Trials@uspto.gov
`571.272.7822
`
`
`
`Paper 65
`Date: January 25, 2024
`
`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, GEORGE R. HOSKINS, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Determining All Challenged Claims Unpatentable
`35 U.S.C. §§ 318(a)
`
`
`571.272.7822
`
`
`
`Paper 65
`Date: January 25, 2024
`
`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, GEORGE R. HOSKINS, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Determining All Challenged Claims Unpatentable
`35 U.S.C. §§ 318(a)
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`
`INTRODUCTION
`I.
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73. For the reasons set forth below, we determine that
`Petitioner, Apple Inc., has established, by a preponderance of the evidence,
`that challenged claims 1–30 of Patent Owner Masimo Corporation’s,
`(“Patent Owner”) U.S. Patent No. 7,761,127 B2 (Ex. 1001, “the
`’127 patent”) are unpatentable.
`
`A.
`
`Procedural Background
`Petitioner filed a Petition for inter partes review of claims 1–30 of the
`’127 patent. Paper 2 (“Pet.”). Patent Owner timely filed a Preliminary
`Response to the Petition. Paper 9 (“Prelim. Resp.”).
`In view of the then-available, preliminary record, we concluded that
`Petitioner satisfied the burden, under 35 U.S.C. § 314(a), to show that there
`was a reasonable likelihood that Petitioner would prevail with respect to at
`least one of the challenged claims. Accordingly, on behalf of the Director
`(37 C.F.R. § 42.4(a) (2018)), and in accordance with SAS Inst. Inc. v. Iancu,
`138 S. Ct. 1348, 1353 (2018) and the Office’s Guidance on the Impact of
`SAS on AIA Trial Proceedings (Apr. 26, 2018),1 we instituted an inter partes
`review of claims 1–30 on all the asserted grounds. Paper 21 (“Inst. Dec.” or
`“DI”), 40–41.
`
`1 https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/guidance-impact-sas-aia-trial.
`2
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`After institution, Patent Owner filed a Patent Owner Response to the
`Petition. Paper 37 (“POR”). Petitioner filed a Reply to Patent Owner’s
`Response (Paper 46, “Reply”) and Patent Owner filed a respective Sur-reply
`(Paper 57, “Sur-reply”). With our authorization (Paper 51), Petitioner further
`filed individually numbered Observations Regarding Cross-Examination
`Testimony of Dr. William King (Paper 59, “Obsv.”).
`On November 17, 2023, the parties presented arguments at oral
`hearing, the transcript of which is of record. Paper 62 (“Tr.”).
`
`B.
`
`Real Parties-in-Interest
`Petitioner identifies itself, Apple Inc., as the real party-in-interest. Pet.
`70. Patent Owner, Masimo Corp., also identifies itself as the real party-in-
`interest. Paper 5, 1.
`C.
`Related Matters
`Concurrent with the filing of this Petition, Petitioner also challenged
`claims 1–30 of the ’127 patent in IPR2022-01300 (“the 01300 IPR”) on
`grounds not asserted here. See 01300 IPR, Paper 2. In light of its concurrent
`challenges, Petitioner filed a Notice of Ranking Petitions (Paper 3), to which
`Patent Owner responded (Paper 11). We addressed Petitioner’s Notice of
`Ranking arguments and Patent Owner’s response in the copending 01300
`IPR and, in light of the record then before us, declined to institute trial in the
`01300 IPR because “Petitioner [did] not set forth adequate reasoning that
`justifies the institution of multiple inter partes reviews based on two
`petitions both directed to claims 1–30 of the ’127 patent.” 01300 IPR, Paper
`22, 10–11.
`
`3
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`The ’127 patent is among the patents addressed by the U .S.
`International Trade Commission in In the Matter of Certain Light-Based
`Physiological Measurement Devices and Components Thereof, Inv. No. 337-
`TA-1276. See Pet. 70; Paper 18, 1; Ex. 2093. 2 Patent Owner further reports
`that the ’127 patent is at issue in Apple Inc. v. Masimo Corporation and
`Sound United, LLC, U.S. District Court for the District of Delaware, Case
`No. 1:22-cv-01378-MN. Paper 18, 1.
`D.
`The ’127 Patent and Relevant Background
`The ’127 patent, for “Multiple Wavelength Sensor Substrate,” is
`generally 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.
`As explained by Patent Owner’s declarant, Dr. King, “each LED is
`designed and manufactured to emit light of a specific ‘nominal’ or ‘centroid
`wavelength when measured under certain conditions. For example, a red
`
`2 Final Initial Determination on Violation of Section 337, ITC Inv. No. 337-
`TA-1276.
`
`4
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`LED may have a nominal wavelength of 660 nm and an infrared LED may
`have a nominal wavelength of 905 nm.” Ex. 2151 ¶ 30. The actual operating
`wavelength of an LED, however, is subject to temperature-induced
`wavelength shift, which could “produce inaccurate results in a light-based
`sensor that does not compensate for such wavelength shift.” See generally,
`id. ¶¶ 31–36. As noted by Dr. King, one known method of reducing
`temperature-induced wavelength shift involved “controlling electrical inputs
`to the LEDs, such as drive current.” Id. ¶ 36. Reflecting this approach, the
`Specification provides that,
`[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.
`Ex. 1001, 2:57–65; Abstract.
`
`5
`
`
`
`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.
`
`6
`
`
`
`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. at
`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; see also id. at 10:32–39 (disclosing equation for
`determining the operating wavelength of each light emitter based on bulk
`temperature Tb and drive current).
`
`7
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`
`E.
`
`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 POR 23; Ex. 1007, Fig. 11. The above representation of Cheung’s
`Figure 11, shows temperature sensor 50 and LEDs 40/42 mounted on a
`substrate or board. POR 22–23; Ex. 2051 ¶ 43; see also 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”).
`According to the Examiner of the ’127 patent, Cheung disclosed all
`elements of certain rejected claims except for “the method comprising
`utilizing a thermistor thermally coupled to the light emitting sources to
`8
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`measure the bulk temperature,” “details of [its] tem perature sensor,” or a
`“sensor comprising a thermal mass disposed proximate the emitters, wherein
`the thermal mass st abilizes 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.
`F.
`
`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).
`
`9
`
`
`
`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
`10
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`
`capable of outputting a signal usable to determine one or more
`physiological parameters of a patient based upon the operating
`wavelengths.
`Ex. 1001, 19:35–54; see Pet. iv–v.
`
`G.
`
`1C
`
`1D
`
`1E
`
`1F
`
`2A
`2B
`2C
`2D
`
`2E
`
`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,
`Leibowitz, Cheung
`Yamada, Chadwick,
`Noguchi7
`Yamada, Chadwick,
`Leibowitz, Noguchi
`Yamada
`Yamada, Leibowitz
`Yamada, Cheung
`Yamada, Cheung,
`Leibowitz
`Yamada, Noguchi
`
`13–17, 20–23
`
`18, 19, 24, 25
`
`1–3, 6–10, 26, 27, 30
`
`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
`
`103
`
`103
`
`103
`
`103
`
`103
`103
`103
`103
`
`103
`
`3 Yamada et al., Certified English Translation of Japanese Patent Publication
`No. JP 2004-337605 A. (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).
`11
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`
`Ground
`2F
`
`Claims Challenged 35 U.S.C § Reference(s)/Basis
`Yamada, Noguchi,
`4, 5, 11, 12, 28, 29
`103
`Leibowitz
`Petitioner further relies, inter alia, on the Declarations of Brian W.
`Anthony, Ph.D. (Exs. 1003, 1055). Patent Owner relies on the Declarations
`of Jack Goldberg (Ex. 2051 (redacted version only)), William P. King, Ph.D.
`(Exs. 2151, 2194), Micah Young (Ex. 2081 (redacted version only)), and
`named inventor, Mohamed Diab (Exs. 2002 (redacted version only), 2102).
`H.
`Overview of Asserted References
`Overview of Yamada (Ex. 1004)
`1.
`Yamada is a certified translation of a Japanese Patent Publication for
`an “Optical Probe, Measurement System Using the Same, and Reflected
`Light Detecting Method Using the Same.” Ex. 1004, code (54). Yamada is
`directed to “an optical sensor that is less susceptible to heat generated by the
`light emitting unit,” and discloses an optical sensor (e.g., a pulse oximeter)
`that “detects light (reflected light) that has been directed toward the surface
`of the human body, scattered inside the human body, and returned toward
`the exposed surface.” Id. at code (57), ¶¶ 1–2, 106.
`According to Yamada, a problem with prior optical sensors is “that
`the LED used to emit light also generates heat, and the patient is exposed to
`this heat because the optical sensor is attached to the surface of a fingernail.”
`Id. ¶ 5. “As a result, the exposure time and power consumption (that is, the
`amount of light generated) have to be limited in order to suppress the
`amount of heat that is generated.” Id. Yamada, therefore, proposes a design
`
`12
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`for an optical sensor that was intended to redu ce the amount of heat to which
`the subject wearing the device is exposed. Id. ¶¶ 1–6.
`An annotated version of Figure 5, reproduced below, illustrates one
`embodiment of Yamada’s design. See Ex. 1003 ¶ 25 (providing annotated
`version of Figure 5).
`
`Figure 5 shows a cross-sectional view of one aspect of Yamada’s design,
`which includes “a light emitting unit 11 (including LEDs 111, 112), a light
`receiving unit 12, a main body 13, an optical passage 14,” and a “reflecting
`unit 131.” Ex. 1004 ¶¶ 42–43, 68, 113, Fig. 5. In this embodiment, LEDs
`111, 112 are disposed on a first surface of substrate 15 (also referred to as
`“board 15”), while the light receiving unit 12 is disposed on an opposite
`surface of the same substrate 15. Id.
`According to Figure 5, light emitted from LEDs 111, 112 is reflected
`by reflecting unit 131 and guided through optical passage 14 to the
`measurement site (e.g., the surface of a finger) via end portion 141. Id.
`
`13
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`
`¶¶ 59–62. A portion of the light emitted to the measurement site is scat tered
`and reflected back toward light receiving unit 12. Id.
`Yamada further describes how board/substrate 15 “may have heat
`transferring properties that guide heat generated by the light emitting unit
`toward the outside.” Id. ¶ 20. In some embodiments, a “heat conductor 132”
`is “connected to the board 15 near the light emitting unit 11” to allow heat to
`be transmitted away from the light emitting unit. Id. ¶¶ 102–103.
`An annotated version of Yamada’s Figure 19 is reproduced below.
`See Ex. 1003 ¶ 26 (providing annotated version of Figure 19).
`
`Figure 19 depicts a horizontal cross-sectional view of board 15 according to
`one embodiment of the invention. See Ex. 1004 ¶ 113. In this embodiment,
`“board 15 is composed of a first substrate 151, a second substrate 152, and
`an intermediate layer 153.” Id. ¶¶ 80–84, Fig. 19. Intermediate layer 153 can
`be “made of a conductive material” such as “copper, aluminum, gold, [or]
`conductive resins.” Id. ¶ 83.
`Yamada further teaches that a “temperature sensor,” e.g., a thermistor,
`can be attached to the optical probe in each embodiment. This temperature
`
`14
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`
`sensor can be positioned, for example, on the lower surface of board 15
`facing the user, or attached to the upper surface of board 15 facing away
`from the user. Id. ¶¶ 109–110. “When the temperature of the optical probe 1
`is monitored using a temperature sensor, a warning can be issued when the
`temperature becomes too high or emission of light from the light emitting
`unit 11 can be stopped.” Id. ¶ 111.
`2.
`Overview of Chadwick (Ex. 1005)
`Chadwick is a U.S. patent for a “Thermal Dissipating Metal Core
`Printed Circuit Board.” According to Chadwick, presently available circuit
`boards, “lack the desirable property of being capable of quickly and
`effectively dissipating heat which is generated by components in the circuit
`when the apparatus in which they are used is operated.” Ex. 1005, 1:35–44.
`Chadwick states that, one
`obstacle to the design of a metal core printed circuit board has
`been the difficulty of having components in close enough
`contact with the circuit board so that heat generated in the
`components can pass readily to the metal core, serving in such
`instances as a heat sink, and at the same time have the
`components adequately insulated electrically from the
`electrically conducting metal core.
`Id. at 2:3–10. To address these issues, Chadwick proposes “[a] metal core
`printed circuit board which includes multiple layers of synthetic plastic resin
`material on a sheet of metal.” Id. at 1:14–16.
`
`15
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`Chadwick’s Figure 11 is reproduced below.
`
`
`
`Figure 11 is a perspective view of one embodiment of Chadwick’s printed
`circuit board. See id. at 2:67–69. Figure 11 shows metal sheet 10, preferably
`of aluminum, on which layers of material have been applied to form a
`substrate for the mounting of electronic components. See id. at 3:50–64. To
`encourage heat transfer between surface components and the metal core 10,
`the intermediate layers include electrically non-conductive but thermally
`conductive material. Id. at 4:11–38; generally id. at 2:2–29, 4:39–8:17
`(describing detailed process for the formation of layers on metal core 10).
`3.
`Overview of Leibowitz (Ex. 1006)
`Petitioner relies on Leibowitz for dependent-claim limitations reciting
`“the thermal mass is a plurality of layers of the substrate” and “each of the
`layers of the thermal mass is substantially copper clad.” Pet. 33–35, 50, 63.
`Leibowitz is a U.S. patent for a “Multilayer Printed Circuit Board [PCB]
`Structure,” comprising a “composite printed circuit board structure including
`multiple layers of graphite interleaved with layers of a dielectric material.”
`Ex. 1006, Abstract, Code (54).
`
`16
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`According to Leibowitz, “as larger numbers of components are
`mounted on circuit boards, … the heat produced by the components must be
`dissipated in some manner,” but “[s]ince the principal materials u sed in
`circuit boards are insulators, the boards have traditionally played no
`significant role in dissipating heat from the components that they support.”
`Id. at 1:56–64. To address this, and other problems with purportedly
`traditional circuit boards, Leibowitz proposed a multilayer PCB having
`“good thermal conduction properties to enhance conduction from devices
`mounted on the board.” Id. at 2:24–27. Leibowitz explains that this
`multilayer structure is “employed both to redu ce the coefficient of thermal
`expansion and to provide enhanced thermal conductivity.” Id. at 2:30–34.
`Figure 2, reproduced below, illustrates one embodiment of
`Leibowitz’s PCB.
`
`Figure 2 is “a fragmentary cross-sectional view of a multilayer circuit
`board.” Id. at 3:22–24. According to Leibowitz, the circuit board depicted in
`Figure 2 comprises
`
`17
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`
`a plurality of layers of graphite 16 interleaved between layers
`18 of a dielectric material that includes polytetrafluorethylene
`(PTFE). Some of the layers 18 are copper coated, as indicated
`at 20. The PTFE layers 18 provide the basic dielectric material
`of the board 10, and the graphite layers 16 provide both thermal
`conductivity and control of thermal coefficient of expansion.
`Id. at 3:56–65.
`4.
`Overview of Cheung (Ex. 1007)
`Cheung (previously discussed in Section I.E., above) is a U.S. patent
`for “Apparatus for the Automatic Calibration of Signals Employed in
`Oximetry,” and relates to “compensating for the effect of temperature
`variations have on the wavelength of light emitted by the oximeter sensor
`light source.” Ex. 1007, Abstract, code (54).
`Cheung Figure 1 (not shown) is a block diagram of an oximeter
`including sensor 12, which is shown in a more detailed, exploded, view in
`Figure 11. Id at 5:22–24. Figure 11 shows an exploded view of sensor 12 in
`greater detail. See id. at 5:52–53. The annotated and colorized excerpt of
`Cheung’s Figure 11 reproduced in Section I.E., above, shows temperature
`sensor 50 and LEDs 40/42 mounted on a substrate or board.
`According to Cheung, “Because current oximetry techniques are
`dependent upon the wavelengths of light emitted by the LEDs (40, 42), the
`wavelengths must be known.” Id. “Even when predetermined combinations
`of LEDs (40, 42) having relatively precise wavelengths are employed,
`variations in the wavelength of light emitted may result.” Id. Cheung
`explains that “[b]ecause the sensor (12) may be exposed to a significant
`range of temperatures while in use, the effect of temperature on the
`
`18
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`
`wavelengths may be significant.” Id. “To compensate for this effect, a
`temperature sensor (50) is included in the sensor (12) to produce a signal
`indicative of sensor temperature.” Id. “This signal is interpreted by the
`oximeter circuitry including, for example, a microcomputer (16), where the
`effect of temperature on wavelength is compensated for. In a preferred
`arrangement, this compensation takes the form of a computation of an
`alternative calibration curve from which the oxygen saturation is indicated.”
`Id. In particular, the temperature sensor signal “allows microcomputer 16 to
`accurately determine the wavelengths of the light emitted by LEDs 40 and
`42 and subsequently produce an accurate determination of oxygen
`saturation.” Id. at 13:25–33; see generally id. at 12:7–14:2, Figs. 10–11
`(detailed descriptions of sensor assembly 48).
`5.
`Overview of Noguchi (Ex. 1008)
`Noguchi is a U.S. patent directed to “Apparatus and Method for LED
`Emission Spectrum Control.” Ex. 1008, code (54). Noguchi discloses
`techniques for “controlling the emission spectrum of an LED with high
`precision,” including determining the wavelength of light emitted by the
`LED based on (1) a measured temperature and (2) a measured level
`of current or voltage driving the LED. Id. at 1:7–12, 2:50–3:14, 1:33–50.
`With respect to the relationship between temperature and emission
`wavelength, Noguchi discloses that
`[t]he temperature of the LED itself or the surrounding ambient
`temperature and the driving power of the LED are detected.
`Then, the emission wavelength energy can be calculated by
`subtracting the value of an applied power multiple by a
`specified coefficient and the difference from the standard
`19
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`
`temperature multiple by a specified coefficient from the optical
`band gap at the standard temperature.
`Id. at 2:2–10. Noguchi teaches that for some embodiments, “[t]he
`temperature of the LED is measured by a temperature sensor,” however, “the
`temperature to be measured is not limited to the temperature of the LED
`itself, but the temperature in the environment surrounding the LED can also
`be measured.” Id. at 2:20–29. Noguchi further discloses that “[t]he number
`of LEDs or sensors used in the present invention can be more than one
`each.” Id. at 2:30–41.
`Noguchi describes an equation (1) for determining LED emission
`wavelength taking into account temperature and applied LED voltage
`(power). Id. at 2:51–3:14. Noguchi teaches the use of equation (1) in the
`context of Figure 1, reproduced below.
`
`Figure 1 is a block diagram of an example system for “LED emission
`spectrum control.” Id. at 1:55–56. Figure 1 identifies elements 1 through 6,
`where the element
`
`20
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`
`1 is an LED with a sensor for measuring temperature, 2 is a
`measurement and control means for an LED driving current, 3
`is a measurement and control means for an LED applied
`voltage, 4 is a measurement means for an LED temperature, 5 is
`a computing unit, and 6 is a control means for an emission
`wavelength.
`Id. at 2:14–19. Computing unit 5 receives inputs indicating the measured
`temperature of LED 1, the driving voltage of LED 1, and driving current of
`LED 1, and processes these inputs according to equation (1) to calculate the
`present wavelength of light emitted from LED 1. Id. at 3:15–38, Fig. 3.
`Control means 6 then uses the calculation of the present wavelength to
`adjust the driving current of LED 1 to correspondingly adjust the wavelength
`of emitted light toward a desired/target value. Id. at 3:39–47, Fig. 4.
`
`II. DISCUSSION
`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).
`
`21
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`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 time the invention
`was made 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
`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
`
`22
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`
`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.
`B.
`Person of Ordinary Skill in the Art
`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
`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 Patent
`Owner Response but its experts, Mr. Goldberg and Dr. King, disagree with
`23
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`
`Petitioner’s first definition insofar as it requires an academic discipline
`emphasizing both electrical and thermal technologies. Ex. 2051 ¶ 16;
`Ex. 2151 ¶ 20. Mr. Goldberg, for example, states that “he is unaware of such
`an academic discipline being available,” whereas, Petitioner’s expert,
`Dr. Anthony, appears to assert that h e has worked with “many such
`persons.” Cf. Ex. 2051 ¶ 16 with Ex. 1003 ¶ 21; see also Ex. 2151 ¶ 20
`(similar testimony from Dr. King).
`Mr. Goldberg and Dr. King state 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; Ex. 2151 ¶ 20. Despite providing an alternative definition of
`one of ordinary skill in the art, Patent Owner’s declarants indicate that their
`opinions with respect to the challenged claims do not depend on which of
`the proposed definitions is applied. See Ex. 2051 ¶ 16; Ex. 2151 ¶ 20;
`Ex. 2194 ¶ 2.
`In our institution decision, we provisionally adopted Petiti
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
