`571-272-7822
`
`"
`
`Paper31
`Entered: May 2, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`Vv.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01713
`Patent 10,624,564 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)
`
`
`
`IPR2020-01713
`Patent 10,624,564 Bl
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`I. INTRODUCTION
`
`A. Background
`Apple Inc.(‘Petitioner’) filed a Petition requesting an inter partes
`
`review of claims 1-30 (“challenged claims”) of U.S. Patent No. 10,624,564
`
`B1 (Ex. 1001, “the °564 patent”). Paper 2 (“Pet.”). Masimo Corporation
`
`(“Patent Owner”) waivedfiling a Preliminary Response. Paper 6. We
`
`instituted an inter partes review ofall challenged claims 1—30 onall asserted
`
`groundsof unpatentability, pursuant to 35 U.S.C. § 314. Paper 7 (“Inst.
`
`Dec.”).
`
`After institution, Patent Ownerfiled a Response (Paper 14, “PO
`
`Resp.”) to the Petition, Petitioner filed a Reply (Paper 18, “Pet. Reply”), and
`
`Patent Ownerfiled a Sur-reply (Paper 21, “Sur-reply”). An oral hearing was
`held on February 9, 2022, and a transcript of the hearing is includedin the
`record. Paper 30 (‘““Lr.”).
`
`Weissue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasonsset forth below, Petitioner has met
`
`its burden of showing, by a preponderanceofthe evidence, that challenged
`
`claims 1—30 of the ’564 patent are unpatentable.
`
`B. Related Proceedings
`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);
`
`
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`Patent 10,624,564 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.
`2020) (challenging claims of U.S. Patent No. 6,771,994 B2);
`
`31,
`
`Apple Inc. v. Masimo Corporation, IPR2020-01536 (PTAB Aug.
`
`31,
`
`2020) (challenging claims 1-29 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.
`
`31,
`
`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, IPR2020-01714 (PTAB Sept.
`
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01715 (PTAB Sept.
`
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1);
`
`Apple Inc. v. Masimo Corporation, 1PR2020-01716 (PTAB Sept.
`
`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);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01733 (PTAB Sept.
`
`30,
`
`2020) (challenging claims of U.S. Patent No. 10,702,195 B1); and
`
`3
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`Apple Inc. v. Masimo Corporation, IPR2020-01737 (PTAB Sept.30,
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`2020) (challenging claims of U.S. Patent No. 10,709,366 B1).
`
`Pet. 3; Paper 3, 1, 3-4.
`
`Patent Ownerfurther identifies certain pending patent applications, as
`
`well as other issued and abandonedapplications, that claim priority to, or
`
`share a priority claim with, the ’564 patent. Paper 3, 1-2.
`
`C. The ’564 Patent
`
`The 564 patentis titled “Multi-Stream Data Collection System for
`
`Noninvasive Measurement of Blood Constituents,” and issued on April 21,
`
`2020, from U.S. Patent Application No. 16/725,292,filed December23,
`
`2019. Ex. 1001, codes (21), (22), (45), (54). The ’564 patent claimspriority
`
`through a series of continuation and continuation-in-part applications to
`
`Provisional Application Nos. 61/086,060, 61/086,108, 61/086,063, and
`
`61/086,057, each filed on August 4, 2008, as well as 61/091,732, filed on
`
`August 25, 2008, and 61/078,228 and 61/078,207, both filed on July 3,
`
`2008. Id. at codes (60), (63).
`
`The ’564 patent discloses a two-part data collection system including
`
`a noninvasive sensor that communicates with a patient monitor. Id. at 2:47—
`
`51. 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. Jd. at 2:38-46, 3:4-6. The patient monitor includes a
`
`display and a network intcrface for communicating with a handheld
`
`computing device. /d. at 2:54—-57.
`
`
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`IPR2020-01713
`Patent 10,624,564 B1
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`Figure 1 of the ’564 patent is reproduced below.
`
`100
`
`SENSOR 101
`
`MONITOR 109
`
`2
`
`‘
`
`EMITTER
`108 A gle
`On.
`a
`.
`
`103
`ve «7 DETECTORS
`{Gr
`}
`_
`/
`Jia
`—+
`| SIGNAL
`ran
`:
`PROCESSOR
`Ne 4 i
`i) (70| pe--4--- OUTPUT
`
`
`z
`‘
`1
`(|
`MEASUREMENT i
`DATA
`\
`DATA
`‘|
`cen
`|
`DRIVER
`to
`OPTIONAL OPTIONAL
`i!
`INTERFACE
`NOISE
`Fissu
`tot
`
`mien
`
`INPUT DATA
`
`108
`3
`
`|
`
`i
`
`
`
`— sro|STORAGE
`?
`7
`113
`116
`
`0
`
`i
`
`|
`
`112
`
`FIG. 1
`
`414
`
`INTERFACE
`
`Figure 1 illustrates a block diagram ofdata collection system 100 including
`
`sensor 101 and monitor 109. Jd. at 11:56-67. Sensor 101 includes
`
`emitter 104 and detectors 106. /d. at 12:1-5. Emitter 104 emits lightthatis
`
`attenuated or reflected by the patient’s tissue at measurementsite 102. /d. at
`
`14:11-16. Detectors 106 capture and measurethelight attenuated or
`
`reflected from the tissue. Jd, In response to the measured light,
`detectors 106 output detector signal 107 to monitor 109 through front-end
`interface 108. Jd. at 14:16-19, 36-42. Sensor 101 also may includetissue
`
`shaper 105, which maybein the form of a convex surface that: (1) reduces
`the thickness of the patient’s measurementsite; and (2) provides more
`
`surface area from which light can be detected. /d. at 11:7—23.
`
`Monitor 109 includes signal processor 110 and userinterface 112. Jd.
`
`at 15:27-29. “[S]ignal processor 110 includes processing logic that
`
`5
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`TPR2020-01713
`Patent 10,624,564 Bl
`
`determines measurements for desired analytes .
`
`.
`
`. based on the signals.
`
`received from the detectors 106.” Jd. at 15:32-35. Userinterface 112
`
`presents the measurementsto a user on a display, e.g., a touch-screen
`
`display. Jd. at 15:57-61. In responseto user input or device orientation,
`
`user interface 112 can “reorient its display indicia.” Jd. at 15:63-67. The
`
`monitor may be connectedto storage device 114 and networkinterface 116.
`
`Id. at 16:4—22. In some embodiments, the monitor, including the display,is
`
`attachedto the patient by a strap. Id. at 17:56—59, 18:16-19.
`
`The ’564 patent describes various examples of sensor devices.
`
`Figures 14D and 14F, reproduced below,illustrate sensor devices.
`
`FIG. 14D
`
`FIG. 14F
`
`Figure 14D illustrates a detector submount and Figure 14Fillustrates
`
`portions of a detector shell. Id. at 6:54-57. As shownin Figure 14D,
`
`multiple detectors 1410c are located within housing 1430 and under
`
`transparent cover 1432, on which protrusion 605b is disposed. Jd. at 36:40—
`
`47. Figure 14F illustrates detector shell 306f including detectors 1410c on
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`substrate 1400c. Jd. at 37:20-21. In some embodiments, the detector shell
`
`includes walls to separate individual photodiode arrays and to “prevent or
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`IPR2020-01713
`Patent 10,624,564 B1
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`reduce mixing oflight signals.” Jd. at 22:46-53. Substrate 1400cis
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`enclosed by shielding enclosure 1490 and noise shield 1403, which include
`
`window 1492a and window 1492b, respectively, placed above
`
`detectors 1410c. Jd. at 22:20-36.
`
`Figures 4A and 4B,reproducedbelow,illustrate an alternative
`
`example of a tissue contact area of a sensor device.
`
`FIG. 4B
`FIG. 4A
`Figures 4A and 4Billustrate arrangements ofprotrusion 405 including
`
`measurementsite contact area 470. Id. at 23:30-36. “[M]easurementsite
`
`contact area 470 can include a surface that molds bodytissue of a
`
`measurementsite.” Jd. “For example, the measurementsite contact
`
`area 470 can be generally curved and/or convex with respect to the
`
`measurementsite.” Jd. at 23:53-55. The measurementsite contact area
`
`includes windows 420-423 that “mimic or approximately mimic a
`
`configuration of, or even house, a plurality of detectors.” Jd. at 23:61—-24:8.
`
`D. Illustrative Claim
`
`Ofthe challenged claims, claim 1 is independent. Claim | is
`
`illustrative and is reproduced below.
`
`1. [pre] A user-worn physiological measurement device
`comprising:
`
`
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`IPR2020-01713
`Patent 10,624,564 B1
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`[a] one or more emitters configured to emitlight into tissue
`of a user;
`
`[b] at least four detectors arranged on a substrate;
`
`[c] a cover comprising a protruding convex surface,
`wherein the protruding convex surface extends overall of the at
`least four detectors arranged on the substrate, wherein at least a
`portion of the protruding convex surfaceis rigid;
`
`[d] one or more processors configured to: receive one or
`more signals from at least one ofthe at least four detectors, the
`one or more signals responsive to at
`least a physiological
`parameter of the user; and process the one or more signals to
`determine measurements of the physiological parameter;
`
`[e] a network interface configured to communicate with a
`mobile phone;
`
`[f] a touch-screen display configured to provide a user
`interface,
`
`the user interface is configured to
`[g] wherein:
`display indicia responsive to the measurements of the
`physiological parameter, and
`
`the user
`an orientation of
`[h]
`configurable responsive to a user input;
`
`interface
`
`is
`
`[i] a wall that surroundsat least the at least four detectors,
`wherein the wall operably connects to the substrate and the
`cover;
`
`[j] a storage device configuredto at least temporarily store
`at least the measurements of the pliysivlupical parameter; and
`
`[k] a strap configured to position the physiological
`measurement device on the user.
`
`Ex. 1001, 44:63-45:29 (bracketed lettering [pre]—[k] added).
`
`E. Applied References
`
`Petitioner relies uponthe following referenccs:
`
`
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`IPR2020-01713
`Patent 10,624,564 B1
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`Shermanet al., U.S. Patent No. 4,941,236, filed July 6, 1989,
`issued July 17, 1990 (Ex. 1013, “Sherman”’);
`
`Ali et al., U.S. Patent No. 6,584,336 B1, filed March 1, 2000,
`issued June 24, 2003 (Ex. 1019, “Ali’’);
`
`Rantala et al., U.S. Patent No. 6,912,413 B2, filed September
`12, 2003, issued June 28, 2005 (Ex. 1022, “Rantala’’);
`
`Ohsakiet al., U.S. Patent Application Publication No.
`2001/0056243 A1, filed May 11, 2001, published December 27, 2001
`(Ex. 1009, “Ohsaky’’);
`
`Aizawa, U.S. Patent Application Publication No. 2002/0188210
`Al, filed May 23, 2002, published December 12, 2002 (Ex. 1006,
`“Aizawa”); and
`
`Goldsmithet al., U.S. Patent Application Publication No.
`2007/0093786 Al, filed July 31, 2006, published April 26, 2007
`(Ex. 1011, “Goldsmith”).
`
`Pet. 10.
`
`Petitioner also submits, inter alia, a Declaration of Dr. Thomas W.
`
`Kenny, Ph.D. (Ex. 1003) and a Second Declaration of Dr. Kenny (Ex. 1050).
`Patent Owner submits, inter alia, the Declaration of Dr. Vijay K. Madisetti
`(Ex. 2004). The parties also provide deposition testimony from Dr. Kenny
`
`and Dr. Madisetti, including from this proceeding and others. Exs. 1053-
`
`1056, 2006-2009, 2027.
`
`F. Asserted Grounds of Unpatentability
`
`Weinstituted an inter partes review based on the following grounds.
`
`Aizawa, Ohsaki, Goldsmith
`
`1-10, 13-30
`
`11
`
`Inst. Dec. 10-11, 42.
`
`
`Claim(s) Challenged|35 U.S.C. §
`
`
`
`
`
`1
`
`03
`
`Sherman
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`
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`12
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`12
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`
`
`
`mo|Aizawa, Ohsaki, Goldsmith,
`
`
`1-10, 13-30
`Aizawa, Ohsaki, Goldsmith,
`
` Aizawa, Ohsaki, Goldsmith,
`
`
`Rantala
`
`Ali
`
`1
`
`03
`
`Ali, Sherman
`Aizawa, Ohsaki, Goldsmith,
`Ali, Rantala
`
`Ul. DISCUSSION
`
`A. Claim Construction
`
`Forpetitions filed on or after November 13, 2018, a claim “shall be
`
`construed using the same claim construction standard that would be used to
`
`construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R.
`
`§ 42.100(b) (2020). Accordingly, we construe the claims accordingto the
`
`standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
`
`Based on ouranalysis of Petitioner’s challenges presented, we find that one
`
`claim term requires express construction.
`Petitioner raises the issue of the proper scope of the claim term
`“processor” from claim 1 to a person of ordinary skill in the art. Pet. 51.
`
`Petitioner submits “[t]he ’564 patent does not define ‘processor,’” but argues
`that a person of ordinary skill in the art would understand the term to mean
`“part of a computer system that operates on data,” consistent with the
`definition provided in Merriam-Webster’s Collegiate Dictionary.' Jd.;
`
`Ex. 1012,5.
`
`' Petitioner adds page numbers 1-6 to Exhibit 1012. Werefer to the added
`page numberswhenciting to Exhibit {012 in this Decision.
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`In ourInstitution Decision, we observed thatthe claim language
`
`provides an understanding of the functions of the claimed one or more
`29 66
`
`processers, which are “configured to:”
`
`“receive one or more signals” and
`
`“process the one or moresignals to determine measurementsofthe
`
`physiological parameter.” Inst. Dec. 11-12 (quoting Ex. 1001, 45:6—12).
`
`Wenoted that “[t]he Specification describes several distinct processors, but
`
`it also describes a ‘signal processor’ as the device used for processing
`
`signals.” Id. at 12; see, e.g., Ex. 1001, 9:50—-55, 14:36—-42, 15:27-56, 33:36—
`
`47.
`
`Patent Owner doesnotobjectto ourinitial claim construction, and
`
`submits that claim terms should be given their ordinary and customary
`meaning, consistent with the Specification. PO Resp. 7.
`Based onthe final record, we maintain ourinitial interpretation of the
`
`term “processor” as meaning “part of a computer system that operates on
`
`data.” See Ex. 1012, 5. This definition is consistent with the general
`
`operation of the signal processorin the °564 patent, where the signal
`
`processoris described to include “processing logic that determines
`
`measurements .
`
`.
`
`. based on the signals received from the detectors.”
`
`Ex. 1001, 15:31-35; 15:35-39 (“signal processor 110 can be implemented
`
`using one or more microprocessors or subprocessors. . . digital signal
`
`processors, application specific integrated circuits (ASICs),field
`
`programmable gate arrays (FPGAs), combinations of the same”).
`
`Based on ouranalysis of the issues in dispute, we conclude that no
`
`turther claim terms require express construction. Nidec Motor Corp.v.
`
`Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir.
`
`2017).
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`B. Principles ofLaw
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`
`between the subject matter sought to be patented andthe prior art are’ such
`
`that the subject matter as a whole would have been obviousat the time the
`
`invention was madcto 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 obviousness is resolved on the basis ofunderlying
`factual determinations, including (1) the scope and contentof the priorart;
`
`(2) any differences between the claimed subject matter and the priorart;
`
`(3) the level of skill in the art; and (4) objective evidence of
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`nonobviousness.” Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`Whenevaluating a combination of teachings, we mustalso “determine
`
`whether there was an apparent reason to combine the known elementsin the
`
`fashion claimedbythe patent at issue.” KSR, 550 U.S.at 418 (citing Jn re
`
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of
`
`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
`
`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 nevershifts to Patent Owner. Dynamic Drinkware,
`
`LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To
`
`prevail, Petitioner must support its challenge by a preponderanceof the
`
`evidence. 35 U.S.C. § 316(e), 37 CFR. 8 42.1(d).
`
`* The parties have not presented objective evidence of non-obviousness.
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`Weanalyze the challenges presented in the Petition in accordance
`
`with the above-stated principles.
`
`C. 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 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.”
`Pet. 8 (citing Ex. 1003 J 21-22). “Additional education in a relevant field
`or industry experience may compensate for one of the other aspects of
`
`the .
`
`.
`
`. characteristics stated above.” Id.
`
`Patent Owner makesseveral observations regarding Petitioner’s
`
`identified level of skill in the art but, “[flor this proceeding, [Patent Owner]
`
`nonetheless applies Petitioner’s asserted level of skill.” PO Resp. 7-8.
`
`Weadopt Petitioner’s assessmentas set forth above, which appears
`
`consistent with the level ofskill reflected in the Specification andpriorart.
`
`D. Obviousness over the Combined Teachings of
`Aizawa, Ohsaki, and Goldsmith
`Petitioner contends that claims 1-10 and 13-30 of the 564 patent
`would have been obvious over the combined teachings of Aizawa, Ohsaki,
`
`and Goldsmith. Pet. 10-91; see also Pet. Reply 7-37. Patent Owner
`
`disagrees. PO Resp. 9-51; see also Sur-reply 1-27.
`
`Based onour review ofthe parties’ arguments andthe cited evidence
`
`uf record, we determine that Petitioner has met its burden of showing by a
`
`preponderanceofthe evidence that claims 1-10 and 13-30 are unpatentable.
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`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 Aizawa is reproduced below.
`
`FIG.
`
`1 (a)
`
`1
`
`Figure 1(a) is a plan view of a pulse wave sensor. Jd. J 23. As shown in
`
`Figure 1(a), pulse wave sensor2 includes light emitting diode (“LED”) 21,
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`four photodetectors 22 symmetrically disposed around LED 21, and
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`holder 23 for storing LED 21 and photodetectors 22. Id. Aizawa discloses
`
`that, “to further improve detection efficiency, .
`
`.
`
`. the numberof the
`
`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. ¥ 33.
`
`Figure 1(b) of Aizawais reproduced below.
`
`14
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`FIG.
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`1 (b)
`
`Figure 1(b) is a sectional view of the pulse wave sensor. Id. { 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.
`
`Arithmetic circuit 3 computes a pulse rate from the detected pulse wave and
`transmitter 4 transmits the pulse rate data to an “unshown display.” Id. The
`pulse rate detector further includes outer casing 5 for storing pulse wave
`
`sensor 2, acrylic transparent plate 6 mounted to detection face 23a of
`
`holder 23, and attachmentbelt 7. Jd.
`
`Aizawadiscloses that LED 21 and photodetectors 22 “are stored in
`
`cavities 23b and 23c formedin the detection face 23a” of the pulse wave
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`sensor. Id. § 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.” Id.
`
`Aizawadisclosesthat “‘a subject carries the above pulse rate detector 1 on
`
`the inner side of his/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
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`15
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`transparent plate 6 becomescloseto the artery 11 of the wrist 10. Thereby,
`adhesion betweenthe wrist 10 and the pulserate detector 1 is improved.”
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`Id. 99 26, 34.
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`2. Overview of Ohsaki (Ex. 1009)
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`Ohsakiis a U.S. patent application publicationtitled “Wristwatch-type
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`Human Pulse Wave Sensor Attached on Back Side of User’s Wrist,” and
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`discloses “an optical sensor for detecting [a] pulse wave of a human body.”
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`Ex. 1009, code (54), § 3. Figure 1 of Ohsaki is reproduced below.
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`LELam
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`Feeeee
`SSSA aS
`S
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`we Cli» .
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`Figure1 illustrates a cross-sectional view of pulse wave sensor | attached on
`the back side of user’s wrist 4. Jd. J] 12, 16. Pulse wave sensor 1 includes
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`detecting element 2 and sensor body 3. Id. { 16.
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`Figure 2 of Ohsaki, reproduced below,illustrates further detail of
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`detecting element2.
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`FIG. 2
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`|
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`COMPUTER
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`Leeeecepeceeed
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`pevecemnnny
`i
`oORIVE
`CIRCUIT
`3 4
`ed
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`i t
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`Figure 2 illustrates a mechanism for detecting a pulse wave. Id. { 13.
`Detecting element 2 includes package5, light emitting element6,light
`receiving element 7, and translucent board 8. Jd. 417. Light emitting
`element 6 and light receiving element7 are arranged on circuit board 9
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`inside package 5. Id.17, 19.
`“(T]ranslucent board 8 is a glass board whichis transparenttolight,
`and attached to the opening of the package 5. A convex surface is formed
`on the top of the translucent board 8.” Jd. 17. “[T]he convex surface of
`the translucent board 8 is in intimate contact with the surface of the user’s
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`skin,” preventing detecting element 2 from slipping off the detecting
`position ofthe user’s wrist. Id. | 25. By preventing the detecting element
`from moving, the convex surface suppresses “variation of the amount ofthe
`reflected light which is emitted from the light emitting element 6 and
`reachesthe light receiving element 7 by being reflected by the surfaceof the
`user’s skin.” Id. Additionally, the convex surface prevents penetration by
`_ “noise such as disturbance light from the outside,” Jd.
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`Sensor body 3 is connected to detecting element2 bysignalline 13.
`Id. | 20. Signal line 13 connects detecting element2 to drive circuit 11,
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`microcomputer 12, and a monitor display (not shown). Jd. Drive circuit 11
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`drives light emitting element 6 to emit light toward wrist 4. Jd. Detecting
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`element 2 receives reflected light which is used by microcomputer 12 to
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`calculate pulse rate. Jd. “The monitor display showsthe calculated pulse
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`rate.” Id
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`3. Overview of Goldsmith (Ex. 1011)
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`Goldsmith is a U.S. patent application publicationtitled “Watch
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`Controller for a Medical Device,” and discloses a watch controller device
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`that communicates with an infusion device to “provid[e] convenient
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`monitoring and control of the infusion pump device.” Ex. 1011, codes (54),
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`(57).
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`Goldsmith’s Figure 9A and 9B are reproduced below.
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`TIGA
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`fig 16
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`Figure 9A and Figure 9B are respective front and rear views of a combined
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`watch and controller device. Jd. { 30-31. As shownin Figure 9A, watch
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`controller 900 includes housing 905, transparent member 950, display 910,
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`input devices 925a—c,scroll wheel 930, and wrist band 940. Id. {| 85-86.
`Figure 9B showsrear-side cover 960, and a rear view of housing 905, scroll
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`wheel930, and wrist band 940. Jd.
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`Goldsmith discloses the watch controller may interact with one or
`more devices, such as infusion pumpsor analyte monitors. Jd. | 85; see also
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`id. | 88 (“The analyte sensing device 1060 may be adaptedto receive data
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`from a sensor, such as a transcutaneoussensor.”). Display 910 “may display
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`at least a portion of whatever information and/or graph is being displayed on
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`the infusion device display or on the analyte monitor display,” suchas,e.g.,
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`levels of glucose. Id. J 86. The display is customizable in a variety of
`configurations including user-customizable backgrounds, languages, sounds,
`font (including font size), and wall papers. Id. J] 102, 104. Additionally,
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`the watch controller may communicate with a remotestation, e.g., a
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`computer, to allow data downloading. Jd. J 89 (including wireless). The
`remote station may also includea cellular telephoneto be “used as a conduit
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`for remote monitoring and programming.” Id.
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`4. Independent Claim 1
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`Petitioner contendsthat claim 1 would have been obvious overthe
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`combined teachings of Aizawa, Uhsaki, and Goldsmith. Pet. 10-63. Below,
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`weset forth how the combination ofprior art references teaches or suggests
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`the claim limitations that are not disputed by the parties. For those
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`limitations and reasons for combining the references that are disputed, we
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`examineeachofthe parties’ contentions and then provide ouranalysis.
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`i. “[pre] A user-worn physiological measurement device
`comprising”
`The cited evidence supports Petitioner’s undisputed contention that
`Aizawasatisfies the subject matter of the preamble.? Pet. 41-42; see, e.g.,
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`Ex. 1006 § 26, code (57) (“a subject carries the above pulse rate detector 1
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`on the innerside of his/her wrist”), Fig. 2 (depicting a user wearing a pulse
`wavesensoronthe innerside ofhis/her wrist); see also Ex. 1003 J 98.4
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`ii. “[a] one or more emitters configured to emit light into
`tissue ofa user”
`Thecited evidence supports Petitioner’s undisputed contention that
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`Aizawadiscloses an emitter, LED 21, that emits light into a user’s tissue.
`Pet. 42-43; see, e.g., Ex. 1006 § 23 (“LED 21 .
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`. for emitting light having a
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`wavelength of a near infrared range’), { 27 (explaining that light is emitted
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`toward the wrist), Fig. 1(b) (depicting LED 21 facing user wrist 10), Fig. 2
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`(depicting a pulse wave sensor worn on a user’s wrist).
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`iti. “[b] at leastfour detectors arranged on a substrate; ”
`The cited evidence supports Petitioner’s undisputed contention that
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`Aizawa disclosesat least four detectors. Pet. 23-25, 44-46; see, e.g.,
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`3 Whetherthe preambleis limiting need not be resolved because Petitioner
`showssufficiently that the preamble’s subject matter is satisfied bytheart.
`4 Petitioner further contendsthat the subject matter of the preambleis taught
`by the combination of Aizawa, Ohsaki, and Goldsmith. Pet. 41-42 (arguing
`that it would have been obviousto incorporate the pulse wave sensor of
`Aizawa(as modified by Ohsaki) into the wrist-worn watch controller device
`in Figures 9A and 9B of Goldsmith,to realize a user-worn physiological
`measurementdevice). Because Figure 2 of Aizawa teaches a user-worn
`physiological measurement device, further analysis of the combination of
`Aizawa, Ohsaki, and Goldsmith is not necessary for the preamble.
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`Ex. 1006 ff 9, 23 (“four phototransistors 22”), Figs. 1(a)-1(b); Ex. 1003
`44| 43-45, 64-67. Petitioner contends that pulse wave sensor depicted in
`Figure 1(a) of Aizawa, reproduced below,discloses four photodetectors 22.
`Pet. 44; see, e.g., Ex. 1006 § 27 (“[F]our photodetectors 22 are disposed
`é
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`aroundthe light emitting diode 21.”).
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`FIG.
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`1 (a)
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`1
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`Detectors
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`Petitioner’s Annotated Figure 1(a) of Aizawa depicts four photodetectors 22,
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`identified by blue arrowsand blue shading.
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`Relying on a cross-section view of Figure 1(b) of the pulse wave
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`detector of Aizawa, Petitioner further contends photodetectors 22 are
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`secured on a substrate illustrated in Petitioner’s annotated Figure 1(b).
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`Pet. 24, 45. Petitioner’s annotated Figure 1(b) of Aizawa is reproduced
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`below.
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`21
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`FIG.
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`1 (b)
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`9
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`1
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`Detector
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`First surface
`of substrate
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`Zu
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`Lightattenuated bytissue and detected by 9
`the detectors
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`a
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`Annotated Figure 1(b) depicts a structure, identified by Petitioner with
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`brown highlight and the added label “Substrate,” arranged in proximity to
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`photodetectors 22. Pet. 45. Petitioner concedes that Aizawa “doesnotlabel
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`or describe” a substrate, but contendsa person ofordinary skill in the art
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`(“POSITA”) would have understood that “Aizawa’s photodetectors are
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`secured to the [physiological measure device] .
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`.
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`. through such a substrate”
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`depicted in annotated Figure 1(b). Pet. 24. Dr. Thomas W.Kennytestifies
`that “[a] POSITA would have understood that the substrate provides
`physical support and electrical connectivity and is connectedto the holder
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`23.” Ex. 1003
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`71; see also Pet. 24 (citing to testimony of Dr. Kenny). On
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`the current record, Petitioner has sufficiently shown that the structure
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`identified in annotated Figure 1(b) of Aizawais a substrate, and that
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`photodetectors 22 are arranged on the substrate.
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`Petitioner further contends that if Aizawa is found notto disclose a
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`substrate, then Ohsaki teachesthis feature. Pet. 25. Similar to the device of
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`Aizawa, Ohsaki teaches a pulse wave sensor comprising a light emitting
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`22
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`element 6 (e.g., a LED) and a light receiving element(e.g., a photodetector).
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`Ex. 1009 917. “The light emitting element 6 andlight receiving element 7
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`are... arranged onthe circuit board 9.” Id. Relying on the testimony of
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`Dr. Kenny, Petitioner contends a POSITA would have modified the pulse
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`wave sensor of Aizawato include a substrate, such as circuit board 9 of
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`Ohsaki, to secure the photodetectors of Aizawa and enable the detectors to
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`send signals to other elements in the device. Pet. 25 (citing Ex. 1003 J 72—
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`73; Ex. 1006 FJ 2-5, 8-16, 23, 27-29, 32-33, Figs. 1, 2, 3, 4(a); Ex. 1009
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`q 17, Fig. 2).
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`Thecited evidence, including the unrebutted testimony of Dr. Kenny,
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`sufficientlysupports Pctitioncr’s stated reasoning.
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`iv. “[c] a cover comprising a protruding convex surface,
`wherein the protruding convex surface extends overall of
`the at leastfour detectors arrangedon the substrate,
`wherein at least a portion ofthe protruding convex surface
`is rigid”
`Petitioner’s Undisputed Contentions
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`Petitioner contends that Aizawa discloses a cover, 1.e., a “transparent
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`plate positioned between the photodetectors and the wrist.” Pet. 12 (citing
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`Ex. 1006 4 34). Patent Owner does not dispute this contention, and we agree
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`with Petitioner. Aizawa discloses that “acrylic transparent plate 6 is
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`provided on the detection face 23a of the holder 23 to improve adhesion to
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`the wrist 10.” Ex. 1006 ¥ 34, Fig. 1(b) (depicting transparent plate 6
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`between sensor 2 and wrist 10).
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`Petitioner also contends that Uhsak1 teaches a wrist-worn sensorthat
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`includes a “translucent board” having a convex surface that contacts the
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`user’s skin. Pet. 15,21. Patent Owner does not dispute this contention, and
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`we agree with Petitioner. Ohsaki discloses that sensor | includes detecting
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`element 2 and sensor body 3, and is “worn on the back side of the user’s
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`wrist.” Ex. 1009 J 16. Ohsaki discloses that detecting element 2 includes
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`package 5 and “translucent board 8[,which] is a glass board whichis
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`transparent to light, and [is] attached to the opening of the package 5. A
`convex surface is formed on the top ofthe translucent board 8.” Id. J 17.
`Asseen in Ohsaki’s Figure 2, translucent board 8 has a single protruding
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`convex surface, which is placed betweena user’s tissue anda light receiving
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`element(e.g., photodetector) 7 when the sensor is worn. Jd. at Fig. 2. As
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`also seen in Figure 2, the board 8 is operably connected to the walls of
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`sensor package 5. Jd. J 17 (“The translucent board8 is .
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`.
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`. attached to the
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`opening of the package 5.”), Fig.2.
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`Claim 1 further requires that “at least a portion of the protruding
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`convex surface is rigid.” Petitioner contends that Ohsaki’s Figure 2 depicts
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`the user’s tissue in intimate contact with the convex surface of the cover and
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`the cover is sufficiently rigid to cause the skin to deform. Pet. 15, 48 (The
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`“convex surface .. . causes the user’s sk