IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Ammar Al-Ali
`In re Patent of:
`10,687,745 Attorney Docket No.: 50095-0045IP1
`U.S. Patent No.:
`June 23, 2020
`
`Issue Date:
`Appl. Serial No.: 16/835,772
`
`Filing Date:
`March 31, 2020
`
`Title:
`PHYSIOLOGICAL MONITORING DEVICES, SYSTEMS,
`AND METHODS
`
`
`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. 10,687,745 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`TABLE OF CONTENTS
`
`
`
`I. 
`
`II. 
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 1 
`A.  Standing .................................................................................................... 1 
`B.  Challenge and Relief Requested ............................................................... 1 
`SUMMARY OF THE ’745 PATENT ............................................................. 3 
`A.  Brief Description ....................................................................................... 3 
`B.  Summary of the Prosecution History ........................................................ 3 
`C.  Level of Ordinary Skill in the Art ............................................................. 5 
`III.  CLAIM CONSTRUCTION UNDER 37 C.F.R. §§ 42.104(b)(3) .................. 6 
`IV.  THE CHALLENGED CLAIMS ARE UNPATENTABLE ............................ 6 
`A.  Ground 1A: Claims 1 and 9 are obvious over Iwamiya in view of
`Sarantos ..................................................................................................... 6 
`1.  Overview of Iwamiya ...................................................................... 6 
`2.  Overview of Sarantos ...................................................................... 7 
`3.  Analysis ........................................................................................... 8 
`B.  Ground 1B: Claims 15, 18, 20, and 27 are obvious over Iwamiya and
`Sarantos in view of Venkatraman ........................................................... 20 
`1.  Overview of Venkatraman ............................................................ 20 
`2.  Analysis ......................................................................................... 21 
`C.  Ground 2A: Claims 1, 9, 15, and 18 are obvious over Sarantos in view
`of Shie ..................................................................................................... 30 
`1.  Overview of Shie ........................................................................... 30 
`2.  Analysis ......................................................................................... 30 
`D.  Ground 2B: Claims 15, 18, 20, 27 are obvious over Sarantos and Shie in
`view of Venkatraman .............................................................................. 39 
`1.  Analysis ......................................................................................... 39 
`PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION .......... 43 
`A.  314(a) – Fintiv......................................................................................... 43 
`B.  325(d) – Advanced Bionics .................................................................... 45 
`VI.  MANDATORY NOTICES UNDER 37 C.F.R. §42.8 .................................. 47 
`A.  Real Parties-In-Interest Under 37 C.F.R. §42.8(b)(1) ............................ 47 
`B.  Related Matters Under 37 C.F.R. §42.8(b)(2) ........................................ 47 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. §42.8(b)(3) .................... 49 
`D.  Service Information ................................................................................ 49 
`VII.  PAYMENT OF FEES – 37 C.F.R. §42.103 .................................................. 49 
`
`V. 
`
`i
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`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`VIII.  CONCLUSION .............................................................................................. 49 
`
`
`
`
`
`ii
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`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Pat. No. 10,687,745 to Al-Ali (“the ’745 patent”)
`
`APPLE-1002
`
`Prosecution History of the ’745 patent (Serial No. 16/835,772)
`
`APPLE-1003
`
`Declaration of Dr. Brian Anthony
`
`APPLE-1004
`
`U.S. Pat. No. 8,670,819 (“Iwamiya”)
`
`APPLE-1005
`
`U.S. Pat. No. 9,392,946 (“Sarantos”)
`
`APPLE-1006
`
`U.S. Pub. No. 2014/0275854 (“Venkataraman”)
`
`APPLE-1007
`
`U.S. Pat. No. 6,483,976 (“Shie”)
`
`APPLE-1008
`
`U.S. Pat. No. 6,801,799 (“Mendelson-799”)
`
`APPLE-1009
`
`U.S. Pub. No. 2015/0018647 (“Mandel”)
`
`APPLE-1010
`
`U.S. Pub. No. 2009/0275810 (“Ayers”)
`
`APPLE-1011
`
`PCT. Pub. No. 2011/051888 (“Ackermans”)
`
`APPLE-1012
`
`U.S. Pat. No. 6,158,245 (“Savant”)
`
`APPLE-1013
`
`Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`
`APPLE-1014
`
`U.S. Pub. No. 2009/0054112 (“Cybart”)
`
`APPLE-1015
`
`U.S. Pat. No. 5,893,364 (“Haar”)
`
`APPLE-1016
`
`U.S. Pat. No. 5,952,084 (“Anderson”)
`
`iii
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`
`
`
`APPLE-1017
`
`U.S. Pat. No. 10,470,695 (the “’695 patent”)
`
`APPLE-1018
`
`Apple v. Masimo, Case No. IPR2020-01722, Paper 29 (Final
`Written Decision) (PTAB May 5, 2022) (the “’695 FWD”)
`
`APPLE-1019 – APPLE-1030 RESERVED
`
`APPLE-1031
`
`Masimo Corporation, et al. v. Apple Inc., Redacted Complaint,
`ITC Inv. No. 337-TA-1276
`
`
`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. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) of claims 1, 9, 15, 18, 20, and 27 (“the Challenged Claims”) of U.S. Patent
`
`10,687,745 (“the ’745 patent”). Apple submits that this Petition demonstrates a
`
`reasonable likelihood of prevailing with respect to at least one Challenged Claim,
`
`and respectfully requests institution of IPR and cancellation of all Challenged
`
`Claims as unpatentable.
`
`I.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A.
`Standing
`Apple certifies that the ’745 patent is available for IPR. Apple is not barred
`
`or estopped from requesting this review challenging the Challenged Claims on the
`
`below-identified grounds.
`
`B. Challenge and Relief Requested
`Apple requests IPR of the Challenged Claims on the grounds set forth in the
`
`table shown below. Additional explanation and support for each ground is set
`
`forth in the Declaration of Brian Anthony, Ph.D. (APPLE-1003), referenced
`
`throughout this Petition. APPLE-1003, [16]-[108].
`
`
`
`1
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`
`Claims
`1, 9
`15, 18, 20, 27
`1, 9, 15, 18
`15, 18, 20, 27
`
`Basis for Rejection (35 U.S.C. § 103)
`Iwamiya in view of Sarantos
`Iwamiya and Sarantos in view of Venkatraman
`Sarantos in view of Shie
`Sarantos and Shie in view of Venkatraman
`
`
`
`Ground
`1A
`1B
`2A
`2B
`
`
`
`The ’745 patent claims priority to an application filed July 2, 2015, which
`
`Petitioner treats as the earliest effective filing date (“Critical Date”) of the
`
`Challenged Claims for purposes of this IPR. Each of the prior art references
`
`applied in the Grounds listed above qualifies as prior art to the ’745 patent on at
`
`least the bases shown below:
`
`Reference
`
`Filed
`
`Published
`
`Iwamiya
`Sarantos
`Venkatraman
`Shie
`
`06/29/2010
`05/28/2015
`06/03/2014
`05/09/2001
`
`01/06/2011
`07/19/2016
`09/18/2014
`08/30/2001
`
`35 U.S.C. §102
`Prior Art Basis
`§102(a)(1), §102(a)(2)
`§102(a)(2)
`§102(a)(1), §102(a)(2)
`§102(a)(1), §102(a)(2)
`
`
`
`None of these references were previously cited by the Examiner or used in a
`
`rejection. Iwamiya is cited on the face of the ’745 patent, but was not relied on by
`
`the Examiner. Apple respectfully submits that discretionary institution denial
`
`under 35 U.S.C. § 325(d) would be unwarranted under these circumstances.
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-
`
`2
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`01469, Paper 6 (PTAB Feb. 13, 2020) (precedential).
`
`II.
`
`SUMMARY OF THE ’745 PATENT
`A. Brief Description
`The ’745 patent, entitled “Advanced Pulse Oximetry Sensor,” describes a
`
`“non-invasive, optical-based physiological monitoring system….” APPLE-1001,
`
`Face, Abstract.
`
`B.
`Summary of the Prosecution History
`Masimo filed the application that issued as the ’745 Patent (16/835,772)
`
`(“’772 Application”) with a request for accelerated examination on March 30,
`
`2020, approximately three months after Masimo initiated its serial litigation
`
`campaign against Apple through its January 9, 2020 complaint in the U.S. District
`
`Court for the Central District of California (CDCA) (Case No. 8:20-cv-00048), and
`
`approximately seven months after Apple filed IPRs challenging claims of related
`
`U.S. Patent No. 10,470,695 (“’695 Patent”).1
`
`On May 4, 2020, only five weeks after Masimo filed the ’772 Application,
`
`and without having issued a single rejection, the examiner issued a notice of
`
`allowance. APPLE-1002, 147-153. Notably absent from that notice was any
`
`
`1 See, generally, IPR2020-01722, -01723. The ’772 Application claimed priority
`
`to the application from which the ’695 Patent issued (16/226,249), and
`
`incorporated that application by reference. APPLE-1001, 1:4-20
`
`3
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`discussion whatsoever of art applied in Apple’s IPRs, including art on which the
`
`present Petition’s grounds are premised. Id.
`
`Also notable is the fact that, in a final written decision issued May 5, 2022,
`
`the Board went on to invalidate every challenged claim of the ’695 Patent based on
`
`art applied in Apple’s IPRs. Apple Inc. v. Masimo Corp., IPR2020-01722 Pap. 29,
`
`2 (PTAB May 5, 2022)(finding “claims 6, 14, and 21 of the ’695
`
`patent…unpatentable” based on grounds including Ackermans, Sarantos,
`
`Mendelson-1991, and Chin).
`
`There is no indication in the ’745 Patent’s file history that the examiner
`
`substantively considered any of the prior art applied in this Petition prior to
`
`allowing the ’772 Application. Instead, the notice of allowance limits its
`
`discussion to U.S. Patent Pub. No. 2014/0361147 (“Fei”) and U.S. Patent No.
`
`5,830,137 (“Scharf”). APPLE-1002, 147-153.
`
`The references and grounds of rejection applied in this Petition are
`
`materially different from those addressed by the examiner during
`
`prosecution. Further, this Petition compellingly demonstrates the obviousness of
`
`the Challenged Claims, including the claim features relied upon by the examiner in
`
`issuing the notice of allowance.
`
`For example, all Challenged Claims recite some form of the following
`
`limitation: a “material configured to change the first shape into a second shape by
`
`4
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`which the light emitted from one or more of the plurality of light-emitting diodes is
`
`projected towards the tissue.” See, e.g., APPLE-1001, claim 1. The ’745
`
`specification makes clear that this limitation describes a diffuser. See, e.g., id.,
`
`3:5-15. In Apple’s prior IPR of Masimo’s ’695 patent (of which the ’745 patent is
`
`a continuation), the Board invalidated as obvious a claim reciting the addition of “a
`
`diffuser which receives, spreads, and emits the spread light, wherein the emitted
`
`spread light is directed at the tissue measurement site” to a “physiological
`
`monitoring device” nearly identical to that recited in the Challenged Claims. See,
`
`e.g., APPLE-1017, claim 6; APPLE-1018, 21-30 (final written decision finding
`
`above claim of the ’695 patent obvious over multiple combinations of art,
`
`including one based on the Sarantos reference).2
`
`C. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art relating to, and at the time of, the
`
`invention of the ’745 Patent (“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
`
`
`2 All emphasis added unless otherwise indicated.
`
`5
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`technologies. APPLE-1003, [25]-[26]. 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.
`
`III. CLAIM CONSTRUCTION UNDER 37 C.F.R. §§ 42.104(b)(3)
`All claim terms should be construed according to the Phillips standard.
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37 C.F.R. §42.100. Apple
`
`submits that no claim terms need be construed to resolve issues of controversy in
`
`the present Petition. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`
`(Fed. Cir. 2011).
`
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Ground 1A: Claims 1 and 9 are obvious over Iwamiya in
`view of Sarantos
`1. Overview of Iwamiya
`Iwamiya discloses an “optical biological information detecting apparatus”
`
`which is a physiological monitoring device. APPLE-1004, Abstract. For example,
`
`Iwamiya describes that the “optical biological information detecting apparatus” is
`
`provided in “a central portion of the back cover” of “a wristwatch” (i.e., facing the
`
`wearer’s wrist). APPLE-1004, 5:54-66, FIG. 1. As shown in the following
`
`annotated FIG. 4 from Iwamiya, the device includes LEDs 6 (shown in green) that
`
`emit light (orange) that is refected by the tissue of the wearer’s wrist (light pink)
`
`and detected by photodiodes 9 (yellow). APPLE-1003, [29]:
`
`6
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`
`
`
`APPLE-1004, Detail of FIG. 4 (annotated)
`
`2. 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.” APPLE-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
`
`7
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`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;
`
`APPLE-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. APPLE-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; APPLE-1003, [30].
`
`3.
`
`Analysis
`(a) Claim 1
`[1.0] A physiological monitoring device comprising:
`In the combination, Iwamiya discloses an “optical biological information
`
`detecting apparatus” which is a physiological monitoring device. APPLE-1004,
`
`Abstract; APPLE-1003, [31]. For example, Iwamiya describes that the “optical
`
`biological information detecting apparatus” is provided in “a central portion of the
`
`back cover” of “a wristwatch” (i.e., facing the wearer’s wrist). APPLE-1004, 5:54-
`
`66, FIG. 1. As shown in the following annotated FIG. 4 from Iwamiya, the device
`
`includes LEDs 6 (shown in green) that emit light (orange) that is refected by the
`
`8
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`tissue of the wearer’s wrist (light pink) and detected by photodiodes 9 (yellow).
`
`APPLE-1003, [31]:
`
`
`
`APPLE-1004, Detail of FIG. 4 (annotated)
`
` Accordingly, the combination of Iwamiya and Sarantos renders obvious a
`
`“physiological monitoring device.”
`
`[1.1] a plurality of light-emitting diodes configured to emit light in a first shape;
`In the combination, Iwamiya discloses “light emitting units 6” that are each
`
`“composed of a light emitting diode (LED).” APPLE-1004, 6:7-11, 6:32-39,
`
`15:30-33, FIGS. 3-4, FIG. 12. The light emitting units 6 are shown in green in the
`
`following annotated FIG. 3 from Iwamiya:
`
`9
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`
`
`
`APPLE-1004, Detail of FIG. 3 (annotated)
`
`The light emitting units 6 “emit observation light of a specific wavelength
`
`band to optically observe a skin tissue of a human body.” Id., 6:7-11. The emitted
`
`observation light is in a first shape characterized by the specific location of each
`
`light emitting unit, e.g., the “3 o'clock” and “9 o'clock” positions as shown in
`
`FIGS. 3 and 4 of Iwamiya. See id., 6:7-11, 6:32-39, 15:30-33, FIGS. 3-4, FIG. 12;
`
`APPLE-1003, [34].
`
`[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;
`In the combination, Iwamiya describes that the physiological sensor includes
`
`“an annular light guide unit 7 that guides the observation light emitted from the
`
`10
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`light emitting units 6 and annularly diffuses and irradiates the observation light
`
`with respect to a skin H.” APPLE-1004, 6:7-14, Fig. 4. The annular light guide
`
`unit 7 includes “a light guiding ring portion 11” formed “using a material such as
`
`transparent glass or a transparent resin with a high light transmitting property.”
`
`Id., 6:40-45. The annular light guide unit 7 also includes “a diffusion/irradiation
`
`ring portion 12” that is “formed in almost a ring shape, using a clouded or milky
`
`resin with a light diffusing property.” Id., 6:40-42, 7:4-6. The following annotated
`
`FIGS. 2 and 4 from Iwamiya show top and cross-section views of physical
`
`monitoring device the annular light guide unit 7 (annotated in teal). APPLE-1003,
`
`[35]:
`
`APPLE-1004, Detail of FIG. 2 (annotated)
`
`
`
`11
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`
`APPLE-1004, Detail of FIG. 4 (annotated)
`
`
`
`Annular light guide unit 7 changes the shape of the light emitted from
`
`individual light emitting units 6 to an annular shape (a second shape) and causes
`
`the light to irradiate an annular portion of tissue. Id., 11:55-12:36. As shown in
`
`the following annotated FIG. 4 from Iwamiya, the light from the light emitting
`
`units (the orange arrows) irradiates “an irradiation area E” in the user tissue
`
`“having a ring shape” (shown in yellow). Id., 7:61-65; APPLE-1003, [36]:
`
`
`
`12
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`APPLE-1004, Detail of FIG. 4 (annotated)
`
`As previously discussed (see [1.0], supra), Iwamiya’s physiological sensor
`
`in Figure 4 is a wristwatch. See, e.g., APPLE-1004, 6:22-31. Therefore, annular
`
`light guide unit 7 is positioned between light emitting units 6 and tissue on the
`
`wrist, as shown in annotated FIG. 4 below:
`
`APPLE-1004, Detail of FIG. 4 (annotated)
`
`
`
`[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 further configured to output at least one signal responsive to the
`detected light;
`In the combination, Iwamiya describes that the physical monitoring device
`
`includes a plurality of photodiodes. APPLE-1004, 14:36-41 (disclosing “plural
`
`light receiving units 9”), 8:20-23 (stating that each unit is “composed of a silicon
`
`photo diode”). The photodiodes are configured to detect light after the light passes
`
`through tissue and output a signal responsive to the detected light, which is used to
`
`13
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`determine a physiological parameter of a user. See APPLE-1004, 9:28-32 (“the
`
`observation light emitted from the light emitting unit 6 is irradiated onto the skin H
`
`and the scattered light thereof is received by the light receiving unit 9” which
`
`“outputs a current signal according to the amount of received light”), 8:61-9:7
`
`(describing “convert[ing] a current signal output from the light receiving unit 9”
`
`into a “voltage signal” and then displaying resulting biological information);
`
`APPLE-1003, [38].
`
`The following annotated FIG. 4 from Iwamiya shows that the light (shown
`
`as orange arrows) emitted by the light emission units 6 (in green) is reflected by
`
`the tissue H (in light pink) and received by the photodiodes 9 (in yellow). APPLE-
`
`1003, [39]:
`
`
`
`APPLE-1004, Detail of FIG. 4 (annotated)
`
`[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,
`In the combination, Iwamiya describes a “light shielding frame 18”
`
`14
`
`

`

`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`surrounding the photodiodes 9. APPLE-1004, 8:38-47, FIG. 4; APPLE-1003, [40].
`
`As shown in FIG. 4 from Iwamiya, the light shielding frame 18 (shown in pink) is
`
`positioned between the photodiodes 9 (in yellow) and the tissue (in light pink):
`
`APPLE-1004, Detail of FIG. 4 (annotated)
`
`
`
`Also in the combination, Sarantos discloses a wrist-worn reflectance-based
`
`physiological sensor that has a dark-colored coating 2276 to block light. APPLE-
`
`1005, 5:55-58, Fig. 22; APPLE-1003, [41]. Saranto's also discloses that light
`
`source 2208 emits light through a window into a user’s skin, wherein the light is
`
`reflected back to the sensor and detected by photodetector elements 2212. APPLE-
`
`1005, 17:16-25. The light travels through openings 2226 in the dark-colored
`
`coating 2276 applied to window 2278. Id.; APPLE-1003, [41]. Specifically,
`
`Sarantos discloses that “in-mold label 2276 may be black or otherwise rendered
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`IPR of U.S. Patent No. 10,687,745
`opaque to light to prevent light from entering or exiting the PPG sensor through the
`
`window 2278 except through window regions 2226.” APPLE-1005, 17:1-16.
`
`Sarantos explains that various masking techniques may be used to block stray light
`
`from reaching the photodetector elements 2212, including “a painted or silk-
`
`screened mask” applied to the window 2278. Id.
`
`A POSITA 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, 8:38-47, FIG. 4; APPLE-1005, 5:55-
`
`58, 17:1-25, FIG. 22. A POSITA would have understood that a dark-colored
`
`coating, such as that described by Sarantos, would have served this purpose by not
`
`only blocking light but also by limiting reflections, which could lead to stray light
`
`being incident on the photodiodes 9. It also would have been obvious to a
`
`POSITA to use a dark-colored coating for light shielding frame 18 because dark-
`
`colored coatings and materials were well-known to effectively block light. APPLE-
`
`1003, [42]; see, e.g., APPLE-1005, 17:1-10. A POSITA would have known that a
`
`light shielding frame 18 or holder portion 43 as disclosed by Iwamiya can be of
`
`various proportions, and a thin surface is a coating. See id. Because using dark-
`
`colored coatings in light blocks was so well-known, and Iwamiya and Sarantos are
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`both wrist-worn reflectance-based physiological sensors, a POSITA would have
`
`reasonably understood the combination of Iwamiya with Sarantos to be successful
`
`with no unexpected results. Id.
`
`[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;
`As previously discussed (see [1.4]), in the combination, the “light shielding
`
`frame 18” of Iwamiya employs a dark-colored coating, such as that described by
`
`Sarantos. Iwamiya further describes an “an optical filter 17” that “is mounted on
`
`the lower side of a light shielding frame 18” between the photodiodes 9 and the
`
`tissue H. APPLE-1004, 8:39-42; APPLE-1003, [43]. This configuration is shown
`
`in the following detail of FIG. 4 from Iwamiya:
`
`APPLE-1004, Detail of FIG. 4 (annotated)
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`17
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`IPR of U.S. Patent No. 10,687,745
`Iwamiya describes that the “optical filter 17 is configured to transmit light of
`
`a specific wavelength band of 900 nm or more,” and thus is configured to allow at
`
`least a portion of light reflected from the tissue to pass through to the photodiodes
`
`9. APPLE-1004, 8:42-44; APPLE-1003, [44].
`
`[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
`In the combination, FIG. 3 of Iwamiya shows reflection layers 13 and 15
`
`(annotated in dark blue) that prevent light within annular light guide 7 from leaking
`
`outside of the annular light guide. APPLE-1004, 6:62-7:3, 7:41-49, FIG. 3;
`
`APPLE-1003, [45]:
`
`APPLE-1004, Detail of FIG. 3 (annotated)
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`
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`
`
`
`By preventing the light from leaking outside of the light guide 7, the
`
`reflection layers 13 and 15 act as light blocks that prevent light emitted from light
`
`emitting unit 6 from reaching the photodiodes 9 without first reaching the tissue.
`
`APPLE-1004, 6:62-7:3, 7:41-49, FIG. 3; APPLE-1003, [46].
`
` [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.
`In the combination, Iwamiya discloses a central processing unit (CPU) 20
`
`that controls the disclosed biological information detecting apparatus. APPLE-
`
`1004, 8:61- 9:7. The CPU receives a current signal from the photodiodes of
`
`Iwamiya, processes it into a voltage signal, and then determines and displays a
`
`physiological parameter of the user, such as a heart rate, based on the signal.
`
`APPLE-1004, 8:61-9:7, 9:36-43; APPLE-1003, [47].
`
`(b) Claim 9
`[9.0] The physiological monitoring device of claim 1, wherein the physiological
`parameter comprises oxygen saturation.
`In the combination, Iwamiya discloses a sensor that detects “biological
`
`information,” which includes oxygen saturation, and provides the example of a
`
`“pulse wave” or heart rate, wherein oxygen saturation comprises heart rate sensing
`
`at different wavelengths. APPLE-1004, 8:61-9:7; APPLE-1003, [48].
`
`Also in the combination, Sarantos discloses measuring blood oxygenation
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`levels. APPLE-1005, 13:40-14:22; APPLE-1003, [49]. To the extent not disclosed
`
`by Iwamiya, a POSITA would have been motivated to determine oxygen saturation
`
`using Iwamiya’s physiological sensor, based on the teachings of Sarantos, in order
`
`to expand the range of physiological parameters measured by Iwamiya’s sensor,
`
`thereby improving the functionality and utility of the sensor. APPLE-1003, [49];
`
`see, e.g., APPLE-1005, 13:40-14:22. A POSITA would have reasonably expected
`
`success in adapting Iwamiya’s sensor to this purpose because wrist-worn pulse
`
`oximetry sensors, such as that described in Sarantos, were well-known in the art.
`
`APPLE-1003, [49]; see, e.g., APPLE-1005, 13:40-14:22, FIG. 2.
`
`B. Ground 1B: Claims 15, 18, 20, and 27 are obvious over
`Iwamiya and Sarantos in view of Venkatraman
`1. Overview of Venkatraman
`Venkatraman teaches a portable biometric monitoring device with a
`
`touchscreen display that can be worn on the wrist like a watch. APPLE-1006,
`
`12:16-21, 15:19-26, 52:23-53:18. In particular, Venkatraman describes a
`
`“biometric monitoring device[] ... adapted to be worn or carried on the body of a
`
`user ... including [an] optical heart rate monitor” designed to “be a wrist-worn or
`
`arm-mounted accessory such as a watch or bracelet.” APPLE-1006, 37:29-33.
`
`Venkatraman’s monitoring device is “small in size so as to be unobtrusive for the
`
`wearer” and “designed to be able to be worn without discomfort for long periods of
`
`time and to not interfere with normal daily activity.” APPLE-1006, 14:28-36.
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`20
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`Attorney Docket No. 50095-0045IP1
`IPR of U.S. Patent No. 10,687,745
`Venkatraman device also includes a digital display with “uses capacitive touch
`
`detection” to display data acquired or stored locally on the wristwatch. APPLE-
`
`1006, 53:19-55:51; APPLE-1003, [50].
`
`Venkatraman further discloses transmitting information wirelessly from its
`
`monitoring device to a secondary device such as a smartphone. APPLE-1006,
`
`31:1-16, 57:20-53. Venkatraman also discloses that such a configuration allows the
`
`secondary device to act as a user interface for the wrist-worn wearable
`
`physiological device. APPLE-1006, 57:42-44. Venkatraman further discloses that
`
`the secondary device (i.e., smartphone) can show various metrics regarding the
`
`user’s health, and receive inputs through a touch-screen display. APPLE-1006,
`
`37:41-63, 55:29-51, 57:20-58:9; APPLE-1003, [51].
`
`2.
`
`Analysis
`(a) Claim 15
`[15.0] A physiological monitoring device comprising:
`See [1.0].
`
`[15.1] a plurality of light-emitting diodes configured to emit light proximate a
`wrist of a user;
`As previously discussed (see [1.0]-[1.1]), in the combination, Iwamiya’s
`
`physiological sensor shown in Figure 4 is a wristwatch. APPLE-1004, 5:54-67,
`
`6:22-31. Therefore, light emitting units 6 emit light proximate a user’s wrist. Id.;
`
`APPLE-1003, [53].
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`[15.2] a light diffusing material configured to be positioned between the plurality
`of light-emitting diodes and a tissue measurement site on the wrist of the user
`when the physiological monitoring device is in use;
`See [1.2].
`
`[15.3] a light block having a circular shape;
`As discussed above regarding claim element [1.6] with reference to Figures
`
`3 and 4 of Iwamiya, reflection layers 13 and 15 are a light block. APPLE-1004,
`
`6:62-7:3; see [1.6], supra; APPLE-1003, [55]. Figure 2 of Iwamiya shows
`
`reflection layers 13 and 15 each having a circular shape as they are formed on
`
`outer surfaces of light guiding ring portion 11 and diffusion/irradiation ring portion
`
`12, respectively, which together form annular light guide unit 7. APPLE-1004,
`
`6:62-7:3, 7:41-49, FIGS. 2-4, APPLE-1003, [55]:
`
`APPLE-1004, Detail of FIG. 2 (annotated)
`
`
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`Attorney Docket No. 50095-0045IP1
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`[15.4] a plurality of photodiodes configured to detect at least a portion of the
`light emitted from the plurality of light-emitting diodes after t