`571-272-7822
`
`Paper 8
`Date: April 13, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01714
`Patent 10,631,765 Bl
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER,and
`AMANDAF. WIEKER,Administrative Patent Judges.
`
`WIEKER,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Jnter Partes Review
`35 U.S.C. § 314, 37 CFR. $ 42.4
`
`
`
`IPR2020-01714
`Patent 10,631,765 Bl
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`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. 10,631,765
`
`B1 (Ex. 1001, “the ’765 patent”). Paper 2 (“‘Pet.”). Masimo Corporation
`
`(“Patent Owner”) waivedfiling a preliminary response. Paper 7 (“PO
`
`Waiver”).
`
`Wehave authority to determine whetherto institute an inter partes
`
`review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review
`
`maynot beinstituted unlessit is determinedthat “the information presented
`
`in the petition filed under section 311 and any responsefiled under
`
`section 313 showsthat there is a reasonable likelihood that the petitioner
`
`would prevail with respectto at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Board
`
`institutes thetrial on behalf of the Director.”).
`
`For the reasons provided below and based on the record before us, we
`determine that Petitioner has demonstrated a reasonable likelihood that
`
`Petitioner would prevail in showing the unpatentability of at least one of the
`
`challenged claims. Accordingly, we institute an inter partes review onall
`
`groundsset forth in the Petition.
`
`B. Related Matters
`
`Theparties identify the following matters related to the ’765 patent:
`
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`
`(C.D. Cal.) (filed Jan. 9, 2020) (‘the parallel district court litigation”);
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`Apple Inc. v. Masimo Corporation, JPR2020-01715 (PTAB Sept. 30,
`2020) (challenging claims 1—29 of the ’765 patent);!
`
`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.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, IPR2020-01538 (PTAB Sept. 2,
`
`2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`
`1 Pursuant to the Board’s November 2019, Consolidated Trial Practice
`Guide, available at https://www.uspto.gov/TrialPracticeGuideConsolidated,
`Petitioner filed a Notice ranking its two petitions that challenge the
`°765 patent, ranking first the instant proceeding and ranking second
`IPR2020-01715. Paper 3, 2. We decline to exercise discretion to deny
`institution in this case where (1) Patent Owner doesnot request that we
`exercise discretion to deny due to the presence of multiple petitions, (2) the
`twopetitions challenge a large claim set, and (3) Petitioner represents that, at
`the time of the filing, Patent Owner had not yet narrowedthe claims asserted
`in the parallel district court litigation. Paper 2, 2-3; Ex. 1040, 1 (reduction
`in claims dueafter petitions were filed).
`
`3
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`
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`Apple Inc. v. Masimo Corporation, YPR2020-01539 (PTAB Sept. 2,
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`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, IPR2020-01716 (PTAB Sept. 2,
`
`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
`Apple Inc. v. Masimo Corporation, IPR2020-01737 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,709,366 B1).
`
`Pet. 4-5; Paper 5, 1-4.
`
`Patent Ownerfurther identifies the following pending patent
`
`applications, among other issued and abandonedapplications, that claim
`
`priority to, or share a priority claim with, the ’765 patent:
`
`U.S. Patent Application No. 16/834,538;
`
`U.S. Patent Application No. 16/449,143; and
`
`U.S. Patent Application No. 16/805,605.
`
`Paper 5, 1—2.
`
`C. The ’765 Patent
`
`The *765 patentis titled “Multi-Stream Data Collection System for
`
`Noninvasive Measurement of Blood Constituents,” and issued on April 28,
`
`2020, from U.S. Patent Application No. 16/725,478, filed December23,
`
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`IPR2020-01714
`Patent 10,631,765 B1
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`2019. Ex. 1001, codes (21), (22), (45), (54). The ?765 patent claimspriority
`
`througha series of continuation and continuation-in-part applications to
`
`Provisional Application Nos. 61/078,228 and 61/078,207, both filed July 3,
`
`2008. Id. at codes (60), (63).
`
`The ’765 patent discloses a two-part data collection system including
`
`a noninvasive sensor that communicates with a patient monitor. Jd. at 2:38—
`40. Thesensor 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 2:29-35, 64-65. The patient monitor includes a
`
`display and a network interface for communicating with a handheld
`
`computing device. Id. at 2:45-48.
`
`Figure 1 of the ’765 patent is reproduced below.
`100
`
`SENSOR 101
`MONITOR 109
`
`402
`
`18
`
`1 i0
`
`EMITTER
`9” ) ve 103 DETECTORS
`INPUTDATA
`
`108
`\
`PROCESSOR MEASUREMENT
`Soll.
`
`
`NOISE :
`
`DATA
`
`OPTIONAL
`
`OPTIONAL
`
`8
`
`FIG. 1
`
`i
`
`ie
`
`Figure 1 illustrates a block diagram of data collection system 100 including
`sensor 101 and monitor 109. Jd. at 11:47-58. Sensor 101 includes optical
`
`emitter 104 and detectors 106. Jd. at 11:59-63. Emitters 104 emitlight that
`
`is attenuated or reflected by the patient’s tissue at measurementsite 102. Jd.
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`
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`at 14:3-7. Detectors 106 capture and measurethe light attenuated or
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`reflected from the tissue. Jd. In response to the measuredlight,
`
`detectors 106 output detector signals 107 to monitor 109 through front-end
`
`interface 108. Jd. at 14:7-10, 26-32. Sensor 101 also mayinclude tissue
`
`shaper 105, which may bein the form of a convex surface that: (1) reduces
`
`the thickness of the patient’s measurementsite; and (2) provides more
`
`surface area from whichlight can be detected. Jd. at 11:2-14.
`
`Monitor 109 includes signal processor 110 and userinterface 112. Id.
`
`at 15:16-18. “[S]ignal processor 110 includes processinglogic that
`
`determines measurements for desired analytes .
`
`.
`
`. based on the signals
`
`received from the detectors.” Jd. at 15:21-24. User interface 112 presents
`
`the measurementsto a user on a display, e.g., a touch-screen display. Jd. at
`
`15:46-56. The monitor may be connected to storage device 114 and
`
`network interface 116. Jd. at 15:60—16:11.
`
`The ’765 patent describes various examples of sensor devices.
`
`Figures 14D and 14F, reproducedbelow,illustrate sensor devices.
`4450
`
`4
`
`FIG. 14D
`
`FIG. 14F
`
`Figure 14D illustrates portions of a detector submount and Figure 14F
`
`illustrates portions of a detector shell. Jd. at 6:44-47. As shown in
`
`Figure 14D, multiple detectors 1410c are located within housing 1430 and
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`undertransparent cover 1432, on which protrusion 605b (orpartially
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`cylindrical protrusion 605) is disposed. Id. at 35:36-39, 36:30—37.
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`Figure 14Fillustrates a detector shell 306f including detectors 1410c on
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`substrate 1400c. Jd. at 37:9-17. Substrate 1400c is enclosed by shielding
`
`enclosure 1490 and noise shield 1403, which include window 1492a and
`
`window 1492a, respectively, placed above detectors 1410c. Id.
`
`Alternatively, cylindrical housing 1430 may be disposed under noise
`
`shield 1403 and may enclose detectors 1410c. Jd. at 37:47-48.
`
`Figures 4A and 4B, reproduced below,illustrate an alternative
`
`example of a tissue contact area of a sensor device.
`
`
`
`470
`
`C
`c—-\-
`
`400
`
`FIG. 4A
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`FIG. 4B
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`Figures 4A and4Billustrate arrangements of protrusion 405 including
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`measurement contact area 470. Jd. at 23:18-24. “[M]easurementsite
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`contact area 470 can include a surface that molds bodytissue of a
`
`measurementsite.” Jd. “For example, ... measurementsite contact area
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`470 can be generally curved and/or convex with respect to the measurement
`
`site.” Id. at 23:39-43. 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 23:49-63.
`
`
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`IPR2020-01714
`Patent 10,631,765 B1
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`D.
`
`Illustrative Claim
`
`Ofthe challenged claims, claims 1 and 21 are independent. Claim1is
`
`illustrative and is reproduced below.
`
`1. A physiological measurement system comprising:
`
`[a] a physiological sensor device comprising:
`
`[b] one or more emitters configured to emit light into tissue
`of a user;
`
`{c] at least four detectors, wherein each of the at least four
`detectors has a corresponding windowthatallowslight
`to pass through to the detector;
`
`[d] a wall that surroundsat least the at least four detectors;
`and
`
`[e] a cover comprising a protruding convex surface, wherein
`the protruding convex surface is aboveall of the at least
`four detectors, wherein at
`least a portion of the
`protruding convex surface is rigid, and wherein the
`cover operably connects to the wall; and
`
`[f] a handheld computing device in wireless communication with
`the physiological sensor device, wherein the handheld
`computing device comprises:
`
`[g] one or more processors configured to wirelessly
`receive one or more signals from the physiological
`sensor device, the one or moresignals responsive to
`at least a physiological parameter of the user;
`
`[h] a touch-screen display configured to provide a user
`interface, wherein:
`
`[i]
`
`the user interface is configured to display indicia
`responsive to measurements of the physiological
`parameter, and
`
`[j] an orientation of the user interface is configurable
`responsive to a user input; and
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`[k] a storage device configuredto at least temporarily store
`at
`least
`the measurements of the physiological
`parameter.
`
`Ex. 1001, 44:51—-15 (bracketed identifiers a-k added). Independent claim 21
`
`includes limitations substantially similar to limitations [a]-[f] of claim 1. Jd.
`
`at 46:31—49.
`
`E. Applied References
`
`Petitioner relies upon the following references:
`
`Bergey, U.S. Patent No. 3,789,601, filed July 15, 1971, issued
`February 5, 1974 (Ex. 1016, “Bergey);
`Mendelson, U.S. Patent No. 6,801,799 B2, filed February 6,
`2003, issued October 5, 2004 (Ex. 1012, “Mendelson-799”’);
`Ohsakiet al., U.S. Patent Application Publication No.
`2001/0056243 A1, filed May 11, 2001, published December 27, 2001
`(Ex. 1009, “Ohsaki’’);
`Aizawa, U.S. Patent Application Publication No.
`2002/0188210 Al, filed May 23, 2002, published December 12, 2002
`(Ex. 1006, “Aizawa’’).
`Schulz et al., U.S. Patent Application Publication No.
`2004/0054291 A1, filed July 31, 2003, published March 18, 2004
`(Ex. 1013, “Schulz”);
`Goldsmith et al., U.S. Patent Application Publication
`No. 2007/0093786 A1, filed July 31, 2006, published April 26, 2007
`(Ex. 1011, “Goldsmith”); and
`Y. Mendelsonet al., “A Wearable Reflectance Pulse Oximeter
`for Remote Physiological Monitoring,” Proceedings of the 28th IEEE
`EMBS AnnualInternational Conference, 912-915 (2006) (Ex. 1010,
`“Mendelson-2006”).
`
`Pet. 11. Petitioner also submits, inter alia, the Declaration of Thomas W.
`
`Kenny, Ph.D. (Ex. 1003).
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`F. Asserted Grounds
`
`Petitioner asserts that claims 1-29 are unpatentable based upon the
`
`following grounds:
`
`
`Claim(s) Challenged|_35 U.S.C. §
`1-8, 10-13, 15-16,
`103
`Mendelson-799, Ohsaki,
`
`
`20-29
`Schulz, Mendelson-2006
`Mendelson-799, Ohsaki,
`Schulz, Mendelson-2006,
`
`
`
` Mendelson-799, Ohsaki,
`4
`103
`Schulz, Mendelson-2006,
`Goldsmith
`
`
`Mendelson-799, Ohsaki,
`Schulz, Mendelson-2006,
`Aizawa
`
`103
`
`.
`
`Il. 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) (2019). Petitioner submits that no claim term requires express
`
`construction. Pet. 9-10.
`
`Based on ouranalysis of the issues in dispute at this stage of the
`
`proceeding, we agree that no claim terms require express constructionat this
`
`time. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868
`
`F.3d 1013, 1017 (Fed. Cir. 2017).
`
`B. Principles ofLaw
`
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`
`between the subject matter sought to be patented and the priorart are such
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`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 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 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 weighs in the ultimate
`
`determination of obviousness. Jd. at 416-417.
`
`In an inter partes review, the petitioner must show with particularity
`
`whyeach challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`
`burden of persuasion nevershifts to Patent Owner. Dynamic Drinkware,
`LLC 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 with “a Bachelor of Science degree in an academic
`
`* Patent Ownerdoesnot present objective evidence of non-obviousnessat
`this stage.
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`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.”
`
`Id. at 9 (citing Ex. 1003 JJ 20-21). “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 samediscipline.” Jd.
`
`For purposesof this Decision, we generally adopt Petitioner’s
`
`assessmentas set forth above, which appears consistent with the level of
`
`skill reflected in the Specification andpriorart.
`
`D. Obviousness over the Combined Teachings of
`Mendelson-799, Ohsaki, Schulz, and Mendelson-2006
`
`Petitioner presents undisputed contentions that claims 1-8, 10-13, 15,
`
`16, and 20-29 of the °765 patent would have been obviousoverthe
`
`combined teachings of Mendelson-799, Ohsaki, Schulz, and Mendelson-
`
`2006. Pet. 11-87.
`
`1. Overview ofMendelson-799 (Ex. 1012)
`
`Mendelson-799 is a U.S. patent titled “Pulse Oximeter and Method of
`
`Operation,” and discloses a sensor for non-invasive measurementof a blood
`
`parameter, which includes a sensor housing, a radiation source, and a
`
`detector. Ex. 1012, codes (54), (57).
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`Figure 7 of Mendelson-799 is reproduced below.
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`Figure 7 illustrates optical sensor 10 with light source 12, which includes
`
`three closely spaced light emitting elements 12a, 12b, 12c. Jd. at 9:22—28.
`
`Optical sensor 10 includes an array of discrete detectors,i.e., “far”
`
`detectors 16 and “near” detectors 18, “arranged in two concentric ring-like
`
`arrangements .
`
`.
`
`. surroundingthe light emitting elements.” Jd. at 9:29-34.
`
`“{L]ight shield 14 is positioned between the photodiodes andthelight
`
`emitting elements, and prevents direct optical coupling between them,
`thereby maximizing the fraction of backscattered light passing through the
`arterially perfused vasculartissue in the detected light.” Jd. at 9:35—40.
`
`Sensor housing 17 accommodatesthe light source, light shield, and
`
`detectors. Jd. at 9:34—35.
`
`13
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`Figure 8 of Mendelson-799 is reproduced below.
`
`Figure 8 illustrates a block diagram of pulse oximeter 20 using sensor 10.
`
`Id. at 10:16-17. Pulse oximeter 20 includes control unit 21, with electronic
`
`block 22 connectable to sensor 10, microprocessor 24, and display 26, which
`
`presents measurementresults. /d. at 10:17-22. “The measureddata (1.e.,
`
`electrical output of the sensor 10 indicative of the detected light) is directly
`
`processedin the block 22, and the converted signal 25 is further processed
`
`by the microprocessor 24.” Id. at 10:22—25.
`
`2. Overview of Ohsaki (Ex. 1009)
`
`Ohsaki is a U.S. patent application publicationtitled “Wristwatch-type
`
`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.
`
`Ex. 1009, code (54), § 3.
`
`14
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`
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`Figure 1 of Ohsaki is reproduced below.
`
`|
`
` Leesekh OO
`
`SSSSS
`
`FIG.
`
`Figure 1 illustrates a cross-sectional view of pulse wave sensor 1 attached on
`
`the back side of user’s wrist 4. Id. J] 12, 16. Pulse wave sensor 1 includes
`
`detecting element 2 and sensor body 3. Jd. {| 16.
`
`Figure 2 of Ohsaki, reproduced below,illustrates further detail of
`
`detecting element2.
`
`"
`ee
`f DRIVE
`
`i
`oo{
`1
`‘
`| MICRO“
`|
`i
`COMPUTER
`:
`
`{_SIRCUITig 6 17 |
`
`8
`
`16
`
`REFLECTED LIGHT
`
`Figure 2 illustrates a mechanism for detecting a pulse wave. Jd. { 13.
`
`Detecting element 2 includes package5, light emitting element6, light
`
`15
`
`
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`receiving element7, and translucent board 8. Jd. § 17. Light emitting
`
`element6 andlight receiving element7 are arranged on circuit board 9
`
`inside package 5. Id. {4 17, 19.
`
`“{T]ranslucent board 8 is a glass board whichis transparentto light,
`
`and attached to the opening of the package 5. A convex surface is formed
`
`on the top ofthe translucent board 8.” Jd. 417. “[T]he convex surface of
`the translucent board8is in intimate contact with the surface of the user’s
`skin,” preventing detecting element 2 from slipping off the detecting
`
`position of the user’s wrist. Id. § 25. By preventing the detecting element
`
`from moving, the convex surface suppresses “variation of the amountof the
`
`reflected light which is emitted from the light emitting element 6 and
`
`reachesthe light receiving element 7 by being reflected by the surface of the
`
`user’s skin.” Jd. Additionally, the convex surface prevents penetration by
`
`“noise such as disturbance light from the outside.” Jd.
`
`Sensor body 3 is connected to detecting element 2 by signal line 13.
`
`Id. 20. Signal line 13 connects detecting element 2 to drive circuit 11,
`
`microcomputer 12, and a monitor display (not shown). Jd. Drivecircuit 11
`
`drives light emitting element 6 to emit light toward wrist 4. [d. Detecting
`
`element 2 receives reflected light which is used by microcomputer 12 to
`
`calculate pulse rate. Jd. “The monitor display shows the calculated pulse
`
`rate.” Id.
`
`3. Overview ofSchulz (Ex. 1013)
`
`Schulz is a U.S. patent application publication titled “Pulse Oximetry
`
`Ear Sensor,” and discloses an ear sensor assembly including an emitter pad
`
`and a detector pad. Ex. 1013, codes (54), (57).
`
`16
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`Figure 19C of Schulz is reproduced below.
`
`Figure 19C illustrates an exploded top perspective view ofan ear sensorclip.
`
`Id. 31. Each sensorclip 1900 includes “opposingly positioned
`
`housings 1902 and 1903 that house one or more sensor optical components.”
`
`Id. 465. Each housing includes respective inward facing shells 1905 and
`
`1906.° Id. 4 65. “[I]nward facing shells 1905 and 1906 further include
`
`windows 1919 and 1924 that provide an aperture for transmission ofoptical
`
`energy to or fromatissue site. Translucent silicone material covers
`
`windows 1919 and 1924 providing lenses 1920 and 1921.” Id. 4 67.
`
`A “thin sheet of opaque material is located beneath window 1919
`
`or 1924, and a window in the opaque material provides an aperture for
`
`transmission ofoptical energy to or from the tissue site.” Jd. J 73. “The
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`3 Figure 19C appearsto label inward facing shell 1906 as 1916. Seeid. at
`Fig. 19B.
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`opaque material blockslight, and the window in the opaque material can be
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`sized as neededto block the proper amountoflight from entering the
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`aperture to, for example, avoid saturation of the light detector.” Id.
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`4. Mendelson-2006 (Ex. 1010)
`
`Mendelson-2006is a journalarticle titled “A Wearable Reflectance
`
`Pulse Oximeter for Remote Physiological Monitoring,” and discloses a
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`wireless wearable pulse oximeter connected to a personaldigital assistant
`(“PDA”). Ex. 1010, 1.4
`
`Figure 1 of Mendelson-2006 is reproduced below.
`
`
`
`Figure 1 illustrates a sensor module attachedto the skin (top), and a
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`photograph of a disassembled sensor module and receiver module (bottom).
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`The sensor module includes an optical transducer, a stack of round printed
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`circuit boards, and a coin cell battery. /d. at 2.
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`4 Petitioner cites to the page numbers added to Exhibit 1010, rather than the
`native page numbering that accompaniesthearticle. See, e.g., Pet. 23-25.
`Wefollow Petitioner’s numbering scheme.
`
`18
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`Figure 2 of Mendelson-2006 is reproduced below.
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`Transimpedance
`amplifier
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`{Photodiode
`
`Accelerometer
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`RF XCVR
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`PCB
`
`Antenna
`
`
`
`PCB
`Antenna
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`/ LDO
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`Figure 2 depicts a system block diagram of the wearable, wireless, pulse
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`oximeter including the sensor module (top) and the receiver module
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`(bottom). Jd. The sensor module includesat least one light-emitting diode
`
`(“LED”), a photodetector, signal processing circuitry, an embedded
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`microcontroller, and an RF transceiver. Jd. at 1-2. Mendelson-2006
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`discloses that a concentric array of discrete photodetectors could be used to
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`increase the amount of backscattered light detected by a reflectance type
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`pulse oximeter sensor. /d. at 4. The receiver module includes an embedded
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`microcontroller, an RF transceiver for communicating with the sensor
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`module, and a wireless module for communicating with the PDA. Jd. at 2.
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`As a PDAforuse with the system, Mendelson-2006 discloses “the HP
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`iPAQ h4150 PDAbecauseit can support both 802.11b and Bluetooth™
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`wireless communication”and “has sufficient computational resources.” Id.
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`at 3. Mendelson further discloses that
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`[t]he use of a PDA asa local terminal also provides a low-cost
`touch screen interface. The user-friendly touch screen of the
`PDAoffers additional flexibility. It enables multiple controls to
`occupy the same physical space and the controls appear only
`when needed. Additionally, a touch screen reduces development
`cost and time, because no external hardwareis required. .:. The
`PDA can also serve to temporarily store vital medical
`information received from the wearable unit.
`
`Id.
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`The PDAis shownin Figure 3 of Mendelson-2006, reproduced below.
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`
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`Figure 3 illustrates a sample PDA andits graphical user interface (“GUI”).
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`Id. Mendelson-2006 explains that the GUI allowsthe userto interact with
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`the wearable system. Jd. “The GUI was configured to present the input and
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`output information to the user and allows easy activation of various
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`functions.” Jd. “The GUI also displays the subject’s vital signs, activity
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`level, body orientation, and a scrollable PPG waveform thatis transmitted by
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`the wearable device.” Jd. For example, the GUI displays numerical oxygen
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`saturation (““SpO’) and heart rate (“HR”) values. Id.
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`20
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`3.
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`Independent Claim 1
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`Petitioner presents undisputed contentions that claim 1 would have
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`been obvious over the combined teachings of Mendelson-799, Ohsaki,
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`Schulz, and Mendelson-2006. Pet. 40-61.
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`i. “A physiological measurement system comprising”
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`Onthis record, the cited evidence supports Petitioner’s undisputed
`
`contention that the combination of Mendelson-799, Ohsaki, Schulz, and
`
`Mendelson-2006satisfies the subject matter of the preamble.> Pet. 40-42;
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`see, e.g., Ex. 1012, code (57), 7:25-8:13, 8:37-41, 9:22—40, 10:16—22,
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`Fig. 7 (sensor device), Fig. 8 (pulse oximeter); Ex. 1010, 1-4,Fig. 3
`
`(handheld computing device); Ex. 1003 {[ 89-122.
`
`ii. “[a] a physiological sensor device comprising”
`
`Onthis record, the cited evidence supports Petitioner’s undisputed
`
`contention that Mendelson-799 discloses a physiological sensor device
`
`including sensor 10 and pulse oximeter 20. Pet. 42-43; see, e.g., Ex. 1012,
`
`code (57) (“A sensor for use in an optical measurement device and a method
`
`for non-invasive measurementof a blood parameter.”), 9:22—40 (describing
`
`optical sensor 10), 10:16—30 (describing pulse oximeter 20, including
`
`sensor 10), Fig. 7 (sensor 10), Fig. 8 (pulse oximeter 20).
`
`> Whetherthe preamble is limiting need not be resolvedatthis stage of the
`proceeding because Petitioner showssufficiently for purposes of institution
`that the recitation in the preambleis satisfied by the priorart.
`
`21
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`ili. “[b] one or more emitters configured to emit light into
`tissue ofa user”
`
`Onthis record, the cited evidence supports Petitioner’s undisputed
`
`contention that Mendelson-799 discloses light emitting elements 12a, 12b,
`
`and 12c that emit light into a user’s tissue. Pet. 43-44; see, e.g., Ex. 1012,
`
`9:22—40 (“The sensor 10 comprises. .
`
`. light source 12 composed ofthree
`
`closely spaced light emitting elements (e.g., LEDs or laser sources) 12a, 12b
`
`and 12c generating light of three different wavelengths.”), Fig. 7 (LEDs or
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`laser sources 12a, 12b and 12c).
`
`iv. “[c] at leastfour detectors, wherein each ofthe at least
`four detectors has a corresponding window that allows
`light to pass through to the detector”
`
`Onthis record, the cited evidence supports Petitioner’s undisputed
`
`contentions regardingthis limitation. Pet. 44-46. Specifically, Petitioner
`
`contends that Mendelson-799 discloses twelve photodetectors located within
`
`a sensor housing. Pet. 45; see, e.g., Ex. 1012, 9:22-40 (“The sensor 10
`
`comprises .
`.
`. an array of discrete detectors (e.g., photodiodes).”), Fig. 7
`(depicting rings ofsix far detectors 16 and six near detectors 18). Petitioner
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`also contends that Schulz teaches “a sensor featuring ‘a thin sheet of opaque
`
`material’ placed inside the sensor’s housing .
`
`.
`
`. with ‘a window in the
`
`opaque material provid[ing] an aperture for transmission ofoptical energy to
`
`or from the tissue site,” which blocks light and avoids saturation of the
`
`sensor’s light detectors. Pet. 30 (quoting Ex. 1013 § 73); see, e.g., Ex. 1013
`
`{ 73 (“[T]he window in the opaque material can be sized as needed.”’).
`
`Petitioner further contends that a person of ordinary skill in the art
`
`would have been motivated to add a layer of opaque material to Mendelson-
`
`799’s sensor, as taught by Schulz, to avoid saturation and to prevent ambient
`
`22
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`light from reaching the sensor’s detectors. Pet. 30-31, 34; see, e.g.,
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`Ex. 1003 J 101-109, 128-131; Ex. 1019, 79 (“[I]t is important to minimize
`
`the effects from light other than the optical signals of interest.”), 111.
`
`Petitioner contends it would have been obvious for the opaque layer to block
`
`optical pathsto the detectors “other than at windowsallowing lightto pass
`through to corresponding detectors.” Pet. 45-46; see, e.g., Ex. 1003 JJ 108-
`
`109.
`
`Toillustrate its proposed modification, Petitioner includes an
`
`annotated and modified view of Mendelson-799’s Figure 7, as well as an
`
`added sectional view, both of which are reproduced below. Pet. 34; see also
`
`id. at 46 (similar figures with slightly different annotations); Ex. 1003 { 108.
`
`a Opaque Layer
`L, Far Detector 16
`/
`
`Z/ y Near Detector 18
`
`
`
`Opaque Layer
`
`
`ee -
`No. rf] Near Detector [8
`5 Fae ~—Far Detector 16
`free
`
`—=EzIn_e)
`
`Petitioner’s modified and added figures depict the sensor of Mendelson-799
`
`with an added opaquelayer, as Petitioner contends would have been
`rendered obvious by Schulz.® Jd. at 33-34, 45-46.
`
`6 Petitioner’s annotated figures also include an added opaque wall and an
`added coveras discussed infra at Sections II.D.5.v and II-D.5.vi.
`
`23
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`Atthis stage of the proceeding, Petitioner’s stated reasoning for the
`
`proposed modification is sufficiently supported, including by the unrebutted
`
`testimony of Dr. Kenny. See, e.g., Ex. 1003 4 101-109, 128-131.
`
`v. “[d] a wall that surroundsatleast the at least the four
`detectors”
`
`Onthis record, the cited evidence supports Petitioner’s undisputed
`
`contentions regarding this limitation. Pet. 47-48. Specifically, Petitioner
`
`contends that Mendelson-799 discloses sensor housing 17 that encircles
`
`detectors 16 and 18. Jd. at 50; see, e.g., Ex. 1012, 9:23-40 (“All these
`
`elements are accommodated in a sensor housing 17.”), Fig. 7 (housing 17).
`
`Petitioner further acknowledges that Mendelson-799 does not depict a side
`
`view ofthe sensor and thus, to the extent Mendelson-799 doesnot explicitly
`
`teach that sensor housing 17 includes an opaque wall that circumscribesthe
`
`sensor components, a person of ordinary skill in the art would have foundit
`
`obvious“to connect, to the illustrated portion of sensor housing 17, an
`
`opaquewall configured to circumscribe the array of discrete detectors,”to
`
`shield the detectors from ambientlight and to protect from externalforces.
`
`Pet. 12-13, 23-24, 47-48; see, e.g., Ex. 1003 YJ] 64-66, 90, 132, 134.
`
`Petitioner contendsthis is consistent with the purpose of Mendelson-799’s
`
`light shield 14, which prevents light from reaching the detectors (id. at 13
`
`(citing Ex. 1012, 9:35-40)), as well as other prior art references cited in
`
`Mendelson-799 (id. at 13-17 (citing Exs. 1017, 1018)). See, e.g., Ex. 1003
`
`q{ 65-70, 134. For example, Dr. Kenny states that Ohsaki discloses a sensor
`
`including package 5 having a wall that surrounds light emitting element 6
`
`and light receiving element 7. Ex. 1003
`
`135; see, e.g., Ex. 1009 {| 17,
`
`Fig. 2 (detector 7 surrounded by wall of package5).
`
`24
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`Toillustrate its proposed modification, Petitioner includes an
`
`annotated and modified view of Mendelson-799’s Figure 7, as well as an
`
`addedsectional view, both of which are reproduced below. Pet. 16; see also
`
`id. at 24 (same), 47 (similar figures with slightly different annotations).
`
`-i-
`
`17
`
`
`v Far Detector 16
`- Near Detector 18
`
`mm”
`Light Source 12
`7 Light Shield 14
`
`oa
`
`
`
`Sensor Housing 17
`
`18
`YL Lipht Suurce 12
`/_~ Light Shield14
`LG, Near Detector 18
`
`
`Ke
`
`Peo |— Far Detector 16
`
`
`16
`
`Opaque Wall
`Planar substrate ~-o
`
`Petitioner’s modified and added figures depict the sensor of Mendelson-799
`
`with an added opaque wall connectedto the planar substrate of housing 17
`
`and encircling the sensor components, as Petitioner contends would have
`
`been obvious to a person of ordinary skill in the art. /d. at 15—16, 23-24, 47;
`
`Ex. 1003 Ff 70, 90, 134.
`
`Atthis stage of the proceeding, Petitioner’s stated reasoning for the
`
`proposed modification is sufficiently supported, including by the unrebutted
`testimony of Dr. Kenny. See, e.g., Ex. 1003 J 64-70, 89-90, 132-136.
`
`25
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`IPR2