`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 39
`Date: February 23, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01520
`Patent 10,258,265 B1
`
`____________
`
`
`
`Before GEORGE R. HOSKINS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2020-01520
`Patent 10,258,265 B1
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`
`I.
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) pursuant to
`
`35 U.S.C. §§ 311–319 to institute an inter partes review of U.S. Patent
`
`No. 10,258,265 B1 (“the ’265 patent”), claims 1–4, 6–14, and 16–30. We
`
`instituted the petitioned review (Paper 7, “Institution Decision” or
`
`“Inst. Dec.”).
`
`Masimo Corporation (“Patent Owner”) filed a Patent Owner Response
`
`(Paper 21, “PO Resp.”) to oppose the Petition. Petitioner filed a Reply
`
`(Paper 24, “Pet. Reply”) to the Patent Owner Response. Patent Owner filed
`
`a Sur-reply (Paper 27, “Sur-reply”) to the Reply. With prior authorization
`
`from the Board, Petitioner filed an Identification of Testimony (Paper 33) in
`
`response to the Sur-reply. An oral hearing was held, for which the transcript
`
`was entered into the record (Paper 37, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(b)(4) and § 318(a). This
`
`Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R.
`
`§ 42.73 as to the patentability of claims 1–4, 6–14, and 16–30 of the
`
`’265 patent. We determine Petitioner has shown by a preponderance of the
`
`evidence that those claims are unpatentable.
`
`II.
`
`BACKGROUND
`
`A.
`
`Real Parties-in-Interest and Related Proceedings
`
`Petitioner identifies itself as the sole real party-in-interest for
`
`Petitioner. Pet. 104. Patent Owner identifies itself as the sole real
`
`party-in-interest for Patent Owner. Paper 4, 1.
`
`The parties identify one district court litigation as related to this
`
`proceeding: Masimo Corp. et al. v. Apple Inc., Civil Action No. 8:20-cv-
`
`2
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`IPR2020-01520
`Patent 10,258,265 B1
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`00048 (C.D. Cal.). Pet. 105; Paper 4, 1. We are also aware of several other
`
`IPR proceedings challenging other patents at issue in that litigation. See,
`
`e.g., Pet. 105; Paper 4, 3.
`
`B.
`
`The ’265 Patent
`
`The ’265 patent concerns noninvasive devices for measuring blood
`
`analytes such as glucose, or other physiological characteristics such as pulse
`
`rate. See Ex. 1001, code (57), 2:20–30. Figures 3C and 3E are reproduced
`
`below:
`
`
`
`
`
`Figure 3C is a perspective view of sensor 301a, comprising upper emitter
`
`shell 304a pivotably connected to lower detector shell 306a, to sandwich a
`
`person’s finger between the shells. See id. at 5:52–55, 18:39–51. Figure 3E
`
`is a perspective view of detector shell 306b of a different but similar
`
`sensor 301b. See id. at 5:59–61, 22:21–40 (“The features described with
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`3
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`Patent 10,258,265 B1
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`respect to the detector shell 306b can also be used with the detector
`
`shell 306a of the sensor 301a.”).
`
`Emitter shell 304a houses emitter components (not shown in
`
`Figure 3C) such as LEDs, which emit light of different wavelengths, such as
`
`visible light, near infrared light, or infrared light. See id. at 5:3–7, 12:3–12,
`
`13:8–15, 18:40–42, 18:62–63.
`
`Detector shell 306a / 306b houses four photodetectors 316, one
`
`underneath each window 320–323 within finger bed 310 formed on top of
`
`the shell. See id. at 19:4–5, 19:13–16, 19:38–48. Finger bed 310 includes “a
`
`tissue thickness adjustor or protrusion 305,” which may be removed and
`
`interchanged with other protrusions 305 to correspond to different finger
`
`characteristics. Id. at 19:29–37.
`
`Sensor 301a operates in the following manner. A person places
`
`a finger on finger bed 310, and upper emitter shell 304a pivots toward lower
`
`detector shell 306a / 306b to hold the finger in place, and to shield the
`
`interior of sensor 301a from interference by ambient light. See id. at
`
`16:52–64, 18:43–51, 18:66–19:20. Then, the emitters housed in emitter
`
`shell 304a emit light of different wavelengths, to pass through the person’s
`
`finger and into windows 320–323 within finger bed 310, to reach
`
`photodetectors 316. See id. at 19:38–48. Photodetectors 316 capture and
`
`measure the light, which has been attenuated by the person’s finger tissue,
`
`and output responsive signals to a processor that uses the signals to derive a
`
`physiological parameter of the person. See id. at 2:20–30, 10:30–39,
`
`10:62–11:1, 14:11–19, 15:31–35, 18:39–42.
`
`Another detector subassembly is shown in Figure 14D, reproduced
`
`below:
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`Figure 14D shows detector subassembly 1450 including submount 1400c,
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`cylindrical housing 1430, transparent cover 1432 with protrusion 605b
`
`disposed on it, and four detectors 1410c. See id. at 6:54–55, 36:38–47. The
`
`light focusing properties provided by protrusion 605b advantageously reduce
`
`the number of detectors, or rows of detectors, that are required. See id. at
`
`35:56–36:10; see also id. at Fig. 14B, 36:11–30 (illustrating and describing
`
`function of a “partially cylindrical protrusion 605 (or alternatively, the
`
`protrusion 605b)” to focus light on detector(s) 1410b).
`
`C.
`
`The Claims of the ’265 Patent
`
`The ’265 patent lists thirty claims, including two independent claims,
`
`claims 1 and 26. Ex. 1001, 44:65–47:20. We reproduce illustrative claim 1
`
`here:
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`5
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`1. A noninvasive optical physiological measurement device
`adapted to be worn by a wearer, the noninvasive optical
`physiological measurement device providing an indication of a
`physiological parameter of the wearer comprising:
`
`a plurality of emitters of different wavelengths;
`
`a housing having a surface and a circular wall protruding
`from the surface;
`
`at least four detectors arranged on the surface and spaced
`apart from each other, the at least four detectors configured
`to output one or more signals responsive to light from the
`one or more light emitters attenuated by body tissue, the one
`or more signals indicative of a physiological parameter of
`the wearer; and
`
`a light permeable cover arranged above at least a portion of
`the housing, the light permeable cover comprising a
`protrusion arranged to cover the at least four detectors.
`
`Id. at 44:66–45:15.
`
`D.
`
`Prior Art and Asserted Grounds
`
`Petitioner relies on the following eight prior art references. See
`
`Pet. 1–3.
`
`Name
`
`Reference
`
`Date
`
`Exhibit No(s).
`
`Aizawa
`
`US 2002/0188210 A1
`
`Dec. 12, 2002 1006
`
`Beyer
`
`US 7,031,728 B2
`
`Apr. 18, 2006 1019
`
`Goldsmith US 2007/0093786 A1
`
`Apr. 26, 2007 1027
`
`Inokawa
`
`JP 2006-296564 A
`
`Nov. 2, 2006
`
`1007 & 10081
`
`Lo
`
`US 2004/0138568 A1
`
`July 15, 2004
`
`1028
`
`
`1 Exhibit 1007 is the reference, which was published in the Japanese
`language, and Exhibit 1008 is a certified English language translation.
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`6
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`Name
`
`Reference
`
`Date
`
`Exhibit No(s).
`
`Aug. 1988
`
`1015
`
`Dec. 26, 20072 1016
`
`Mendelson
`-1988
`
`Mendelson
`-2006
`
`Y. Mendelson, et al.,
`Design and Evaluation of a
`New Reflectance Pulse
`Oximeter Sensor, Medical
`Instrumentation, Vol. 22,
`No. 4, 167–173 (1988)
`
`Y. Mendelson, et al.,
`A Wearable Reflectance
`Pulse Oximeter for Remote
`Physiological Monitoring,
`Proceedings of the 28th
`IEEE EMBS Annual Int’l
`Conf., 912–915 (2006)
`
`Ohsaki
`
`US 2001/0056243 A1
`
`Dec. 27, 2001 1014
`
`Petitioner relies on the following eight grounds of unpatentability, all
`
`under 35 U.S.C. § 103. See Pet. 1–2.
`
`Ground Claim(s) Challenged
`
`References
`
`1A
`
`1B
`
`1C
`
`1D
`
`1–4, 6–14, 16, 17,
`19–23, 26–29
`
`1–4, 6–14, 16, 17,
`19–23, 26–29
`
`Aizawa, Inokawa
`
`Aizawa, Inokawa, Ohsaki
`
`23, 24
`
`23, 24
`
`Aizawa, Inokawa, Mendelson-2006
`
`Aizawa, Inokawa, Goldsmith, Lo
`
`
`2 This date for Mendelson-2006 is taken from the Petition (page 3), as the
`date when the reference “was first cataloged by Cornell University’s library”
`(Ex. 1026 ¶¶ 11–14).
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`7
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`Ground Claim(s) Challenged
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`References
`
`1E
`
`25
`
`Aizawa, Inokawa,
`Mendelson-2006, Beyer
`
`2A
`
`1–4, 6–14, 16–22,
`26–30
`
`Mendelson-1988, Inokawa
`
`2B
`
`23, 24
`
`2C
`
`25
`
`Mendelson-1988, Inokawa,
`Mendelson-2006
`
`Mendelson-1988, Inokawa,
`Mendelson-2006, Beyer
`
`E.
`
`Testimonial Evidence
`
`Petitioner relies on the declaration testimony of Thomas W. Kenny,
`
`Ph.D. (Exhibits 1003 and 1047). Patent Owner relies on the declaration
`
`testimony of Vijay K. Madisetti, Ph.D. (Exhibit 2004).
`
`III. ANALYSIS
`
`A.
`
`Statement of Law
`
`Petitioner bears the burden of proving unpatentability of the
`
`challenged claims, and the burden of persuasion never shifts to Patent
`
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`
`1378 (Fed. Cir. 2015). Petitioner must prove unpatentability by a
`
`preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to 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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`8
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`
`non-obviousness, if made available in the record.3 See Graham v. John
`
`Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B.
`
`Level of Ordinary Skill in the Art
`
`Petitioner contends a person having ordinary skill in the art pertaining
`
`to the ’265 patent (“POSITA”) would have “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. 3–4; Ex. 1003 ¶¶ 21–22. “Alternatively, the person could
`
`have also had a Master of Science degree in a relevant academic discipline
`
`with less than a year of related work experience in the same discipline.”
`
`Pet. 4; Ex. 1003 ¶ 21.
`
`Patent Owner “applies Petitioner’s level of skill.” PO Resp. 10;
`
`Ex. 2004 ¶¶ 35–38. Patent Owner emphasizes that this level of skill requires
`
`no specific education or experience “with optics or optical physiological
`
`monitors” or “in physiology,” and instead “focuses on data processing and
`
`not sensor design.” PO Resp. 10; Ex. 2004 ¶ 37.
`
`Petitioner’s POSITA formulation is reasonable based on the record
`
`and the agreement of the parties. We also determine it is consistent with the
`
`
`3 The parties have not produced any objective evidence of non-obviousness.
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`’265 patent claims and the prior art of record. We adopt Petitioner’s
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`POSITA formulation in this Decision.
`
`C.
`
`Claim Construction
`
`We interpret the ’265 patent claims “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). This “includ[es]
`
`construing the claim in accordance with the ordinary and customary
`
`meaning of such claim as understood by one of ordinary skill in the art and
`
`the prosecution history pertaining to the patent.” Id.
`
`Petitioner asserts “no formal claim constructions are necessary in this
`
`proceeding.” Pet. 3. Patent Owner construes one claim term, “cover,”
`
`seeking to distinguish Mendelson-1988 from the claims. See PO Resp. 9,
`
`50–51. We address that claim construction here.
`
`1.
`
`“cover”
`
`Independent claim 1 requires “a light permeable cover,” and
`
`independent claim 26 requires “a cover . . . comprising a lens portion.”
`
`Ex. 1001, 45:13–15, 46:58–60.
`
`Patent Owner argues the claimed “cover” must be construed to
`
`exclude “an optically clear adhesive/epoxy” and a “resin on a surface.” PO
`
`Resp. 50; Ex. 2004 ¶¶ 111–114. Patent Owner asserts “the ’265 Patent
`
`distinguishes a resin on a surface from a cover, explaining: ‘the cylindrical
`
`housing 1430 (and transparent cover 1432) . . . can protect the
`
`detectors 1410c and conductors 1412c more effectively than currently-
`
`available resin epoxies.” PO Resp. 50–51 (quoting Ex. 1001, 36:58–67).
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`10
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`Patent Owner alleges Dr. Kenny also “distinguished a sealing resin
`
`from a cover, acknowledging a ‘layer of sealing resin’ is ‘one way to protect
`
`the components without using a cover.’” Id. at 51 (quoting Ex. 2009,
`
`395:22–396:17); Ex. 2004 ¶ 113. Patent Owner argues its construction is
`
`consistent with the prior art. PO Resp. 51 (citing Ex. 1008 ¶ 103, Fig. 17;
`
`Ex. 1012, 5:2–6, Fig. 2B; Ex. 1013 ¶ 32, Fig. 2; Ex. 1023 ¶ 35; Ex. 1027
`
`¶ 85, Fig. 9B); Ex. 2004 ¶ 114.
`
`Petitioner replies that “there is nothing in the specification or the
`
`prosecution history [of the ’265 patent] that would lead a POSITA to
`
`conclude that ‘cover’ should be interpreted based on anything other than its
`
`plain meaning.” Pet. Reply 27 (citing Thorner v. Sony Computer
`
`Entertainment America LLC, 669 F.3d 1362, 1368 (Fed. Cir. 2012)). That
`
`plain meaning, according to Petitioner, is that “a cover is merely ‘something
`
`that protects, shelters, or guards.’” Id. (quoting Ex. 1050); Ex. 1047 ¶ 56.
`
`Petitioner argues Patent Owner’s reliance on the ’265 patent specification
`
`takes certain text out of context, and when this context is considered, it is
`
`clear that “the epoxy resin to which the ’265 patent compares its cover is not
`
`[an] epoxy cover . . . but rather epoxy that is applied to solder joints.” Pet.
`
`Reply 28 (citing Ex. 1001, 36:58–67); Ex. 1047 ¶ 58.
`
`Petitioner accuses Patent Owner of mischaracterizing Dr. Kenny’s
`
`testimony, because he “clarified that using a sealing resin is ‘a pretty
`
`common way to protect electronic components.’” Pet. Reply 28 (citing
`
`Ex. 2009, 395:22–396:17); Ex. 1047 ¶ 57. Further according to Petitioner,
`
`“such extrinsic evidence would not justify departure from plain meaning
`
`under Thorner.” Pet. Reply 28.
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`Patent Owner maintains in response that the ’265 patent specification
`
`disclosure at issue “specifically distinguishes a ‘resin’ on a surface from a
`
`‘cover,’” and Petitioner’s reading of this disclosure is not persuasive.
`
`Sur-reply 22–23.
`
`Upon review of the foregoing, we disagree with Patent Owner’s
`
`limiting construction of the term “cover” to exclude epoxy and resin. The
`
`plain and ordinary meaning of the term does not support Patent Owner’s
`
`construction. A “cover” ordinarily connotes “something that protects,
`
`shelters, or guards.” Ex. 1050 (Merriam-Webster’s Collegiate Dictionary,
`
`11th ed. (©2005)), 288. That plain and ordinary meaning is consistent with
`
`the ’265 patent’s description of “flex circuit cover 360, which can be made
`
`of plastic or another suitable material . . . [and] can cover and thereby protect
`
`a flex circuit (not shown).” Ex. 1001, 23:17–26. It is also consistent with
`
`the ’265 patent’s description and illustration of “transparent cover 1432” in
`
`Figure 14D, which covers and protects detectors 1410c and
`
`conductors 1412c, and which “can be fabricated from glass or plastic, among
`
`other materials.” See id. at 36:38–67 (emphasis added), Figs. 14D–14E.
`
`Any special definition for a claim term must be set forth in the
`
`specification with reasonable clarity, deliberateness, and precision, so as to
`
`give notice of the inventor’s own lexicography. See Merck & Co. v. Teva
`
`Pharms. USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005); In re Paulsen,
`
`30 F.3d 1475, 1480 (Fed. Cir. 1994). Similarly: “The patentee may
`
`demonstrate an intent to deviate from the ordinary and accustomed meaning
`
`of a claim term by including in the specification expressions of manifest
`
`exclusion or restriction, representing a clear disavowal of claim scope.”
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`Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1325 (Fed. Cir.
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`2002) (citation omitted).
`
`Here, based on our review of the intrinsic evidence, no such special
`
`definition or express disavowal of the term “cover” to exclude epoxy and
`
`resin exists. Patent Owner relies on the following description of Figure 14D
`
`in this regard:
`
`In certain embodiments, the cylindrical housing 1430 (and
`transparent cover 1432) forms an airtight or substantially
`airtight or hermetic seal with the submount 1400c. As a result,
`the cylindrical housing 1430 can protect the detectors 1410c
`and conductors 1412c from fluids and vapors that can cause
`corrosion. Advantageously, in certain embodiments, the
`cylindrical housing 1430 can protect the detectors 1410c and
`conductors 1412c more effectively than currently-available
`resin epoxies, which are sometimes applied to solder joints
`between conductors and detectors.
`
`Ex. 1001, 36:58–67 (emphases added). First, the sentence cited by Patent
`
`Owner begins with the phrase “Advantageously, in certain embodiments,”
`
`which indicates the claimed invention is open to other embodiments, so
`
`there is no lexicography or disavowal here. Second, we agree with
`
`Petitioner’s reading of this sentence as distinguishing the prior art from the
`
`claimed invention based on the location of the material (being applied only
`
`to solder joints between conductors and detectors in the prior art, as opposed
`
`to covering the conductors and detectors in the invention) and not the type of
`
`material. Third, at best for Patent Owner, the ’265 patent expresses a
`
`preference for a cover to be made of glass or plastic, because such materials
`
`provide “more effective[]” protection than resin epoxies that were known to
`
`the inventors of the ’265 patent when it was filed. See id. at 36:50–67. But
`
`even this reading recognizes that resin epoxies provide some amount of
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`protection, albeit a lesser amount than glass or plastic, and therefore may in
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`some embodiments provide a cover.
`
`The prior art references cited by Patent Owner do not persuade us
`
`otherwise. Patent Owner cites various descriptions of a “cover” in the prior
`
`art, but they do not even identify a material for the cover, much less suggest
`
`that a cover may not be made of epoxy or resin. See Ex. 1008 ¶ 103
`
`(cover 123); Ex. 1012, 5:2–6 (cover plate 21); Ex. 1013 ¶ 32 (cover 200);
`
`Ex. 1027 ¶ 85 (cover 960). Patent Owner cites another reference which
`
`describes materials 30, 40 and 50 as formed of a “thermoplastic resin,” and
`
`illustrates these materials as covering LED 22 and bonding wire 23, but does
`
`not describe the materials as being a “cover.” Ex. 1023 ¶ 35, Fig. 6. This
`
`does not mean a POSITA would fail to consider these materials as being a
`
`“cover,” despite that this specific term was not used in the reference.
`
`Dr. Kenny’s deposition testimony cited by Patent Owner also does not
`
`persuade us otherwise. Dr. Kenny testifies that “a layer of sealing resin”
`
`“could” be used to protect the electronic components in a sensor (Ex. 2009,
`
`395:22–396:8). He was then asked “So that would be one way to protect the
`
`components without using a cover, correct?” to which he answered “There
`
`are many ways to protect the elements other than using a cover” and
`
`maintained his proposed combination of prior art has a “cover” to achieve
`
`purposes other than protecting electronic components. Id. at 396:9–17. He
`
`did not squarely testify that sealing resin could not ever be a cover.
`
`Thus, we do not construe the claimed “cover” to exclude epoxy and
`
`resin.
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`2.
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`Other Claim Terms
`
`Upon consideration of the entirety of the arguments and evidence
`
`presented, we conclude no further explicit construction of any claim term is
`
`needed to resolve the issues presented by the arguments and evidence of
`
`record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be
`
`construed “only to the extent necessary to resolve the controversy” (quoting
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999))).
`
`D. Ground 1A — Obviousness over Aizawa and Inokawa
`
`In Ground 1A, Petitioner argues claims 1–4, 6–14, 16, 17, 19–23,
`
`and 26–29 of the ’265 patent would have been obvious over Aizawa and
`
`Inokawa. Pet. 1–2, 6–48. Patent Owner opposes. PO Resp. 11–40. We
`
`conclude a preponderance of the evidence supports Petitioner’s assertions as
`
`to all challenged claims. We begin our analysis with brief summaries of
`
`Aizawa and Inokawa, then we address the parties’ contentions.
`
`1.
`
`Aizawa Disclosure
`
`Aizawa discloses a pulse rate detector comprising a sensor worn on a
`
`user’s wrist. Ex. 1006, code (57). Figures 1(a) and 1(b) are reproduced
`
`below:
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`Figure 1(a) is a schematic underside view, and Figure 1(b) is a schematic
`
`cross-sectional side view, of pulse rate detector 1 including pulse rate
`
`sensor 2, and belt 7 to be wrapped around a user’s wrist 10. Id. ¶¶ 17, 23,
`
`26. Sensor 2 includes LED 21 which emits near infrared light. Id. ¶¶ 23, 27.
`
`The emitted light enters the user’s wrist 10 and reflects off red corpuscles in
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`artery 11. Id. ¶ 27. Some of the reflected light is received by four
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`photodetectors 22 arranged around LED 21. Id. ¶¶ 23, 27. Associated
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`16
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`electronics 3, 4, and 24 gather and process signals from photodetectors 22 to
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`generate a pulse wave indicative of the user’s pulse, and transmit the pulse
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`wave to an unshown display for display to the user. Id.
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`Detector 1 includes holder 23 to hold LED 21 and photodetectors 22
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`in place. Id. ¶ 23. Acrylic transparent plate 6 is disposed between holder 23
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`and the user’s wrist 10. Id. ¶¶ 23, 26, 30. “[B]elt 7 is fastened such that the
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`acrylic transparent plate 6 becomes close to the artery 11 of the wrist 10,”
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`and “[t]hereby, adhesion between the wrist 10 and the pulse rate detector 1 is
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`improved.” Id. ¶ 26. “Since the acrylic transparent plate 6 is provided on
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`the detection face 23a of the holder 23, adhesion between the pulse rate
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`detector 1 and the wrist 10 can be improved, thereby further improving the
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`detection efficiency of a pulse wave.” Id. ¶ 30.
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`2.
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`Inokawa Disclosure
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`Inokawa discloses an optical vital sensor system worn on a user’s
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`wrist. See Ex. 1008, code (57), ¶ 56. Figures 1 and 2 are reproduced below:
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`Figure 1 is a perspective view, and Figure 2 is a diagrammatic side view, of
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`“a pulse sensor 1 that is able to sense the pulse, etc. by being attached, for
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`example, to a person’s . . . wrist” via wristband 5. Id. ¶¶ 56–57, 119.
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`Sensor unit 3 has green LED 21 and infrared LED 23, with a single
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`photodiode 25 to detect light emitted from both LEDs and reflected from the
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`user’s wrist, as shown by arrows in Figure 2. Id. ¶¶ 57–58. The “basic
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`function of . . . green LED 21 is to sense the pulse . . . while the . . . infrared
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`LED 23 serves to sense body motion.” Id. ¶ 59.
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`Pulse sensor 1 includes lens 27, which “makes it possible to increase
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`the light-gathering ability of the LED as well as to protect the LED or
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`[photodiode 25].” Id. ¶¶ 15, 58.
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`Pulse sensor 1 also uses LEDs 21 and 23 to download data to a base
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`station, as shown in Figure 3, reproduced below.
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`Figure 3 illustrates pulse sensor 1 mounted on base station 17. Id. ¶¶ 60, 66.
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`Vital sign information stored in sensor 1 is downloaded to base station 17,
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`18
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`which forwards the information to a personal computer 59 (shown in
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`Figure 7). Id. ¶¶ 66–67. Specifically, this information is encoded into light
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`emitted by infrared LED 23 of sensor 1 and detected by photodetector 45 of
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`base station 17. Id. ¶¶ 66–67, 76. At the same time, green LED 21 may
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`transmit “checksum” information to another photodetector of base station 17
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`(as shown in Figure 19), to increase the accuracy of data transmission. Id.
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`¶ 14; see also id. ¶¶ 109–111 (describing how “the presence of two pairs of
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`light-emitting and light-receiving elements makes it possible to efficiently
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`transmit information”). Mounting sensor 1 on base station 17 further
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`permits sensor 1 to be electrically charged via terminals 19 and 39. Id.
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`¶¶ 60, 66, Fig. 7.
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`“As a result” of this optical data communication from sensor 1 to base
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`station 17, “there is no need to use a special wireless communication circuit
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`or a communication cable as previously, which makes it possible to transmit
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`vital sign information to the base device 17 accurately, easily, and without
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`malfunction.” Id. ¶ 77; see also id. ¶¶ 3–7 (describing a “problem” in prior
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`art devices that require “a dedicated wireless communication circuit” to
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`“transmit data wirelessly,” which is overcome by Inokawa’s optical data
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`communication to a base station because the dedicated wireless
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`communication circuit is unnecessary).
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`3.
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`Claim 1
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`Petitioner provides arguments and evidence, including testimony from
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`Dr. Kenny, in support of contending claim 1 is unpatentable as having been
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`obvious over Aizawa and Inokawa. Pet. 6–29; Ex. 1003 ¶¶ 53–63, 73–99.
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`Patent Owner provides arguments and evidence in opposition, including
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`testimony from Dr. Madisetti. PO Resp. 11–40; Ex. 2004 ¶¶ 34, 39–88.
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`a)
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`Comparing Claim 1 with Aizawa
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`Petitioner contends Aizawa’s pulse rate detector 1 exhibits each and
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`every limitation of claim 1, except that it has only one emitter (i.e., LED 21)
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`of near infrared light instead of the claimed “plurality of emitters of different
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`wavelengths,” and its light permeable cover (i.e., acrylic transparent plate 6)
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`lacks the claimed “protrusion.” See Pet. 6–9, 22–29; Ex. 1003 ¶¶ 53–58,
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`73–99. Patent Owner does not challenge Petitioner’s contentions in this
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`regard. We determine these contentions are supported by a preponderance
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`of the evidence, as follows.
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`As pertinent to the undisputed limitations of claim 1, we find
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`Aizawa’s detector 1 is a noninvasive optical measurement device adapted to
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`be worn on a user’s wrist, to provide an indication of a physiological
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`parameter of the user (i.e., pulse wave).4 See Ex. 1006, Fig. 2, ¶¶ 2, 26;
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`Pet. 22–23; Ex. 1003 ¶ 73. We find Aizawa’s detector 1 has a single emitter
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`(i.e., LED 21) of one wavelength (i.e., near infrared light). See Ex. 1006,
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`Figs. 1(a)–1(b), ¶¶ 23, 27; Pet. 6–7, 23–24; Ex. 1003 ¶¶ 53–54, 74. We find
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`Aizawa’s detector 1 includes a housing having a surface and a circular wall
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`protruding from the surface. See Ex. 1006, Figs. 1(a)–1(b) & 2, ¶¶ 23–24;
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`Ex. 1003 ¶¶ 87–88. In particular, Petitioner annotates Aizawa’s Figures to
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`identify the “Housing” in red, the “Surface” in brown, and the “Circular
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`wall” in purple. See Pet. 24–25; Ex. 1003 ¶¶ 87–88.
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`4 Whether the preamble is limiting need not be resolved, because the
`recitation in the preamble is satisfied by the prior art.
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`20
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`We find Aizawa’s detector 1 further includes four detectors (i.e.,
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`photodetectors 22) arranged on the housing’s surface and spaced apart from
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`each other, symmetrically on a circle centered on LED 21. See Ex. 1006,
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`Figs. 1(a)–1(b), ¶¶ 24, 29, 32; Pet. 25–27; Ex. 1003 ¶¶ 89–90. We find
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`Aizawa’s photodetectors 22 are configured to output signals responsive to
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`light emitted from LED 21 and attenuated by the user’s body tissue, and the
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`signals are indicative of the user’s pulse wave. See Ex. 1006 ¶¶ 23, 27, 28;
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`Pet. 27; Ex. 1003 ¶ 91.
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`We find Aizawa’s detector 1 has a light permeable cover (i.e., plate 6)
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`mounted at detection face 23a of holder 23, to cover four photodetectors 22.
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`See Ex. 1006, Fig. 1(b), ¶ 23; Pet. 28–29; Ex. 1003 ¶¶ 92–93.
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`b)
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`Comparing Claim 1 with Inokawa
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`Petitioner contends Inokawa’s pulse sensor 1 is a noninvasive optical
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`measurement device having two emitters (i.e., LEDs 21 and 23) of different
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`wavelengths, and a light permeable cover (i.e., lens 27) comprising a
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`protrusion arranged to cover its light detector (i.e., detector 25). See
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`Pet. 9–11; Ex. 1003 ¶¶ 59–63, 73–99. Patent Owner does not challenge
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`Petitioner’s contentions in this regard. We determine these contentions are
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`supported by a preponderance of the evidence, as follows.
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`As pertinent to the undisputed limitations of claim 1, we find
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`Inokawa’s pulse sensor 1 is a noninvasive optical measurement device
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`adapted to be worn on a user’s wrist, to provide an indication of two
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`physiological parameters of the user (i.e., pulse and body motion). See
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`Ex. 1008, Figs. 1 & 2, ¶¶ 14, 56–59; Pet. 9–10; Ex. 1003 ¶¶ 59–60. We find
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`this is accomplished using light from green LED 21 to monitor the user’s
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`21
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`pulse, and using light from infrared LED 23 to monitor the user’s motion,
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`both using detector 25. See Ex. 1008, Fig. 2, ¶¶ 14, 58–59; Pet. 10; Ex. 1003
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`¶ 60.
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`We find Inokawa’s pulse sensor 1 also has a light permeable cover
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`(i.e., lens 27), which according to Inokawa “makes it possible to increase the
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`light-gathering ability of the LED as well as to protect the LED or
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`[photodiode 25].” Ex. 1008, Fig. 2, ¶¶ 15, 58; Pet. 10; Ex. 1003 ¶ 61. We
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`find lens 27 comprises a protrusion that covers the device’s detector 25.
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`Ex. 1008, Fig. 2; Pet. 10–11; Ex. 1003 ¶¶ 61, 95–96.
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`c)
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`Obviousness of Combining Aizawa and Inokawa
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`Petitioner contends a POSITA would have been motivated to modify
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`Aizawa’s pulse rate detector 1, in light of Inokawa’s disclosures, by:
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`(1) adding a second emitter to emit light of a different wavelength, so that
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`Aizawa’s detector 1 can monitor the user’s body motion for improved pulse
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`detection, and so that detector 1 can transmit information more reliably to a
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`base device with less error; and (2) adding a protrusion to Aizawa’s cover 6
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`to improve the sensor’s light detection efficiency. See Pet. 13–22. Patent
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`Owner opposes these contentions, and argues a person of ordinary skill in
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`the art would not have had a reasonable expectation of success, among other
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`things. See PO Resp. 15–40. We consider each modification in turn.
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`(1) Plurality of Emitters of Different Wavelengths
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`(i)
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`Petitioner’s Contentions
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`Petitioner asserts that, “[w]hile Aizawa contemplates the use of
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`multiple emitters, Aizawa never specifically identifies the use of multiple
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`emitters operating at different wavelengths in conjunction with multiple
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`22
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`detectors.” Pet. 17 (citing Ex. 1006 ¶ 33); Ex. 1003 ¶ 74. Inokawa, in
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`Petitioner’s view, discloses using an infrared LED “to detect vital signs and
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`transmit vital sign information,” and a separate green LED “to detect pulse.”
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`Pet. 17 (citing Ex. 1008 ¶¶ 14, 44, 58–59); Ex. 1003 ¶ 75.
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`Petitioner asserts a POSITA “would have recognized Inokawa’s use
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`of two different emitters operating at different wavelengths as a desirable
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`configuration that would reap similar benefits for Aizawa.” Pet. 17;
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`Ex. 1003 ¶ 76. Specifically: “A POSITA would have recognized, in view of
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`Inokawa, that providing an additional emitter to Aizawa would allow
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`Aizawa’s device to use its existing infrared LED to detect body motion
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`while using the added green LED to detect pulse.” Pet. 17–18 (citing
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`Ex. 1008 ¶ 59), 23–24; Ex. 1003 ¶¶ 76–79. Dr. Kenny concludes “[t]he
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`added ability to measure body movement in this manner will allow for a
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`more reliable measurement that can, for instance, take int
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