`571-272-7822
`
`.
`
`Paper 33
`Entered: May 4, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE ‘THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01737
`Patent 10,709,366 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 US.C. § 318(a)
`
`
`
`IPR2020-01737
`Patent 10,709,366 B1
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`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (‘Petitioner’) filed a Petition requesting an inter partes
`
`review of claims 1-27 (“challenged claims”) of U.S. Patent No. 10,709,366
`
`B1 (Ex. 1001, “the ’366 patent”). Paper 2 (‘“Pet.””). Masimo Corporation
`
`(“Patent Owner”) waivedfiling a Preliminary Response. Paper 6. We
`
`instituted an inter partes review ofall challenged claims 1—27 onall asserted
`
`grounds of unpatentability, pursuant to 35 U.S.C. § 314. Paper 7 (“Inst.
`
`Dec.’”’).
`
`After institution, Patent Ownerfiled a Response (Paper 15, “PO
`
`Resp.”) to the Petition, Petitioner filed a Reply (Paper 19, “Pet. Reply”), and
`
`Patent Ownerfiled a Sur-reply (Paper 22, ““Sur-reply’’). An oral hearing was
`
`held on February 9, 2022, and a transcript of the hearing is included in the
`
`record. Paper 32 (“Tr.”).
`
`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 preponderance ofthe evidence, that challenged
`
`claims 1 27 of the °366 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 ofU.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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`IPR2020-01737
`Patent 10,709,366 B1
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`Apple Inc. v. Masimo Corporation, IPR2020-01523 (PTAB Sept.
`
`So
`
`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 1-29 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.
`
`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 Bl);
`
`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.
`
`30,
`
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01716 (PTAB Sept.
`
`30,
`
`2020) (challenging claims of U.S. Patent No. 10,702,194 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01722 (PTAB Oct.2,
`
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01723 (PTAB Oct. 2,
`
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2); and
`
`3
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`
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`IPR2020-01737
`Patent 10,709,366 B1
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`Apple Inc. v. Masimo Corporation, IPR2020-01733 (PTAB Sept.30,
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`2020) (challenging claims of U.S. Patent No. 10,702,195 B1).
`
`Pet. 94-95; 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 °366 patent. Paper 3, 1-2.
`
`C. The ’366 Patent
`
`The °366 patentis titled “Multi-Stream Data Collection System for
`
`Noninvasive Measurement of Blood Constituents,” and issued on July 14,
`
`2020, from U.S. Patent Application No. 16/829,510, filed March 25, 2020.
`
`Ex. 1001, codes (21), (22), (45), (54). The ’366 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,
`
`61/086,057, each filed August 4, 2008, as well as 61/091,732, filed
`
`August 25, 2008, and 61/078,228 and 61/078,207, both filed July 3, 2008.
`
`Id. at codes (60), (63).
`
`The ’366 patent discloses a two-part data collection system including
`
`a noninvasive sensor that communicates with a patient monitor. Jd. at 2:38-
`
`40. The sensor includes a sensor housing, an optical source, and several
`
`photodetectors, and is used to measure a blood constituentor analyte, e.g.,
`
`oxygen or glucose. Jd. at 2:29-37, 2:62-3:12. The patient monitor includes
`
`a display and a network interface for communicating with a handheld
`
`computing device. Jd. at 2:42~48.
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`
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`IPR2020-01737
`Patent 10,709,366 B1
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`Figure 1 of the °366 patent is reproduced below.
`
`100
`
`
`SENSOR 101
`
`MONITOR 109
`
`.
`
`to
`
`INPUT DATA
`
`)
`
`ETECTORS
`102-103
`EMITTER a yD a R
`|
`108
`1)
`106 glen
`a
`0:
`SIGNAL
`|
`—$) FRONT-END
`(at-
`Uj
`.
`
`
`% 2|INTERFACErz PROCESSOR
`[
`I
`po peradee-
`(107
`\
`(
`MEASUREMENT {|
`i
`h
`USER
`i
`i
`DRIVER
`
`opTiONAL INTERFACE|~OPTIONAL if
`
`
`Tissue
`ra
`NOSE
`
`m1 SHAPER_SHIELD tt ¢
`
`
`105
`3)
`412
`_
`
`
`
`;
`
`OUTPUT
`DATA
`
`DATA
`
`
`
`
`¢
`"3
`
`FIG. 1
`
`STORAGE
`
`INTERFACE
`
`(14
`
`116
`
`Figure 1 illustrates a block diagram of data collection system 100 including
`
`sensor 101 and monitor 109. Jd. at 11:51-61. Sensor 101 includes optical
`
`emitter 104 and detectors 106. Jd. Emitters 104 emit light that is attenuated
`
`or reflected by the patient’s tissue at measurementsite 102. Jd. at 11:61—63;
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`14:4-7. Detectors 106 capture and measurethe light attenuated or reflected
`
`from the tissue. Jd. at 14:3-10. In response to the measuredlight, detectors
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`106 output detector signals 107 to monitor 109 through front-end interface
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`108. Jd. at 14:7-10, 28-33. Sensor 101 also may include tissue 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
`
`whichlight can be detected. Zé. al 10:61-11:13.
`
`Monitor 109 includes signal processor 110 and userinterface 112. Id.
`
`at 15:16-18. “{S]ignal processor 110 includes processing logic that
`
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`IPR2020-01737
`Patent 10,709,366 Bl
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`determines measurements for desired analytes, .
`
`.
`
`. based on the signals
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`received from the detectors 106.” Jd. at 15:20-24. User interface 112
`
`presents the measurementsto a user on a display, e.g., a touch-screen
`
`display. Id. at 15:46-50. The monitor may be connected to storage device
`
`114 and networkinterface 116. Jd. at 15:60-67.
`
`The 366 patent describes various examples of sensor devices.
`
`Figures 14D and 14F, reproduced below,illustrate sensor devices.
`
`1450
`
`x
`
`FIG. 14D
`
`FIG. 14F
`
`Figure 14D (left) illustrates portions of a detector submount and Figure 14F
`
`(right) illustrates portions of a detector shell. Jd. at 6:44-47. As shownin
`
`Figure 14D, multiple detectors 1410c are located within housing 1430 and
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`undertransparent cover 1432, on which protrusion 605b (orpartially
`
`cylindrical protrusion 605) is disposed. /d. at 35:39-43, 36:3U-41. Figure
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`14F illustrates a detector shell 306f including detectors 1410c on substrate
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`1400c. Jd. at 37:9-17. Substrate 1400c is enclosed by shielding enclosure
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`1490 and noise shield 1403, which include window 1492a and window
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`1492b, respectively, placed above detectors 1410c. /d. Alternatively,
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`IPR2020-01737
`Patent 10,709,366 B1
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`cylindrical housing 1430 may be disposed under noise shield 1403 and may
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`enclose detectors 1410c. Jd. at 37:47-49.
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`Figures 4A and 4B, reproduced below,illustrate an alternative
`
`example ofa tissue contact area of a sensor device.
`
`
`
` 1 400
`
`FIG. 4A
`FIG. 4B
`
`Figures 4A and 4Billustrate arrangements of protrusion 405 including
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`measurement contact area 470. /d. at 23:18-24. “[M]easurementsite
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`contact area 470 can include a surface that molds body tissue of a
`
`measurementsite.” Jd. “For example, . .. measurement site contact
`
`area 470 can be generally curved and/or convex with respect to the
`measurementsite.” Jd. at 23:41-43. The measurement site 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.
`
`D. Illustrative Claim
`
`Ofthe challenged claims, claim 1, 14, and 27 are independent. Claim
`
`1 is illustrative and is reproduced below.
`
`1. A noninvasive physiological parameter measurement
`device adapted to be worn by a wearer,
`the noninvasive
`physiological parameter measurement device comprising:
`
`[a] one or morelight emitters;
`
`[b] a substrate having a surface;
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`IPR2020-01737
`Patent 10,709,366 B1
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`[c] a first set of photodiodes arranged on the surface and
`spaced apart from each other, wherein:
`
`[d] the first set of photodiodes comprises at least
`four photodiodes, and
`
`[e] the photodiodes of the first set of photodiodes
`are connected to one anotherin parallel to provideafirst
`signal stream responsive to light from at least one of the
`one or more light emitters attenuated by bodytissue;
`
`[f] a second set ofphotodiodes arranged on the surface and
`spaced apart from each other, wherein:
`
`[g] the second set of photodiodes comprisesat least
`four photodiodes,
`
`[h] the photodiodesofthe secondset ofphotodiodes
`are connected to one another in parallel
`to provide a
`secondsignal stream responsive to light from at least one
`ofthe one or morelight emitters attenuated by bodytissue,
`and
`
`[i] at least one ofthe first signal stream or the second
`signal stream includes information usable to determine a
`physiological parameter of a wearer of the noninvasive
`physiological parameter measurement device;
`
`[j] a wall extending from the surface and configured to
`surroundat least the first and second sets of photodiodes; and
`
`[k] a cover arranged to cover at least a portion of the
`surtace ofthe substrate, wherein the cover comprises a protrusion
`that extends overall of the photodiodes of the first and second
`sets of photodiodes arranged on the surtace, and wherein the
`cover is further configured to cover the wall.
`
`Ex. 1001, 44:57-45:27 (bracketed identifiers [aJ—-[k] added). Independent
`
`claim 14 includeslimitations substantially similar to limitations [a], [c]—[h],
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`[j], and [k] and includes additional limitations drawn to “one or more
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`processors configured to: receive information .
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`.
`
`.
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`; [and], process the
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`information to determine physiological parameter measurement
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`IPR2020-01737
`Patent 10,709,366 B1
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`information.” Id. at 46:33-56. Independent Claim 27 contains numerous
`
`limitations, which are integrated from claim 1 (limitations [a]—[k]) as well
`as limitations from numerous dependentclaims. Id. at 48:1-49:10;
`
`Pet. 81-84.
`
`E. Applied References
`
`Petitioner relies upon the following references:
`
`Shermanet al., U.S. Patent No. 4,941,236, filed July 6, 1989,
`issued July 17, 1990 (Ex. 1047, “Sherman’’);
`
`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
`Al, filed May 23, 2002, published December12, 2002 (Ex. 1006,
`“Aizawa’’);
`
`Goldsmith ct al., U.S. Patent Application Publication
`No. 2007/0093786 A1, filed July 31, 2006, published April 26, 2007
`(Ex. 1027, ““Goldsmith); and
`
`Y. Mendelson,et al., “Measurement Site and Photodetector
`Size Considerations in Optimizing Power Consumption ofa Wearable
`Reflectance Pulse Oximeter,” Proceedings of the 25th IEEE EMBS
`AnnualInternational Conference, 3016-3019 (2003) (Ex. 1024,
`“Mendelson-2003”).
`
`Pet. 1-2.
`
`Petitioner also submits, inter alia, a Veclaration ot ‘lhomas W.
`
`Kenny, Ph.D. (Ex. 1003) and a Second Declaration of Dr. Kenny (Ex. 1060).
`
`Patent Owner submits, inter alia, a Declaration of Vijay K. Madisetti, Ph.D
`
`(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, 2026-2027.
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`
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`Patent 10,709,366 B1
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`F. Asserted Grounds of Unpatentability
`Weinstituted an inter partes review based on the following grounds.
`
`Inst. Dec. 11, 33.
`
`,
`
`Claim(s) Challenged|35 U.S.C. §
`
`
`
`
`
`1-12 and 14-27
`B
`
`II. DISCUSSION
`
`
`
`
`Aizawa, Mendelson-2003,
`Ohsaki, Goldsmith
`Aizawa, Mendelson-2003,
`Ohsaki, Goldsmith, Sherman
`
`103
`
`
`
`
`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 usedto
`
`construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R.
`§ 42.1U0(b) (2020). Accordingly, we construethe claims accordingto the
`standard set torth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
`
`Petitioner submits that no claim term requires express construction. Pet. 3.
`
`Patent Ownerasserts that the claims should be given their ordinary and
`
`_ customary meaning, consistent with the specification. PO Resp. 9.
`
`Bascd on ouranalysis of the issues in dispute, we conclude that no
`
`claim terms require express construction. Nidec Motor Corp. v. Zhongshan
`
`Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`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 andthepriorart 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
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`(2007). The question of obviousnessis resolved on the basis of underlying
`
`factual determinations, including (1) the scope and content ofthe priorart;
`
`(2) any differences between the claimed subject matter and thepriorart;
`
`(3) the level of skill in the art; and (4) objective evidence of
`
`nonobviousness.! Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`Whenevaluating a combination of teachings, we must also “determine
`
`whetherthere was an apparent reason to combine the known elementsin the
`
`fashion claimed by the 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 produced a predictable result weighsin 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 never shifts to Patent Owner. Dynamic Drinkware,
`
`LLC v. Nat’! Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To
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`prevail, Petitioner must support its challenge by a preponderanceofthe
`
`evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`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 of electrical, computer, or software
`
`' The parties have not presented objective evidence of non-obviousness.
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`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. 3 (citing Ex. 1003 Ff 21-22). “Alternatively, the person could havealso
`
`had a Master of Science degree in a relevant academicdiscipline with less
`
`than a year of related work experience in the same discipline.” Jd.
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`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.9.
`
`WeadoptPetitioner’s assessmentas set forth above, which appears
`
`consistent with the level of skill reflected in the Specification and priorart.
`
`D. Obviousness over the Combined Teachings of
`Aizawa, Mendelson-2003, Ohsaki, and Goldsmith
`
`Petitioner contends that claims 1-12 and 14—27 ofthe ’366 patent
`
`would have becn obvious over the combined tcachings of Aizawa,
`
`Mendelson-2003, Ohsaki, and Goldsmith. Pet. 10-91; see also Pet. Reply
`
`8-37.” Patent Owner disagrees. PO Resp. 8-66; see also Sur-reply 1-29.
`
`Based on ourreview ofthe parties’ arguments and the cited evidence
`
`of record, we determine that Petitioner has met its burden of showing by a
`
`preponderanceofthe evidence that claims 1-12 and 14—27 are unpatentable.
`
`1. Overview ofAizawa (Ex. 1006)
`
`Aizawais a U.S. patent application publication titled “Pulse Wave
`
`Sensor and Pulse Rate Detector,” and discloses a pulse wavesensorthat
`
`* Petitioner’s Reply includes a Table of Contents and an Exhibits list that
`spans pagesii—vii, and the substance of the Reply then begins on page8.
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`detects light output from a light emitting diode andreflected from a patient’s
`
`artery. Ex. 1006, codes (54), (57).
`
`Figure 1(a) of Aizawais reproduced below.
`
`FIG.
`
`1 (a)
`
`1
`
`Figure 1(a) is a plan view of a pulse wave sensor. Jd. 9 23. As shown in
`
`Figure 1(a), pulse wave sensor 2 includeslight emitting diode (“LED”) 21,
`
`four photodetectors 22 symmetrically disposed around LED 21, and
`
`holder 23 for storing LED 21 and photodetectors 22. Id. Aizawa discloses
`
`that, “to further improve detection efficiency, .. . the numberof the
`photodetectors 22 may be increased.” Id. J 32, Fig. 4(a). “The same effect
`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.
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`
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`Figure 1(b) of Aizawa is reproduced below.
`FIG.
`1 (b)
`
`
`
`Figure 1(b) is a sectional view of the pulse wave sensor. Jd. § 23. As shown
`
`in Figure 1(b), pulse wave 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 “unshowndisplay.” Jd. The
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`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
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`23, and attachmentbelt 7. Jd.
`
`Aizawadiscloses that LED 21 and photodetectors 22 “are stored in
`
`cavities 23b and 23c formed in the detection face 23a” of the pulse wave
`
`sensor. Id. § 24. Detection face 23a “is a contact side between the holder 23
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`and a wrist 10, respectively, atpositions where the light emitting face 21s of
`
`the light emitting diode 21 andthe 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).”
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`Id. ] 26. Furthermore, “the above belt 7 is fastened such that the acrylic
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`transparent plate 6 becomescloseto the artery 11 of the wrist 10. Thereby,
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`adhesion betweenthe wrist 10 and the pulse rate detector 1 is improved.”
`
`Id. 99 26, 34.
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`2. Overview ofMendelson-2003 (Ex. 1024)
`
`Mendelson-2003 is a journalarticle titled “Measurement Site and
`
`Photodetector Size Considerations in Optimizing Power Consumption of a
`
`Wearable Reflectance Pulse Oximeter,” which discusses a pulse oximeter
`
`sensor in which “battery longevity could be extended considerably by
`
`employing a wide annularly shaped photodetector ring configuration and
`performing SpO, measurements from the forehead region.” Ex. 1024, 3016.°
`Mendelson-2003 explains that pulse oximetry uses sensors to monitor
`
`oxygen saturation (SpO2), where the sensor typically includeslight emitting
`
`diodes (LED) and a silicon photodetector (PD). Jd. According to
`
`Mendelson-2003, when designing a pulse oximeter, it is important to offer
`
`“low power management without compromising signal quality.” Jd. at 3017.
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`“However, high brightness LEDs commonly used in pulse oximeters
`
`require[] relatively high current pulses, typically in the range between 100-—
`
`200mA. Thus, minimizing the drive currents supplied to the LEDs would
`
`contribute considerably toward the overall powersaving in the design of a
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`moreefficient pulse oximeter.” Jd. To achieve this goal, Mendelson-2003
`
`discusses previous studies in which
`
`the driving currents supplied to the LEDs. .
`significantly without
`compromising the
`
`. could be lowered
`quality of
`the
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`3 We adoptPetitioner’s citation format by referring to the original page
`numbering and not Petitioner’s added page numberingat the bottom.
`15
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`[photoplethysmographic or PPG signals] by increasing the
`overall size of the PD... . Hence, by maximizing the light
`collected by the sensor, a very low power-consuming sensor
`could be developed, thereby extending the overall battery life of
`a pulse oximeter intended for telemedicine applications.
`
`Id.
`
`Mendelson-2003 discloses the prototype of such a sensorin Figure1,
`
`which is reproduced below, and servedas the basis for the studies evaluated
`
`in Mendelson-2003.
`
`
`
`Figure 1 of Mendelson-2003 depicts a sensor configuration showing the
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`relative positions of its PDs and LEDs. Jd. As shownin Figure 1, “six PDs
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`were positioned in a close inner-ring configuration at a radial distance of
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`6.0mm from the LEDs. The secondset of six PDs spaced equally along an
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`outer-ring, separated from the LEDsby a radius of 10.0mm.” Id.
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`Mendelson-2003 also explains that “[eJach cluster of six PDs were wired in
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`parallel and connected through a central hub to the common summinginput
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`of a current-to-voltage converter.” Id.
`
`Mendelson-2003 reports the results of the studies as follows:
`
`Despite the noticeable differences between the PPG
`signals measured from the wrist and forehead, the data plotted in
`Fig. 3 also revealed that considerable stronger PPGs could be
`obtained by widening the active area of the PD which helps to
`collect a bigger proportion of backscattered light intensity. The
`additional increase, however, depends on the area and relative
`position of the PD with respect to the LEDs. For example,
`
`16
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`utilizing the outer-ring configuration, the overall increase in the
`average amplitudes of the R and IR PPGs measured from the
`forehead region was 23% and 40%, respectively. Similarly, the
`sameincrease in PD area producedanincreasein the PPG signals
`measured from the wrist, but with a proportional higher increase
`of 42% and 73%.
`
`Id. at 3019.
`
`3. Overview ofOhsaki (Ex. 1014)
`
`Ohsakiis a U.S. patent application publication titled “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. 1014, code (54), § 3. Figure 1 of Ohsaki is reproduced below.
`
`FIG.
`|
`9 13.3 15
`
`!
`
`(BACK SIDE)
`
`Figure 1 illustrates a cross-sectional view of pulse wave sensor | attached on
`
`the back side of user’s wrist 4. Id. Jf 12, 16. Pulse wave sensor 1 includes
`
`detecting element 2 and sensor body 3. Jd. ¥ 16.
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`17
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`Figure 2 of Ohsaki, reproduced below,illustrates further detail of
`
`detecting element2.
`
`FIG. 2
`
`'
`+ MICRO”
`+
`COMPUTER
`
`‘
`3
`1
`
`"
`proces
`DRIVE
`1
`|
`|
`_CIRCUIT
`
`pang eens
`
`8
`
`18
`
`REFLECTED LIGHT
`
`Figure 2 illustrates a mechanism for detecting a pulse wave. Id. J 13.
`
`Detecting element 2 includes package5, light emitting element 6,light
`
`receiving element7, and translucent board 8. Jd. 17. Light emitting
`
`element6 andlight receiving element 7 are arranged on circuit board 9
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`inside package 5. Id. J 17, 19.
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`“Translucent board 8 is a glass board whichis transparent to light, and
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`attached to the opening of the package 5. A convex surface is formed on the
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`top of the translucent board 8.” Jd. § 17. “[T]he convex surface of the
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`translucent board 8 is in intimate contact with the surface ofthe user’s skin,”
`
`preventing detecting element 2 from slipping off the detecting position of the
`
`user’s wrist. Jd. § 25. By preventing the detecting element from moving,
`
`the convex surface suppresses“variation of the amountofthe reflected light
`
`whichis 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
`
`disturbancelight from the outside.” Jd.
`
`18
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`.
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`Patent 10,709,366 B1
`Sensor body 3 is connected to detecting element 2 by signalline 13.
`Id. § 20. Signal line 13 connects detecting element2 to drive circuit 11,
`
`microcomputer 12, and a monitor display (not shown). Jd. Drive circuit 11
`
`drives light emitting element 6 to emit light toward wrist 4. Jd. Detecting
`
`element 2 receives reflected light which is used by microcomputer 12 to
`
`calculate pulse rate. Jd. “The monitor display showsthe calculated pulse
`
`rate.” Id.
`
`4. Overview of Goldsmith (Ex. 1027)
`
`Goldsmith is a U.S. patent application publication titled “Watch
`
`Controller for a Medical Device,” and discloses a watch controller device
`
`that communicates with an infusion device to “provid[e] convenient
`
`monitoring and control of the infusion pump device.” Ex. 1027, codes (54),
`
`(57).
`
`Goldsmith’s Figure 9A and 9B are reproduced below.
`
`AG.IA
`
`fie %%
`
`Figure 9A and Figure 9B are respective front and rear views of a combined
`
`watch and controller device, Jd. {| 30-31. As shown in Figure 9A, watch
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`19
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`controller 900 includes housing 905, transparent member950, display 910,
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`input devices 925a-—c,scroll wheel 930, and wrist band 940. Id. Jf 85-86.
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`Figure 9B showsrear-side cover 960, and a rear view of housing 905, scroll
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`wheel 930, and wrist band 940. Id.
`
`Goldsmith discloses the watch controller may interact with one or
`
`more devices, such as infusion pumpsor analyte monitors. Jd. | 85; see also
`
`id. J 88 (“The analyte sensing device 1060 may be adapted to receive data
`
`from a sensor, such as a transcutaneoussensor.”). Display 910 “maydisplay
`
`at least a portion of whatever information and/or graph is being displayed on
`
`the infusion device display or on the analyte monitor display,” such as, e.g.,
`
`levels of glucose. Id. | 86. The display is customizable in a variety of
`
`configurations including user-customizable backgrounds, languages, sounds,
`
`font (including font size), and wall papers. /d. [J] 102, 104. Additionally,
`
`the watch controller may communicate with a remote station, e.g., a
`
`computer, to allow data downloading. Jd. § 89 (including wireless). The
`
`remote station may also includea cellular telephone to be “used as a conduit
`
`for remote monitoring and programming.” Id.
`
`5. Independent Claim 1
`
`Petitioner contends that claim 1 would have been obvious over the
`
`combinedteachings of Aizawa, Mendelson-2003, Ohsaki, and Goldsmith.
`
`Pet. 38-53. Below, we set forth how the combination ofprior art references
`
`teaches or suggests the claim limitations that are not disputed by the parties.
`
`For those limitations and reasons for combining the references that are
`
`disputed, we examine eachofthe parties’ contentions and then provide our
`
`analysis.
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`
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`Patent 10,709,366 B1
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`i.
`
`“A noninvasive physiological parameter measurement
`device adapted to be worn by a wearer, the noninvasive
`physiological parameter measurement device comprising”
`The cited evidence supports Petitioner’s undisputed contention that
`
`“Aizawa discloses a pulse sensor that is designed to ‘detect[] 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,’” and that Goldsmith
`
`teaches an analyte sensorthat is part of a user-worn controller device that
`
`includes,e.g., a display.* Pet. 33, 39 (quoting Ex. 1006 § 2); see also
`
`Ex. 1006 4 27 (discussing optical path), Fig. 2 (depicting physiological
`
`parameter measurement device worn bya user); Ex. 1027 {[] 85 (“a watch”),
`
`88 (“analyte sensing device 1060”), Fig. 9A; Ex. 1003 § 94.
`
`Petitioner further contends that a person of ordinary skill in the art
`
`would have found it obvious to incorporate Aizawa’s sensor“into
`
`Goldsmith’s integrated wrist-worn watch controller device that includes,
`
`amongother features, a touch screen, network interface, and storage device”
`
`in order to receive and display data sensed by Aizawa’s sensor. Pet. 31-38;
`
`see, e.g., Ex. 1003 J] 88-89 (“would have enhancedthe sensor’sutility and
`improved the user’s experience”). According to Petitioner, this would have
`
`“enable[d] a user to view andinteract with heart rate data during exercise via
`
`Goldsmith’s touch-screen display, and to enable heart rate data to be
`
`monitored by the user and/or others through any of the devices with which
`
`Goldsmith’s device can communicate.” Pet. 34; see, e.g., Ex. 1003 { 89.
`
`4 Whether the preambleis limiting need not be resolved becausePetitioner
`showssufficiently based on the final record that the recitation in the
`preamble is satisfied by thepriorart.
`
`21
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`Petitioner asserts this would have been use of a knowntechnique to improve
`
`similar devices in the same way. Pet. 35; see, e.g., Ex. 1003 { 90; see also
`
`Pet. 35-38 (also discussing physical incorporation); see, e.g., Ex. 1003
`
`q{ 90-93 (same).
`
`Petitioner’s stated reasoning for the proposed modificationis
`
`sufficiently supported, including by the unrebutted testimony of Dr. Kenny.
`
`See, e.g., Ex. 1003 q{ 88-94.
`ii.
`“fa] one or more light emitters”
`and
`“[b] a substrate having a surface”
`The cited evidence supports Petitioner’s undisputed contention that
`
`Aizawa discloses an emitter, LED 21, that emits light that is picked up by
`
`photodetectors. Pet. 40; see, e.g., Ex. 1006 § 23 (“LED 21 ... for emitting
`
`light having a wavelength of a near infrared range”), 27 (explaining that
`
`light is emitted toward the wrist), Fig. 1(b) (depicting emitter 21 facing user
`
`tissue 10), Fig. 2 (depicting sensor worn on user’s wrist).
`
`Petitioner persuasively demonstrates that a person of ordinary skill in
`
`the art would have understood that Aizawa’s surface would include a
`substrate on which the emitter and detectors are arranged. Pet. 41.
`Petitioner relies on annotated Figure 1(b) of Aizawa, reproduced below.
`
`i Surface
`a2.
`, L. |
`
`
`
` 2
`
`"23
`ae es,
`CALY UYOZZ
`
`nd
`
`DNS Fae
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`
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`Patent 10,709,366 B1
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`Petitioner’s annotated Figure 1(b) showsdetectors highlighted in red and a
`
`substrate surface unnumberedbut highlighted in brown. Pet. 41. Dr. Kenny
`
`likewise testifies that Aizawa teaches “a substrate having surface (shownin
`
`brown) on whichthe holder 23 is placed and on whichthe detectors/
`
`photodiodesare arranged.” Ex. 1003 { 96.
`
`iii.
`
`“[c] afirst set ofphotodiodes arranged on the surface and
`spaced apartfrom each other, wherein: [d] the first set of
`photodiodes comprises at leastfour photodiodes”
`and
`“Tf] a second set ofphotodiodes arranged on the surface
`and spaced apartfrom each other, wherein: [g] the second
`set ofphotodiodes comprises at leastfour photodiodes”
`Petitioner’s Undisputed Contentions
`
`Petitioner contends that Aizawadisclosesafirst set of four
`
`photodiodesthat are circularly arranged around a central emitter. Pet. 18
`
`(citing, e.g., Ex. 1006 § 23). Petitioner also contendsthat, in one
`
`embodiment, Aizawadiscloses that eight or more detectors may be used to
`
`improve detection efficiency, but does not expressly teach a “secondset of
`
`photodiodes,” as claimed. Jd. at 19-20(citing,e.g., Ex. 1006, Fig. 4(a)); see
`
`also Ex. 1003 Ff 67-68.
`
`Patent Owner doesnot dispute these contentions, and we agree with
`
`Petitioner. Aizawa disclosesa set of “four phototransistors 22”that are
`
`disposed in a single ring around central emitter 21. Ex. 1006 § 23,
`
`Figs. 1(a)-1(b). Aizawaalso discloses that “the numberofthe
`
`photodetectors 22 may be increased” to further improve detection efficiency,
`
`and depicts in Figure 4(a) an embodiment where eight photodetectors 22 are
`
`disposed