Trials@uspto.gov
`571.272.7822
`
`
`Paper 21
`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.
`
`
`IPR2022-01299 (Patent 7,761,127 B2)
`
`
`
`
`Before JOSIAH C. COCKS, JAMES A. TARTAL, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper 21
`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.
`
`
`IPR2022-01299 (Patent 7,761,127 B2)
`
`
`
`
`Before JOSIAH C. COCKS, JAMES A. TARTAL, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`INTRODUCTION
`I.
`Petitioner, Apple Inc., filed a Petition for inter partes review of claims
`1–30 of U.S. Patent No. 7,761,127 B2 (Ex. 1001, “the ’127 patent”). Paper 2
`(“Pet.”). Patent Owner, Masimo Corporation, timely filed a Preliminary
`Response to the Petition. Paper 9 (“Prelim. Resp.”).
`For the reasons provided below, we determine Petitioner has satisfied
`the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner
`has demonstrated a reasonable likelihood that at least one claim of the ’127
`patent is unpatentable, we institute an inter partes review of all challenged
`claims on each of the Grounds raised in the Petition. See SAS Inst., Inc. v.
`Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v. Iancu, 891
`F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a
`simple yes-or-no institution choice respecting a petition, embracing all
`challenges included in the petition”); see also Guidance on the Impact of
`SAS on AIA Trial Proceedings (April 26, 2018). 1
`
`A. Real Parties-in-Interest
`Petitioner identifies itself, Apple Inc. as the real party-in-interest. Pet.
`70. Patent Owner identifies itself as the real party-in-interest. Paper 5, 1.
`B. Related Matters
`In addition to the current matter, Petitioner challenges claims 1–30 of
`the ’127 patent in IPR2022-01300.2
`
`
`1 Available at https://www.uspto.gov/patents-application-process/patent-
`trial-and-appeal-board/trials/guidance-impact-sas-aia-trial (“Guidance”).
`2 In light of its concurrent challenges to claims 1–30 of the ’127 patent,
`Petitioner filed a Notice of Ranking Petitions (Paper 3), to which Patent
`Owner responded (Paper 11). We address Petitioner’s Notice of Ranking
`arguments and Patent Owner’s response in copending IPR2022-01300.
`2
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`IPR2022-01299
`Patent 7,761,127 B2
`According to the parties, the ’127 patent is among the patents at issue
`In the Matter of Certain Light-Based Physiological Measurement Devices
`and Components Thereof, Inv. No. 337-TA-1276, pending in the U.S.
`International Trade Commission. Pet. 70; Paper 5, 1.
`The ’127 Patent and Relevant Background
`C.
`The ’127 patent, titled “Multiple Wavelength Sensor Substrate,” is
`directed to sensors comprising optical emitters (e.g., LEDs) and
`corresponding detectors to non-invasively measure physiological parameters
`in a subject’s blood. Ex. 1001, code (54), 2:14–28, 2:49–65. These
`components are commonly used in pulse oximeters, which measure oxygen
`saturation and pulse rate. Id. at 2:14–16.
`In general, the sensor has light emitting diodes (LEDs) that
`transmit optical radiation of red and infrared wavelengths into a
`tissue site and a detector that responds to the intensity of the
`optical radiation after absorption (e.g. by transmission or
`transreflectance) by pulsatile arterial blood flowing within the
`tissue site.
`Id. at 2:16–21. According to the Specification,
`[o]ne aspect of a physiological sensor is emitters configured to
`transmit optical radiation having multiple wavelengths in
`response to corresponding drive currents. A thermal mass is
`disposed proximate the emitters so as to stabilize a bulk
`temperature for the emitters. A temperature sensor is thermally
`coupled to the thermal mass. The temperature sensor provides a
`temperature sensor output responsive to the bulk temperature so
`that the wavelengths are determinable as a function of the drive
`currents and the bulk temperature.
`Id. 2:57–65; Abstract.
`
`3
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`IPR2022-01299
`Patent 7,761,127 B2
`Figure 6 of the ’127 patent is reproduced below.
`
`
`Figure 6 shows an exemplary emitter assembly comprising LEDs 710
`arranged in emitter array 700 on a substrate 1200. Id. at 3:43–44, 6:48–52.
`The LEDs of emitter array 700 “are physically arranged and electrically
`connected in an electrical grid to facilitate drive control, equalization, and
`minimization of optical pathlength differences at particular wavelengths.”
`Id. at 6:54–58. “[S]ubstrate 1200 is configured to provide a bulk temperature
`of the emitter array 700 so as to better determine LED operating
`wavelengths.” Id. at 6:60–63. In some embodiments, “substrate 1200 is also
`configured with a relatively significant thermal mass, which stabilizes and
`normalizes the bulk temperature so that the thermistor measurement of bulk
`temperature is meaningful.” Id. at 10:62–11:4.
`
`4
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`IPR2022-01299
`Patent 7,761,127 B2
`Figure 12 of the ’127 patent is reproduced below.
`
`
`Figure 12 shows a generalized block diagram of an emitter substrate. Id.
`3:52. According to the ’127 patent, Figure 12
`illustrates light emitters 710 configured to transmit optical
`radiation 1201 having multiple wavelengths in response to
`corresponding drive currents 1210. A thermal mass 1220 is
`disposed proximate the emitters 710 so as to stabilize a bulk
`temperature 1202 for the emitters. A temperature sensor 1230 is
`thermally coupled to the thermal mass 1220, wherein the
`temperature sensor 1230 provides a temperature sensor output
`1232 responsive to the bulk temperature 1202 so that the
`wavelengths are determinable as a function of the drive currents
`1210 and the bulk temperature 1202.
`Id. at 10:22–31.
`The Specification describes two embodiments involving the use of
`temperature measurements to determine the operating wavelength of
`emitters. Id. at 10:32–48. One embodiment involves the measurement of
`temperature of each individual emitter. Id. at 10:39–48. The other
`embodiment involves the determination of bulk temperature of the substrate
`
`5
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`IPR2022-01299
`Patent 7,761,127 B2
`to which the emitters are thermally coupled. Id. at 10:32–39. With respect to
`this embodiment, the Specification provides an equation (“EQ.4” or
`“Equation 4”) for determining the operating wavelength of each light emitter
`based on bulk temperature and drive current as determined by the sensor
`controller. Id.
`D. Relevant Prosecution History
`In a first Office Action, the Examiner rejected certain claims in view
`of Cheung (Ex. 1007) and other references. Ex. 1002, 68–75. An excerpt of
`Cheung’s Figure 11, annotated and colorized by Patent Owner, is
`reproduced below.
`
`
`See PO Resp. 23; Ex. 1007, Fig. 11. The above representation of Cheung’s
`Figure 11, shows temperature sensor 50 and LEDs 42/45 mounted on a
`substrate or board. PO Resp. 22–23; Ex. 2051 ¶ 43; Ex. 1002, 70
`(Examiner’s statement that Cheung’s Figure 11 “compris[es] a plurality of
`LED emitters 40,42 and a temperature sensor 50, the emitters mounted on a
`first left side of a substrate and the temperature sensor mounted on a second
`right side of the substrate”).
`
`6
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`IPR2022-01299
`Patent 7,761,127 B2
`According to the Examiner, Cheung disclosed all elements of certain
`rejected claims except for “the method comprising utilizing a thermistor
`thermally coupled to the light emitting sources to measure the bulk
`temperature,” “details of [its] temperature sensor,” or a “sensor comprising a
`thermal mass disposed proximate the emitters, wherein the thermal mass
`stabilizes a bulk temperature of the emitters.” Ex. 1002, 71. The Examiner
`also determined that certain dependent claims encompassed allowable
`subject matter, stating that:
`None of the prior art teaches or suggests, either alone or in
`combination a physiological sensor wherein either a thermal
`mass is a plurality of layers of a substrate or wherein a thermal
`mass is disposed within a substrate proximate light emitting
`sources and a temperature sensor, in combination with the other
`claimed elements.
`Id. at 73. Consistent with the Examiner’s description of allowable
`subject matter, Applicants amended then pending claims 1 and 5 to clarify
`that the “thermal mass” is disposed “within the substrate”; claim 9 to recite
`“providing a thermal mass disposed within a substrate proximate the light
`emitting sources”; and claim 13 to recite “providing a thermal mass disposed
`within a substrate of the light emitting sources.” Id. at 50–57.
`The Examiner subsequently issued a Notice of Allowance. Id. at 32–
`
`38.
`E.
`
`Challenged Claims
`Petitioner challenges claims 1–30 of the ’127 Patent. Pet. 2. The
`challenged claims variously depend from independent claims 1, 7, 13, 20,
`and 26. See, e.g., id. at iv–vii (claim listing). Claims 1 and 7, reproduced
`below, are illustrative of the subject matter challenged (paragraphing and
`labeling as added in Petitioner’s claim listing).
`
`7
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`IPR2022-01299
`Patent 7,761,127 B2
`[1.P] A physiological sensor comprising:
`[1.1] a plurality of emitters configured to transmit optical
`radiation having a plurality of wavelengths in response to a
`corresponding plurality of drive currents, the plurality of
`emitters including a substrate;
`[1.2] a thermal mass disposed proximate the emitters and within
`the substrate so as to stabilize a bulk temperature for the
`emitters; and
`[1.3] a temperature sensor thermally coupled to the thermal
`mass,
`[1.4] wherein the temperature sensor provides a temperature
`sensor output responsive to the bulk temperature so that the
`wavelengths are determinable as a function of the drive currents
`and the bulk temperature.
`Ex. 1001, 19:4–17; see Pet. iv
`
`[7.P] A physiological sensor capable of emitting light into
`tissue and producing an output signal usable to determine one
`or more physiological parameters of a patient, the physiological
`sensor comprising:
`[7.1] a thermal mass;
`[7.2] a plurality of light emitting sources, including a substrate
`of the plurality of light emitting sources, thermally coupled to
`the thermal mass, the sources having a corresponding plurality
`of operating wavelengths, the thermal mass disposed within the
`substrate;
`[7.3] a temperature sensor thermally coupled to the thermal
`mass and capable of determining a bulk temperature for the
`thermal mass, the operating wavelengths dependent on the bulk
`temperature; and
`[7.4] a detector capable of detecting light emitted by the light
`emitting sources after tissue attenuation, wherein the detector is
`capable of outputting a signal usable to determine one or more
`physiological parameters of a patient based upon the operating
`wavelengths.
`
`8
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`IPR2022-01299
`Patent 7,761,127 B2
`Ex. 1001, 19:35–54; see Pet. iv–v.
`
`13–17, 20–23
`
`18–19, 24–25
`
`1–3, 6–10, 26–27, 30
`
`103
`
`103
`
`103
`
`103
`
`103
`103
`103
`103
`
`103
`103
`
`1C
`
`1D
`
`1E
`
`1F
`
`2A
`2B
`2C
`2D
`
`2E
`2F
`
`F. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–30 of the
`’127 Patent on the following grounds (Pet. 2):
`Ground
`Claims Challenged 35 U.S.C § Reference(s)/Basis
`1A
`7–10
`103
`Yamada, 3 Chadwick4
`1B
`103
`Yamada, Chadwick,
`11–12
`Leibowitz5
`Yamada, Chadwick,
`Cheung6
`Yamada, Chadwick,
`Cheung, Leibowitz
`Yamada, Chadwick,
`Noguchi7
`Yamada, Chadwick,
`Noguchi, Leibowitz
`Yamada
`Yamada, Leibowitz
`Yamada, Cheung
`Yamada, Cheung,
`Leibowitz
`Yamada, Noguchi
`Yamada, Noguchi,
`Leibowitz
`Petitioner further relies, inter alia, on the Declaration of Brian W.
`Anthony, Ph.D. (Ex. 1007), Thomas L. Yearwood, M.D. (Ex. 1024), and
`Michael Henry Verdolin, M.D. (Ex. 1003). Patent Owner relies on the
`
`3 Yamada et al., Certified English Translation of Japanese Patent Publication
`No. JP 2004-337605 A to (Ex. 1004).
`4 Chadwick et al., US 3,514,538, issued May 26, 1970. (Ex. 1005).
`5 Leibowitz, US 4,591,659, issued May 27, 1986. (Ex. 1006).
`6 Cheung et al., US 5,259,381, issued Nov. 9, 1993. (Ex. 1007).
`7 Noguchi, US 5,334,916, issued Aug. 2, 1994. (Ex. 1008).
`9
`
`4–5, 11–12, 28–29
`7–10
`11–12
`13–17, 20–23
`18–19, 24–25
`1–3, 6–10, 26–27, 30
`4–5, 11–12, 28–29
`
`
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`IPR2022-01299
`Patent 7,761,127 B2
`testimony of Jack Goldberg (Ex. 2051), and named inventor, Mohamed Diab
`(Ex. 2002).
`
`II. ANALYSIS
`Legal Standards
`A.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that supports
`the grounds for the challenge to each claim”)). This burden of persuasion
`never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`of proof in inter partes review).
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed invention and the prior art are such that the claimed
`invention 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 evidence
`of nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`In analyzing the obviousness of a combination of prior art elements, it
`can be important to identify a reason that would have prompted one of skill
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`IPR2022-01299
`Patent 7,761,127 B2
`in the art “to combine . . . known elements in the fashion claimed by the
`patent at issue.” KSR, 550 U.S. at 418. A precise teaching directed to the
`specific subject matter of a challenged claim is not necessary to establish
`obviousness. Id. Rather, “any need or problem known in the field of
`endeavor at the time of invention and addressed by the patent can provide a
`reason for combining the elements in the manner claimed.” Id. at 420.
`Accordingly, a party that petitions the Board for a determination of
`unpatentability based on obviousness must show that “a skilled artisan
`would have been motivated to combine the teachings of the prior art
`references to achieve the claimed invention, and that the skilled artisan
`would have had a reasonable expectation of success in doing so.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (internal
`quotations omitted).
`We address Petitioner’s challenges with these standards in mind, and
`in view of the definition of the skilled artisan and the claim constructions
`discussed below.
`Person of Ordinary Skill in the Art
`B.
`Factual indicators of the level of ordinary skill in the art include “the
`various prior art approaches employed, the types of problems encountered in
`the art, the rapidity with which innovations are made, the sophistication of
`the technology involved, and the educational background of those actively
`working in the field.” Jacobson Bros., Inc. v. U.S., 512 F.2d 1065, 1071 (Ct.
`Cl. 1975); see also Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011
`(Fed. Cir. 1983) (quoting with approval Jacobson Bros.).
`Petitioner proposes two versions of a person of ordinary skill in the
`art. In the first, a person of ordinary skill in the art “would have had a
`Bachelor of Science degree in an academic discipline emphasizing the
`
`11
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`IPR2022-01299
`Patent 7,761,127 B2
`design of electrical and thermal 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 physiological monitoring
`technologies.” Pet. 7 (citing Ex. 1003 ¶ 20). In the alternative, Petitioner
`asserts that the ordinarily skilled artisan “could have 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.
`Patent Owner does not address the above definitions in its Preliminary
`Response but its expert, Mr. Goldberg, disagrees with Petitioner’s first
`definition insofar as it requires an academic discipline emphasizing both
`electrical and thermal technologies. Ex. 2051 ¶ 16. In this respect,
`Mr. Goldberg states that “he is unaware of such an academic discipline
`being available, whereas, Petitioner’s expert, Dr. Anthony, appears to assert
`that he has worked with “many such persons.” Cf. Ex. 2051 ¶ 16 with Ex.
`1003 ¶ 21.
`Mr. Goldberg states that one of ordinary skill in the art would have
`
`had
`
`a Bachelor of Science degree in an academic discipline
`emphasizing the design of electrical systems, in combination
`with training or at least one to two years of related work
`experience with thermal management of electrical systems and
`capture and processing of data or information, including
`physiological monitoring technologies. Alternatively, the
`person could have had a Master of Science degree in a relevant
`academic discipline with less than a year of related work
`experience in the same discipline.
`Ex. 2051 ¶ 16. Despite providing an alternative definition of one of ordinary
`skill in the art, Mr. Goldberg indicates that his opinions with respect to the
`
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`IPR2022-01299
`Patent 7,761,127 B2
`challenged claims do not depend on which of the proposed definitions is
`applied. Id.
`On the current record, we accept Petitioner’s proposed definitions, as
`they appear consistent with the level of skill in the art reflected in the prior
`art of record and the disclosure of the ’127 Patent. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an
`appropriate level” as evidence of the ordinary level of skill in the art)
`(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
`163 (Fed. Cir. 1985)). The parties are welcome to further address this
`definition at trial.
`C. Claim Construction
`We construe 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 (2021). Therefore, we construe the
`challenged claims under the framework set forth in Phillips v. AWH Corp.,
`415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework,
`claim terms are given their ordinary and customary meaning, as would be
`understood by a person of ordinary skill in the art, at the time of the
`invention, in light of the language of the claims, the specification, and the
`prosecution history of record. Id.
`Petitioner bears the burden of stating “[h]ow the challenged claim is
`to be construed.” 37 C.F.R. § 42.104(b)(3). But only those terms that are in
`controversy need be construed, and only to the extent necessary to resolve
`the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid
`Techs. in the context of an AIA trial proceeding).
`
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`IPR2022-01299
`Patent 7,761,127 B2
`Patent Owner proposes definitions for “thermal mass” as used in
`claims 1, 7, 13, 20, and 26, and “bulk temperature” as used in claims 1, 7,
`13, 21, and 26 but argues that it is prejudiced by having to “go first on claim
`construction.” PO Resp. 19–30. In this respect, Patent Owner argues that the
`Petition violates 37 C.F.R. § 42.104(b)(3), and is out of compliance with our
`rules because it lacks “a statement identifying a proposed construction if a
`claim term requires an express construction.” PO Resp. 16 (citing Trial
`Practice Guide 44).
`We do not find Petitioner in violation of our rules or practice. Under
`the heading “Claim Construction Under 37 C.F.R. §§ 42.104(b)(3),”
`Petitioner contends “all claims terms should be construed according to the
`standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005),” and that “no formal claim constructions are presently necessary.”
`Pet. 8. Petitioner, moreover, addresses the meaning of terms “thermal mass”
`and “bulk temperature” elsewhere in the Petition. See e.g., Pet. 22–25; PO
`Resp. 49–50 (referencing “Apple’s ‘back-door’ attempt at construction of
`‘bulk temperature’”). Moreover, and as noted by Patent Owner, Petitioner
`addressed the meaning of these terms in the parties’ dispute before the ITC,
`which we take into account below. See PO Resp. 17 (citing Ex. 1012, 213–
`215).
`
`“thermal mass” and “bulk temperature”
`1.
`Relying on the testimony of Mr. Goldberg, Patent Owner proposes
`intertwined constructions of “thermal mass” and “bulk temperature” relating
`to how thermal mass and bulk temperature are employed in certain
`embodiments of the ’127 patent. As such, Patent Owner proposes that we
`construe “thermal mass” as “a mass that provides a bulk temperature that
`can be used to reliably estimate LED wavelengths” (PO Resp. 19–25;
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`IPR2022-01299
`Patent 7,761,127 B2
`Ex. 2051 ¶¶ 38–45), and “bulk temperature” as “a temperature of the thermal
`mass that is used to estimate wavelengths of multiple LEDs” (PO Resp. 25–
`30; Ex. 2051 ¶¶ 46–60.
`In support of its proposed constructions, Patent Owner points to the
`Specification as evidence that the thermal mass may be:
`(1) within the substrate (EX1001, Fig. 12);
`(2) disposed proximate the emitters so as to stabilize a bulk
`temperature for the emitters (id., 10:24–26);
`(3) thermally coupled to a temperature sensor that provides a
`bulk temperature so that the wavelengths are determinable as a
`function of the drive currents and the bulk temperature (Id.,
`10:26–31); and
`(4) relatively significant so as to stabilize and normalize the
`bulk temperature so that the thermistor measurement of bulk
`temperature is meaningful (id., 10:67–11:4).
`PO Resp. 20 (paragraphing added); see Ex. 2051 ¶ 40. In further support of
`these positions, Patent Owner and its expert further cite to embodiments
`depicted in Figures 14, 15, 16, and 18 of the ’127 patent. PO Resp. 20–22;
`Ex. 2051 ¶¶ 41–42.
`
`Patent Owner also argues that the prosecution history supports its
`construction of thermal mass. PO Resp. 22–24. As noted in section I.D.,
`above, the Examiner found that Cheung fails to disclose a “sensor
`comprising a thermal mass disposed proximate the emitters, wherein the
`thermal mass stabilizes a bulk temperature of the emitters,” and found
`allowable subject matter where the prior art failed to teach “a thermal mass
`is disposed within a substrate proximate light emitting sources and a
`temperature sensor.” Ex. 1002, 71, 73. According to Patent Owner, the
`intrinsic record, thus, shows that a “‘thermal mass’ must be more than just
`any object with some amount of mass,” and “ha[ve] the additional thermal
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`IPR2022-01299
`Patent 7,761,127 B2
`characteristic that it provides a bulk temperature that can be used to reliably
`estimate LED wavelengths.” PO Resp. 23 (citing Ex. 1002, 73; Ex. 2051
`¶ 43).
`
`With respect to the related concept of “bulk temperature,” Patent
`Owner contends that the overall structure of the challenged claims indicates
`that the term means “a temperature used to estimate wavelengths for
`multiple LEDs.” Id. at 25. Patent Owner also argues that claim references to
`bulk temperature relate to measurements of the thermal mass such that, for
`example, claim 21’s recitation of “bulk temperature for the emitters,”
`indicates a temperature measurement of the thermal mass, and not the
`temperature measurement of the LED emitters, per se. Id. at 27–28; Ex.
`2051 ¶ 54. In a related point, Mr. Goldberg points to the Specification’s
`teaching that “substrate 1200 is configured to provide a bulk temperature of
`the emitter array 700 so as to better determine LED operating wavelengths.”
`See Ex. 2051 ¶ 51 (citing 6:61–63). Considering this language, Mr.
`Goldberg opines that one of ordinary skill in the art would understand that
`“bulk temperature” is used to estimate, rather than calculate, LED
`wavelengths of multiple emitters. See id.
`Further with respect to the meaning of “bulk temperature,” we note
`Mr. Goldberg’s reliance on Equation 4 and statements from the ’127 Patent
`Specification that
`Advantageously, the substrate 1200 also provides a bulk
`temperature measurement so as to calculate the operating
`wavelengths for the light emitting sources.
`Ex. 2051 ¶ 48 (citing Ex. 1001, 6:39–42)
`A thermal mass 1220 is disposed proximate the emitters 710 so
`as to stabilize a bulk temperature 1202 for the emitters. A
`temperature sensor 1230 is thermally coupled to the thermal
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`Patent 7,761,127 B2
`mass 1220, wherein the temperature sensor 1230 provides a
`temperature sensor output 1232 responsive to the bulk
`temperature 1202 so that the wavelengths are determinable as
`a function of the drive currents 1210 and the bulk temperature
`1202.
`Id. (citing Ex. 1001, 10:26–31).
`
`Petitioner equates “thermal mass” to a thermal core as represented by
`Chadwick’s metallic printed circuit board. See Pet. 12–13, 20, 23–24. In
`discussing how the combination of Yamada and Chadwick applies to the
`challenged claims, Petitioner stated that “the thermally conductive material
`(e.g., metal) and relatively large mass of the thermal core enables the core to
`‘sink’ heat from the surface components (e.g., LEDs 111, 112) and produce
`a reasonably distributed/uniform temperature gradient reflective of an
`average, bulk temperature of the thermal core.” Pet. 24 (citing Ex. 1003
`¶ 61). Consistent with this position, Petitioner argued before the ITC that
`“‘thermal mass’ is a component that stabilizes a bulk temperature.” Ex.
`1012, 235 (citing e.g., Ex. 1001, 2:59–61, 10:67–11:4). Petitioner there
`elaborated that “‘thermal mass’ does not refer to the physical property of
`‘thermal mass’ that is possessed by all objects with mass, because that would
`render the limitation meaningless.” Id. (citations omitted); see also PO Resp.
`23 (Patent Owner’s assertion that “‘thermal mass’ must be more than just
`any object with some amount of mass”).
`
`Petitioner further argues that one of ordinary skill in the art “would
`have understood a ‘bulk’ temperature to be akin to an ‘average’ temperature
`or a temperature of a ‘vast majority’ of the measurement target, and in any
`event clearly different from a local temperature measurement.” Pet. 24
`(citing Ex. 1003 ¶ 60); see also id at 23–24 (indicating that the bulk
`temperature of a thermal mass would be “reflective of an average or
`
`17
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`approximate temperature” of thermally linked LEDs). Consistent with its
`present position, Petitioner argued before the ITC that bulk temperature
`differed from a local temperature measurement in that it referred to the
`temperature of the thermal mass, i.e., “a representative temperature of the
`whole bulk.” Ex. 1012, 236–237 (citations omitted).
`At this stage of the proceeding, we find the language “to reliably
`estimate LED wavelengths” and “used to estimate wavelengths of multiple
`LEDs” descriptive of intended use of the underlying terms rather than
`descriptive of what they are. Although Patent Owner points to evidence that
`certain embodiments of the ’127 patent use “thermal mass” and “bulk
`temperature” in the manner described in Patent Owner’s proposed
`constructions, we decline to import these use limitations into the claim
`terms. See In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969)
`Reading a claim in light of the specification, to thereby interpret
`limitations explicitly recited in the claim, is a quite different
`thing from reading limitations of the specification into a claim,
`to thereby narrow the scope of the claim by implicitly adding
`disclosed limitations which have no express basis in the claim.
`We further note that Patent Owner fails to evidence the meets and
`bounds of “reliably estimate[ing] LED wavelengths,” such that the
`construction appears indefinite. In this respect, we note the Specification’s
`teaching that some embodiments include “a relatively significant thermal
`mass, which stabilizes and normalizes the bulk temperature so that the
`thermistor measurement of bulk temperature is meaningful.” Ex. 1001,
`10:62–11:4. Considering the intrinsic evidence, we understand a
`“meaningful” temperature reading in the context of the ’127 patent to be one
`on a scale relevant to estimating LED wavelengths.
`
`18
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`Considering the present arguments and evidence, including those
`aspects of construction upon which the parties appear to agree (see e.g.,
`Prelim. Resp. 24 (citing Ex. 1012, 213)), we provisionally construe “thermal
`mass” as a mass having resistance to temperature change on a scale relevant
`to estimating LED wavelengths, and “bulk temperature” as a temperature
`representative of all or substantially all of a thermal mass.
`Claimed Relationship between Bulk Temperature of a
`2.
`Thermal Mass and LED Operating Wavelength
`Patent Owner, relying on the testimony of Mr. Goldberg, infers a
`mathematical relationship for controlling LED operating wavelengths based
`on operating temperature for all of the independent claims. Prelim. Resp.
`25–26; Ex. 2051 ¶¶ 46–47. In this respect, claim 1, element [1.4] and claim
`26, element [26.4] recite that a “temperature sensor provides a temperature
`sensor output responsive to the bulk temperature so that the wavelengths are
`determinable as a function of the drive currents and the bulk temperature.”
`On the record before us, we agree with Patent Owner that the recitation of
`“so that the wavelengths are determinable as a function of the drive currents
`and the bulk temperature,” reasonably infers a mathematical relationship
`between bulk temperature, drive current, and LED operating wavelengths for
`claims 1 and 26.
`We do not presently view either of claims 7 or 21 as evidencing such
`a relationship. Claim 7 recites “a temperature sensor thermally coupled to
`the thermal mass, the operating wavelengths dependent on the bulk
`temperature.” Contrary to the testimony of Mr. Goldberg, we do not read
`claim 7 as written to indicate “that the bulk temperature is used to estimate
`the operating wavelength that is indicated.” See Ex. 2051 ¶ 47. Rather, we
`agree with Petitioner and its expert, “the operating wavelengths dependent
`
`19
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`on the bulk temperature,” merely reflects the well-known property of LEDs
`that their operating wavelengths vary as a function of temperature. See Pet.
`25 (citing Ex. 1003 ¶ 62). See Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d
`1371, 1374 (Fed. Cir. 2004) (stating that “courts may not redraft claims,
`whether to make them operable or to sustain their validity”).
`Claim 20 presents the same lack of linkage between control of
`operating wavelengths and bulk temperature. Claim 20 recites the steps of
`[20.1] providing a thermal mass disposed within a substrate of
`the light emitting sources and a temperature sensor thermally
`coupled to the thermal mass;
`[20.2] transmitting optical radiation from the plurality of light
`emitting sources into body tissue;
`[20.3] detecting the optical radiation after tissue attenuation;
`and
`[20.4] indicating an operating wavelength for each of the
`plurality of light emitting sources.
`Ex. 1001, 20:37–49; Pet. vii (bolding added; labeling as added in
`Petitioner’s claim listing). Despite its recitation of “indicating an operating
`wavelength for each of the plurality of light emitting sources,” the plain
`language of claim 20 does not explain how this is accomplished. Nor does
`the claim recite any functional linkage between the “temperature sensor
`thermally coupled to the thermal mass” and control of the LED operating
`wavelength. To the contrary, claim 20 does not even make clear that the
`temperature sensor necessarily detects a bulk temperature.
`For the reasons discussed above, we provisionally refer to claims 1
`and 26 (and claims dependent therefrom) as “linked claims,” because they
`reasonably infer an actionable relationship betwee
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