Trials@uspto. gov
`571-272-7822
`
`Paper 30
`Date: June 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2021-00193
`Patent 10,299,708 B1
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER,and
`AMANDAF. WIEKER,Administrative Patent Judges.
`
`KINDER,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. $ 318(a)
`
`
`571-272-7822
`
`Paper 30
`Date: June 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2021-00193
`Patent 10,299,708 B1
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER,and
`AMANDAF. WIEKER,Administrative Patent Judges.
`
`KINDER,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. $ 318(a)
`
`
`
`IPR2021-00193
`Patent 10,299,708 B1
`
`I.
`
`INTRODUCTION
`
`A, Background
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) pursuant to
`
`35 U.S.C. §§ 311-319 to institute an interpartes review of claims 1-29
`
`(“challenged claims”) of U.S. Patent No. 10,299,708 B1 (Ex. 1001, “the
`
`°708 patent’). Weinstituted the petitioned review (Paper7,“Institution
`
`Decision”or “Inst. Dec.”).
`
`Masimo Corporation (‘Patent Owner’’) filed a Patent Owner Response
`
`(Paper 14, “PO Resp.”) to opposethe Petition. Petitioner filed a Reply
`
`(Paper16, “Pet. Reply”) to the Patent Owner Response. Patent Ownerfiled
`
`a Sur-reply (Paper19, “Sur-reply”) to the Reply. We conducted an oral
`
`hearing on March 15, 2022. A transcript has been enteredinto the record
`
`(Paper29, “Tr.”).
`
`We havejurisdiction under 35 U.S.C. § 6(b)(4) and § 318(a). This
`
`Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R.
`
`§ 42.73 as to the patentability of claims 1—29 of the ’708 patent. We
`
`determine Petitioner has shown by a preponderanceofthe evidencethat
`
`those claims are unpatentable.
`
`B. Related Matters
`
`Theparties identify the following mattersrelated to the ’708 patent:
`
`Masimo Corporationy. Apple Inc., Civil Action No. 8:20-cv-00048
`
`(C.D. Cal.) (filed Jan. 9, 2020);
`
`Apple Inc. v. Masimo Corporation, JPR2020-01520 (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);
`
`
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`IPR2021-00193
`Patent 10,299,708 Bl
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`Apple Inc. v. Masimo Corporation, IPR2020-01523 (PTAB Sept. 9,
`
`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, YPR2020-01538 (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);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01714 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01715 (PTAB Sept.30,
`2020) (challenging claims ofU.S. PatentNo. 10,631,765 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01716 (PTAB Sept.30,
`
`2020) (challenging claims of U.S. Patent No. 10,702,194 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01722 (PTAB Oct.2,
`
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01723 (PTAB Oct.2,
`
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
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`Apple Inc. v. Masimo Corporation, IPR2020-01733 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,702,195 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01737 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,709,366 Bl)
`Apple Inc. v. Masimo Corporation, IPR2021-00195 (PTAB Nov. 20,
`2020) (challenging claims of U.S.Patent No. 10,376,190 B1);
`Apple Inc. v. Masimo Corporation, IPR2021-00208 (PTAB Nov. 20,
`
`2020) (challenging claims of U.S. Patent No. 10,258,266 B1); and
`
`Apple Inc. v. Masimo Corporation, IPR2021-00209 (PTAB Nov. 20,
`
`2020) (challenging claims of U.S. Patent No. 10,376,191 B1).
`
`Pet. 97-98; Paper 3, 3-4.
`
`Patent Ownerfurtheridentifies the following pending patent
`
`applications, among otherissued and abandonedapplications, that claim
`
`priority to, or share a priority claim with, the ’708 patent:
`
`U.S. Patent Application No. 16/834,538;
`
`U.S. Patent Application No. 17/031,407;
`
`U.S. Patent Application No. 17/031,316;
`
`U.S. Patent Application No. 17/031,356;
`
`U.S. Patent Application No. 16/449, 143; and
`
`U.S. Patent Application No. 16/805,605.
`
`Paper3, 2-3.
`
`C. The ’708 Patent
`
`The ’708 patentis titled ““Multi-Stream Data Collection System for
`
`Noninvasive MeasurementofBlood Constituents,” and issued on May 28,
`
`2019, from U.S. Patent Application No. 16/261,366,filed Jan. 29, 2019.
`
`Ex. 1001, codes (21), (22), (45), (54). The ’708 patent claimspriority
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
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`through a series of continuation and continuation-in-part applications to
`
`Provisional Application Nos. 61/078,228 and 61/078, 207, bothfiled July 3,
`
`2008. Jd. at codes (60), (63).
`
`The ’708 patent discloses a two-part data collection system including
`
`a noninvasive sensor that communicates with a patient monitor. Jd. at 2:31—
`
`33. The sensorincludesa sensor housing, an optical source, and several
`
`photodetectors, and is used to measure a blood constituentor analyte,e.g.,
`
`oxygen or glucose. Jd. at 2:22—28, 2:57-58. The patient monitor includes a
`
`display and a networkinterface for communicating with a handheld
`
`computing device. Jd. at 2:38—40.
`
`Figure 1 of the ’708 patent is reproduced below.
`
`100
`
`SENSOR 101
`MONITOR 109
`
`+02
`
`
`
`DRIVER
`
`‘
`111
`
`— OUTPUT
`
`DATA
`
`|
`
`INPUT OATA
`03 | DETECTORS
`EMITTER
`104.
`;
`|
`8
`=O"
`sionat
`(|
`FG —$| FRONT-END
`,
`
`
`
`: }|INTERFACEot PROCESSOR
`(iS jf
`yf)
`(107
`Popoonnqenn
`DATA
`|
`(
`MEASUREMENT
`|
`|
`USER
`1!
`Yo
`INTERFACE
`opTiONAL OFTCMAL
`.s
`TISSUE
`ry
`7
`sHaper
`SHIELD
`tt
`112
`18
`[OT 3
`MEMORY|------~- 4 NETWORK
`
`STORAGE||INTERFACE
`¢
`"3
`
`«FIG, 1
`
`4
`
`3
`118
`
`Figure | illustrates a block diagram ofdata collection system 100 including
`
`sensor 101 and monitor 109. Jd. at 11:36-47. Sensor 101 includes optical
`
`emitter 104 and detectors 106. Jd. at 11:48-52. Emitters 104 emit light that
`
`
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`IPR2021-00193
`Patent 10,299,708 Bl
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`is attenuated or reflected by the patient’s tissue at measurementsite 102. Id.
`
`at 13:60-67. Detectors 106 capture and measurethelight attenuated or
`
`reflected from the tissue. Jd. In response to the measuredlight,
`detectors 106 output detector signals 107 to monitor 109 through front-end
`interface 108. Id. at 13:64—66, 14:16-22. Sensor 101 also may include .
`
`tissue shaper 105, which maybein the form of a convex surfacethat: (1)
`
`reducesthe thicknessofthe patient’s measurementsite; and (2) provides
`
`more surface area from whichlight can be detected. /d. at 10:61—-11:3.
`
`Monitor 109 includes signal processor 110 and userinterface 112.
`/d.
`at 15:6-8. “[S]ignal processor 110 includes processing logic that determines
`
`measurements for desired analytes .
`
`.
`
`. based on the signals received from
`
`the detectors.” Jd. at 15:10-14. User interface 112 presents the
`
`measurements to a user on a display, e.g., a touch-screen display. Jd. at
`
`15:38-48. The monitor may be connectedto storage device 114 and
`
`networkinterface 116. /d. at 15:52—16:3.
`
`The ’708 patent describes various examples of sensor devices.
`
`Figures 14D and 14F, reproduced below,illustrate sensor devices.
`
`71450
`
`Y
`
`FIG. 14D
`
`FIG. 14F
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
`
`Figure 14Dillustrates portions of a detector submountand Figure 14F
`
`illustrates portions of a detector shell. Jd. at 6:34-37. As shown in
`
`Figure 14D, multiple detectors 1410c are located within housing 1430 and
`
`undertransparent cover 1432, on which protrusion 605b (orpartially
`
`cylindrical protrusion 605) is disposed. Jd. at 35:23—25, 36:17-24.
`
`Figure 14Fillustrates a detector shell 306f including detectors 1410c on
`
`substrate 1400c. Id. at 36:63-37:4. Substrate 1400c is enclosed by shielding
`
`enclosure 1490 and noise shield 1403, which include window 1492a and
`
`window 1492b,respectively, placed above detectors 1410c. Id.
`
`Alternatively, cylindrical housing 1430 may be disposed undernoise
`shield 1403 and may enclose detectors 1410c. Jd. at 37:34-36.
`
`Figures 4A and 4B, reproduced below,illustrate an alternative
`
`example of a tissue contact area of a sensor device.
`
`FIG. 4A
`
`FIG. 48
`
`Figures 4A and 4Billustrate arrangementsofprotrusion 405 including
`
`measurement contact area470. Jd. at 23:8-14. “[M]easurementsite contact
`
`area 470 can include a surface that molds bodytissue of a measurement
`
`site.” Jd. “For example, ... measurementsite contact area 470 can be
`
`generally curved and/or convex with respect to the measurementsite.” Jd. at
`
`23:31-33. The measurementsite contact area may include windows 420-—
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
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`423 that “mimic or approximately mimic a configuration of, or even house, a
`
`plurality of detectors.” Jd. at 23:39-53.
`
`D.
`
`Illustrative Claim
`
`Ofthe challenged claims, claims 1 and 19 are independent. Claim 1 is
`
`illustrative and is reproduced below.
`1 A noninvasive optical physiological
`comprising:
`
`[a] a platform including a planar surface;
`
`sensing system
`
`[b] a housing including a raised edge portion extending from
`and enclosingat least a portion of the planar surface;
`
`[c] at least four detectors arranged on the planar surface ofthe
`platform and within the housing, wherein the at
`least four
`detectors are arrangedin a grid pattern suchthata first detector
`and a second detector are arranged across from each other on
`opposite sides of a central point alongafirst axis, and a third
`detector and a fourth detector are arranged across from each other
`on opposite sides of the central point along a second axis which
`is perpendicularto the first axis; and
`
`[d] the housing including a protrudinglight permeable cover.
`
`Ex. 1001, 44:36—50 (bracketedidentifiers [a]—[d] added). Independent
`
`claim 19 includeslimitations similar to limitations [a]—[d] of claim 1 but
`
`/d. at 45:53-46:11
`
`also requires distinct limitations discussed more below.
`99: 6¢
`
`(reciting a “platform,”
`
`“at least four detectors,” and a “light permeable cover
`
`... protruding abovethe raised wall’).
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
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`E.
`
`Evidence Relied Upon
`
`Petitionerrelies on the following references:
`
`
`
`Aizawa
`
`U.S, Patent Application Publication No.
`
`1006
`
`2002/0188210Al,filedMay23,2002,published a
`
`
`
`December12, 2002.
`Inokawa Japanese Patent Application Publication No. 2006-|1007,
`296564 A, filed April 18, 2005, published
`1008!
`November2, 2006.
`U.S. Patent Application Publication No.
`
`
`
`Ohsaki
`
`1014
`
`1016
`
`Goldsmith|U.S. Patent Application Publication No. 1027
`
`
`— 2001/0056243Al,filedMay 11,2001,published _
`
`
`
`
`
`
`
`
`
`
`
`
`December27, 2001.
`
`Mendelson-| “A Wearable Reflectance Pulse Oximeter for
`
`
`
`
`
`2006
`Remote Physiological Monitoring,” Proceedings of
`
`the 28th IEEE EMBS AnnualInternational
`
`
`
`Conference, 912-915 (2006
`
`2006.
`
`2007/0093786 Al, filed July 31, 2006, published
`April 26, 2007.
`U.S. Patent Application Publication No.
`2004/0138568 Al, filed June 15, 2003, published
`July 15, 2004.
`Mendelson-|“Design and Evaluation of a New Reflectance Pulse|1015
`1988
`Oximeter Sensor,” Worcester Polytechnic
`
`Institution, Biomedical Engineering Program,
`Worcester, MA 01609; Association for the
`Advancement of Medical Instrumentation, Vol. 22,
`No. 4, 1988, 167-173.
`
`1028
`
`
`
`Lo
`
`
`
`
`
`
`
`
`Pet. 1-2.
`
`Petitioneralso relies on the declaration testimony of Thomas W.
`
`Kenny, Ph.D. (Exhibits 1003 and 1047). Patent Ownerrelies on the
`
`' Exhibit 1008 is an English translation of Exhibit 1007.
`
`9
`
`
`
`IPR2021-00193
`Patent 10,299,708 Bl
`
`declaration testimony ofVijay K. Madisetti, Ph.D. (Exhibit 2004). The
`
`parties also provide deposition testimony from Dr. Kenny and Dr. Madisetti,
`
`including from this and other proceedings. See Exs. 1034-1036, 2006—
`
`2009, 2027.
`
`F.
`
`Asserted Grounds
`
`Weinstituted an interpartes review based on the following grounds:
`
`
`Claim(s) Challenged_|35 U.S.C. §
`1-9, 11, 13-15, 19-22,
`.
`
`
`
`
`
`
`
`
`
`
`
`
`17, 18, 29 pos|Mendelson-2006,Beyer
`
`
`in 13-15, 19-22,
`16, 27, 28
`
`°
`
`16-18, 27-29
`
`1-9, 11-15, 19-26
`
`16, 27, 28
`
`°
`
`Aizawa, Inokawa, Ohsaki
`Aizawa, Inokawa, Mendelson-2006
`
`Aizawa, Inokawa, Mendelson-2006,
`Beyer
`
`Aizawa, Inokawa, Goldsmith, Lo
`,
`
`Aizawa, Inokawa, Al-Ali
`
`Mendelson- 1988, Inokawa
`
`Mendelson-1988, Inokawa,
`Mendelson-2006
`
`
`
`Mendelson- 1988, Inokawa,
`
`103
`
`A.—Principles ofLaw
`
`II.
`
`ANALYSIS
`
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`
`between the subject matter sought to be patented andthepriorart are such
`
`that the subject matter as a whole would have been obviousat the time the
`
`invention was madeto a person having ordinaryskill in the art to which said
`
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`10
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`IPR2021-00193
`Patent 10,299,708 Bl
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`(2007). The question ofobviousnessis resolved on the basis of underlying
`
`factual determinations, including (1) the scope and contentofthe prior art;
`
`(2) any differences betweenthe claimed subject matter and the priorart;
`
`(3) the level of skill in the art; and (4) objective evidence of non-
`
`obviousness.? Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). When
`
`evaluating a combination of teachings, we must also “determine whether
`
`there was an apparent reason to combine the known elementsin the fashion
`
`claimed bythe patentat issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`
`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination ofpriorart
`
`elements would have produced a predictable result weighsin the ultimate
`
`determination of obviousness.
`
`/d. at416—417.
`
`In an interpartes 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 CFR. § 42.104(b). The
`burden of persuasion nevershifts to Patent OWner. Dynamic Drinkware,
`
`LLC vy. Nat’! Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`
`We analyzethe challenges presented in the Petition in accordance
`
`with the above-stated principles.
`
`B.
`
`Level ofOrdinary Skill in the Art
`
`Petitioner identifies the appropriate level of skill in the art as that
`
`possessed by a person having “a Bachelor of Science degree in an academic
`discipline emphasizing the design ofelectrical, 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,
`
`* The parties do not present objective evidence of non-obviousnessbased on
`the final record.
`
`11
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`including but not limited to physiological monitoring technologies.” Pet. 4—
`
`5 (citing Ex. 100321-22). “Alternatively, the person could havealso had
`
`a Master of Science degree in a relevant academic discipline with less thana
`
`year of related work experience in the samediscipline.” Jd.
`
`Patent Ownerdoesnot challenge using Petitioner’s asserted level of
`
`skill, but notesthat “assertedlevelof skill (1) requires no coursework,
`
`training or experience with optics or optical physiological monitors;
`
`(2) requires no coursework,training or experience in physiology; and
`
`(3) focuses on data processing and not sensor design.” PO Resp. 9-10
`
`(citing Pet. 4-5; Ex. 2004 4 35-38).
`Weadopt Petitioner’s assessmentfor the person ofordinary skill in
`
`the art (“POSITA”) as set forth above, which appears consistent with the
`
`level of skill reflected in the Specification andpriorart.
`
`C.
`
`Claim Construction
`
`Forpetitions filed on or after November13, 2018, aclaim shall be
`construed using the sameclaim 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). Although both parties contend that no claim term
`requires express construction (Pet. 4; PO Resp. 9), the substance ofthe
`parties’ briefing demonstratesthat there is a dispute regarding the claim term
`
`“cover.”
`
`1.
`
`“cover”
`
`Each of independent claims 1 and 19 requires “a light permeable
`
`cover.” Ex. 1001, 44:50, 46:10.
`
`12
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`IPR2021-00193
`Patent 10,299,708 B1
`Patent Ownerarguesthat the claimed “cover” excludes “anoptically
`
`clear adhesive/epoxy”and a “resin on a surface.” PO Resp. 45-47.
`
`According to Patent Owner,“the ’708 Patent distinguishes a resin on a
`
`surface from a cover, explaining: ‘the cylindrical housing 1430 (and
`
`transparent cover 1432)... can protect the detectors 1410c and conductors
`
`1412c more effectively than currently-available resin epoxies.’” Id. at 45
`
`(quoting Ex. 1001, 36:37-46).
`
`Patent Owneralleges that Dr. Kenny also “distinguished a sealing
`
`resin from a cover, acknowledginga ‘layer of sealing resin’ is ‘one way to
`
`protect the components without using acover.’” Id. at 45—46 (quoting
`
`Ex. 2009, 395 :22-396:17). Patent Ownerarguesits understandingis
`
`consistent with the priorart cited by Petitioner.
`
`/d. at 46 (citing Ex. 1008
`
`q 103, Fig. 17; Ex. 1023 935; Ex. 1012, 5:2-6,Fig. 2B; Ex. 1013 4 32, Fig.
`
`2; Ex. 1027 ¥ 85, Fig. 9B; Ex. 2004 | 104).
`
`Petitionerreplies that “there is nothing in the specification or the
`
`prosecution history [of the ’708 patent] that would lead a [person of ordinary
`
`skill in the art] to conclude that ‘cover’ should be interpreted based on
`
`anything other than its plain meaning.” Pet. Reply 21 (citing Thornerv.
`
`Sony Computer Entertainment America LLC, 669 F.3d 1362, 1368 (Fed. Cir.
`
`2012)). That plain meaning, accordingto Petitioner, is that “a coveris
`
`merely ‘somethingthat protects, shelters, or guards.’” Jd. at 21 (quoting
`
`Ex. 1050; citing Pet. 74-75; Ex. 10474 43). Petitioner argues that Patent
`
`Owner’s reliance on the ’708 patent Specification takes text out of context
`
`and, when context is considered,it is clear that “the epoxy resin to which the
`
`°708 patent comparesits coveris not [an] epoxy cover. .. but rather epoxy
`
`that is applied to solder joints.” Jd. at 21-22 (citing Ex. 1001, 36:37-46;
`
`Ex. 1047 7 45).
`
`13
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`IPR2021-00193
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`Petitioner also contends that Patent Owner“mischaracterizes
`
`Dr. Kenny’s deposition testimony to say he agreed that ‘sealing resin’ is
`
`somehowdistinguished from a cover.” /d. at21. Petitioner contendsthat
`
`Dr. Kennysimply “clarified that using a sealing resin is ‘a pretty common
`
`wayto protect electronic components.’” Jd. (citing Ex. 2009, 395:22—
`
`396:17; Ex. 1047 4 44). Moreover, Petitioner contendsthat “such extrinsic
`
`evidence would not justify departure from plain meaning under Thorner.”
`
`Id.
`
`In its Sur-reply, Patent Owner maintainsthat the ’708 patent
`
`“specifically distinguishes a ‘resin’ on a surface from a ‘cover,’” and
`
`Petitioner’s opposing reading is not persuasive. Sur-reply 19-21.
`
`Uponreview ofthe record, we disagree with Patent Owner’s limiting
`
`construction of “cover” to exclude epoxy andresin. Theplain and ordinary
`
`meaning of the term does not support Patent Owner’s view. A “cover”
`
`ordinarily connotes “somethingthat protects, shelters, or guards.”
`
`Ex. 1050,? 288. That plain and ordinary meaningis consistent with the
`
`708 patent’s description of “flex circuit cover 360, which can be made of
`
`plastic or another suitable material. .
`
`. [and] can cover and therebyprotect a
`
`flex circuit (not shown).” Ex. 1001, 22:63—65. It also is consistent with the
`
`708 patent’s description andillustration of “transparent cover 1432”in
`
`Figure 14D, which covers and protects detectors 1410c and
`
`conductors 1412c, and which “can be fabricated from glass or plastic, among
`
`other materials.” See id. at 36:23-32 (emphasis added), Figs. 14D-14E.
`
`This is not the situation in which a special definition for a claim term
`
`has beenset forth in the specification with reasonable clarity, deliberateness,
`
`3 Merriam-Webster ’s Collegiate Dictionary, 11th ed. (©2005).
`
`14
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`IPR2021-00193
`Patent 10,299,708 B1
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`and precision, so as to give notice of the inventor’s own lexicography. See
`
`Merck & Co. v. Teva Pharms. USA, Inc. , 395 F.3d 1364, 1370 (Fed. Cir.
`
`2005); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Nordo we
`
`discern that Patent Owner“demonstrate[d] an intent to deviate from the
`
`ordinary and accustomed meaningof a claim term by including in the
`specification expressions of manifest exclusion orrestriction, representing a
`clear disavowal of claim scope.” Teleflex, Inc. v. Ficosa North America
`
`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).
`
`Here, based upon ourreview ofthe intrinsic evidence, no such special
`
`definition or express disavowal of the term “cover” to exclude epoxy and
`
`resin exists. Patent Ownerrelies on the following description of Figure 14D
`
`in that regard:
`
`the cylindrical housing 1430 (and
`In certain embodiments,
`transparent cover 1432) formsanairtight or substantially airtight
`or hermetic seal with the submount 1400c. As a result,
`the
`cylindrical housing 1430 can protect the detectors 1410c and
`conductors 1412c from fluids and vapors that can cause
`corrosion. Advantageously,
`in
`certain embodiments,
`the
`cylindrical housing 1430 can protect the detectors 1410c and
`conductors 1412c more effectively than currently-available resin
`epoxies, which are sometimes applied to solder joints between
`conductors and detectors.
`Ex. 1001, 36:37-46 (emphases added). First, the sentence cited by Patent
`Ownerbegins with the phrase “[iJn certain embodiments,” whichindicates
`
`the claimed invention is not limited and is open to other embodiments, so
`
`there is no lexicography or disavowal here. Second, we agree with
`
`Petitioner’s reading of this passage as distinguishing theprior art from the
`
`claimed invention based on the /ocation ofthe material (applied only to
`
`solder joints between conductors and detectorsin the prior art, as opposed to
`covering the conductors and detectors in the invention) and not the type of
`
`15
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`IPR2021-00193
`Patent 10,299,708 B1
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`material. Third, at best, the ’708 patent expresses a preference for a coverto
`
`be madeofglass or plastic, because such materials provide “more
`
`effective[]” protection than resin epoxies that were known whenthe ’708
`
`patent wasfiled. See id. at36:39-45. But eventhis reading recognizesthat
`
`resin epoxies provide some amountof protection, albeit perhaps a lesser
`
`amountthan glass orplastic, and are not excluded from forming the material
`
`of a cover.
`
`Dr. Kenny’s deposition testimony cited by Patent Owneralso does not
`
`persuadeusthat, in the context of the ’708 patent, epoxy or resin is excluded
`
`from the material of a cover. Dr. Kennytestifies that “a layer of sealing
`99 66
`
`“[c]ould” be used to protect the electronic components in a sensor
`
`resin”
`
`(Ex. 2009, 395:22—396:8). He wasthen asked “So that would be one way to
`
`protect the components without using a cover, correct?” to which he
`
`answered“[t]here are many waysto protect the elements other than using a
`
`cover” and maintained that the proposed combination ofprior art has a
`
`“cover” to achieve purposes other than protecting electronic components,
`
`i.e., “to improve adhesion and to improvelight gathering for the operation of
`
`the system.” /d. at 396:9-17. He did not squarelytestify that sealing resin
`
`may neverbe a cover.
`
`Accordingly, in the context of the ’708 patent, we do not construe the
`
`claimed “cover” to exclude epoxy andresin.
`
`2. Other Claim Terms
`
`Upon consideration of the entirety of the arguments and evidence
`
`presented, we conclude nofurther explicit construction of any claim term is
`
`neededto resolve the issues presented by the arguments and evidence of
`
`record. See Nidec Motor Corp. v. Zhongshan Broad Ocean MotorCo.
`
`16
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`
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`IPR2021-00193
`Patent 10,299,708 B1
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`Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need
`
`to be construed “only to the extent necessary to resolve the controversy”
`
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,200 F.3d 795, 803
`
`(Fed. Cir. 1999))).
`
`D.
`
`—Obviousness over Aizawa and Inokawa
`
`Petitioner contends that claims 1—9, 11, 13-15, 19-22, and 24-27 of
`
`the ’708 patent would have been obvious over the combined teachings of
`
`Aizawa and Inokawa. Pet. 7-40.
`
`1.
`
`Overview ofAizawa (Ex. 1006)
`
`Aizawa is a U.S. patent application publication titled “Pulse Wave
`
`Sensor and Pulse Rate Detector,” and discloses a pulse wave sensor worn on
`
`auser’s wrist that detects light output from a light emitting diode and
`
`reflected from a patient’s artery. Ex. 1006, codes (54), (57).
`
`Figure 1(a) of Aizawais reproduced below.
`
`FIG.
`
`1 (a)
`
`1
`
`Figure 1(a) is a plan view of a pulse wave sensor. Jd. 423. As shown in
`
`Figure 1(a), pulse wave sensor 2 includeslight emitting diode (“LED”) 21,
`
`four photodetectors 22 symmetrically disposed around LED 21, and
`
`holder 23 for storing LED 21 and photodetectors 22. Jd. Aizawadiscloses
`
`17
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
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`that, “to further improvedetection efficiency, .. . the numberofthe
`
`photodetectors 22 may be increased.” Jd. 932, Fig. 4(a). “The sameeffect
`
`can be obtained when the numberof photodetectors 22 is 1 and a plurality of
`
`light emitting diodes 21 are disposed around the photodetector 22.” Id. 433.
`
`Figure 1(b) of Aizawais reproduced below.
`
`FIG.
`
`1 (b)
`
`
`
`Figure 1(b) is a sectional view of the pulse wave sensor. Jd. 23. As shown
`
`in Figure 1(b), pulse wave sensor2 includes drive detection circuit 24 for
`detecting a pulse wave by amplifying the outputs of photodetectors 22. Id.
`
`Arithmetic circuit 3 computesa pulse rate from the detected pulse wave and
`
`transmitter 4 transmits the pulse rate data to an “unshowndisplay.” Jd. The
`
`pulse rate detector further includes outer casing 5 for storing pulse wave
`sensor 2, acrylic transparent plate 6 mountedto detection face 23a of holder
`
`23, and attachmentbelt 7. Id.
`
`Aizawadiscloses that LED 21 and photodetectors 22 “are stored in
`
`cavities 23b and 23c formedin the detection face 23a” of the pulse wave
`
`sensor. Id. 424. Detection face 23a “is a contact side between the holder 23
`
`and a wrist 10, respectively, at positions wherethe light emitting face 21s of
`
`the light emitting diode 21 andthe light receiving faces 22sof the
`photodetectors 22 are set back from the above detection face 23a.” Id.
`
`18
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
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`Aizawa disclosesthat “‘a subject carries the above pulse rate detector 1 on
`
`the innerside of his/her wrist 10... in such a mannerthat the light emitting
`
`face 21s of the light emitting diode 21 faces down(onthe wrist 10 side).”
`
`Id. 4 26. Acrylic transparentplate 6 is disposed betweenholder 23 and the
`
`user’s wrist 10. Jd. [9 23, 26, 30. Furthermore,“belt 7 is fastened such that
`
`the acrylic transparent plate 6 becomesclose to the artery 11 of the wrist
`
`10.” Id. 426. “Since the acrylic transparentplate 6 is provided on the
`
`detection face 23a of the holder 23, adhesion betweenthe pulse rate
`
`detector 1 and the wrist 10 can be improved, thereby further improving the
`
`detection efficiency of a pulse wave.” Jd. § 30.
`
`2.
`
`Overview ofInokawa (Ex. 1008)
`
`Inokawais a Japanese published patentapplicationtitled “Optical
`
`Vital Sensor, Base Device, Vital Sign Information Gathering System, and
`
`Sensor Communication Method,”and discloses a pulse sensor device that
`
`may be worn on a user’s wrist. Ex. 1008, code (54), ¥ 56.4
`
`4 Exhibit 1008 is an English translation of Exhibit 1007. In this Decision,all
`citations are to the English translation.
`
`19
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`
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`IPR2021-00193
`Patent 10,299,708 B1
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`Figure 1 of Inokawais reproduced below.
`
`(Fic. 1)
`
`
`
`Figure 1 illustrates a perspective view of a pulse sensor. Jd. 956. Pulse
`
`sensor| includes box-shaped sensorunit 3 and flexible annular wristband5.
`
`Id. 457. Sensor unit 3 includes a top surface with display 7 and control
`
`switch 9, and a rear surface (sensor-side) with optical device component11
`
`for optically sensing a user’s pulse. Jd.
`
`Figure 2 of Inokawais reproduced below.
`
`(Fic. 2)
`
`Figure 2 illustrates a schematic view ofthe rear surface of the pulse sensor.
`
`Id. § 58. The rear-side (sensor-side) ofpulse sensor 1 includesa pair of
`
`20
`
`
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`IPR2021-00193
`Patent 10,299,708 Bl
`
`light-emitting elements, i.e., green LED® 21 and infrared LED 23, as well as
`
`photodiode 25 and lens 27. Jd. In various embodiments, Inokawadiscloses
`
`that the sensor-side lens is convex. See id. J] 99, 107. Green LED 21
`
`senses “the pulse from thelight reflected off of the body(i-e.[,] change in the
`
`amount of hemoglobin in the capillary artery),” and infrared LED 23 senses
`
`body motion from the changein reflected light.
`
`Id. 459. The pulse sensor
`
`stores this information in memory.
`
`/d. 968. To read andstore information,
`
`the pulse sensor includes a CPU that “performsthe processing to sense
`
`pulse, body motion,etc. from the signal . .. and temporarily stores the
`
`analysis data in the memory.” /d. 7 69.
`
`Pulse sensor 1 includes lens 27, which “makesit possible to increase
`
`the light-gathering ability of the LED as well asto protect the LED or
`
`PD!!.” Jd. J 15, 58. Pulse sensor 1 also uses LEDs 21 and 23 to download
`
`data to a base station, as shownin Figure 3, reproduced below.
`
`> We understand “LED”to be an acronymfor“light emitting diode.”
`® Weunderstand “PD”to be an acronym for “photodiode.”
`
`21
`
`
`
`IPR2021-00193
`Patent 10,299,708 Bl
`
`(Fic. 3)
`
`1919.15) _
`
`39(35,32) 7]
`
`
`
`Figure 3 illustrates a schematic view of a pulse sensor mountedto a base
`
`device. Jd. ]60. Pulse sensor | is depicted as mountedto base device 17,
`
`which “is a charger with communication functionality.” Jd. When so
`
`mounted, sensor optical device component11 and base optical device
`
`component 41 face each otherin close proximity. Jd. J 66. In this position,
`
`pulse sensor 1 can output information to the base device through the coupled
`
`optical device components. Jd. 67. Specifically, the pulse sensor CPU
`
`performsthe controls necessary to transmit pulse information using infrared
`
`LED 23to photodetector 45 of base device 17. Jd. 467, 70,76. Inan
`
`alternative embodiment, additional sensor LEDsand base photodetectors can
`
`be used to efficiently transmit data and improve accuracy. Jd. 4111.
`
`22
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`
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`3.
`
`Independent Claim 1
`
`Petitioner contendsthat claim 1 would have been obvious overthe
`
`combined teachings of Aizawa and Inokawa. Pet. 12—16 (combination), 16—
`
`24 (claim 1).
`
`i.
`
`“A noninvasive opticalphysiological sensing system
`comprising: ”’
`
`Basedonthefinal record, the cited evidence supports Petitioner’s
`
`undisputed contention that Aizawa discloses a measurementdevice,i.e., a
`pulse sensor worn on a wearer’s wrist. Pet. 16; see, e.g., Ex. 1006 {2 (“[A]
`pulse wavesensorfor detecting the pulse waveof a subjectfrom light
`
`reflected from a red corpusclein the artery of a wrist of the subject by
`
`irradiating the artery of the wrist with light.”).
`
`it.
`
`[a] “a platform includingaplanarsurface,”
`
`The cited evidence supports Petitioner’s undisputed contention that
`
`Aizawadiscloses holder 23 for storing light emitting diode 21 and
`
`photodetectors 22 andaplatform including a planar surface on which holder
`23 is placed. Pet. 17-18; see, e.g., Ex. 10069 23 (“LED 21 .. . for emitting
`light having a wavelength ofanear infrared range”), Figs. 1(a){b).
`Petitioner provides the following annotated Figure 1(b) depicting the planar
`
`surface in brown.
`
`23
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
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` 3e—
`
`‘
`
`4nete! \ \ 230)
`228~ 23 wed
`
`2
`
`Pet. 18. Annotated Figure 1(b) depicts Aizawa’s sensor with the platform
`
`with a planar surface depicted in brown. Jd. Petitioner contendsthat a
`
`person of ordinary skill in the art “would have understoodthat the various
`
`electronic components ofAizawa,including its detectors and emitter, are
`
`positioned within the holder 23 and further connected, through theidentified
`platform that supportsthe holder23, to a drive circuit 24 on the other side of
`the holder/platform.” /d. (citing Ex. 1006 4 23; Ex. 1003 § 75).
`
`iit.
`
`[b] “a housing including a raised edgeportion
`extendingfrom and enclosing at least aportion ofthe
`planar surface”
`
`Thecited evidence supports Petitioner’s undisputed contention that
`
`Aizawadiscloses holder 23, which includesa flat surface and a circular
`
`raised edge extending from the surface. Pet. 19; see, e.g., Ex. 1006 § 23
`
`(“holder 23 for storing. .
`
`. light emitting diode 21 and the
`
`photodetectors 22”), Figs. 1(a)(b) (depicting holder 23 surrounding each
`detector 22); Ex. 1003 §§ 76-77. Petitioner provides annotated
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