Trials@uspto.gov
`571-272-7822
`
`Paper No. 15
`Date: February 6, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2022-01465
`Patent 10,687,745 B1
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, NEIL T. POWELL, and JAMES A. TARTAL,
`Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper No. 15
`Date: February 6, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2022-01465
`Patent 10,687,745 B1
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, NEIL T. POWELL, and JAMES A. TARTAL,
`Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-01465
`Patent 10,687,745 B1
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”)1 filed a Corrected Petition pursuant to
`35 U.S.C. §§ 311–319 requesting an inter partes review of claims 2–6, 8,
`10–14, 17, 19, and 21–26 (“the Challenged Claims”) of U.S. Patent
`No. 10,687,745 B1 (Ex. 1001, “the ’745 patent”). Paper 10 (“Pet.”).
`Masimo Corporation (“Patent Owner”)2 filed a Preliminary Response.
`Paper 11 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter
`partes review may not be instituted “unless . . . the information presented in
`the petition . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the
`Preliminary Response, and the evidence of record, we conclude that the
`information presented shows a reasonable likelihood that Petitioner would
`prevail in showing the unpatentability of at least one of the Challenged
`Claims. Accordingly, we authorize an inter partes review to be instituted as
`to the Challenged Claims of the ’745 patent on the grounds raised in the
`Petition. Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far (prior to Patent
`Owner’s Response). This is not a final decision as to patentability of claims
`for which inter partes review is instituted. Any final decision will be based
`on the record, as fully developed during trial.
`
`
`1 Petitioner identifies no additional real parties in interest. Pet. 78.
`2 Patent Owner identifies no additional real parties in interest. Paper 5, 2.
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`IPR2022-01465
`Patent 10,687,745 B1
`
`II. BACKGROUND
`The ’745 Patent
`A.
`The ’745 patent is titled “Physiological Monitoring Devices, Systems,
`and Methods,” and issued on June 23, 2020, from U.S. Patent Application
`No. 16/835,772, filed March 31, 2020. Ex. 1001, codes (21), (22), (45),
`(54). The ’745 patent summarizes its disclosure as follows:
`This disclosure describes embodiments of non-invasive
`methods, devices, and systems for measuring blood constituents,
`analytes, and/or substances such as, by way of non-limiting
`example, oxygen, carboxyhemoglobin, methemoglobin, total
`hemoglobin, glucose, proteins, lipids, a percentage therefor
`(e.g., saturation), pulse rate, perfusion index, oxygen content,
`total hemoglobin, Oxygen Reserve IndexTM (ORITM) or for
`measuring many other physiologically
`relevant patient
`characteristics. These characteristics can relate to, for example,
`pulse rate, hydration, trending information and analysis, and the
`like.
`Id. at 2:40–50.
`Figures 7A and 7B of the ’745 patent are reproduced below:
`
`
`
`Figures 7A and 7B above depict side and top views, respectively, of a
`three-dimensional pulse oximetry sensor according to an embodiment of the
`’745 patent. Id. at 5:28–33. Sensor 700 includes emitter 702, light
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`Patent 10,687,745 B1
`diffuser 704, light block (or blocker) 706, light concentrator 708, and
`detector 710. Id. at 10:49–51. The sensor functions to irradiate tissue
`measurement site 102, e.g., a patient’s wrist, and detects emitted light that is
`reflected by the tissue measurement site. Id. at 10:43–49. “[L]ight
`blocker 706 includes an annular ring having a cover portion 707 sized and
`shaped to form a light isolation chamber for the light concentrator 708 and
`the detector 710.” Id. at 11:10–12. “[L]ight blocker 706 and cover 707
`ensures that the only light detected by the detector 710 is light that is
`reflected from the tissue measurement site.” Id. at 11:16–19.
`Figure 8 of the ’745 patent is reproduced below:
`
`
`Figure 8 above illustrates “a block diagram of an example pulse oximetry
`system capable of noninvasively measuring one or more blood analytes in a
`monitored patient.” Id. at 5:34–37. Pulse oximetry system 800 includes
`sensor 801 (or multiple sensors) coupled to physiological monitor 809. Id.
`at 12:21–23. Sensor 801 includes emitter 804 and detector 806. Id.
`at 12:32–34. Monitor 809 includes signal processor 810, which “includes
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`Patent 10,687,745 B1
`processing logic that determines measurements for desired analytes based on
`the signals received from the detector 806.” Id. at 13:33–40. Monitor 809
`also includes user interface 812 that provides “an output, e.g., on a display,
`for presentation to a user of pulse oximetry system 800.” Id. at 13:33–35,
`13:64–66.
`
`Illustrative Claim
`B.
`Petitioner challenges claims 2–6, 8, 10–14, 17, 19, and 21–26 of the
`’745 patent. Pet. 1. Claims 2–6, 8, and 10–14 depend from claim 1.
`Claims 17 and 19 depend from claim 15. Claims 21–26 depend from
`claim 20. Claim 3 is illustrative of the claimed subject matter and is
`reproduced below, along with claim 1 from which it depends.
`1. A physiological monitoring device comprising:
`a plurality of light-emitting diodes configured to emit light in
`a first shape;
`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;
`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;
`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, 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;
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`Patent 10,687,745 B1
`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
`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.
`Ex. 1001, 15:32–61.
`3. The physiological monitoring device of claim 1, further
`comprising a display configured to present a visual feedback
`responsive to the determined physiological parameter.
`Id. at 16:1–3.
`
`Asserted Grounds of Unpatentability
`C.
`Petitioner asserts that the Challenged Claims are unpatentable based
`on the following grounds:
`Claim(s) Challenged 35 U.S.C. §3
`2, 3, 5, 6, 8, 10–12, 14
`103
`
`4, 17, 19, 21–26
`2, 5, 6, 8, 10, 11, 13,
`14, 17, 19
`3, 4, 17, 19, 21–26
`
`103
`
`103
`103
`
`References/Basis
`Iwamiya, 4 Sarantos5
`Iwamiya, Sarantos,
`Venkatraman6
`Sarantos, Shie7
`Sarantos, Shie, Venkatraman
`
`
`3 The Leahy-Smith America Invents Act (“AIA”) included revisions
`to 35 U.S.C. § 103 that became effective on March 16, 2013. We apply
`the post-AIA version of § 103 here, because the earliest provisional
`application identified in the ’745 patent was filed after the effective date of
`the AIA. See Ex. 1001, code (60).
`4 U.S. Patent No. 8,670,819 B2, issued Mar. 11, 2014 (Ex. 1004,
`“Iwamiya”).
`5 U.S. Patent No. 9,392,946 B1, issued Jul. 19, 2016 (Ex. 1005, “Sarantos”).
`6 U.S. Pat. App. Pub. No. 2014/0275854 A1, published Sep. 18, 2014
`(Ex. 1006, “Venkatraman”).
`7 U.S. Patent No. 6,483,976 B2, issued Nov. 19, 2002 (Ex. 1007, “Shie”).
`
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`Patent 10,687,745 B1
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`References/Basis
`Claim(s) Challenged 35 U.S.C. §3
`Sarantos, Shie, Savant
`12
`103
`Pet. 2. Petitioner further relies on the supporting Declaration of Dr. Brian
`W. Anthony, dated August 26, 2022. Ex. 1003. Patent Owner relies on the
`Declaration of R. James Duckworth, dated December 12, 2022. Ex. 2002.
`Related Proceedings
`D.
`Petitioner filed three other petitions challenging claims of the
`’745 patent in IPR2022-01291 (“’1291 Petition”), 8 IPR2022-01292, and
`IPR2022-01466. Below we further address issues concerning the multiple
`petitions challenging claims of the ’745 patent filed by Petitioner. See supra
`Section III.A. Patent Owner identifies numerous additional patent
`applications, patents, and inter partes review proceedings as related to the
`’745 patent. Paper 5, 1–2; Paper 14, 2.
`The parties further identify the ’745 patent as a subject of Masimo
`Corporation, et al. v. Apple Inc., ITC Inv. No. 337-TA-1276. Pet. 78–79;
`Paper 5, 1. Petitioner also states that on December 12, 2022, Patent Owner
`asserted the ’745 patent against Petitioner in U.S. District Court for the
`District of Delaware (Case No. 1:22-cv-01378-MN), Paper 13, 1; see also
`Paper 14, 1 (identifying the same district court case).
`Additionally, the application that issued as the ’745 patent was a
`continuation of an application that issued as U.S. Patent No. 10,470,695
`(“the ’695 patent”). Ex. 1001, code (63). Petitioner states that through an
`inter partes review the Board found claims 6, 14, and 21 of the ’695 patent
`not patentable “after Patent Owner disclaimed the remaining claims of the
`
`
`8 Apple Inc. v. Masimo Corp., IPR2022-01291, Paper 10 (October 7, 2022)
`(“’1291 Petition”).
`
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`Patent 10,687,745 B1
`’695 Patent following institution of the IPR.” Pet. 79–80 (citing Apple Inc.
`v. Masimo Corp., IPR2020-01722, Paper 29 at 2 (PTAB May 5, 2022)).
`Patent Owner further identifies Masimo Corporation v. Apple Inc., Case
`No. 22-01895, pending before the U.S. Court of Appeals for the Federal
`Circuit, as an “appeal from final written decision in an inter partes review
`proceeding involving a related patent,” and we understand the ’695 patent is
`at issue in that appeal. Paper 5, 2–3.
`III. ANALYSIS
`A. Whether Multiple Petitions are Warranted
`Because Petitioner filed multiple petitions challenging claims of the
`same patent, we first consider whether we should exercise discretion to deny
`the Petition in this proceeding. 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.”). More specifically, the Patent Trial and Appeal Board
`Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)9 states 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.” CTPG 59. According to the CTPG,
`“[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
`
`
`9 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
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`Patent 10,687,745 B1
`owner and could raise fairness, timing, and efficiency concerns.” Id. (citing
`35 U.S.C. § 316(b)). The CTPG 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 (footnote omitted).
`The table below identifies the date Petitioner filed each petition, the
`claims of the ’745 patent challenged, and the references asserted.
`Date of
`’745 Patent
`Proceeding
`References Asserted
`Petition
`Claims
`Challenged
`IPR2022-01291 07/22/2022 1, 9, 15, 18,
`20, 27
`IPR2022-01292 07/22/2022 1, 9, 15, 18,
`20, 27
`
`IPR2022-01465 08/26/2022 2–6, 8,
`10–14, 17,
`19, 21–26
`IPR2022-01466 08/26/2022 2–6, 8,
`
`10 WO 211/051888 A2, published May 5, 2011 (Ex. 1011, “Ackermans”).
`11 U.S. Patent No. 6,158,245, issued Dec. 12, 2000 (Ex. 1012, “Savant”).
`12 U.S. Patent No. 6,801,799 B2, issued Oct. 5, 2004 (Ex.
`1008,“Mendelson-799”).
`13 U.S. Patent No. 5,893,364, issued Apr. 13, 1999 (Ex. 1015, “Haar”).
`
`Iwamiya, Sarantos,
`Venkatraman, Sarantos, Shie
`Ackermans, 10 Savant, 11
`Venkatraman, Mendelson-
`799, 12 Haar13
`Iwamiya, Sarantos,
`Venkatraman, Sarantos, Shie,
`Savant
`Ackermans, Savant,
`
`9
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`Patent 10,687,745 B1
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`Venkatraman, Sarantos
`
`10–14, 17,
`19, 21–26
`We instituted inter partes review of claims 1, 9, 15, 18, 20, and 27 of the
`’745 patent in IPR2022-01291. Apple Inc. v. Masimo Corp.,
`IPR2022-01291, Paper 15 (PTAB February 1, 2023) (“the ’1291 Institution
`Decision”). In the absence of a sufficient showing that a second petition was
`warranted as to those same claims on different grounds, we denied the
`petition in IPR2022-01292. Apple Inc. v. Masimo Corp., IPR2022-01292,
`Paper 15 (PTAB February 1, 2023). In this proceeding, the Petition, filed a
`little more than a month after the petition in IPR2022-01291, challenges
`dependent claims of the ’745 patent not challenged in IPR2022-01291 on
`substantially the same grounds raised in IPR2022-01291. See generally Pet.
`At the time the Petition was filed, Petitioner also filed a Notice
`Ranking Petitions, which is directed to requesting that we consider the
`Petition in this proceeding prior to considering the petition filed in
`IPR2022-01466. Paper 2 (“NRP”). Petitioner states in the NRP that it also
`filed petitions in IPR2022-01291 and IPR2022-01292 “challenging a
`different subset of claims of the ’745 [p]atent” and notes that the claims
`challenged in those proceedings were “asserted in co-pending ITC litigation,
`whereas the claims challenged here “are not asserted in the ITC.” NRP 2
`n.1. Petitioner does not, however, rank the Petition relative to the petitions
`filed in IPR2022-01291 and IPR2022-01292, and does not further address
`why the Petition was necessary in light of the petitions filed in those two
`earlier proceedings.
`Patent Owner, in its Response to Petitioner’s Notice Ranking
`Petitions, argues that, in accordance with the CTPG, Petitioner should have
`ranked all four petitions together, not in “two groups of two.” Paper 12, 1
`
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`Patent 10,687,745 B1
`(“PO-NRP”). Patent Owner further argues that the petitions in both this
`proceeding and in IPR2022-01291 “present substantially identical arguments
`based on the same combinations of art,” and that Petitioner shows no reason
`multiple petitions were required to address all of the claims challenged.
`Id. at 3; see also id. at 4 (arguing that the Petition in this proceeding
`regurgitates that same invalidity arguments Petitioner presented in the
`petition in IPR2022-01291 for independent claims 1, 15, and 20, and that all
`of the claims could have been addressed in one petition given the number of
`pages used by Petitioner).
`We agree with Patent Owner that, in accordance with the CTPG,
`Petitioner should have addressed and ranked all four petitions it filed
`challenging the same patent. Nevertheless, the CTPG does not impose a
`requirement on Petitioner, and instead “is intended to advise the public on
`the general framework of the rules.” CTPG 3. Accordingly, under the
`particular circumstances presented here, we will not deny the Petition merely
`for Petitioner’s failure to adhere to guidance provided in the CTPG directed
`to how a party “should” proceed.
`Under the particular circumstances presented here, we decline to
`exercise discretion to deny the Petition in light of the earlier filed petitions
`challenging other claims of the same patent. Although Petitioner filed prior
`petitions challenging claims of the ’745 patent, neither of those petitions
`sought review of the claims challenged in the Petition in this proceeding.
`Petitioner’s allegations here necessarily overlap with the petition filed in
`IPR2022-01291, because Petitioner challenges claims in this proceeding that
`depend from claims challenged in IPR2022-01291; however, Patent Owner
`concedes that the contentions here are “substantially identical arguments
`based on the same combinations of art.” PO-NRP 3. Although Patent
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`Owner correctly notes that we “will have to address the merits of the
`independent claims to address the dependent claims,” those independent
`claims are challenged in, and will likewise need to be addressed by us,
`in IPR2022-01291 on the substantially same basis. Thus, there is no
`duplicative burden on Patent Owner or the Board, or risk of inconsistent
`results, under the circumstances here. In sum, because we find the Petition
`challenges dependent claims not challenged in IPR2022-01291 on
`substantially the same grounds asserted and instituted in IPR2022-01291, we
`decline to discretionarily deny the Petition.
`B. Discretionary Denial of Institution Under 35 U.S.C. § 325(d)
`A petition may be denied because “the same or substantially the same
`prior art or arguments previously were presented to the Office.” 35 U.S.C.
`§ 325(d). When applying Section 325(d), we utilize a two-part framework.
`See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Only if
`the same or substantially the same art or arguments were previously
`presented to the Office do we then consider whether petitioner has
`demonstrated a material error by the Office. Id. “At bottom, this framework
`reflects a commitment to defer to previous Office evaluations of the
`evidence of record unless material error is shown.” Id. at 9.
`First, we determine “whether the same or substantially the same art
`previously was presented to the Office or whether the same or substantially
`the same arguments previously were presented to the Office.” Id. at 8.
`Under the first part of our framework, we consider (i) the similarities and
`material differences between the asserted art and the prior art involved
`during examination; (ii) the cumulative nature of the asserted art and the
`prior art evaluated during examination; and (iii) the extent of the overlap
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`between the arguments made during examination and the manner in which
`petitioner relies on the prior art or patent owner distinguishes the prior art.
`See Advanced Bionics, Paper 6 at 9 n.10, 10–11 (citing factors (a), (b),
`and (d) of Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5,
`first para.)). Second, “if either condition of [the] first part of the framework
`is satisfied,” we consider “whether the petitioner has demonstrated that the
`Office erred in a manner material to the patentability of challenged claims.”
`Id.
`
`In the Petition, to show the unpatentability of the challenged claims,
`Petitioner relies on the following five references: Iwamiya, Sarantos,
`Venkatraman, Shie, and Savant. Pet. 2. Petitioner argues that discretionary
`denial is not warranted, explaining that although Iwamiya was cited on the
`face of the ’745 patent, there is no indication in the file history that the
`examiner was aware of or considered Sarantos, Venkatraman, Shie, or
`Savant. Id. at 77–78 (citing Ex. 1002, 147–53). According to Petitioner, the
`examiner issued no rejections and entered a notice of allowance five weeks
`after the filing of the application that led to the ’745 patent. Id. at 77.
`Petitioner argues that the art and arguments presented in the Petition “cannot
`be said to be the same as, or substantially similar to, art and arguments
`previously presented to the Office in connection with the ’745 [p]atent,” and
`discretionary denial is not warranted. Id. at 78.
`Patent Owner does not discuss the relevant considerations for
`discretionary denial under Section 325(d) and Advanced Bionics. Instead,
`Patent Owner asserts that the examiner is presumed to have considered
`Iwamiya, and that Petitioner has “the burden to ‘overcom[e] the deference
`that is due’ to the USPTO.” Prelim. Resp. 35. In light of Patent Owner’s
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`failure to address the relevant considerations and the fact that four of the five
`asserted references were not previously presented to the Office, the first
`prong of the Advanced Bionics framework has not been met and no basis has
`been shown for the exercise of our discretion to deny the Petition.
`Legal Standards for Obviousness
`C.
`A patent claim is unpatentable for obviousness if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In
`Graham v. John Deere Co., 383 U.S. 1 (1966), the Supreme Court set out a
`framework for assessing obviousness that requires consideration of four
`factors: (1) the “level of ordinary skill in the pertinent art,” (2) the “scope
`and content of the prior art,” (3) the “differences between the prior art and
`the claims at issue,” and (4) “secondary considerations” of nonobviousness
`such as “commercial success, long felt but unsolved needs, failure of others,
`etc.” Id. at 17–18; KSR, 550 U.S. at 407.
`“Whether an ordinarily skilled artisan would have been motivated to
`modify the teachings of a reference is a question of fact.” WBIP, LLC v.
`Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted).
`“[W]here a party argues a skilled artisan would have been motivated to
`combine references, it must show the artisan ‘would have had a reasonable
`expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier
`Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
`Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)).
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`Level of Ordinary Skill in the Art
`D.
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted).
`Petitioner contends a person of ordinary skill in the art would have
`had “a working knowledge of physiological monitoring technologies,” “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 technologies” or “a Master of Science degree in a
`relevant academic discipline with less than a year of related work experience
`in the same discipline.” Pet. 5–6 (citing Ex. 1003 ¶¶ 25–26). Patent Owner
`does not dispute the level of ordinary skill identified by Petitioner. See
`Prelim. Resp. 10.
`For purposes of this Decision, we find that the ’745 patent and the
`cited prior art references reflect the appropriate level of skill at the time of
`the claimed invention and that the level of appropriate skill reflected in these
`references and in the ’745 patent is consistent with the level of skill
`proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001). Accordingly, for purposes of this Decision, this is the
`definition for a person of ordinary skill in the art we adopt.
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`Claim Construction
`E.
`We apply the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R.
`§ 42.100(b). Under that standard, claim terms “are generally given their
`ordinary and customary meaning” as would have been understood by a
`person of ordinary skill in the art at the time of the invention. Phillips, 415
`F.3d at 1312–13. “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor
`Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)). Extrinsic
`evidence is “less significant than the intrinsic record in determining ‘the
`legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317.
`Petitioner states that “[a]ll claim terms should be construed according
`to the Phillips standard.” Pet. 5. Further, according to Petitioner, “no claim
`terms need be construed to resolve issues of controversy in the present
`Petition.” Id.
`Patent Owner first argues that the Petition fails to identify “[h]ow the
`challenged claim is to be construed,” as required by 37 C.F.R.
`§ 42.104(b)(3). Prelim. Resp. 12–13. Patent Owner directs us to a portion
`of the Patent Trial and Appeal Board Consolidated Trial Practice Guide
`(Nov. 2019) (“CTPG”), which more fully states as follows:
`If a petitioner believes that a claim term requires an
`express construction, the petitioner must include a statement
`identifying a proposed construction of the particular term and
`where the intrinsic and/or extrinsic evidence supports that
`meaning. On the other hand, a petitioner may include a statement
`
`16
`
`
`
`IPR2022-01465
`Patent 10,687,745 B1
`that the claim terms require no express construction. The patent
`owner may then respond to these positions and/or propose
`additional terms for construction, with corresponding statements
`identifying a proposed construction of any particular term or
`terms and where the intrinsic and/or extrinsic evidence supports
`those meanings.
`CTPG 44–45.14 Patent Owner disregards the second sentence in the excerpt
`above, and instead asserts that the Petition “does not meet” some purported
`“requirement” of the first sentence of the excerpt. Prelim. Resp. 12. Patent
`Owner’s argument fails because the Petition makes clear, in conformance
`with both 37 C.F.R. § 42.104(b)(3) and the CTPG, that Petitioner contends
`that the Phillips standard applies and that no claim term requires express
`construction. See Pet. 5.
`Second, Patent Owner disputes the sufficiency of Petitioner’s
`contentions with regard to “the material configured to change the first shape
`into a second shape,” as recited in claims 1 and 20. Prelim. Resp. 12–17;
`Ex. 1001, 15:32–61, 17:20–18:17. According to Patent Owner, the claim
`term “second shape” must be expressly construed because Petitioner agreed
`in an ITC proceeding that a difference in shape requires more than a
`difference in size. Prelim. Resp. 13, 16–17. Patent Owner then argues that
`Petitioner fails to show how the proposed combination of Sarantos and Shie
`“would result in a change from a ‘first shape’ of light to a ‘second shape,’”
`and, thus, “the Petition should be denied.” Id. at 13. Relatedly, Patent
`Owner argues that the recited “material configured” is not properly equated
`or limited to “a diffuser only,” and that the material must be “configured to
`change the first shape into a second shape.” Id. at 17–18 (citing Ex. 2002
`¶¶45–46).
`
`14 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`17
`
`
`
`IPR2022-01465
`Patent 10,687,745 B1
`Patent Owner fails to show any disagreement between the parties, at
`this stage of the proceeding, over the meaning of “material configured to
`change the first shape into a second shape.” Merely disputing whether a
`claimed feature is taught by one combination of art asserted by Petitioner
`does not show that the Petition must be denied because of an absence of an
`express construction of a claim term. We find that Patent Owner has not
`identified any dispute over the meaning of “the material configured to
`change the first shape into a second shape” and that no express construction
`is required for purposes of this Decision.
`Third, Patent Owner argues that we should interpret the scope of
`claim 15 as excluding “arrangements of two or three photodiodes,” because
`claim 15 recites “the plurality of photodiodes are arranged in an array having
`a spatial configuration corresponding to a shape of the portion of the tissue
`measurement site encircled by the light block.” Prelim. Resp. 18–20;
`Ex. 1001, 16:36–17:3. Patent Owner reasons that during prosecution of a
`“parent application” with “a similarly phrased limitation,” it explained that
`two and three photodiodes can only represent a line or a triangle,
`respectively and therefore cannot represent a circular shape.” Id. at 18–20
`(citing Ex. 2002 ¶¶ 47–48 Ex. 2057, 322). Patent Owner fails to present a
`dispute on the current record over the construction of the recited “plurality
`of photodiodes.” Whether a particular configuration of photodiodes taught
`by the prior art meets the claim limitation is a separate issue and we find no
`express construction necessary for purposes of this Decision on the current
`record.
`
`Alleged Obviousness Over Iwamiya and Sarantos
`F.
`Petitioner contends the subject matter of claims 2, 3, 5, 6, 8, 10–12,
`and 14 of the ’745 patent would have been obvious over Iwamiya and
`
`18
`
`
`
`IPR2022-01465
`Patent 10,687,745 B1
`Sarantos. Pet. 5–23. Petitioner provides a detailed explanation of its
`contentions in the Petition, including a clause-by-clause analysis specifying
`how the combination of Iwamiya and Sarantos teaches each limitation, and
`those contentions are supported by the testimony of Dr. Anthony. Id.;
`Ex. 1064 ¶¶ 29–70.
`Below we provide a brief summary of Iwamiya and Sarantos. We
`then focus our discussion on dependent claim 3, and claim 1 from which it
`depends, including Patent Owner’s arguments in opposition directed
`primarily to the “surface comprising a dark-colored coating” recited in
`claim 1. Prelim. Resp. 21–22, 35–39. 15
`Summary of Iwamiya
`1.
`Iwamiya, titled Optical Biological Information Detecting Apparatus
`and Optical Biological Information Detecting Method, is directed “an optical
`biological information detecting apparatus” comprised of the following:
`a light emitting unit which emits observation light of a
`specific wavelength band to optically observe a desired portion
`of a tissue of a skin of a human body; an annular light guide unit
`
`15 Patent Owner also argues that Petitioner fails to address known objective
`indicia of nonobviousness. Prelim. Resp. 23–34. Patent Owner’s arguments
`refer to “measuring oxygen saturation at the wrist,” “the pulse oximetry
`space,” and specifically to claims 9 and 27. See, e.g., id. at 23,
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