Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: June 3, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`V.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`\
`
`IPR2021-00193
`Patent 10,299,708 Bl
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER,and
`AMANDAF. WIEKER,Administrative Patent Judges.
`
`KINDER,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 US.C. § 314,37 CFR. § 42.4
`
`
`571-272-7822
`
`Paper 7
`Entered: June 3, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`V.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`\
`
`IPR2021-00193
`Patent 10,299,708 Bl
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER,and
`AMANDAF. WIEKER,Administrative Patent Judges.
`
`KINDER,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 US.C. § 314,37 CFR. § 42.4
`
`
`
`IPR2021-00193
`Patent 10,299,708 B1
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1-29 (“challenged claims’’) of U.S. Patent No. 10,299,708
`
`B1 (Ex. 1001, “the ’708 patent’). Paper 2 (“‘Pet.”). Masimo Corporation
`
`(“Patent Owner”) waivedfiling a preliminary response. Paper 5 (“PO
`
`Waiver’).
`
`We have 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
`
`maynot be instituted unless it is determined that “the information presented
`
`in the petition filed under section 311 and any responsefiled under section
`
`313 showsthat there is a reasonablelikelihood 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 and based 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, weinstitute an inter partes review onall
`
`groundsset forth in the Petition.
`
`B. Related Matters
`
`Theparties identify the following matters related to the ’708 patent:
`
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`
`(C.D. Cal.) (filed Jan. 9, 2020);
`
`
`
`IPR2021-00193
`Patent 10,299,708 B1
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`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 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.
`
`2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB Aug.
`
`2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01538 (PTAB Sept.
`
`2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01539 (PTAB Sept.
`
`2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01713 (PTAB Sept.
`
`2020) (challenging claims of U.S. Patent No. 10,624,564 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01714 (PTAB Sept.
`
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1);
`
`Apple Inc. v. Masimo Corporation, [PR2020-01715 (PTAB Sept.
`
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01716 (PTAB Sept.
`
`2020) (challenging claims of U.S. Patent No. 10,702,194 B1);
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
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`Apple Inc. v. Masimo Corporation, IPR2020-01722 (PTAB Oct. 2,
`
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
`Apple Ine. v. Masimo Corporation, 1PR2020-01723 (PTAB Oct. 2,
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
`
`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 B1)
`
`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 Ownerfurther identifies the following pending patent
`
`applications, amongother issued 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.
`
`Paper 3, 2-3.
`
`
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`IPR2021-00193
`Patent 10,299,708 Bl
`
`C. The ’708 Patent
`
`The ’708 patentis titled “Multi-Stream Data Collection System for
`
`Noninvasive Measurement of Blood 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
`
`through a series of continuation and continuation-in-part applicationsto
`
`Provisional Application Nos. 61/078,228 and 61/078,207, both filed July 3,
`
`2008. Id. 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 sensor includes a sensor housing, an optical source, and several
`
`photodetectors, and is used to measure a blood constituent or analyte, e.g.,
`
`oxygen or glucose. /d. at 2:22—28, 57-58. The patient monitor includes a
`
`display and a network interface for communicating with a handheld
`
`computing device.
`
`/d. at 2:38—40.
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
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`Figure 1 of the ’708 patent is reproduced below.
`
`100
`
`
`
`SENSOR 10%
`
`MONITOR 109
`
`euiTTeR
`
`we”
`
`?
`
`102
`N93 DETECTORS
`106
`
`2
`—$| FRONT-END
`|
`INTERFACE
`
`f
`
`110
`
`:
`
`SIGNAL
`PROCESSOR
`
`INPUT DATA
`j
`108
`)
`
`
`}
`
`
`
`
`(
`4?USER
`MEASUREMENT
`
`CATA
`
`
`
`INTERFACE
`
`
`
`
`
`
`C
`3
`
`r
`FIG. 1
`
`STORAGE
`
`NETWORK
`INTERFACE
`
`7
`‘4
`
`¢
`118
`
`Figure 1 illustrates a block diagram of data collection system 100 including
`
`sensor 101 and monitor 109.
`
`/d. at 11:36-47. Sensor 101 includes optical
`
`emitter 104 and detectors 106.
`
`/d. at 11:48-52. Emitters 104 emit light that
`
`is attenuated or reflected by the patient’s tissue at measurementsite 102. Jd.
`
`at 13:60-67. Detectors 106 capture and measure the light attenuated or
`
`reflected from the tissue. Jd. In response to the measured light,
`
`detectors 106 output detector signals 107 to monitor 109 through front-end
`
`interface 108. Jd. at 13:64—66, 14:16—-22. Sensor 101 also may include
`
`tissue shaper 105, which maybein the form of a convex surfacethat: (1)
`
`reduces the thickness of the patient’s measurementsite; and (2) provides
`
`more surface area from which light can be detected.
`
`/d. at 10:61-11:3.
`
`Monitor 109 includes signal processor 110 and userinterface 112. Id.
`
`at 15:6-8. “[S]ignal processor 110 includes processing logic that determines
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
`
`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 onadisplay, e.g., a touch-screen display. Jd. at
`
`15:38-48. The monitor may be connected to storage device 114 and
`
`network interface 116. Jd. at 15:52-16:3.
`
`The ’708 patent describes various examples of sensor devices.
`
`Figures 14D and 14F, reproducedbelow,illustrate sensor devices.
`
`77 1450
`
`’
`
`FIG. 14D
`
`FIG. 14F
`
`Figure 14Dillustrates portions of a detector submount and Figure 14F
`
`illustrates portions of a detector shell. Jd. at 6:34—-37. As shownin
`
`Figure 14D, multiple detectors 1410c are located within housing 1430 and
`
`under transparent cover 1432, on which protrusion 605b (or partially
`
`cylindrical protrusion 605) is disposed.
`
`/d. at 35:23-25, 36:17—24.
`
`Figure 14F illustrates a detector shell 306f including detectors 1410c on
`
`substrate 1400c. Jd. 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. Jd.
`
`Alternatively, cylindrical housing 1430 may be disposed under noise
`
`shield 1403 and may enclose detectors 1410c. Jd. at 37:34—-36.
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
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`Figures 4A and 4B, reproduced below,illustrate an alternative
`
`example ofa tissue contact area of a sensor device.
`
` -470
`
`
`400
`
`|«0
`
`FIG. 4A
`
`FIG. 4B
`
`Figures 4A and 4Billustrate arrangements of protrusion 405 including
`
`measurement contact area 470. Jd. at 23:8-14. “[M]easurementsite contact
`
`area 470 can include a surface that molds body tissue of a measurement
`
`site.” Id. “For example, ... measurement site 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—-
`
`423 that “mimic or approximately mimic a configuration of, or even house, a
`
`plurality of detectors.” Jd. at 23:39-S3.
`
`D.
`
`Illustrative Claim
`
`Of the challenged claims, claims 1 and 19 are independent. Claim 1 is
`
`illustrative and is reproduced below.
`
`1. A noninvasive optical physiological
`comprising:
`
`sensing system
`
`[a] a platform including a planar surface;
`
`[b] a housing including a raised edge portion extending from
`and enclosingat least a portion ofthe planar surface;
`
`[c] at least four detectors arranged on the planar surface ofthe
`platform and within the housing, wherein the at
`least four
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`
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`IPR2021-00193
`Patent 10,299,708 Bl
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`detectors are arranged in a grid pattern suchthat a first detector
`and a second detector are arranged across from each other on
`opposite sides of a central point along a first 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 protruding light permeable cover.
`
`Ex. 1001, 44:36—50 (bracketed identifiers a—d added). Independent claim 19
`
`includeslimitations similar to limitations [a]—[d] of claim 1 but also requires
`
`distinct limitations discussed more below.
`
`J/d. at 45:53-46:11 (reciting a
`
`“platform,” “at least four detectors,” and a “light permeable cover...
`
`protruding above the raised wall’).
`
`E. Applied References
`
`Petitioner relies upon the following references:
`
`Beyer, Jr., U.S. Patent No. 7,031,728 B2, filed Sept. 21, 2004,
`issued Apr. 18, 2006 (Ex. 1019, “Beyer”);
`Ohsakiet al., U.S. Patent Application Publication No.
`2001/0056243 A1, filed May 11, 2001, published December 27, 2001
`(Ex. 1014, “Ohsaki’’);
`
`Aizawa, U.S. Patent Application Publication No.
`2002/0188210 A], filed May 23, 2002, published December 12, 2002
`(Ex. 1006, “Aizawa’’);
`Lo et al., U.S, Patent Application Publication
`No. 2004/0138568 A1, filed Jan. 15, 2003, published July 15, 2004
`(Ex. 1028, “Lo”);
`Inokawaet al., Japanese Patent Application Publication
`No. 2006-296564 A,filed April 18, 2005, published November2,
`2006 (Ex. 1007, “Inokawa”);!
`
`' Petitioner relies on a certified English translation of Inokawa (Ex. 1008).
`In this Decision, wealso refer to the translation.
`
`9
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`IPR2021-00193
`Patent 10,299,708 B1
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`Goldsmith et al., U.S. Patent Application Publication
`No. 2007/0093786 A1, filed July 31, 2006, published April 26, 2007
`(Ex. 1027, “Goldsmith”);
`Al-Ali et al., U.S. Patent Application Publication No.
`2008/0242958 A], filed Mar. 26, 2008, published Oct. 2, 2008
`(Ex. 1030, “Al-Ali’”);
`Y. Mendelsonetal., “Design and Evaluation of a New
`Reflectance Pulse Oximeter Sensor,” Association for the
`Advancement of Medical Instrumentation, vol. 22, No. 4, 167-173
`(1988) (Ex. 1015, “Mendelson-1988”’);
`Y. Mendelsonetal., “A Wearable Reflectance Pulse Oximeter
`for Remote Physiological Monitoring,” Proceedings of the 28th IEEE
`EMBS AnnualInternational Conference, 912—915 (2006) (Ex. 1016,
`“Mendelson-2006”).
`
`Pet. 3-4. Petitioner also submits, inter alia, the Declaration of Thomas W.
`
`Kenny, Ph.D. (Ex. 1003).
`
`F. Asserted Grounds
`
`Petitioner asserts that claims 1-29 are unpatentable based upon the
`
`following grounds:
`
`Claim(s) Challenged|35 U.S.C. §
`
`
`
`22, 24-27 pe
`
`
`22, 24-27 pe Aizawa, Inokawa, Ohsaki
`
`
`?|108|Aizawa, Inokawa, Mendelson-2006
`16, 27, 28
`103
`,
`-
`
`17, 18, 29
`103
`Aizawa, Inokawa, Mendelson-2006,
`
`Beyer
`
`
`
`1-9, 11, 13-15, 19-
`
`16-18, 27-29
`
`
`
`1-9, 11-15, 19-26
`
`103
`
`103
`
`103
`
`03
`
`03
`
`j
`
`ith,
`,
`Aizawa, Inokawa, Goldsmith, Lo
`
`Mendelson- 1988, Inokawa
`
`
`
`Claim(s) Challenged|_35 U.S.C. §
`7
`=
`)
`Mendelson-1988, Inokawa,
`16, 27, 28
`Mendelson-2006
`
`
`
`
`
`
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`IPR2021-00193
`Patent 10,299,708 Bl
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`
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`17, 18, 29
`
`
`
`Mendelson- 1988, Inokawa,
`Mendelson-2006, Beyer
`
`
`II., DISCUSSION
`
`A. Claim Construction
`
`Forpetitions filed on or after November 13, 2018, a claim shall be
`. construed using the same claim construction standard that wouldbeused to
`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. 4.
`
`Based on ouranalysis of the issues in dispute at this stage of the
`
`proceeding, weagree that no claim terms require express constructionat 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 prior art are such
`
`that the subject matter as a whole would have been obviousat the 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 contentofthe priorart;
`
`(2)any differences between the claimed subject matter andthepriorart;
`(3) the level of skill in the art; and (4) objective evidence of non-
`
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`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 elements in the fashion
`
`claimed by the patentat issue.” KSR, 550 U.S. at 418 (citing Jn re Kahn,
`
`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combinationofpriorart
`
`elements would have produceda predictable result weighsin the ultimate
`
`determination of obviousness.
`
`/d. at 416-417.
`
`In an inter partes review,the petitioner must show with particularity
`
`why each 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 never shifts to Patent Owner. Dynamic Drinkware,
`
`LLC v. 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 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.”
`
`Pet. 4—5 (citing Ex. 1003 ¢f 21-22). “Alternatively, the person could have
`
`also had a Master of Science degree in a relevant academic discipline with
`
`less than a year of related work experience in the same discipline.” Jd.
`
`* Patent Owner doesnotpresent objective evidence of non-obviousnessat
`this stage.
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`12
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`For purposesof this Decision, we generally adopt Petitioner’s
`
`assessmentasset forth above, which appears consistent with the level of
`
`skill reflected in the Specification andpriorart.
`
`D. Obviousness over the Combined Teachings of
`Aizawa and Inokawa
`
`Petitioner presents undisputed contentions that claims 1-9, 11, 13-15,
`
`19-22, 24-27 of the ’708 patent would have been obvious overthe
`
`combined teachings of Aizawa and Inokawa. Pet. 7-40.
`
`1. Overview ofAizawa (Ex. 1006)
`
`Aizawais a U.S. patent application publicationtitled “Pulse Wave
`
`Sensor and Pulse Rate Detector,” and discloses a pulse wave sensorthat
`
`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 reproducedbelow.
`
`FIG.
`
`1 (a)
`
`1
`
`Figure 1(a) is a plan view of a pulse wave sensor. Jd. § 23. As shownin
`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. Id. Aizawadiscloses
`that, “to further improve detection efficiency, ... the number of the
`
`13
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`photodetectors 22 may be increased.” Jd. | 32, 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. J 33.
`
`Figure 1(b) of Aizawais reproducedbelow.
`
`FIG.
`
`1 (b)
`
`
`
`
`
`
`VNU Z
`23a— nel ' \ 230\
`23¢
`11
`
`
`
`
`Figure 1(b) is a sectional view of the pulse wave sensor. /d. 4 23. As shown
`
`in Figure 1(b), pulse wave sensor 2 includes drive detection circuit 24 for
`
`detecting a pulse wave by amplifying the outputs of photodetectors 22. Id.
`
`q 23. Arithmetic circuit 3 computes a pulse rate from the detected pulse
`
`wave and transmitter 4 transmits the pulse rate data to an “unshown
`
`display.” Jd. The pulse rate detector further includes outer casing 5 for
`
`storing pulse wavesensor2, acrylic transparent plate 6 mountedto detection
`
`face 23a of holder 23, and attachmentbelt 7. Jd. { 23.
`
`Aizawa discloses that LED 21 and photodetectors 22 “are stored in
`
`cavities 23b and 23c formedin the detection face 23a” of the pulse wave
`
`sensor. Jd. § 24. Detection face 23a “is a contact side between the holder 23
`
`and a wrist 10, respectively, at positions where the light emitting face 21s of
`
`the light emitting diode 21 and the light receiving faces 22s of the
`
`photodetectors 22 are set back from the above detection face 23a.” Jd. ¥ 24.
`
`Aizawadiscloses that “a subject carries the above pulse rate detector 1 on
`
`14
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`the inner side ofhis/her wrist 10... in such a mannerthat the light emitting
`
`face 21s of the light emitting diode 21 faces down (on the wrist 10 side).”
`
`Id. 26. Furthermore, “the above belt 7 is fastened such that the acrylic
`
`transparent plate 6 becomescloseto the artery 11 of the wrist 10. Thereby,
`
`adhesion between the wrist 10 and the pulse rate detector 1 is improved.”
`
`Id. T§ 26, 34.
`
`2. Overview ofInokawa (Ex. 1008)
`
`Inokawais a Japanese published patent application titled “Optical
`
`_ Vital Sensor, Base Device, Vital Sign Information Gathering System, and
`
`Sensor Communication Method,” and discloses a pulse sensor device.
`
`Ex. 1008 § 6.
`
`Figure 1 of Inokawais reproduced below.
`
`(Fic.1)
`
`
`
`Figure 1 illustrates a schematic view of a pulse sensor. Jd. § 56. Pulse
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`sensor 1 includes box-shaped sensor unit 3 and flexible annular wristband5.
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`Id. J 57. Sensor unit 3 includes a top surface with display 7 and control
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`switch 9, and a rear surface (sensor-side) with optical device component11
`
`for optically sensing a user’s pulse. Jd.
`
`15
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`
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`IPR2021-00193
`Patent 10,299,708 Bl
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`Figure 2 of Inokawais reproduced below.
`
`(Fic.2)
`
`
`
`et
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`Figure 2 illustrates a schematic view of the rear surface of the pulse sensor.
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`Id. 1 58. The rear-side (sensor-side) of pulse sensor 1 includes a pair of
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`light-emitting elements,i.e., green LED 21 and infrared LED 23, as well as
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`photodiode 25 and lens 27. Jd.
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`In various embodiments, Inokawa discloses
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`that the sensor-side lens is convex. See id. J 99, 107. Green LED 21
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`senses “the pulse from the light reflected off of the body(i.e.[,] change in the
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`amount of hemoglobinin the capillary artery),” and infrared LED 23 senses
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`body motion from the changein reflected light. Jd. 959. The pulse sensor
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`stores this information in memory. Jd. ] 68. To read andstore information,
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`the pulse sensor includes a CPU that “performs the processing to sense
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`pulse, body motion, etc. from the signal .
`
`.
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`. and temporarily stores the
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`analysis data in the memory.” Jd. { 69.
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`16
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`Patent 10,299,708 B1
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`Figure 3 of Inokawais reproduced below.
`
`(Fic. 3)
`
`
`
`19613,15)
`
`9995.37)
`
`
`
`\/7
`
`a
`
`1
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`Figure 3 illustrates a schematic view of a pulse sensor mounted to a base
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`device. Id. ] 60. Pulse sensor 1 is depicted as mounted to base device 17,
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`which “is a charger with communication functionality.” Jd. When so
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`mounted, sensor optical device component 11 and base optical device
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`component 41 face each otherin close proximity. Jd. § 66. In this position,
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`pulse sensor 1 can output information to the base device through the coupled
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`optical device components. Jd. $67. Specifically, the pulse sensor CPU
`performs the controls necessary to transmit pulse information using infrared
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`LED 23 to photodetector 45 of base device 17. Id. J] 67, 70, 76. In an
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`alternative embodiment, additional sensor LEDs and base photodetectors can
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`be usedto efficiently transmit data and improve accuracy. Jd. J 111.
`
`17
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`
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`IPR2021-00193
`Patent 10,299,708 Bl
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`3.
`
`Independent Claim 1]
`
`Petitioner presents undisputed contentions that claim 1 would have
`
`been obvious over the combined teachings of Aizawa and Inokawa.Pet. 12-
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`16 (combination), 16—24 (claim 1).
`
`i. “A noninvasive optical physiological sensing system
`comprising: ”
`
`Onthis record, the cited evidence supports Petitioner’s undisputed
`
`contention that Aizawa discloses a measurement device,i.e., a pulse sensor
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`worn on a wearer’s wrist. Pet. 16; see, e.g., Ex. 1006 J 2 (‘“[A] pulse wave
`
`sensor for detecting the pulse wave of a subject from light reflected from a
`
`red corpuscle in the artery of a wrist of the subject by irradiating the artery
`
`of the wrist with light.”’).
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`ii. “a platform including a planar surface; ”
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`Onthis record, the cited evidence supports Petitioner’s undisputed
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`contention that Aizawadiscloses holder 23 for storing light emitting
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`diode 21 and photodetectors 22 and a platform including a planar surface on
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`which holder 23 is placed. Pet. 17-18; see, e.g., Ex. 1006 {J 23 (SLED 21
`
`... for emitting light having a wavelength of a near infrared range’’),
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`Figs. 1(a}{b). Petitioner provides the following annotated Figure 1(b)
`
`depicting the planar surface in brown.
`
`18
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`
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`IPR2021-00193
`Patent 10,299,708 B1
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`
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`Pet. 18. Annotated Figure 1(b) depicts Aizawa’s sensor with the platform
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`with a planar surface depicted in brown. Jd. Petitioner contends that a
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`person of ordinary skill in the art “would have understood that the various
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`electronic components of Aizawa, including its detectors and emitter, are
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`positioned within the holder 23 and further connected, throughthe identified
`
`platform that supports the holder 23, to a drive circuit 24 on the other side of
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`the holder/platform.” Jd. (citing Ex. 1006 § 23; Ex. 1003 4 75).
`
`iii. “[b] a housing including a raised edge portion extending
`from and enclosing at least a portion ofthe planar
`surface”
`
`Onthis record, the cited 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 9 76-77. Petitioner provides annotated versions of
`
`Aizawa’s Figures 1(a) and 1(b), which are reproduced below.
`
`19
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
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`
`
`3
`
`4 Jo Planarsurface
`2
`‘\ 23
`MA vs
`,
`10
`Housing: Ly YS]
`
`MSS: AY)
`yy
`
`23¢-“poy ASA
`23a— ag \a0
`well
`
`ODED DELL ELLSERs
`
`Raised edgeportion
`
`1
`
`Raised edge
`
`Housing
`
`Pet. 19-20. Figures 1(a) and 1(b) depict side and top views of Aizawa’s
`
`sensor with the housing depicted in red (holder 23), the raised edge depicted
`
`in purple, and the planar surface depicted in brown. Id.
`
`iv. “[c] at leastfour detectors arranged on the planar
`surface ofthe platform and within the housing, wherein
`the at leastfour detectors are arranged in a gridpattern
`such thatafirst detector and a second detector are
`arranged across from each other on opposite sides ofa
`central point along a first axis, and a third detector and a
`fourth detector are arranged across from each other on
`
`20
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
`
`opposite sides ofthe central point along a second axis
`which is perpendicularto the first axis; and”
`
`Onthis record, the cited evidence supports Petitioner’s undisputed
`
`contention that Aizawadisclosesat least four detectors 22 that are disposed
`
`aroundlight emitting diode 21 symmetrically in a perpendicular grid pattern
`
`aroundlight emitting diode 21. Pet. 20-21; see, e.g., Ex. 1006 {J 23 (“drive
`
`detection circuit 24 for detecting a pulse wave by amplifying the outputs of
`
`the photodetectors 22”), Fig. 1(a) (depicting detectors 22 spaced apart
`
`around LED 21 in asymmetricgrid pattern), Fig. 1(b) (depicting detectors
`
`22 connectedto a drive circuit 24 on the other side of the housing), 28 (‘the
`
`amplified output is converted into a digital signal for the computation of a
`
`pulse rate”); Ex. 1003 4] 78-80.
`
`Petitioner provides annotated Figure 1(a) of Aizawa showing how the
`
`four detectors “are arranged relative to a central point andfirst/second axes
`
`in the manner claimed, with the first/second axes being perpendicular to
`
`each other.” Pet. 22.
`
`First axis
`
`1
`
`FIG.
`
`1 (a)
`
`Second axis
`
`Centralpoint
`
`Pet. 22. Annotated Figure 1(a) depicts four detectors (in red) arranged in a
`
`grid pattern such that the first and second detector form a first axis that is
`
`21
`
`
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`IPR2021-00193
`Patent 10,299,708 B1
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`perpendicular to a second axis formed bythe third and fourth detectors. Id.
`
`Wefind Petitioner’s showing persuasive on the current record.
`
`v. “[d] the housing including a protruding light permeable
`cover.”
`
`Onthis record, the cited evidence supports Petitioner’s undisputed
`
`contentions regarding this limitation. Pet. 12-16, 22-24. Specifically,
`
`Petitioner contends that Aizawadiscloses a protruding coverin the form of
`
`an “acrylic transparent plate” mounted overat least a portion of the housing
`
`and to coverthe at least four detectors. Jd. at 22; Ex. 1006 {fj 23, 34
`
`(“{A]crylic transparentplate 6 is provided on the detection face 23a of the
`
`holder 23 to improve adhesionto the wrist 10.”), Fig. 1(b) (depictingflat,
`
`transparent plate 6 between sensor 2 and wrist 10); Ex. 1003
`
`83 (“Because
`
`the light permeable cover of Aizawa. .
`
`. protrudes from the rest of the
`
`housing and is designed to be pressed into the skin when worn,it is
`
`protruding—andis thus a protruding light permeable cover.”).
`Petitioner further contends that Inokawaalso teaches a protruding
`
`light permeable cover and provides motivation for incorporating such a
`
`cover into Aizawa. Pet. 13, 23. Specifically, Inokawa’s lens 27 is
`
`positioned between its sensor and the wearer’s skin, which increases the
`light gathering ability of the sensor.
`/d. at 13, 23; see, e.g., Ex. 1008 {J 15
`(“This lens makes it possible to increasethe light-gathering ability of the
`
`LED as well as to protect the LED or PD.”), 58 (disclosing “a single
`
`photodiode (S-side PD) 25 that receives the reflected light from these
`
`[LEDs], and an S-side lens 27”), Fig.2.
`In light of these teachings, Petitioner contends that a person of
`
`ordinary skill in the art “would have found it obvious to modify theflat
`
`22
`
`
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`IPR2021-00193
`Patent 10,299,708 Bl
`
`acrylic plate of Aizawa,asillustrated below,to further Aizawa’s objective of
`
`enhancinglight-collection efficiency,”i.e., “by modifying the light
`
`permeable cover of Aizawato include a convex protrusion that acts as a
`
`lens.” Pet. 13, 23-24.
`
`CLL OIAILAL TINECLeet
`
`
`
`
`
`
`
`
`Light permeable cover
`
`Pet. 14-15, 23-24; Ex. 1006 §J 13 (explaining that transparent plate 6 seeks
`
`to “improve adhesion” and “improve the detection efficiency of pulse
`
`waves”), 30 (same); Ex. 1008 J 15; Ex. 1003 J 82-87. Petitioner’s
`
`annotated and modified Figures depict Aizawa’s sensorincludingits flat
`
`transparentplate (left) and a modified version of Aizawa’s sensor in which
`
`the plate includes a convex protrusion. Pet. 14, 24.
`
`Petitioner contends this modification would have enjoyed a reasonable
`
`expectation of success because, for example, Inokawateachesthat the cover
`
`maybeflat, like that of Aizawa, to reduce scratches, or in the form ofa lens,
`
`as in Petitioner’s proposed modification, to increase light gathering ability.
`
`Id. at 14-16; see, e.g., Ex. 1008 F¥ 15 (“This lens makes it possible to
`
`increase the light-gathering ability.”), 106 (“[B]ecause the surface of the
`
`covers 123, 131 is flat, the surface is less prone to scratches than when the
`
`lens protrudes.”); Ex. 1003 § 88.
`
`23
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`
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`IPR2021-00193
`Patent 10,299,708 B1
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`At this stage of the proceeding, Petitioner’s stated reasoning forthe
`
`proposed modification is sufficiently supported, including by the unrebutted
`
`testimony of Dr. Kenny. See, e.g., Ex. 1003 J 83-88.
`
`vi. Summary
`
`For the foregoing reasons, we are persuaded that Petitioner’s cited
`
`evidence and reasoning demonstrates a reasonable likelihood that Petitioner
`
`would prevail in its contentions regarding claim 1.
`
`4.
`
`Independent Claim 19
`
`Independentclaim 19 consists of certain limitations that are similar to
`
`elements [a]—[d] of claim 1, but claim 19 also has distinct claim language.
`
`Compare Ex. 1001, 44:36—50, with id. at 45:53-46:11. In asserting that
`
`claim 19 also would have been obvious over the combined teachings of
`
`Aizawaand Inokawa,Petitioner refers to similar arguments presented as to
`
`claim 1. See Pet. 35-38; Ex. 1003 f§ 110-115. We address the differences
`
`in claim scope, and Petitioner’s arguments, below.
`
`Similar to claim 1, claim 19 requires a platform and a housing,but
`
`uniquely the claim further requires the “platform forming a base of a
`
`housing, the housing including a raised wall protruding from the platform.”
`
`Ex. 1001, 45:55—56. Dr. Kenny explains how Aizawateaches these unique
`
`“base of a housing”limitations of claim 19. See Ex. 1003 9 111-112
`
`(Aizawa’s “holder andthe platform together provide the housing in the
`
`mannerclaimed” and “the housing includesa raised wall .
`
`.
`
`. that protrudes
`
`from the platform.”). Thus, Petitioner shows how Aizawateaches these
`
`limitations. Pet. 35-36.
`
`24
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`
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`IPR2021-00193
`Patent 10,299,708 Bl
`
`Claim 19 similarly requires “at least four detectors” but instead of a
`having a “grid pattern” limitation (as with claim 1), claim 19 uniquely
`requires that the four detectors are spaced apart and “configured to output
`one or moresignals responsiveto light from one or more light emitters
`
`attenuated by bodytissue, the one or moresignals indicative of a
`
`physiological parameter of a wearer of the noninvasive optical physiological
`
`sensing system.” Ex. 1001, 46:3-8. Petitioner explains persuasively how
`
`Aizawa’s detectors detect light reflected by a red corpuscle running through
`
`an artery of the wrist, such that a pulse waveis detected. Pet. 36—37 (citing
`Ex. 1006 § 27). For example, Aizawa’s detectors output “waveform of a
`pulse wave,” and the output can be amplified and “converted into a digital
`signal for the computation of a pulse rate.”, Ex. 1006 7 28. “Thus,”
`according to Petitioner, “the detectors of Aizawa ‘output one or moresignals
`responsiveto light from the one or morelight emitters attenuated by body
`
`tissue.’” Pet. 37 (quoting Ex. 1003 § 114).
`
`The remaininglimitations of claim 19 are substantially the same as
`
`claim 1 discussed above. Considering the record before us, we are
`
`persuadedthat Petitioner’s cited evidence and reasoning demonstrates a
`
`reasonable likelihood that Petitioner would prevail in its contentions
`
`regarding claim 19.
`
`5. Dependent Claims 2-9, 11, 13-15, 20-22, and 24-27
`
`Petitioner presents undisputed contentions that claims 2-9, 11, 13-15,
`
`20-22, and 24-27, which dependdirectly or indirectly from independent
`
`claim 1 or 19, are unpatentable over the combined teachings of Aizawa and
`
`Inokawa, and provides argum
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