Trials@uspto.gov
`571.272.7822
`
`
`Paper 22
`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.
`
`
`IPR2022-01300
`(Patent 7,761,127 B2)
`
`
`
`
`Before JOSIAH C. COCKS, JAMES A. TARTAL, and ROBERT A.
`POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper 22
`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.
`
`
`IPR2022-01300
`(Patent 7,761,127 B2)
`
`
`
`
`Before JOSIAH C. COCKS, JAMES A. TARTAL, and ROBERT A.
`POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-01300
`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 (corrected)
`Preliminary Response to the Petition. Paper 12 (“Prelim. Resp.”).
`Petitioner concurrently filed another petition for inter partes review of
`claims 1–30 of the ’127 patent on other grounds not asserted in this Petition.
`Apple, Inc. v. Masimo Corporation, IPR2022-01299, Paper 2 (PTAB July
`22, 2022) (“the ’1299 Petition”). As set forth in the Decision on Institution
`in IPR2022-01299, we instituted an inter partes review of all challenged
`claims in that proceeding. See IPR2022-01299, Paper 21.
`For the reasons provided below and based on the circumstances
`present here, we exercise discretion under 35 U.S.C. § 314(a) and deny
`institution of an inter partes review based on the present Petition.
`
`A. Real Parties-in-Interest
`Petitioner identifies itself, Apple Inc. as the real party-in-interest. Pet.
`75. 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 IPR2022-01299.
`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 before the U.S.
`International Trade Commission. Pet. 75; 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
`
`2
`
`
`
`IPR2022-01300
`Patent 7,761,127 B2
`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.
`Figure 6 of the ’127 patent is reproduced below.
`
`
`
`3
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`
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`IPR2022-01300
`Patent 7,761,127 B2
`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 10:67–11:4.
`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
`
`4
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`
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`IPR2022-01300
`Patent 7,761,127 B2
`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
`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. 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).
`[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;
`
`5
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`IPR2022-01300
`Patent 7,761,127 B2
`[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.
`Ex. 1001, 19:35–54; see Pet. iv–v.
`
`E. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–30 of the
`’127 Patent on the following grounds (Pet. 2):
`
`6
`
`
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`IPR2022-01300
`Patent 7,761,127 B2
`Ground Claims Challenged 35 U.S.C § Reference(s)/Basis
`3A
`7–10
`103
`Dietiker, 1 Oldham2
`3B
`103
`Dietiker, Oldham,
`11–12
`Leibowitz3
`1–3, 6, 13–17, 20–
`Dietiker, Oldham
`23
`Noguchi4
`Dietiker, Oldham
`4, 5, 18–19, 24–25
`Leibowitz, Noguchi
`Dietiker, Oldham
`Leibowitz, Yamada5
`Dietiker, Oldham,
`Leibowitz, Noguchi,
`Yamada
`Petitioner further relies, inter alia, on the Declaration of Brian W.
`Anthony, Ph.D. (Ex. 1003. Patent Owner relies on the testimony of Jack
`Goldberg (Ex. 2051), and named inventor, Mohamed Diab (Ex. 2002).
`
`26, 27, 30
`28, 29
`
`3C
`
`3D
`
`3E
`
`3F
`
`103
`
`103
`
`103
`
`103
`
`II. ANALYSIS
`Institution of inter partes review is discretionary. See 35 U.S.C. §
`314(a); SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (explaining
`that section “314(a) invests the Director with discretion on the question
`whether to institute review”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
`1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled,
`to institute an IPR proceeding.”). Thus, there is no requirement that we must
`institute inter partes review based on any given petition, including the
`present Petition.
`
`1 Dietiker, U.S. 2003/0033102 A1, pub. Feb. 13, 2003. (Ex. 1009).
`2 Oldham et al., U.S. 2005/0279949 A1, pub. Dec. 22, 2005. (Ex. 1010).
`3 Leibowitz, U.S. 4,591,659, issued May 27, 1986. (Ex. 1006).
`4 Noguchi, U.S. 5,334,916, issued Aug. 2, 1994. (Ex. 1008).
`5 Yamada, Certified English Translation of Japanese Patent Publication No.
`JP 2004-337605 A, pub. Dec. 2, 2004. (Ex. 1004).
`7
`
`
`
`IPR2022-01300
`Patent 7,761,127 B2
`The present Petition and the ’1299 Petition were both filed on July 22,
`2022. Both Petitions challenge claims 1–30 of the ’127 patent. The PTAB
`Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated Guide”)6
`conveys that generally “one petition should be sufficient to challenge the
`claims of a patent in most situations” and that “multiple petitions by a
`petitioner are not necessary in the vast majority of cases.” Consolidated
`Guide 59. According to the Consolidated Guide, “[t]wo or more petitions
`filed against the same patent at or about the same time (e.g., before the first
`preliminary response by the patent owner) may place a substantial and
`unnecessary burden on the Board and the patent owner and could raise
`fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b)).
`The Consolidated Guide also sets forth the following guidance:
`To aid the Board in determining whether more than one
`petition is necessary, if a petitioner files two or more petitions
`challenging the same patent, then the petitioner should, in its
`petitions or in a separate paper filed with the petitions, identify:
`(1) a ranking of the petitions in the order in which it wishes the
`Board to consider the merits, if the Board uses its discretion to
`institute any of the petitions, and (2) a succinct explanation of the
`differences between the petitions, why the issues addressed by
`the differences are material, and why the Board should exercise
`its discretion to institute additional petitions if it identifies one
`petition that satisfies petitioner’s burden under 35 U.S.C.
`§ 314(a).
`Id. at 59–60.
`Petitioner filed a separate “Notice Ranking and Explaining Material
`Differences Between Petitions for Inter Partes Review of U.S. Patent
`No. 7,761,127” (Paper 3, “Notice”), to which Patent Owner filed a response
`(Paper 10, “Response”).
`
`6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated
`8
`
`
`
`IPR2022-01300
`Patent 7,761,127 B2
`As a part of its Notice, Petitioner requests that the Board consider the
`’1299 Petition before the present Petition. Notice 2. Petitioner argues that
`both Petitions are warranted “[d]ue to word count constraints.” Id. at 5. In
`support of its position, Petitioner argues that the asserted grounds “are non-
`redundant at least in their reliance on different combinations of references
`that demonstrate the obviousness of the Challenged Claims in materially
`different ways.” Id. at 27. Petitioner contends, for example, that whereas the
`present Petition relies on Dietiker as its “primary reference,” the ’1299
`Petition relies on Yamada. Notice, 2–3. To the extent this is true, we note
`that the present Petition also relies on Yamada, as well as the Leibowitz and
`Noguchi references asserted in the ’1299 Petition, thus, indicating a
`substantial degree of overlap between the two petitions.
`Moreover, in the Notice’s sole statement attempting to distinguish
`between the two “primary” references, Yamada and Dietiker, Petitioner
`asserts that “the Dietiker combinations describe active temperature
`regulation for LEDs in an oximetry instrument.” Id. at 3 (citing Ex. 1010
`¶¶ 24–25). At the high level of generality offered in the Notice, we see little
`difference between this description of Dietiker, and the ’1299 Petition’s
`description of Noguchi as “controlling the emission spectrum of an LED
`with high precision,” by “enabl[ing] the device to compensate for
`temperature-induced shifts in the wavelengths of light emitted by an LED.”
`See ’1299 Petition, 50–53. We further note that despite Petitioner’s
`designation of Dietiker as a primary reference, each ground in the present
`
`
`7 Petitioner further asserts that the motivations to combine references in the
`two Petitions “materially differ,” yet it provides no details as to how. Id. at
`2.
`
`9
`
`
`
`IPR2022-01300
`Patent 7,761,127 B2
`Petition relies on Dietiker in combination with Oldham. Pet. 2. And
`Oldham, like Noguchi asserted in the ’1299 Petition, discloses a method for
`mitigating temperature-induced spectral shifts in LEDs. See id. at 9–11.
`Petitioner also appears to suggest that two Petitions challenging the
`same claims of the ’127 patent are warranted in light of the “larger litigation
`campaign against [it]” involving “hundreds of claims across twenty-two
`patents in district court and ITC proceedings.” Notice 3–4. But Petitioner
`does not address why proceedings involving the claims of other patents
`warrant two Petition’s challenging the same claims of the ’127 patent.
`Petitioner further argues that, whereas, only one claim of the ’127
`patent is at issue before the ITC, “it is entirely conceivable that [Patent
`Owner] will extend its campaign” and assert additional claims of the ’127
`patent against it “in a future district court action.” Id. at 4–5. We do not
`find this argument availing. The ’1299 Petition presents twelve grounds
`addressing all 30 claims of the ’127 patent, where each claim is challenged
`on two distinct grounds involving at least Yamada, and Yamada in
`combination with Chadwick. See IPR2022-01299, Paper, 2. The manifest
`adequacy of a single petition in advancing multiple grounds of
`unpatentability for each and every challenged claim does not favor a
`conclusion that a single petition is insufficient, or that multiple petitions are
`justified.
`
`III. Conclusion
`We have reviewed the present Petition and the ’1299 Petition and
`determine that, on the record present here, Petitioner has 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
`
`10
`
`
`
`IPR2022-01300
`Patent 7,761,127 B2
`patent. See generally, Notice. Accordingly, in light of our determination to
`institute inter partes review on all grounds presented in the ’1299 Petition
`(see IPR2022-01299, Paper 21), we exercise discretion under 35 U.S.C.
`§ 314(a) to deny institution of the present Petition.
`
`IV. Order
`In consideration of the foregoing, it is
`ORDERED that Petitioner’s request for an inter partes review of
`claims 1–30 of the ’127 patent under the present Petition is denied and no
`trial is instituted.
`
`
`
`
`
`11
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`
`
`IPR2022-01300
`Patent 7,761,127 B2
`FOR PETITIONER:
`W. Karl Renner
`Nicholas Stephens
`Daniel D. Smith
`Andrew B. Patrick
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`nstephens@fr.com
`dsmith@fr.com
`parick@fr.com
`
`
`FOR PATENT OWNER:
`
`Irfan Lateef
`Ted M. Cannon
`Jarom D. Kesler
`Jacob L. Peterson
`KNOBBE, MARENS, OLSON & BEAR, LLP
`2ial@knobbe.com
`2tmc@knobbe.com
`2jzk@knobbe.com
`2jup@knobbe.com
`
`
`
`
`
`
`
`
`12
`
`
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