Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Entered: May 12, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`Before JOSIAH C. COCKS, ROBERTL. KINDER,and
`AMANDAF. WIEKER, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`DECISION
`Granting Institution ofJnter Partes Review
`35 US.C. § 314
`
`
`571-272-7822
`
`Paper 8
`Entered: May 12, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`Before JOSIAH C. COCKS, ROBERTL. KINDER,and
`AMANDAF. WIEKER, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`DECISION
`Granting Institution ofJnter Partes Review
`35 US.C. § 314
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1-4, 8, 9, 11-19, and 21-30 (“challenged claims”) of U.S.
`
`Patent No. 10,470,695 B2 (Ex. 1001, “the °695 patent”). Paper 2 (“Pet.”).
`
`MasimoCorporation (“Patent Owner”) waivedfiling a preliminary response.
`
`Paper 7 (“PO waiver’).
`
`Wehave authority to determine whetherto institute an inter partes
`
`review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review
`
`maynotbeinstituted unless it is determined that “the information presented
`
`in the petition filed under section 31] and any responsefiled under section
`
`313 showsthat there is a reasonable likelihood that the petitioner would
`
`prevail with respect to at least 1 of the claims challengedin the petition.”
`
`35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Boardinstitutes
`
`the trial on behalf of the Director.”).
`
`For the reasons provided below andbased on the record before us, we
`
`determinethat Petitioner has demonstrated a reasonable likelihood that
`
`Petitioner would prevail in showing the unpatentability of at least one of the
`
`challenged claims. Accordingly, we institute an inter partes review onall
`
`groundsset forth in the Petition.
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
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`B. Related Matters
`
`Patent Owneridentifies the following matters related to the
`
`°695 patent:
`
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`
`(C.D. Cal.) (filed Jan. 9, 2020);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01520 (PTAB
`
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,258,265 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01521 (PTAB
`
`Sept. 2, 2020) (challenging claims of U.S. Patent No. 10,292,628 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01523 (PTAB
`
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 8,457,703 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01524 (PTAB
`
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,433,776 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01526 (PTAB
`
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 6,771,994 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01536 (PTAB
`
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB
`
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`
`Apple Inc. v. Masimo Corporation, JPR2020-01538 (PTAB
`
`Sept. 2, 2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01539 (PTAB
`
`Sept. 2, 2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01713 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,624,564 B1);
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`Apple Inc. v. Masimo Corporation, IPR2020-01714 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1 patent);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01715 (PTAB Sept.30,
`
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1 patent);
`
`Apple Inc. v. Masimo Corporation, {PR2020-01716 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,702,194 patent);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01723 (PTAB Oct.2,
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);'
`
`Apple Inc. v. Masimo Corporation, YPR2020-01733 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,702,195 B1); and
`
`Apple Inc. v. Masimo Corporation, IPR2020-01737 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,709,366 B1).
`
`Paper 4, 2-3.
`
`Patent Owneralso identifies the following pending patent applications
`
`that claim priority to, or share a priority claim with, the ’695 patent:
`
`U.S. Patent Application No. 15/195,199;
`
`U.S. Patent Application No. 16/532,061;
`
`U.S. Patent Application No. 16/532,065;
`
`U.S. Patent Application No. 16/791,955;
`
`U.S. Patent Application No. 16/791,963;
`
`U.S. Patent Application No. 16/835,712;
`
`1 Pursuant to the Board’s November 2019, Consolidated Trial Practice
`Guide, available at https://www.uspto.gov/TrialPracticeGuideConsolidated,
`Petitionerfiled a Notice ranking its two petitions that challenge the
`’695 patent, ranking first the instant proceeding and ranking second
`IPR2020-01723. Paper 3, 2. We exercise our discretion to denyinstitution
`of inter partes review in IPR2020-01723. See IPR2020-01723, Paper8.
`
`4
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`U.S. Patent Application No. 16/835,772;
`
`U.S. Patent Application No. 16/791,955; and
`
`U.S. Patent Application No. 16/871,874.
`
`Id. at 1-2.
`
`C. The ’695 Patent
`
`The 695 patentis titled “Advanced Pulse Oximetry Sensor,” and
`
`issued on November12, 2019, from U.S. Patent Application No.
`
`16/226,249, filed December 19, 2018. Ex. 1001, codes (21), (22), (45), (54).
`
`The ’695 patent summarizesits 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 Index™ (ORI™) 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.
`
`Td. at 2:36-46.
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
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`Figures 7A and 7B ofthe ’695 patent are reproduced below:
`
`Figures 7A and 7B abovedepict side and top views, respectively, of a three-
`
`dimensional pulse oximetry sensor according to an embodimentofthe
`
`°695 patent. Jd. at 5:28-33. Sensor 700 includes emitter 702,light
`
`diffuser 704, light block (or blocker) 706, light concentrator 708, and
`
`detector 710. Jd. at 10:49-51. The sensor functions toirradiate tissue
`
`measurementsite 102, e.g., a patient’s wrist, and detects emitted lightthat is
`
`reflected by the tissue measurementsite. Jd. at 10:43-49. “Light
`
`blocker 706 includes an annular ring having cover portion 707 sized and
`
`shaped to formalight isolation chamberfor the light concentrator 708 and
`
`the detector 710.” Jd. at 11:10-12. “[L]ight blocker 706 and cover 70[7]
`
`ensures that the only light detected by the detector 710 is light that is
`
`reflected from the tissue measurementsite.” /d. at 11:16—20.
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`Figure 8 of the ’695 patent is reproduced below:
`
`SENSOR
`so?
`
`MONITOR
`09
`
`’
`
`EMITTERS),-”
`COI Fee"
`Y<épe.oe.
`
`102
`
`DETECTOR
`
`WO 8
`
`INPUT DATA
` vo
`
`
`|
`USER
`
`
` NETWORK
`
`
`
`INTERFACE
`
`|
`i
`
`S14
`
`STORAGE
`
`INTERFACE
`
`FIG. 8
`
`Figure 8 aboveillustrates “a block diagram of an example pulse oximetry
`system capable of noninvasively measuring one or more blood analytes in a
`monitored patient.” Jd. at 5:34-36. Pulse oximetry system 800 includes
`sensor 801 (or multiple sensors) coupled to physiological monitor 809. Id.
`
`at 12:21-23. Monitor 809 includes “signal processor 810 that includes
`
`processing logic that determines measurementfor desired analytes based on
`the signals received from the detector 806”that is a part of sensor 801. Id. at
`13:37-40. 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 13:64-66.
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
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`D.
`
`Illustrative Claim
`
`Ofthe challenged claims, claims 1, 9, and 19 are independent.
`
`Claim 1 isillustrative and is reproduced below.
`
`1. A wrist-worn physiological monitoring device configured for
`placement on a user at a tissue measurement site, the device
`comprising:
`[a] a light emission source comprising a plurality of
`emitters configured to irradiate the tissue measurementsite by
`emitting light towards the tissue measurementsite, the tissue
`measurementsite being located on a wrist of the user,
`[b] the plurality of emitters configured to emit one or more
`wavelengths;
`[c] a plurality of detectors configured to detect the light
`emitted by the plurality of emitters after attenuation by a circular
`portion of the tissue measurementsite,
`[d] the plurality of detectors further configured to output
`at least one signal responsive to the detected light;
`[e] a processor configuredto receive theat least one signal
`responsiveto the output and determine a physiological parameter
`of the user; and
`[f] a light block forming an enclosing wall between the
`light emission source andthe plurality of detectors,
`[g] the light block defining the circular portion of the
`tissue measurement site,
`the light emission source arranged
`proximateafirst side of the enclosing wall and the plurality of
`detectors arranged proximate a secondside of the enclosing wall,
`the first side being difference than the secondside,
`[h] wherein the enclosing wall prevents at least a portion
`of light emitted from the light emission source from being
`detected by the plurality of detectors without attenuation by the
`tissue, and wherein the plurality of detectors are arranged in an
`array having a spatial configuration correspondingto the circular
`portion of the tissue measurementsite.
`Ex. 1001, 11:32-63 (bracketed identifiers a~h added).
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`E. Evidence Relied Upon
`
`Petitioner relies on the following references:
`. |Exhibit
`Reference _
`__ _Publication/Patent Number
`U.S. Patent No. 9,392,946 B1 issued July 19,|1014
`2016
`Mendelsonetal., Skin Reflectance Pulse
`Oximetry: In Vivo Measurements from the
`Forearm and Calf, Journal of Clinical
`Monitoring Vol. 7 No. 1, pp. 7-12 (January
`1991
`USS. Patent No. 8,998,815 B2 issued Apr. 7,
`2015
`U.S. Patent No. 6,343,223 B1 issued Jan. 29
`2002
`
`|Ackermans|WO 2011/051888 A2 published May 5, 2011|1016 |
`
`
`
`Mendelson-
`
`
`1991
`
`
`Venkatraman
`
`
`
`
`
`
`
`
`
`Chin
`
`
`
`
`
`
`
`
`1015
`
`
`
`
`
`
`1005
`
`1006
`
`Pet. 3. Petitioner also relies on the Declaration of Brian W. Anthony, Ph.D.
`
`(Ex. 1003).
`
`F. Asserted Grounds
`
`Petitioner asserts that claims 1-6, 8, 9, 11-19, and 21—30 are
`
`unpatentable based uponthe following grounds(Pet. 3):
`
`ame
`
`
`
`Claims Challenged|35 U.S.C. §
`1, 4, 5, 8,9, 13, 15-
`
`
`19, 24-30
`
`
`1, 2, 4, 5, 8, 9, 11, 13,
`15-19, 22, 24-30
`
`
`
`
`
`6, 14, 21
`1, 4,5, 8,9, 13, 15-
`17, 1924-26, 28, 29
`2,3, 11, 12, 18, 22,
`
`23, 27, 30
`
`
`
`Sarantos
`—
`Sarantos, Mendelson-1991
`
`
`
`
`
`
`
`
`Sarantos, Mendelson-1991,
`
`Chin
`
`Ackermans
`
`Ackermans, Venkatraman
`
`
`
`
`
`
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
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`Claims Challenged|35 U.S.C. §
`6, 14, 21
`Ackermans, Chin
`
`Il. ANALYSIS
`
`A. Claim Construction
`
`For petitions filed on or after November 13, 2018, a claim shall be
`
`construed using the same claim construction standard that would be usedto
`
`construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R.
`
`§ 42.100(b) (2019). Petitioner submits that no claim term requires express
`
`construction. Pet. 5. Based on our analysis of the issues in dispute atthis
`
`stage of the proceeding, we concludethat no further claim terms require
`
`express construction at this time. Nidec Motor Corp. v. Zhongshan Broad
`
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`B. Principles ofLaw
`
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`
`between the subject matter sought to be patented and the priorart are such
`
`that the subject matter as a whole would have been obviousatthe time the
`
`invention was madeto 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). The question of obviousnessis resolved on the basis of underlying
`
`factual determinations, including (1) the scope and content of the priorart;
`
`(2) any differences between the claimed subject matter and thepriorart;
`
`(3) the level of skill in the art; and (4) objective evidence of non-
`
`obviousness.2 Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). When
`
`2 Patent Owner doesnot present objective evidence of non-obviousnessat
`this stage.
`
`10
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`evaluating a combination of teachings, we mustalso “determine whether
`there was an apparent reason to combine the known elementsin the fashion
`claimed bythe patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`
`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination ofprior art
`
`elements would have produceda predictable result weighs in the ultimate
`
`determination of obviousness. Jd. at 416-417.
`
`In an inter partes review,the petitioner must show with particularity
`
`whyeach challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`
`burden of persuasion nevershifts to Patent Owner. Dynamic Drinkware,
`
`LLC vy. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`Weanalyze the challenges presented in the Petition in accordance
`
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`
`Petitioner identifies the appropriate level of skill in the art as follows:
`
`The person would have had a Bachelor of Science degree in an
`academic discipline emphasizing the design of electrical,
`computer, or software technologies, in combination with training
`or at least one to two years of related work experience with
`capture and processing of data or information, including but not
`limited to physiological monitoring technologies. Alternatively,
`the person could have also had a Master of Science degree in a
`relevant academicdiscipline with less than a year of related work
`experience in the samediscipline.
`
`Pet. 4—5 (citing Ex. 1003 4 17-19).
`
`For purposesof this Decision, we generally adopt Petitioner’s
`assessmentas set forth above, which appears consistent with the level of
`
`skill reflected in the Specification and priorart.
`
`11
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`IPR2020-01722
`Patent 10,470,695 B2
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`D. Obviousness Over Sarantos
`
`Petitioner presents undisputed contention that claims 1, 4, 5, 8, 9, 13,
`
`15-19, and 24—30 would have beenobvious based on Sarantos’s teachings.
`
`Pet. 6-35.
`
`1. Overview ofSarantos
`
`Sarantosis titled “Heart Rate Sensor With High-Aspect-Ratio
`
`Photodetector Element.” Ex. 1014, code (54). Sarantos describes
`
`“[photoplethysmographic (PPG)] sensors designed for use with wearable
`
`biometric monitoring devices” and which measure “physiological
`
`parameters” of a wearer such as “heart rate” and “blood oxygenationlevels.”
`
`Id. at 6:66—7:3; 13:39-47.
`
`7:24-28.
`
`162
`
`104
`
`oe
`
`Santos’s Figure 2 is reproduced on the
`
`right. Figure 2 illustrates “a wristband-type
`
`wearable fitness monitor that incorporates a
`
`PPG sensor[.]” Jd. at 5:55—-56. Fitness
`
`monitor 200 includes housing 104, back
`
`face 128 andlight sources 108. /d. at 7:12—
`
`23. “PPG sensors operate by shininglight
`
`into a person’s skin. This light diffuses
`
`through the person’s flesh and a portion of
`this light is then emitted back out of the
`person’s skin in close proximity to where the
`
`light was introducedinto the flesh.” Jd. at
`
`12
`
`
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`IPR2020-01722
`Patent 10,470,695 B2
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`_ Sarantos’s Figure 18 is reproduced below.
`
`1812 1812
`
`FIG. 18
`
`Figure 18 aboveillustrates an example of a PPG sensor photodetector layout
`
`with multiple light-emitting devices. Id. at 6:39-42. Photodetector
`elements 1812 are characterized as being in a “circular array” centered on
`
`light source 1808, which includes two light-emitting devices 1810. Jd. at
`
`14:60-62; 15:24-43. Sarantos describes that the PPG sensor
`
`logic, which may be communicatively
`may include control
`connected with the light source and each photodetector element
`and configured to cause the light source to emit light, obtain one
`or more measured light intensity measurements from the one or
`more photodetector elements, and determine a heart
`rate
`measurementbased, at least in part, on the one or more light
`intensity measurements.
`
`Td. at 2:5—12.
`
`
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`IPR2020-01722
`Patent 10,470,695 B2
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`Sarantos’s Figure 22 is reproduced below:
`
`2278
`
`2280
`
`2226
`2226
`2226
`2274
`
`WWomCQCERNSSS
`
`
`
`EEL:Ye
`
`
`2276
`
`
`2272
`2212
`
`2276
`
`FIG. 22
`
`Figure 22 above depicts another example configuration of a PPG sensor
`
`according to Sarantos’s invention. Jd. at 6:53-55. Substrate 2272 supports
`
`two high-aspect-ratio (HAR) photodetector elements 2212 positioned on
`either side of light source 2208. Jd. at 17:1-3. Window 2278is offset from
`
`substrate 2272. Id. at 17:34. Sarantos explains the following:
`
`The window 2278 maybe held against a person’s skin e.g., by
`being held in place with a strap, when heart rate measurements
`are obtained to allow light from the light source 2208 to shine
`through its associated window region 2226 andinto the person’s
`skin, wherethe light then diffuses into the surrounding flesh and
`is then emitted back out of the person’s skin and into the HAR
`photodetector elements 2212 through the respective window
`regions 226 associated with the HAR photodetector elements
`2212.
`
`Id. at 17:16—25.
`
`Santos additionally explains the following:
`
`In order to reduce the chance that light from the light
`source 2208 will reach either of the HAR photodetector elements
`2212 without first being diffused through the person’s skin, the
`light source 2208 may be separated from the HAR photodetector
`elements 2212 within the PPG sensor by walls 2274, which may
`
`14
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`IPR2020-01722
`Patent 10,470,695 B2
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`extend to the window 2278 or maystop short of the window
`2278.
`
`Id. at 17:26-32.
`
`2. Independent claim 1
`
`i.
`
`A wrist-worn physiological monitoring device configured
`for placement on a user at a tissue measurementsite, the
`device comprising:
`
`Asnoted above, Sarantos discloses a “wrist-band type fitness
`
`monitor” with a PPG sensorthat measures light emitted from a person’s
`
`skin. See, e.g., Ex. 1014, 5:55—56; 7:12—28; Fig. 2. Onthis record,the cited
`
`evidence supports Petitioner’s undisputed contention that Sarantos discloses
`
`a wrist-worn physiological monitoring device that is configured for
`placement on a userat a tissue measurementsite.? Pet. 7-8.
`
`ii.
`
`[a] a light emissions source comprising a plurality of
`emitters configured to irradiate the tissue measurementsite
`by emitting light towards the tissue measurementsite,
`
`Sarantos discloses multiple examples oflight sources that are intended
`
`to emit light towards a person’s skin. See, e.g., Ex. 1014, elements 108,
`1812, 2208. On this record, the cited evidence supports Petitioner’s
`undisputed contentionsthat limitation 1 [a] is disclosed by Sarantos. Pet. 8-
`
`10.
`
`3 Whether the preambleis limiting need not be resolvedat this stage of the
`proceeding because Petitioner showssufficiently for purposesof institution
`that the recitation in the preamble is satisfied by the priorart.
`
`15
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`IPR2020-01722
`Patent 10,470,695 B2
`
`iii.
`
`[b] the plurality ofemitters configured to emit one or more
`wavelengths;
`
`Sarantos describesthat its light sources can be formed as “separate
`
`light-emitting devices that are each able to emit different wavelengths of
`
`light” and that “each light emitting device may be used to supply light for a
`
`different type of photoplethysmographic measurement.” Ex. 1014, 13:50—
`
`53. At this time, the cited evidence supports Petitioner’s undisputed
`
`contentionsthat limitation 1[b] is disclosed by Sarantos. Pet. 10-11.
`
`iv.
`
`[ce] a plurality ofdetectors configured to detect the light
`emitted by the plurality ofemitters after attenuation by a
`circular portion ofthe tissue measurementsite;
`
`Sarantos discloses that its PPG sensor includes multiple detectors,
`
`e.g., detectors 1812, configured in a “circular array.” Ex. 1014, 14:60-62;
`
`15:24—43; Fig. 18. Pointing to the combined teachings of multiple
`
`embodiments of Sarantos,e.g., Figs. 18, 22—24, Petitioner contendsthat a
`
`“[person of ordinary skill in the art] would have understoodor at least found
`
`it obvious that the light blocking walls 2274, 2374, 2474 are configured in a
`
`circular manner aroundthe light source 2208, 2308, 2408.” Pet. 14-15.
`
`16
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`IPR2020-01722
`Patent 10,470,695 B2
`
`Petitioner provides a modified and annotated version (reproduced
`
`below) of Sarantos’s Figure 18 that Petitioner submits is what a skilled
`
`artisan would glean from Sarantos’s teachings.>
`
`[i] Photodetectors
`
`fi] Light source
`
`Light blocking wall
`
`APPLE-1014, FIG. 18 (modified to showlight blocking wall)
`
`According to Petitioner, “the modified FIG. 18 [above] showsa top view of
`
`how the light blocking/enclosing walls 2274, 2374, 2474 are configured
`
`based on Sarantos’ disclosure.” Pet. 15. Petitioner further argues that “a
`
`[person of ordinary skill in the art] would have understoodthat the
`
`light/blocking wall 2274, 2374, 2474 guides the light emitted by light source
`
`2208, 2308, 2408 to the tissue measurementsite” and that the measurement
`
`site is “circular.” Jd. at 15—16. On this record, weare satisfied that the cited
`
`evidence supports Petitioner’s undisputed contentionsthat limitation 1[c] is
`
`present in Sarantos. Pet. 11-18
`
`17
`
`
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`IPR2020-01722
`Patent 10,470,695 B2
`
`v.
`
`[d] the plurality ofdetectorsfurther configured to output at
`least one signal responsiveto the detectedlight;
`
`Sarantos discloses that “light emanating from the person’s skin is then
`
`measured by a photodetector element; this measuredlight intensity is
`
`depicted as data trace 348. The date trace 348 maybesplit into a DC
`
`component 346, which doesnotfluctuate with time, and an AC component
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`344, which does fluctuate with time.” Ex. 1014, 8:3-18. Petitioner contends
`
`that “[a person of ordinary skill in the art] would have understood thatthis
`
`data trace would be generated based on signals from Sarantos’ elements
`
`representative of the intensity ofthe detect light.” Pet. 19 (citing Ex., 1014,
`
`9:8-14; Ex. 1003
`
`46). Onthis record, the cited evidence supports
`
`Petitioner’s undisputed contentionsthat limitation 1[d] is disclosed by
`
`Sarantos. Pet. 18-21.
`
`vi.
`
`[e] a processor configured to receive the at least one signal
`responsive to the output and determine a physiological
`parameter ofthe user; and
`
`Petitioner points to Sarantos’s disclosure pertaining to processor 2768
`
`and control logic 2706 and contendsthat the processor “is configured to
`
`receive data collected by photodetectors to determine a physiological
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`parameter suchas the person’s heart rate.” Pet. 21 (citing Ex. 1014, 20:7
`
`23; Ex. 1003 § 48). On this record, weare satisfied by Petitioner’s
`
`undisputed contentions that the processor feature of imitation 1[e] is met by
`
`Sarantos.
`
`vii.
`
`[f] light blockforming an enclosing wall between the light
`emission source andthe plurality ofdetectors,
`
`[g] the light block defining the circular portion ofthe tissue
`measurementsite, the light emissions source arranged
`
`18
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`proximatea first side ofthe enclosing wall and the plurality
`ofdetectors arranged proximate a second side ofthe
`enclosing wall, the first side being difference than the
`second side, wherein the enclosing wall prevents at least a
`portion oflight emittedfrom the light emission sourcefrom
`being detected by the plurality ofdetectors without
`attenuation by thetissue,
`
`[h] and wherein the plurality ofdetectors are arranged in
`an array having a spatial configuration corresponding to
`the circular portion ofthe tissue measurementsite.
`
`Asdiscussed above in conjunction with limitation 1[c], Petitioner
`
`contendsthat a skilled artisan would have understood from the combined
`
`teachings of embodiments of Sarantos’s invention appearing, for instance,in
`
`Figures 15, 18 and 22-24 that a light blocking wall may be arranged
`
`between a circular array of photodetectors. Petitioner reasonsthat“this
`
`circular array of detectors has a spatial configuration correspondingto the
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`Sarantos’ light blocking/enclosing wall 2274, 2374, which protects light
`
`from the emitters from reaching the photodetectors directly. Pet. 24 (citing
`
`Ex. 1014, Figs. 15, 18, 22-24, 14:54—15:45, 17:1-18:35. Petitioneralso
`
`contendsthat “the photodetectors in Sarantos are arranged in an array having
`
`a spatial configuration correspondingto the circular portion ofthe tissue
`
`measurementsite.” Jd. at 25 (citing Ex. 1003 4 52).
`
`Atthis time, the cited evidence supports Petitioner’s undisputed
`
`contention that the light block and its arrangementasset forth in
`
`limitations 1[f-h] are satisfied based on Sarantos’s teachings.
`
`19
`
`
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`IPR2020-01722
`Patent 10,470,695 B2
`
`viii.
`
`Summary
`
`For the foregoing reasons, we are persuadedthat Petitioner’s cited
`
`evidence and reasoning demonstrates a reasonablelikelihood that Petitioner
`
`would prevail in its contentions that claim 1 is unpatentable over Sarantos.
`
`3. Claims 4, 5, 8, 9, 13, 15-19, and 24-30
`
`Claim 9 is an independent method claim that correspondsto the
`
`claim 1. Independent claim 19 is similar in scope to claim 1. Claims4, 5, 8,
`13, 15-18, and 24-30 ultimately depend from one of claims 1, 9, and 19.
`
`Wehaveconsidered Petitioner’s assessment, and supporting record
`
`evidence, in accounting for claims4, 5, 8, 9, 13, 15-19, and 24-30. See
`
`Pet. 25-35. On this record, we conclude that Petitioner has also shown a
`
`reasonable likelihood of successin its challenges to those claims based on
`
`Sarantos.
`
`E. Obviousness Over Sarantos and Mendelson-1991
`
`Petitioner also contendsthat claims 1, 2, 4, 5, 8, 9, 11, 13, 15-19, 22,
`
`24-30 are unpatentable based on the combined teachings of Sarantos and
`
`Mendelson-1991. Pet. 35-55.
`
`1. Overview ofMendelson-1991
`
`Mendelson-1991 is an article from the Journal of Clinical Monitoring
`
`titled “Skin Reflectance Pulse Oximetry: In Vivo Measurements from the
`
`Forearm and Calf.” Ex. 1015, 1. Thearticle “describe[s] preliminary in
`
`vivo evaluation of a new optical reflectance sensor for noninvasive
`
`monitoring of SaO2 with a modified commercial transmittance pulse
`
`oximeter.” Jd. at 2.
`
`20
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`Mendelson-1991’s Figures 1A and 1B are reproduced below:
`
`CPReCote
`
`Te
`PERATURE.
`‘TRANSDUCER
`
`OPTICAL SETELS
`
`PROTORIC
`
`ES =
`
`OPTICALLY
`CLEAR EPOXY
`ALRE
`(S
`AAS
`SCAT
`
`RG IR i
`
`fur rk
`
`OTSDLOBES
`
`RING
`
`° W
`
`RMOFPO IL
`EATER
`
`SILICONE
`RUBEIR.
`
`+ ee
`DSpeed
`
`
`ASiT)LLLLAWe
`NN
`
`N
`
`CLLLILLL
`
`The figures aboveillustrates “(A) Frontal and (B) side view of the heated
`
`skin reflectance pulse oximeter sensor.” Jd. The figures show a pulse
`
`oximeter sensor that includes, among other things, multiple “photodiodes,”
`‘
`
`“light-emitting diodes (LEDs),” and an
`
`‘optical shield.” Jd.
`
`2. Discussion
`
`As discussed above,
`
`on the current record we conclude that Petitioner
`
`has established a reasonable likelihood of successin its challenge to
`
`claims 1, 4, 5, 8, 9, 13, 15-19, and 24-30 are unpatentable over Sarantos
`
`21
`
`
`
`
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`taken alone. In urging the unpatentability of claims 1, 2, 4, 5, 8, 9, 11, 13,
`
`15-19, 22, 24-30 based on Sarantos and Mendelson-1991, Petitionerrelies
`
`on Mendelson-1991’s teachings . Specifically on the teachingsrelated to its
`
`optical shield to bolster the position that a skilled artisan would have
`
`appreciated that a light blocking wall may be configuredin a circular
`
`arrangement betweena circular array of detectors and light emitters to
`
`“ensure that only light that has been attenuated from the tissue measurement
`
`site is detected and notlight directly emitted from the emitters.” See, e.g.,
`
`Pet. 36-37 (citing, for instance, Ex. 1015, 2 Figs. 1(A), 1(B); Ex. 1003 ff]
`
`65-66). Petitioner provides a colorized and annotated version of
`
`Mendelson-1991’s Figures 1(A) and 1(B), which we reproduce below:
`
`Photodiodes
`
`OL?
`
`
`
`
`on peg\sbeso tyeee foes a fogese ofe> mma
`
`BRN :
`oS
`
`Uy
`
`APPLE-1015, FIG. 1(A)(left), FIG. 1(B) (right)
`
`Figures 1(A) and 1(B) above highlight Mendelson-1991’s
`
`configuration of its optical shield in relation to its photodiodes. Petitioner
`
`argues that “Sarantos and Mendelson-1991 are related to obtaining
`physiological parameters using a reflection system in which1) a light
`shield/block layer is located between the emitters and detectors, and
`
`22
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`2) emitters emit radiation thatis reflected from the humantissue and
`detected by detectors in a reflection measurementsetup.” Pet. 36. Petitioner
`takes the position with respect to the combined teachings of Sarantos and
`
`Mendelson-1991:
`
`Implementing the circular light blocking/enclosing wall 2274,
`2374, 2474 would have been obviousto do so becausea circular
`arrangementofdetectors surroundsthe emitters, the circular light
`blocking/enclosing wall 2274, 2374, 2474 would ensure that
`only light that has been attenuated from the tissue measurement
`site is detected and not light directly emitted from the emitters,
`as described by both Sarantos and Mendelson-1991.
`
`Id. at 37.
`
`Petitioner also contendsthat “[a person of ordinary skill in theart]
`would have combinedthe teachings of Sarantos and Mendelson-1991
`because doing so would have amounted to nothing more than the use of a
`known technique to improve similar devices in the same way and combining
`prior art elements according to known methods to yield predictableresults.”
`
`Id. at 36.
`
`In our view, having considered Petitioner’s assertions as to the
`
`teaching value of the combination of Sarantos and Mendelson-1991, we
`concludethe present record supports Petitioner’s undisputed contentions that
`claims 1, 2, 4, 5, 8, 9, 11, 13, 15-19, 22, 24-30 are unpatentable based on
`
`that combination.
`
`F. Additional Grounds
`
`Petitioner provides arguments and evidence, including the Anthony
`
`Declaration, in support of Petitioner’s following additional grounds:
`
`
`
`
`
`
`Claims Challenged
`3, 12, 23
`
`|__35 U.S.C.§
`103
`
`References/Basis
`Sarantos, Mendelson-1991,
`
`Venkatraman
`
`23
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`Claims Challenged
`
`35 U.S.C. §
`
`6, 14, 21
`
`1, 4, 5, 8, 9, 13, 1S—
`
`2,3, 11, 12, 18, 22,
`23, 27, 30
`6, 14, 21
`
`103
`
`103
`
`
`
`
`
`References/Basis
`Sarantos, Mendelson-1991,
`Chin
`
`Ackermans, Venkatraman
`
`Ackermans, Chin
`
`
`
`
`
`
`
`
`
`
`
`
`See Pet. 55—106. Patent Owner doesnotoffer, at this stage, any arguments
`
`addressing Petitioner’s substantive showing. See generally PO Waiver. We
`
`have reviewed Petitioner’s arguments and the cited evidence, and we
`determine Petitioner has demonstrated a reasonablelikelihood ofprevailing
`as to those contentions. Pursuant to USPTO policy implementing the
`
`decision in SAS JInst., Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“SAS”), we
`
`institute as to all claims challengedin the petition and on all groundsin the
`petition. See PTAB Consolidated Trial Practice Guide (Nov. 2019)* 5-6, 64.
`
`Ill. CONCLUSION
`
`The Supreme Court held that a final written decision under 35 U.S.C.
`
`§ 318(a) must decide the patentability of all claims challenged in the
`petition. See SAS. After considering the evidence and arguments presented
`in the Petition, we determine that Petitioner has demonstrated a reasonable
`
`likelihood of success in proving that at least one claim of the 695 patentis
`
`unpatentable. Accordingly, weinstitute an inter partes review ofall claims
`
`and all groundsset forth in the Petition.
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`24
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`Atthis stage of the proceeding, we have not madea final
`
`determination as to the patentability of any challenged claim oras to the
`
`construction of any claim term.
`
`IV. ORDER
`
`In consideration of the foregoing,it is
`
`ORDEREDthat, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of claims 1-6, 8, 9, 11-19, and 21—30 of the ’695 patentis instituted
`
`with respectto all groundsset forth in the Petition; and
`
`FURTHER ORDEREDthat, pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4(b), inter partes review of the ’695 patent shall commence
`
`on the entry date of this Order, and notice is hereby given ofthe institution
`
`ofa trial.
`
`25
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`For PETITIONER:
`
`Walter Renner
`Dan Smith
`Kenneth Hoover
`FISH & RICHARDSONP.C.
`axf-ptab@fr.com
`dsmith@fr.com
`hoover@fr.com
`
`For PATENT OWNER:
`
`Joseph Re
`Stephen Larson
`Shannon Lam
`Jarom Kesler
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2jrr@knobbe.com
`2swl@knobbe.com
`2sxl@knobbe.com
`2jzk@knobbe.com
`
`26
`
`
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