sarantos vs. Claim 9..................................................... 48
`(1) Summary of Sarantos Disclosure ................................ 48
`(2) Petitioner’s Contentions (in the Petition) ..................... 49
`(3) Patent Owner’s Opposition ........................................ 49
`(4) Petitioner’s Reply ..................................................... 50
`(5) Patent Owner’s Sur-reply .......................................... 51
`(6) Analysis and Findings as to Sarantos’s Disclosure of
`Determining Oxygen Saturation at the Wrist ....................... 51
`c) Motivation for Combining Iwamiya and Sarantos to Determine
`Oxygen Saturation at the Wrist ................................................. 55
`(i) Petitioner’s Contentions (in the Petition) ......................... 55
`(ii) Patent Owner’s Opposition ........................................... 56
`(iii) Petitioner’s Reply ........................................................ 59
`(iv) Patent Owner’s Sur-reply .............................................. 61
`(v) Analysis and Determination as to Motivation for Combining
`Iwamiya and Sarantos to Determine Oxygen Saturation at the
`Wrist ................................................................................. 62
`d) Reasonable Expectation of Success in Combining Iwamiya and
`Sarantos to Determine Oxygen Saturation at the Wrist................. 70
`(i) Petitioner’s Contentions (in the Petition) ......................... 70
`(ii) Patent Owner’s Opposition ........................................... 70
`(1) The ITC Investigation ............................................... 70
`(2) Patent Owner’s Argument ......................................... 79
`(iii) Petitioner’s Reply ........................................................ 82
`(iv) Patent Owner’s Sur-reply .............................................. 84
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`(v) Analysis and Determination as to Reasonable Expectation of
`Success in Combining Iwamiya and Sarantos to Determine
`Oxygen Saturation at the Wrist ............................................. 89
`(1) Scope of, and Incorporation by Reference in, the Petitioner
`Reply ............................................................................. 89
`(2) Analysis and Determination ....................................... 91
`e) Objective Indicia of Nonobviousness ................................103
`(i) Patent Owner’s Argument ............................................103
`(ii) Petitioner’s Reply .......................................................104
`(iii) Patent Owner’s Sur-reply .............................................104
`(iv) Analysis and Determination as to Objective Indicia of
`Nonobviousness .................................................................105
`f) Weighing of Evidence and Conclusion as to Obviousness ....107
`E. Ground 1B — Obviousness over Iwamiya, Sarantos,
`and Venkatraman..........................................................................108
`1. Venkatraman .....................................................................108
`2. Claim 15 ...........................................................................108
`a)
`Scope of Claim 15 ..........................................................109
`b) Petitioner’s Contentions (in the Petition)............................112
`c)
`Patent Owner’s Opposition ..............................................115
`d) Petitioner’s Reply ...........................................................117
`e)
`Patent Owner’s Sur-reply.................................................120
`f) Analysis and Determination as to Claim 15 ........................122
`3. Claim 18 ...........................................................................127
`4. Claim 20 ...........................................................................127
`a)
`Petitioner’s Contentions (in the Petition)............................128
`b) Patent Owner’s Opposition ..............................................129
`c)
`Petitioner’s Reply ...........................................................129
`d) Patent Owner’s Sur-Reply ...............................................130
`e) Analysis and Determination as to Claim 20 ........................130
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`5. Claim 27 ...........................................................................131
`F. Grounds 2A and 2B — Obviousness over Sarantos, Shie, and
`Venkatraman................................................................................132
`IV.
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE.....133
`V.
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE ...........136
`VI.
`SUMMARY OF CONCLUSIONS ..........................................138
`VII.
`ORDER ...............................................................................139
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`INTRODUCTION
`I.
`Apple Inc. (“Apple” or “Petitioner”) filed a Petition (Paper 51,
`“Pet.”)1 pursuant to 35 U.S.C. §§ 311–319 for inter partes review of U.S.
`Patent No. 10,687,745 B1 (Ex. 1001, “the ’745 patent”), claims 1, 9, 15, 18,
`20, and 27. The Board issued an Institution Decision (Paper 15) instituting
`the petitioned review.
`Masimo Corporation (“Masimo” or “Patent Owner”) then filed a
`Patent Owner Response (Papers 28 and 29, “PO Resp.”) to the Petition.
`Apple filed a Reply (Papers 39 and 40, “Pet. Reply”) to the Patent Owner
`Response. Masimo filed a Sur-reply (Papers 49 and 50, “PO Sur-reply”) to
`the Reply. Apple filed, with prior Board authorization, a Response to Expert
`Testimony submitted with the Sur-reply (Paper 55; see Paper 43 (Order
`granting authorization)).
`An oral hearing was held on November 17, 2023, for which the
`transcript was entered into the record (Papers 71 and 74, “Tr.”).
`Masimo filed a Motion to Exclude Evidence proffered by Apple
`(Paper 56). Apple filed an Opposition (Paper 61), and Masimo filed a Reply
`(Paper 63). We deny Masimo’s Motion, for reasons provided below.
`Apple filed a Motion to Exclude Evidence proffered by Masimo
`(Paper 57). Masimo filed an Opposition (Papers 58 and 60), and Apple filed
`a Reply (Paper 62). We deny Apple’s Motion, for reasons provided below.
`
`1 Paper 51 is the Second Corrected Petition. See Paper 2 (Initial Petition);
`Paper 10 (First Corrected Petition); see also Ex. 3001 (Email granting
`Petitioner leave to file First Corrected Petition); Paper 48, 2 (Order granting
`Petitioner leave to file Second Corrected Petition).
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`The Patent Owner Response relies on evidence that has been sealed
`via a Protective Order.2 Accordingly, the Patent Owner Response, the
`Petitioner Reply, the Patent Owner Sur-reply, the Transcript, and Patent
`Owner’s Opposition to Petitioner’s Motion to Exclude, all have been filed
`under seal. See Papers 28, 40, 49, 58, and 71. However, publicly available
`versions that are redacted to protect the sealed information were also filed.
`See Papers 29, 39, 50, 60, and 74. In each instance, the two filings are
`identical except for the redactions in the publicly available version.
`Citations in this Decision refer to th e sealed versions, so this Decision is
`being entered under seal. In an Order set forth below, the parties are
`required to jointly file a redacted, public version of this Decision no later
`than three weeks following entry of this Decision.
`We have jurisdiction under 35 U.S.C. § 6(b)(4) and § 318(a). This
`Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R.
`§ 42.73 as to the pat entability of claims 1, 9, 15, 18, 20, and 27 of the
`’745 patent. We determine Apple has shown by a preponderance of the
`evidence that those claims are unpatentable.
`
`BACKGROUND
`II.
`Real Parties-in-Interest and Related Proceedings
`A.
`Apple identifies itself (i.e., Apple Inc.) as a real party-in-interest. See
`Pet. 47. Masimo identifies itself (i.e., Masimo Corporation) as a real
`party-in-interest. See Paper 5, 1.
`
`2 See Paper 24 (Protective Order entered as Ex. 1035); Papers 41, 70, and 73
`(Orders granting various Motions to Seal, and concerning Transcript).
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`Apple has filed three other IPR petitions challenging the ’745 patent.
`In IPR2022-01292, Apple challenged the same claims challenged in the
`present proceeding, but on different grounds. See IPR2022-01292, Paper 10,
`at 1–2 (Corrected Petition identifying the grounds). Institution of review
`was denied in IPR2022-01292, on the same day that institution was granted
`in the present proceeding. See IPR2022-01292, Paper 15 (Decision Denying
`Institution).
`In IPR2022-01465, Apple challenged different claims (i.e., claims 2–
`6, 8, 10–14, 17, 19, and 21–26) than the claims challenged in the present
`proceeding (i.e., claims 1, 9, 15, 18, 20, and 27). See IPR2022-01465,
`Paper 10, at 1–2 (Corrected Petition identifying the grounds). Institution of
`review was granted. See IPR2022-01465, Paper 15 (Decision Granting
`Institution). A Final Written Decision in IPR2022-01465 will be entered
`soon.
`
`In IPR2022-01466, Apple challenged the same claims challenged in
`IPR2022-01465, but on different grounds. See IPR2022-01466, Paper 10, at
`1–2 (Corrected Petition identifying the grounds). Institution of review was
`denied. See IPR2022-01466, Paper 15 (Decision Denying Institution).
`There is a related U.S. International Trade Commission (ITC)
`investigation, in which Masimo accused Apple of importing devices (i.e.,
`the Apple Watch Series 6) that in fringe the ’745 patent and other patents.
`See In the Matter of Certain Light-Based Physiological Measurement
`Devices and Components Thereof, No. 337-TA-1276 (Int’l Trade Comm’n)
`(hereafter “ITC Investigation”); Ex. 1031 (Complaint initiating the ITC
`Investigation). The ITC Investigation resulted in a “Final Initial
`Determination” concerning
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`the ’745 patent, authored by an Administrative Law Judge (Exs. 10333
`and 2093), and a “Commission Opinion” (Ex. 2104) reviewing the Initial
`Determination. At the time of our present Decision, the Commission
`Opinion is on appeal to the Federal Circuit. See Apple, Inc. v. Int’l Trade
`Comm’n, et al., No. 24-1285 (Fed. Cir.).
`There is a related U.S. District Court litigation in which Masimo has
`asserted the ’745 patent against Apple. See Apple Inc. v. Masimo Corp.,
`No. 1:22-cv-01378-MN (D. Del.); Paper 13. At the time of our present
`Decision, this litigation remains pending before the District Cou rt.
`The parties have also identified yet further related proceedings
`concerning other patents. See Pet. 47–48; Paper 5, 1–2; Paper 14, 1–2.
`
`The ’745 Patent Specification
`B.
`The ’745 patent is directed to a non-invasive, light-based
`physiological monitoring device. See Ex. 1001, code (57). In one
`embodiment, the device is utilized to measur e a patient’s arterial blood
`oxygen saturation, sometimes shorthanded as “SpO2” or “SpO2.” See id.
`at 1:23–27, 1:54–2:4, 2:16–18. In other embodiments, the device is utilized
`to measure other blood constituent characteristics. See id. at 2:40–50
`(stating the device can measure “oxygen, carboxyhemoglobin,
`methemoglobin, total hemoglobin, glucose, proteins, lipids, a percentage
`thereof (e.g., saturation), pulse rate, perfusion index, oxygen content, total
`
`3 Citations herein to Exhibit 1033 refer to the document’s original
`pagination, not the pagination added by Apple at the bottom of each page.
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`hemoglobin, Oxygen Reserve Index™ (ORI™) or . . . m any other
`physiologically relevant patient characteristics”).
`Figure 3 of the ’745 patent is reproduced below.
`
`
`
`The ’745 Patent, Figure 3.
`Figure 3 is a schematic side view of pulse oximetry sensor 300 and tissue
`measurement site 102 (i.e., a patient’s fingertip). See id. at 5:12–14, 7:4–9.
`Emitter 302 emits light toward tissue site 102, and diffuser 304
`spreads the light over an area. See id. 7:12–13, 7:30–44. “In some
`embodiments, the light diffuser 304 is a beam shaper that can homogenize
`the input light beam from the emitter 302, shape the output intensity profile
`of the received light, and define the way (e.g., the shape or pattern) the
`emitted light is distributed to the tissue measurement site 102.” Id. at
`7:44–62; see also id. at 7:63–66 (“Advantageously, the diffuser 304 can
`receive emitted light in the form of a point optical source and spread the
`light to fit a desired surface area on a plane defined by the surface of the
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`tissue measurement site 102.”). Reflector 305 prevents the emitted light
`from escaping out of the top portion of diffuser 304, thereby maximizing the
`light that reaches tissue site 102. See id. at 7:14–22.
`The light enters tissue site 102, interacts with the patient’s blood
`flowing through the tissue site, and exits the tissue on the opposite side from
`which the light entered the tissue. See id. at Fig. 3, 6:55–64, 7:6–22.
`Filter 306 is a “light-absorbing” material “such as, for example, black
`pigment,” and it has an opening (not shown in Figure 3) through which the
`transmitted light may pass to reach light con centrator 308 and light
`detector 310. Id. at 7:12–14, 8:32–38, 8:54–59; see also id. at 9:31–51
`(Fig. 4A illustrates filter 306 with rectangular opening 402, in relation to
`light concentrator 308 and light detector 310). Detector 310 outputs a signal
`responsive to the transmitted light, and the signal is communicated (not
`shown in Figure 3) to a processor which utilizes the signal to determine a
`physiological parameter of interest, such as blood oxygen saturation. See id.
`at 9:19–30; see also id. at 12:1–14:29 (Fig. 8 illustrates optical physiological
`measurement system 800, wherein detector 806 outputs signal 807 to
`processor 810).
`Figures 7A and 7B of the ’745 patent are reproduced below (on the
`next page).
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`The ’745 Patent, Figures 7A and 7B.
`Figure 7A is a schematic side view of pulse oximetry sensor 700 and tissue
`measurement site 102, and Figure 7B is a schematic top view of sensor 700
`with some components removed. See id. at 5:28–33, 10:40–42, 11:54–56.
`Sensor 700 is useful in connection with a tissue site having a “relatively flat
`surface, such as, for example a wrist, because the emitter 702 and
`detector 710 are [located on] the same side of the tissue measurement
`site 102.” Id. at 10:43–49. Sensor 700 includes light diffuser 704 and light
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`concentrator 708, and the components 702, 704, 708, and 710 function
`substantially the same as the corresponding components 302, 304, 308,
`and 310 of sensor 300 as described above. See id. at 10:49–11:9, 11:21–43.
`One difference, however, is that diffuser 704 spreads the light “over a wide,
`donut-shaped area” (seen best in Figure 7B) to enter tissue site 102. Id. at
`10:65–11:6.
`Sensor 700 additionally includes light blocker 706 and cover 707,
`which prevent light emitted by light emitter 702 from passing directly into
`light detector 710 without first traversing light path 720 within tissue
`site 102. See id. at 11:10–20, 11:44–67.
`
`The Challenged Claims of the ’745 Patent
`C.
`The Petition challenges claims 1, 9, 15, 18, 20, and 27 of the
`’745 patent. See Pet. 1–2. We reproduce illustrative claims 1 and 9 here,
`with Apple’s labeling scheme:
`[1.0] A physiological monitoring device comprising:
`1.
`[1.1] a plurality of light-emitting diodes configured to emit
`light in a first shape;
`[1.2] 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;
`[1.3] 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
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`further configured to output at least one signal responsive
`to the detected light;
`[1.4] 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, [1.5] wherein an opening
`defined in the dark-colored coating is configured to allow
`at least a portion of light reflected from the tissue to pass
`through the surface;
`[1.6] 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
`[1.7] 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.
`[9.0] The physiological monitoring device of claim 1,
`wherein the physiological parameter comprises oxygen
`saturation.
`Ex. 1001, 15:32–61, 16:21–23.
`
`9.
`
`Asserted Prior Art
`D.
`Apple relies principally on the following four references. See Pet. 2.
`
`Exhibit No.
`Reference
`Name
`1004
`US 8,670,819 B2
`Iwamiya
`1005
`US 9,392,946 B1
`Sarantos
`Venkatraman US 2014/0275854 A1 1006
`Shie
`US 6,483,976 B2
`1007
`Apple asserts each reference qualifies as prior art to the ’745 patent by virtue
`of having a publication date (Iwamiya, Venkatraman, and Shie) or a filing
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`date (Sarantos) preceding the ’745 patent’s earliest possible effective filing
`date of July 2, 2015. See Pet. 2. Masimo does not dispute this assertion, and
`we find it is supported by the evidence. See Ex. 1001, codes (60) and (63);
`Ex. 1004, code (45) (Iwamiya issued Mar. 11, 2014); Ex. 1005, code (22)
`(Sarantos filed May 28, 2015); Ex. 1006, code (43) (Venkatraman published
`Sept. 18, 2014); Ex. 1007, code (45) (Shie issued Nov. 19, 2022).
`
`Asserted Grounds
`E.
`Apple asserts the following fou r grounds of unpatentability for the
`challenged claims. See Pet. 2.
`Ground Claims
`35 U.S.C. §4 References
`Challenged
`103
`Iwamiya, Sarantos
`1A
`1, 9
`1B
`15, 18, 20, 27 103
`Iwamiya, Sarantos, Venkatraman
`2A
`1, 9, 15, 18
`103
`Sarantos, Shie
`2B
`15, 18, 20, 27 103
`Sarantos, Shie, Venkatraman
`
`Testimonial Evidence
`F.
`Apple relies on the testimony of Brian Anthony, Ph.D. (Exs. 1003,
`1042, 1082, 2071, and 2101) as a proffered expert witness. Masimo relies
`on the testimony of R. James Duckworth, Ph.D. (Exs. 1059, 1081, 2002,
`2070, and 2100) as a proffered expert witness.
`
`4 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective in March 2013. The ’745 patent has
`an earliest possible effective filing date of July 2, 2015 (see Ex. 1001,
`codes (60) and (63)), so we apply the post-AIA version of § 103.
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`The record also contains testimony from several witnesses provided
`during the ITC Investigation, as summarized below in Section
`III.D.4(d)(ii)(1).
`
`III. ANALYSIS OF PETITIONER’S GROUNDS
`A.
`Statement of Law
`Apple bears the burden of proving unpatentability of the challenged
`claims, and this burden of persuasion never shifts to Masimo. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015). Apple must prove unpatentability by a preponderance of the
`evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`A patent claim is unpatentable under 35 U.S.C. § 103 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 before the effective
`filing date of the claimed invention to a person having ordinary skill in the
`art to which the claimed invention pertains. See KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on
`the basis of underlying factual determinations including: (1) the scope and
`content of the prior art; (2) any differences between the claimed subject
`matter and the prior art; (3) the level of ordinary skill in the art; and
`(4) objective indicia of nonobviousness, if made available in the record as
`Masimo has done in this case. See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). “While the sequence of these questions might be reordered in
`any particular case,” KSR, 550 U.S. at 407, the Federal Circuit has explained
`that an obviousness determination can be made only after considering all the
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`Graham factors. See, e.g., Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342, 1360 (Fed. Cir. 2012).
`
`Level of Ordinary Skill in the Art
`B.
`The level of ordinary skill in the art is “a prism or lens” through which
`we view the prior art and the claimed invention. Okajima v. Bourdeau,
`261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (citing Al-Site Corp. v. VSI Int’l,
`Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999)). “This reference point
`prevents . . . factfinders from using their own insight or, worse yet,
`hindsight, to gauge obviousness.” Id. at 1355. “The person of ordinary skill
`in the art is a hypothetical person who is presumed to know the relevant art”
`at the time of the in vention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995). In finding the level of ordinary skill in the art, we may consider
`various factors, including: “(1) the educational level of the in ventor; (2) type
`of problems encountered in the art; (3) prior art solutions to those problems;
`(4) rapidity with which innovations are made; (5) sophistication of the
`technology; and (6) educational level of active workers in the field.” Best
`Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (citations
`omitted). “The patent’s purpose can also be informative.” Id. (citation
`omitted).
`Apple argues a person having ordinary skill in the art pertaining to the
`’745 patent is “a person with a working knowledge of physiological
`monitoring technologies” as well as “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
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`years of related work experience with capture and processing of data or
`information, including but not limited to physiological monitoring
`technologies.” Pet. 5; Ex. 1003 ¶ 25. “Alternatively,” according to Apple,
`“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.” Pet. 5–6; Ex. 1003 ¶ 25.
`Masimo applies Apple’s ordinary skill formulation. See PO Resp. 10;
`Ex. 2002 ¶¶ 29–32; Ex. 2070 ¶ 5. According to Masimo, this formulation
`“is relatively low” which “confirms patentability” of the challenged claims.
`PO Resp. 10.
`Based on the record presented, we find Apple’s undisputed
`formulation of ordinary skill in the art reflects the appropriate level of skill,
`as demonstrated by the ’745 patent and the prior art of record. Therefore,
`we adopt and apply Apple’s formulation here.
`
`C. Claim Construction
`We interpret the ’745 patent claims “using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). This “includ[es]
`construing the claim in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent.” Id.
`Masimo construes the phrase “change the first shape into a second
`shape,” recited in independent claims 1 and 20. See PO Resp. 11–16. Apple
`also discusses the meaning of that ph rase. See Pet. 4–5. However, the
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`significance of Masimo’s construction lies principally in Apple’s
`Grounds 2A and 2B, particularly in whether the combination of Sarantos and
`Shie includes a material that changes a first shape of light into a second
`shape of light. See, e.g., PO Resp. 4, 13–16, 54–56; Pet. Reply 24–26;
`PO Sur-reply 12–16. Masimo does not rely on its proffered claim
`construction to oppose Apple’s contention, in Grounds 1A and 1B, that
`Iwamiya includes a material that changes a first shape of light into a second
`shape of light. See, e.g., PO Resp. 17–53 (Masimo’s arguments opposing
`Grounds 1A and 1B). Indeed, as discussed below in Section III.D.3(a), we
`find Iwamiya includes such a material, even applying Masimo’s claim
`construction. For these reasons, we need not and we do not consider the
`propriety of Masimo’s construction of “change the first shape into a second
`shape” in this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368,
`1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those
`terms . . . t hat are in controversy, and only to the extent necessary to resolve
`the controversy. ’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999)).
`We address the meaning of “determine” (claim 1) “oxygen saturation”
`(claim 9) below in Section III.D.4(a).
`Further, the parties dispute the proper claim construction of a
`photodiode “array having a spatial configuration corresponding to a shape of
`the portion of the tissue measurement site encircled by the light block,”
`recited in independent claim 15. This dispute is discussed and resolved
`below in Section III.E.2(a).
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`Apart from the foregoing issues, and based on our review of the entire
`record, we determine no explicit constructions are needed to resolve the
`issues presented in this Decision. See Realtime Data, 912 F.3d at 1375.
`
`D. Ground 1A — Obviousness over Iwamiya and Sarantos
`In Ground 1A, Apple argues claims 1 and 9 of the ’745 patent are
`unpatentable as having been obvious over Iwamiya and Sarantos. See Pet. 2,
`6–20; Pet. Reply 3–23. Masimo opposes. See PO Resp. 1–4, 17–53;
`PO Sur-reply 2–8, 12, 19–33.
`We conclude a preponderance of the evidence su pports Apple’s
`assertions as to both challenged claims. We begin our analysis with brief
`summaries of Iwamiya and Sarantos, then we address the part ies’
`contentions as to obviou sness.
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`Iwamiya
`1.
`Iwamiya discloses a light-based biological information detecting
`apparatus. See Ex. 1004, code (57), 1:17–22. In one embodiment, the
`measured biological information is a patient’s “pulse wave.” Id. at 1:41–42,
`4:13–16, 9:3–5.
`Figure 4 of Iwamiya is reproduced below (on the next page).
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`Iwamiya, Figure 4.
`Figure 4 is a cross-sectional view of a wristwatch case including back
`cover 3, and enclosing a biological information detecting apparatus, pressed
`against a patient’s skin H. See id. at Figs. 1–4, 4:5–16, 5:54–6:21, 9:61–63.
`The detecting apparatus comprises several components mounted on
`circuit board 10. See id. at 6:22–31. Two light emitting units 6, located at
`the 3 o’clock and 9 o’clock positions of the watch face, emit observation
`light to enter annular light guide unit 7. See id. at 6:7–14, 6:34–39, 6:49–52.
`Unit 7 comprises light guiding ring portion 11 and diffusion ring portion 12
`to guide the light to the surface of skin H, as shown by arrows in Figure 4.
`See id. at 6:10–14, 6:41–7:24, 10:18–33. Diffusion ring portion 12 “is
`formed in almost a ring shape, using a clouded or milky resin with a light
`diffusing property” in order to “uniformly diffuse and irradiate the
`observation light over a wide area of a ring shape with respect to the
`skin H.” Id. at Fig. 2, 7:4–24, 10:25–33. Unit 7 includes reflection layers 13
`and 15 on its external surfaces, to prevent observation light from leaking out
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`of unit 7 except where the bottom surface of diffusion ring portion 12
`contacts skin H. See id. at Fig. 3, 6:62–7:3, 7:41–49, 8:14–19.
`The light enters skin H, interacts with the patient’s blood flowing
`through the skin in annular irradiation area E, and back-scatters to exit the
`skin from the same surface it entered the skin, all as shown by arrows in
`Figure 4. See id. at 1:28–34, 2:26–31, 6:14–21.
`The back-scattered light enters scattered light taking unit 8, which is a
`transparent lens to focus the light on light receiving unit 9. See id. at
`6:14–21, 7:50–8:13, 10:62–11:3, 12:55–67. The focused light encounters
`optical filter 17 mounted on the lower side of light shielding frame 18. See
`id. at 8:38–42. Light that passes through filter 17 reaches light receiving
`unit 9, which outputs a signal responsive to the rece