Trials@uspto.gov
`571-272-7822
`
`Paper 43
`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.
`
`IPR2020-01536
`Patent 10,588,553 B2
`
`
`
`
`
`
`
`
`
`Before GEORGE R. HOSKINS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`KINDER, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 43
`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.
`
`IPR2020-01536
`Patent 10,588,553 B2
`
`
`
`
`
`
`
`
`
`Before GEORGE R. HOSKINS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`KINDER, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`IPR2020-01536
`Patent 10,588,553 B2
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`
`I.
`
`INTRODUCTION
`
`Background
`A.
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–29 (“challenged claims”) of U.S. Patent No. 10,588,553
`B2 (Ex. 1001, “the ’553 patent”). Paper 3 (“Pet.”). Masimo Corporation
`(“Patent Owner”) waived filing a Preliminary Response. Paper 8.
`On March 2, 2021, we instituted trial. Paper 9 (“Inst. Dec.” or
`“Decision to Institute”). Patent Owner filed a Response. Paper 24 (“PO
`Resp.”). Petitioner filed a Reply. Paper 27 (“Pet. Reply”). Patent Owner
`filed a Sur-reply. Paper 32 (“Sur-reply”). An oral argument was held on
`December 7, 2021, and a transcript was entered into the record. Paper 42
`(“Tr.”).
`We have jurisdiction to conduct this inter partes review under
`35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we
`determine that Petitioner has shown, by a preponderance of the evidence,
`that all challenged claims (claims 1–29) of the ’553 patent are unpatentable.
`
`Related Matters
`B.
`The parties identify the following matters related to the ’553 patent:
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`(C.D. Cal.) (filed Jan. 9, 2020);
`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB Aug. 31,
`2020) (also challenging claims 1–29 of the ’553 patent);
`Apple Inc. v. Masimo Corporation, IPR2020-01520 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 10,258,265 B1);
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`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, IPR2020-01538 (PTAB Sept. 2,
`2020) (challenging claims of U.S. Patent No. 10,588,554 B2); and
`Apple Inc. v. Masimo Corporation, IPR2020-01539 (PTAB Sept. 2,
`2020) (challenging claims of U.S. Patent No. 10,588,554 B2).
`Pet. 3–4; Paper 5, 3.
`
`Patent Owner further identifies certain pending patent applications, as
`well as other issued and abandoned applications, that claim priority to, or
`share a priority claim with, the ’553 patent. Paper 5, 1–2.
`
`The ’553 Patent
`C.
`The ’553 patent is titled “Multi-Stream Data Collection System for
`Noninvasive Measurement of Blood Constituents,” and issued on March 17,
`2020, from U.S. Patent Application No. 16/534,949, filed August 7, 2019.
`Ex. 1001, codes (21), (22), (45), (54). The ’553 patent claims priority
`through a 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 ’553 patent relates to noninvasive methods and devices for
`measuring various blood constituents or analytes. Id. at code (57). The ’553
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`patent discloses a two-part data collection system including a noninvasive
`sensor that communicates with a patient monitor. Id. at 2:38–40. The
`sensor includes a sensor housing, an optical source, and several
`photodetectors, and is used to measure a blood constituent or analyte, e.g.,
`oxygen or glucose. Id. 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 ’553 patent is reproduced below.
`
`
`
`Figure 1 illustrates a block diagram of data collection system 100 including
`sensor 101 and monitor 109. Id. at 11:47–58. Sensor 101 includes optical
`emitter 104 and detectors 106. Id. at 11:59–63. Emitters 104 emit light that
`is attenuated or reflected by the patient’s tissue at measurement site 102. Id.
`at 14:3–7. Detectors 106 capture and measure the light attenuated or
`reflected from the tissue. Id. In response to the measured light,
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`detectors 106 output detector signals 107 to monitor 109 through front-end
`interface 108 and detectors 106 can be implemented using photodiodes. Id.
`at 14:7–10, 26–32. Sensor 101 also may include tissue shaper 105, which
`may be in the form of a convex surface that: (1) reduces the thickness of the
`patient’s measurement site; and (2) provides more surface area from which
`light can be detected. Id. at 11:2–14.
`Monitor 109 includes signal processor 110 and user interface 112. Id.
`at 15:16–18. “[S]ignal processor 110 includes processing logic that
`determines measurements for desired analytes . . . based on the signals
`received from the detectors.” Id. at 15:21–24. User interface 112 presents
`the measurements to a user on a display, e.g., a touch-screen display. Id. at
`15:46–56. The monitor may be connected to storage device 114 and
`network interface 116. Id. at 15:60–16:11.
`
`The ’553 patent describes various examples of sensor devices.
`Figures 14D and 14F, reproduced below, illustrate sensor devices.
`
`
`
`Figure 14D (left) illustrates portions of a detector submount and Figure 14F
`(right) illustrates portions of a detector shell. Id. at 6:44–47. As shown in
`
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`Figure 14D, multiple detectors 1410c are located within housing 1430 and
`under transparent cover 1432, on which protrusion 605b (or partially
`cylindrical protrusion 605) is disposed. Id. at 35:36–39, 36:30–37.
`Figure 14F illustrates a detector shell 306f including detectors 1410c on
`substrate 1400c. Id. at 37:9–25. Substrate 1400c is enclosed by shielding
`enclosure 1490 and noise shield 1403, which include window 1492a and
`window 1492b, respectively, placed above detectors 1410c. Id.
`Alternatively, cylindrical housing 1430 may be disposed under noise
`shield 1403 and may enclose detectors 1410c. Id. at 37:47–48.
`
`Figures 4A and 4B, reproduced below, illustrate an alternative
`example of a tissue contact area of a sensor device.
`
`
`
`Figures 4A and 4B illustrate arrangements of protrusion 405 including
`measurement contact area 470. Id. at 23:18–24. “[M]easurement site
`contact area 470 can include a surface that molds body tissue of a
`measurement site.” Id. “For example, . . . measurement site contact area
`470 can be generally curved and/or convex with respect to the measurement
`site.” Id. at 23:39–43. 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.” Id. at 23:49–63.
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`Illustrative Claim
`D.
`Of the challenged claims, claims 1, 10, and 20 are independent.
`Claim 1 is illustrative and is reproduced below.
`1. A noninvasive optical physiological sensor comprising:
`[a] a plurality of emitters configured to emit light into tissue
`of a user;
`[b] at least four detectors, wherein at least one of the at least
`four detectors is configured to detect light that has been
`attenuated by tissue of the user, and wherein the at least
`four detectors are arranged on a substrate;
`[c] a wall configured to circumscribe at least the at least four
`detectors; and
`[d] a cover configured to be located between tissue of the user
`and the at least four detectors when the noninvasive
`optical physiological sensor is worn by the user,
`wherein the cover comprises a single protruding
`convex surface operable to conform tissue of the user
`to at least a portion of the single protruding convex
`surface when the noninvasive optical physiological
`sensor is worn by the user, and wherein the wall
`operably connects to the substrate and the cover.
`Ex. 1001, 44:50–67 (bracketed identifiers a–d added). Independent
`claims 10 and 20 include limitations substantially similar to limitations [a]–
`[d] of claim 1. Id. at 45:35–47, 46:22–46.
`
`Applied References
`E.
`Petitioner relies upon the following references:
`Mendelson, U.S. Patent No. 6,801,799 B2, filed February 6,
`2003, issued October 5, 2004 (Ex. 1012, “Mendelson-799”);
`Ohsaki et al., U.S. Patent Application Publication No.
`2001/0056243 A1, filed May 11, 2001, published December 27, 2001
`(Ex. 1009, “Ohsaki”);
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`Schulz et al., U.S. Patent Application Publication No.
`2004/0054291 A1, filed July 31, 2003, published March 18, 2004
`(Ex. 1013, “Schulz”);
`Griffin et al., U.S. Patent No. 7,658,613 B1, filed January 16,
`2007, issued February 9, 2010 (Ex. 1014, “Griffin”); and
`Y. Mendelson et al., “A Wearable Reflectance Pulse Oximeter
`for Remote Physiological Monitoring,” Proceedings of the 28th IEEE
`EMBS Annual International Conference, 912–915 (2006) (Ex. 1010,
`“Mendelson-2006”).
`Pet. 9.
`Petitioner also submits, inter alia, the Declaration of Thomas W.
`Kenny, Ph.D. (Ex. 1003), as well as a Second Declaration of Dr. Kenny
`(Ex. 1047). Patent Owner relies, inter alia, on the Declaration of Vijay K.
`Madisetti, Ph.D. (Ex. 2004). The parties rely on numerous other exhibits
`and cross examination testimony as discussed below.
`
`Asserted Grounds
`F.
`Petitioner asserts that claims 1–29 are unpatentable based upon the
`following grounds:
`
`Claim(s) Challenged
`1–3, 5, 6, 9–18, 20–24, 29
`4, 18, 24
`25
`
`7, 19
`
`8, 26–28
`
`35 U.S.C.
`§
`103
`103
`103
`
`103
`
`103
`
`References/Basis
`Mendelson-799, Ohsaki
`Mendelson-799, Ohsaki, Schulz
`Mendelson-799, Ohsaki, Griffin
`Mendelson-799, Ohsaki,
`Mendelson-2006
`Mendelson-799, Ohsaki,
`Mendelson-2006, Griffin
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`II. DISCUSSION
`Claim Construction
`A.
`For petitions 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. 7–8. Patent Owner submits that claim terms should be
`given their ordinary and customary meaning, consistent with the
`Specification. PO Resp. 7.
`Based on our analysis of the issues in dispute, we agree that no claim
`terms require express construction. Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`Principles of Law
`B.
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been 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
`(2007). The question of obviousness is resolved on the basis of underlying
`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 skill in the art; and (4) objective evidence of non-
`obviousness.1 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
`
`
`1 Based on the final record, neither party introduced objective evidence of
`non-obviousness.
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`evaluating a combination of teachings, we must also “determine whether
`there was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior art
`elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`In an inter partes review, the petitioner must show with particularity
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`Level of Ordinary Skill in the Art
`C.
`Petitioner identifies the appropriate level of skill in the art as that
`possessed by a person “hav[ing] 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. 7 (citing Ex. 1003 ¶¶ 1–18, 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
`same discipline.” Id.
`Patent Owner makes several observations regarding Petitioner’s
`identified level of skill in the art but, “[f]or this proceeding, [Patent Owner]
`nonetheless applies Petitioner’s asserted level of skill.” PO Resp. 8.
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`We adopt Petitioner’s assessment as set forth above, which is
`consistent with the level of skill reflected in the Specification and prior art.
`
`D. Obviousness over the Combined Teachings of
`Mendelson-799 and Ohsaki
`Petitioner contends that claims 1–3, 5, 6, 9–18, 20–24, and 29 of the
`’553 patent would have been obvious over the combined teachings of
`Mendelson-799 and Ohsaki. Pet. 10–62. Patent Owner disagrees and
`presents several arguments, including that the combination of Ohsaki and
`Mendelson-799 discloses “two different physiological monitor designs, with
`distinct shapes, features, and detector and emitter configurations.” PO Resp.
`9, 9–42; see also generally Sur-reply.
`Based on our review of the parties’ arguments and the cited evidence
`of record, we determine that Petitioner has met its burden of showing by a
`preponderance of the evidence that claims 1–3, 5, 6, 9–18, 20–24, and 29 are
`unpatentable.
`
`Overview of Mendelson-799 (Ex. 1012)
`1.
`Mendelson-799 is titled “Pulse Oximeter and Method of Operation,”
`and discloses a sensor for non-invasive measurement of 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.
`
`
`Figure 7 illustrates optical sensor 10 with light source 12, which includes
`three closely spaced light emitting elements 12a, 12b, 12c. Id. 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 . . . surrounding the light emitting elements.” Id. at 9:29–34.
`“[L]ight shield 14 is positioned between the photodiodes and the light
`emitting elements, and prevents direct optical coupling between them,
`thereby maximizing the fraction of backscattered light passing through the
`arterially perfused vascular tissue in the detected light.” Id. at 9:35–40.
`Sensor housing 17 accommodates the light source, light shield, and
`detectors. Id. at 9:34–35.
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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 measurement results. Id. at 10:17–22. “The measured data (i.e.,
`electrical output of the sensor 10 indicative of the detected light) is directly
`processed in the block 22, and the converted signal is further processed by
`the microprocessor 24.” Id. at 10:22–25.
`
`Overview of Ohsaki (Ex. 1009)
`2.
`Ohsaki is titled “Wristwatch-type Human Pulse Wave Sensor
`Attached on Back Side of User’s Wrist,” and discloses an optical sensor for
`detecting a pulse wave of a human body. Ex. 1009, code (54), ¶ 3.
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`Figure 1 of Ohsaki is reproduced below.
`
`
`Figure 1 illustrates a cross-sectional view of pulse wave sensor 1 attached on
`the back side of user’s wrist 4. Id. ¶¶ 12, 16. Pulse wave sensor 1 includes
`detecting element 2 and sensor body 3. Id. ¶ 16.
`
`Figure 2 of Ohsaki, reproduced below, illustrates further detail of
`detecting element 2.
`
`
`Figure 2 illustrates a mechanism for detecting a pulse wave. Id. ¶ 13.
`Detecting element 2 includes package 5, light emitting element 6, light
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`receiving element 7, and translucent board 8. Id. ¶ 17. Light emitting
`element 6 and light receiving element 7 are arranged on circuit board 9
`inside package 5. Id. ¶¶ 17, 19.
`“[T]ranslucent board 8 is a glass board which is transparent to light,
`and attached to the opening of the package 5. A convex surface is formed
`on the top of the translucent board 8.” Id. ¶ 17. “[T]he convex surface of
`the translucent board 8 is 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 amount of the
`reflected light which is emitted from the light emitting element 6 and
`reaches the light receiving element 7 by being reflected by the surface of the
`user’s skin.” Id. Additionally, the convex surface prevents penetration by
`“noise such as disturbance light from the outside.” Id.
`
`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). Id. Drive circuit 11
`drives light emitting element 6 to emit light toward wrist 4. Id. Detecting
`element 2 receives reflected light which is used by microcomputer 12 to
`calculate pulse rate. Id. “The monitor display shows the calculated pulse
`rate.” Id.
`
`Independent Claim 1
`3.
`Petitioner contends that claim 1 would have been obvious over the
`combined teachings of Mendelson-799 and Ohsaki. Pet. 10–42. Patent
`Owner presents several arguments, as examined below, as to why all claims
`in this ground would not have been obvious. See PO Resp. 9–43. Below,
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`we set forth how the limitations not disputed by Patent Owner are taught by
`the combination of references as argued by Petitioner. For those limitations
`and reasons for combining the references that are disputed, we first examine
`each of the parties’ contentions and then provide our analysis.
`
`i. “A noninvasive optical physiological sensor
`comprising”
`Based on the final record, the cited evidence supports Petitioner’s
`undisputed contention that the combination of Mendelson-799 and Ohsaki
`satisfies the subject matter of the preamble.2 Pet. 30–31; see, e.g., Ex. 1012,
`code (57) (“A sensor for use in an optical measurement device and a method
`for non-invasive measurement of a blood parameter.”), 4:13–22, 7:25–8:41,
`9:22–10:30, Fig. 7 (sensor device), Fig. 8; Ex. 1009, code (57), ¶¶ 3, 8, 15–
`17, 20, 25, Figs. 1, 2, 4A, 4B; Ex. 1003 ¶¶ 55–69, 78–98, 99–103.
`
`ii.“[a] a plurality of emitters configured to emit light into
`tissue of a user”
`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. 31–33; see, e.g., Ex. 1012, 9:22–40 (“The
`sensor 10 comprises . . . light source 12 composed of three 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 laser
`sources 12a, 12b and 12c); see also id. at 9:42–10:15 (noting that “[t]he
`actual numbers of wavelengths used as a light source and the number of
`
`
`2 Whether the preamble is limiting need not be resolved, because Petitioner
`shows persuasively on the final record that the recitation in the preamble is
`satisfied by the prior art.
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`photodetectors in each ring are not limited and depend only on the electronic
`circuitry inside the oximeter”). Further, Dr. Kenny persuasively testifies that
`“[f]rom this and related description, one of ordinary skill would have
`understood that Mendelson ’799 discloses a plurality of emitters configured
`to emit light into tissue of a user.” Ex. 1003 ¶ 106; see also id. ¶¶ 55–69,
`78–98, 104–107.
`
`iii.“[b] at least four detectors, wherein at least one of the at
`least four detectors is configured to detect light that has
`been attenuated by tissue of the user, and wherein the at
`least four detectors are arranged on a substrate;”
`Based on the final record, the cited evidence supports Petitioner’s
`undisputed contentions regarding this limitation. Pet. 33–36. Specifically,
`Petitioner contends that Mendelson-799 discloses twelve photodetectors
`located within a sensor housing. Pet. 33; see, e.g., Ex. 1012, 9:22–48 (“The
`sensor 10 comprises . . . an array of discrete detectors (e.g., photodiodes).”),
`Fig. 7 (depicting rings of six far detectors 16 and six near detectors 18).
`Petitioner further contends that “each of the twelve discrete photodiodes
`included in the detector assembly illustrated in Mendelson ’799’s FIG. 7
`(reproduced below) are ‘adapted to detect reflected radiation . . . and to
`generate respective signals’ that ‘are used to determine the parameter of the
`blood.’” Pet. 33 (quoting Ex. 1012, code (57), 9:22–48). Petitioner provides
`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 38 (similar figures with slightly different annotations).
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`Petitioner’s modified and added figures depict the sensor of Mendelson-799
`with “Far Detector 16” (illustrated in light blue) and “Near Detector 18”
`(illustrated in dark blue).3 Id. at 34.
`
`Petitioner next relies on Figure 3 of Mendelson-799, reproduced
`below, which depicts traditional reflection-mode or backscatter type pulse
`oximetry sensors.
`
`
`3 Petitioner’s annotated figures also include an added opaque wall and an
`added top cover as discussed infra.
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`Figure 3 of Mendelson-799 depicts the relative disposition of light source
`and detector in reflection-mode or backscatter type pulse oximetry.
`Ex. 1012, 8:26–28. According to Petitioner, the sensor shown in Figure 3
`features LEDs and a photodetector that are mounted side-by-side next to
`each other on the same planar substrate, which allows for measuring SaO2
`from multiple convenient locations on the body. Pet. 34–35 (citing Ex. 1012
`2:14–28, Fig. 3; Ex. 1003 ¶¶ 110–111 (“[A]lthough the sensor depicted in
`Mendelson ’799’s FIG. 7 features two concentric rings of discrete
`photodetectors that are arranged in a radially-symmetric manner about
`central light emitting elements, the photodetectors and the light emitting
`elements are arranged on the same planar substrate.”).
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`We find Petitioner’s contentions for these limitations are persuasive,
`including by the testimony of Dr. Kenny. See, e.g., Ex. 1003 ¶¶ 108–113.
`
`iv.“[c] a wall configured to circumscribe at least the at
`least four detectors; and”
`“[d] a cover configured to be located between tissue of
`the user and the at least four detectors when the
`noninvasive optical physiological sensor is worn by the
`user, wherein the cover comprises a single protruding
`convex surface operable to conform tissue of the user to
`at least a portion of the single protruding convex surface
`when the noninvasive optical physiological sensor is
`worn by the user, and wherein the wall operably
`connects to the substrate and the cover.”
`Petitioner’s Undisputed Contentions
`
`Petitioner explains that Mendelson-799 does not disclose a cover
`located between the user’s tissue and the at least four detectors, as claimed.
`Pet. 21–22. Patent Owner does not dispute this contention, and we agree
`that Mendelson-799 is not shown to include a cover. See generally
`Ex. 1012.
`Petitioner contends that although Mendelson-799 does not disclose a
`cover as claimed, Ohsaki teaches a wrist-worn sensor “that includes a light
`permeable convex cover—‘translucent board 8’— . . . where the cover
`comprises a single protruding convex surface operable to conform [to] tissue
`of the user.” Pet. 22; see, e.g., Ex. 1009 ¶¶ 16 (“worn on the back side of the
`user’s wrist”), 17 (“convex surface”), Figs. 1–2 (depicting translucent board
`8 between tissue and detector); Ex. 1003 ¶ 83. Petitioner also contends that
`Ohsaki’s Figure 2 depicts the user’s tissue conforming to the shape of the
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`convex surface of the cover. Pet. 23–26, 39–41; see, e.g., Ex. 1003 ¶¶ 55–
`69, 78–98, 127–136.
`Patent Owner does not dispute this contention, and we agree with
`Petitioner. Ohsaki discloses that sensor 1 is “worn on the back side of the
`user’s wrist” and includes translucent board 8, with a single convex surface
`formed on the top of the board, to be placed against a user’s tissue. Ex. 1009
`¶¶ 16, 17, Figs. 1–2 (depicting translucent board 8 between tissue and
`detector). As shown in Ohsaki’s Figure 2, the convex surface of board 8 is
`operably connected to the walls of sensor package 5 that houses the sensor
`components, including circuit board 9, light emitting element 6 (e.g., LED),
`and light receiving element 7. Id. ¶ 17 (“The translucent board 8 is . . .
`attached to the opening of the package 5.”), Fig. 2. As depicted in Ohsaki’s
`Figure 2, the user’s tissue 4 is shown to conform to the shape of the
`protruding convex surface when the sensor is worn by the user. Ex. 1009
`¶ 17 (“The translucent board 8 is a glass board.”), Fig. 2.
`Petitioner’s Disputed Contentions
`Petitioner contends that Mendelson-799 discloses sensor housing 17
`that encircles detectors 16 and 18. Pet. 36–37; see, e.g., Ex. 1012, 9:23–40
`(“All these elements are accommodated in a sensor housing 17.”), Fig. 7
`(housing 17). Petitioner further contends that a person of ordinary skill in
`the art would have found it obvious “to connect, to the illustrated portion of
`sensor housing 17, an opaque wall configured to circumscribe the array of
`discrete detectors included in detector rings 16 and 18” to shield the
`detectors from ambient light and to protect from external forces. Pet. 37–38;
`see, e.g., Ex. 1003 ¶¶ 55–69, 78–98, 114–126.
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`As shown below, Petitioner alleges that it would have been obvious to
`connect, to the illustrated portion of sensor housing 17, an opaque wall
`configured to circumscribe the array of discrete detectors included in
`detector rings 16 and 18. Pet. 37–38. Petitioner relies on Ohsaki’s
`disclosure of a sensor including package 5 having a wall that surrounds light
`emitting element 6 and light receiving element 7. Id.; see, e.g., Ex. 1009
`¶ 17, Fig. 2 (detector 7 surrounded by wall of package 5); Ex. 1003 ¶¶ 115–
`125.
`
`
`
`Above, Petitioner depicts Mendelson-799’s Figure 7 and its modified
`sectional view with several annotations and modifications. Pet. 38;
`Ex. 1019, Fig. 7. Petitioner’s modified and added figures depict the sensor
`of Mendelson-799 with an added opaque wall (illustrated in green)
`connected to the planar substrate (also illustrated in green) of housing 17 and
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`encircling the sensor components, as Petitioner contends would have been
`obvious to a person of ordinary skill in the art. Pet. 37–39, 26.
`Petitioner further contends that a person of ordinary skill in the art
`“would have recognized that a light permeable cover with a protruding
`convex surface,” such as that taught by Ohsaki, “would improve adhesion
`between the sensor and the user’s tissue, improve detection efficiency, and
`protect the elements within sensor housing 17.” Pet. 21–22 (citing, e.g.,
`Ex. 1003 ¶ 81; Ex. 1009 ¶¶ 15, 17, 25), 29–30. Petitioner contends that
`Ohsaki’s convex surface is in intimate contact with the user’s tissue, which
`prevents slippage of the sensor and increases signal strength because
`“variation of the amount of the reflected light . . . that reaches the light
`receiving element 7 is suppressed” and “disturbance light from the outside”
`is prevented from penetrating board 8, as compared to a sensor with a flat
`surface. Id. at 23–24 (quoting Ex. 1009 ¶ 25). Dr. Kenny likewise testifies
`that a person of ordinary skill in the art “would have recognized that a light
`permeable cover with a protruding convex surface would improve adhesion
`between the sensor and the user’s tissue, improve detection efficiency, and
`protect the elements within sensor housing 17.” Ex. 1003 ¶ 81 (citing
`Ex. 1009 ¶¶ 15, 17, 25, Figs. 1, 2, 4A, 4B); Pet. 21–22.
`Accordingly, Petitioner contends that, to achieve these benefits, a
`person of ordinary skill in the art “would have added a transparent convex
`cover to [Mendelson-799’s] sensor 10, the cover being located between
`tissue of the user and the array of detectors 16 and 18 when worn,” and
`would have “configured Mendelson-799’s circumscribing wall to operably
`connect” to the convex and rigid cover. Pet. 25–26, 40–41; see, e.g.,
`Ex. 1003 ¶¶ 55–69, 78–98, 127–136.
`
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`Petitioner contends these modifications would have been “nothing
`more than the use of a known technique to improve similar devices in the
`same way, and combining prior art elements according to known methods to
`yield predictable results—improved adhesion of the sensor to the user’s skin,
`and improved signal strength,” where “the elements of the resulting sensor
`would each perform functions they had been known to perform prior to the
`combination.” Pet. 29 (citing, e.g., Ex. 1003 ¶¶ 91–98).
`To illustrate its proposed modification, the Petition 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. 30; see also
`id. at 41 (same).
`
`
`Petitioner’s modified and added figures depict the sensor of Mendelson-799
`with an added convex cover (illustrated in red) connected to the opaque wall
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`(illustrated in green) that Petitioner contends would have been obvious to a
`person of ordinary skill in the art. Pet. 41.
`Patent Owner’s Contentions
`Patent Owner contends that the proposed combination adds features
`not found in the cited references, with no motivation or explanations for why
`a person of ordinary skill in the art would have added these features. PO
`Resp. 12. Patent Owner contends that the depiction of a cover spanning the
`entire space above the substrate lacks support. Patent Owner notes that
`Ohsaki places its translucent board in an opening within the top of the
`package. Id. at 13 (citing Ex. 1009, Fig. 2). Patent Owner further contends
`that the proposed combination includes a wall with notches for the cover, as
`depicted below in Patent Owner’s annotated figure, yet neither Mendelson-
`799 nor Ohsaki include a notched wall feature. Id. (citing Ex. 2004 ¶¶ 46–
`47; Ex. 2008, 205:21–208:19). Patent Owner provides an annotated figure,
`reproduced below.
`
`
`
`Patent Owner’s annotated figure adds purple circles around “Notc
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