Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: March 2, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 9
`Entered: March 2, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`
`IPR2020-01536
`Patent 10,588,553 B2
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`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1–29 (“challenged claims”) of U.S. Patent No. 10,588,553
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`B2 (Ex. 1001, “the ’553 patent”). Paper 3 (“Pet.”). Masimo Corporation
`
`(“Patent Owner”) waived filing a Preliminary response. Paper 8 (“PO
`
`Waiver”).
`
`We have authority to determine whether to institute an inter partes
`
`review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review
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`may not be instituted unless it is determined that “the information presented
`
`in the petition filed under section 311 and any response filed under
`
`section 313 shows that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (“The Board
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`institutes the trial on behalf of the Director.”).
`
`For the reasons provided below and based on the record before us, we
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`determine that Petitioner has demonstrated a reasonable likelihood that
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`Petitioner would prevail in showing the unpatentability of at least one of the
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`challenged claims. Accordingly, we institute an inter partes review on all
`
`grounds set forth in the Petition.
`
`B.
`
`Related Matters
`
`The parties identify the following matters related to the ’553 patent:
`
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
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`(C.D. Cal.) (filed Jan. 9, 2020) (“the parallel district court litigation”);
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`2
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`IPR2020-01536
`Patent 10,588,553 B2
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`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB Aug. 31,
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`2020) (challenging claims 1–29 of the ’553 patent);1
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`
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`Apple Inc. v. Masimo Corporation, IPR2020-01520 (PTAB Aug. 31,
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`2020) (challenging claims of U.S. Patent No. 10,258,265 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01521 (PTAB Sept. 2,
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`2020) (challenging claims of U.S. Patent No. 10,292,628 B1);
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`Apple Inc. v. Masimo Corporation, IPR2020-01523 (PTAB Sept. 9,
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`2020) (challenging claims of U.S. Patent No. 8,457,703 B2);
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`Apple Inc. v. Masimo Corporation, IPR2020-01524 (PTAB Aug. 31,
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`2020) (challenging claims of U.S. Patent No. 10,433,776 B2);
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`Apple Inc. v. Masimo Corporation, IPR2020-01526 (PTAB Aug. 31,
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`2020) (challenging claims of U.S. Patent No. 6,771,994 B2);
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`Apple Inc. v. Masimo Corporation, IPR2020-01538 (PTAB Sept. 2,
`
`2020) (challenging claims of U.S. Patent No. 10,588,554 B2); and
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`Apple Inc. v. Masimo Corporation, IPR2020-01539 (PTAB Sept. 2,
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`2020) (challenging claims of U.S. Patent No. 10,588,554 B2).
`
`Pet. 3–4; Paper 5, 3.
`
`
`1 Pursuant to the Board’s November 2019, Consolidated Trial Practice
`Guide, available at https://www.uspto.gov/TrialPracticeGuideConsolidated,
`Petitioner filed a Notice ranking its two petitions that challenge the
`’553 patent, ranking first the instant proceeding and ranking second
`IPR2020-01537. Paper 2, 2. We decline to exercise discretion to deny
`institution in this case where (1) Patent Owner does not request that we
`exercise discretion to deny due to the presence of multiple petitions,
`(2) the two petitions challenge a large claim set, and (3) Petitioner represents
`that, at the time of the filing, Patent Owner had not yet narrowed the claims
`asserted in the parallel district court litigation. Paper 2, 2–3; Ex. 1033
`(reduction in claims due after petitions were filed).
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`3
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`Patent Owner further identifies certain pending patent applications, as
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`well as other issued and abandoned applications, that claim priority to, or
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`share a priority claim with, the ’553 patent. Paper 5, 1–2.
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`C.
`
`The ’553 Patent
`
`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
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`Provisional Application Nos. 61/078,228 and 61/078,207, both filed July 3,
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`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
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`sensor that communicates with a patient monitor. Id. at 2:38–40. The
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`sensor includes a sensor housing, an optical source, and several
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`photodetectors, and is used to measure a blood constituent or analyte, e.g.,
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`oxygen or glucose. Id. at 2:29–35, 64–65. The patient monitor includes a
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`display and a network interface for communicating with a handheld
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`computing device. Id. at 2:45–48.
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`Figure 1 of the ’553 patent is reproduced below.
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`
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`Figure 1 illustrates a block diagram of data collection system 100 including
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`sensor 101 and monitor 109. Id. at 11:47–58. Sensor 101 includes optical
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`emitter 104 and detectors 106. Id. at 11:59–63. Emitters 104 emit light that
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`is attenuated or reflected by the patient’s tissue at measurement site 102. Id.
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`at 14:3–7. Detectors 106 capture and measure the light attenuated or
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`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
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`interface 108 and detectors 106 can be implemented using photodiodes. Id.
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`at 14:7–10, 26–32. Sensor 101 also may include tissue shaper 105, which
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`may be in the form of a convex surface that: (1) reduces the thickness of the
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`patient’s measurement site; and (2) provides more surface area from which
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`light can be detected. Id. at 11:2–14.
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`Monitor 109 includes signal processor 110 and user interface 112. Id.
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`at 15:16–18. “[S]ignal processor 110 includes processing logic that
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`determines measurements for desired analytes . . . based on the signals
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`received from the detectors.” Id. at 15:21–24. User interface 112 presents
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`the measurements to a user on a display, e.g., a touch-screen display. Id. at
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`15:46–56. The monitor may be connected to storage device 114 and
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`network interface 116. Id. at 15:60–16:11.
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`
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`The ’553 patent describes various examples of sensor devices.
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`Figures 14D and 14F, reproduced below, illustrate sensor devices.
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`
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`Figure 14D (left) illustrates portions of a detector submount and Figure 14F
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`(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
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`under transparent cover 1432, on which protrusion 605b (or partially
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`cylindrical protrusion 605) is disposed. Id. at 35:36–39, 36:30–37.
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`Figure 14F illustrates a detector shell 306f including detectors 1410c on
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`substrate 1400c. Id. at 37:9–25. Substrate 1400c is enclosed by shielding
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`enclosure 1490 and noise shield 1403, which include window 1492a and
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`window 1492b, respectively, placed above detectors 1410c. Id.
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`Alternatively, cylindrical housing 1430 may be disposed under noise
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`shield 1403 and may enclose detectors 1410c. Id. at 37:47–48.
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`
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`Figures 4A and 4B, reproduced below, illustrate an alternative
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`example of a tissue contact area of a sensor device.
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`
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`Figures 4A and 4B illustrate arrangements of protrusion 405 including
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`measurement contact area 470. Id. at 23:18–24. “[M]easurement site
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`contact area 470 can include a surface that molds body tissue of a
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`measurement site.” Id. “For example, . . . measurement site contact area
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`470 can be generally curved and/or convex with respect to the measurement
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`site.” Id. at 23:39–43. The measurement site contact area may include
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`windows 420–423 that “mimic or approximately mimic a configuration of,
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`or even house, a plurality of detectors.” Id. at 23:49–63.
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`D.
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`Illustrative Claim
`
`Of the challenged claims, claims 1, 10, and 20 are independent.
`
`Claim 1 is illustrative and is reproduced below.
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`1. A noninvasive optical physiological sensor comprising:
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`[a] a plurality of emitters configured to emit light into tissue
`of a user;
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`[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;
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`[c] a wall configured to circumscribe at least the at least four
`detectors; and
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`[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]–
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`[d] of claim 1. Id. at 45:35–47, 46:22–46.
`
`E.
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`Applied References
`
`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”);
`
`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
`
`8
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`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).
`
`F.
`
`Asserted Grounds
`
`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
`
`35 U.S.C.
`§
`103
`
`4, 18, 24
`
`25
`
`7, 19
`
`8, 26–28
`
`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
`
`II. DISCUSSION
`
`A.
`
`Claim Construction
`
`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
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`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. As noted above, Patent Owner did not file a
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`Preliminary Response. See generally PO Waiver.
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`Based on our analysis of the issues in dispute at this stage of the
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`proceeding, we agree that no claim terms require express construction at this
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`time. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868
`
`F.3d 1013, 1017 (Fed. Cir. 2017).
`
`B.
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`Principles of Law
`
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
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`between the subject matter sought to be patented and the prior art are such
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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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;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of skill in the art; and (4) objective evidence of non-
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`obviousness.2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
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`evaluating a combination of teachings, we must also “determine whether
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`there was an apparent reason to combine the known elements in the fashion
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`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
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`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior art
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`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
`
`
`2 At this stage of the proceeding, neither party has introduced objective
`evidence of non-obviousness.
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`10
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`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
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`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.
`
`C.
`
`Level of Ordinary Skill in the Art
`
`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
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`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 declines to provide an assessment of the
`
`appropriate skill level, at this stage of the proceeding. See generally PO
`
`Waiver.
`
`For purposes of this Decision, we generally adopt Petitioner’s
`
`assessment as set forth above, which appears 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 presents undisputed contentions that claims 1–3, 5, 6, 9–18,
`
`20–24, 29 of the ’553 patent would have been obvious over the combined
`
`teachings of Mendelson-799 and Ohsaki. Pet. 10–62.
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`11
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`1.
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`Overview of Mendelson-799 (Ex. 1012)
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`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).
`
`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.
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`“[L]ight shield 14 is positioned between the photodiodes and the light
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`emitting elements, and prevents direct optical coupling between them,
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`thereby maximizing the fraction of backscattered light passing through the
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`arterially perfused vascular tissue in the detected light.” Id. at 9:35–40.
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`Sensor housing 17 accommodates the light source, light shield, and
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`detectors. Id. at 9:34–35.
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`12
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`Figure 8 of Mendelson-799 is reproduced below.
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`
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`Figure 8 illustrates a block diagram of pulse oximeter 20 using sensor 10.
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`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
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`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
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`processed in the block 22, and the converted signal is further processed by
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`the microprocessor 24.” Id. at 10:22–25.
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`2.
`
`Overview of Ohsaki (Ex. 1009)
`
`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. Figure 1
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`of Ohsaki is reproduced below.
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`Figure 1 illustrates a cross-sectional view of pulse wave sensor 1 attached on
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`the back side of user’s wrist 4. Id. ¶¶ 12, 16. Pulse wave sensor 1 includes
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`detecting element 2 and sensor body 3. Id. ¶ 16.
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`
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`Figure 2 of Ohsaki, reproduced below, illustrates further detail of
`
`detecting element 2.
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`Figure 2 illustrates a mechanism for detecting a pulse wave. Id. ¶ 13.
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`Detecting element 2 includes package 5, light emitting element 6, light
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`14
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`receiving element 7, and translucent board 8. Id. ¶ 17. Light emitting
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`element 6 and light receiving element 7 are arranged on circuit board 9
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`inside package 5. Id. ¶¶ 17, 19.
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`“[T]ranslucent board 8 is a glass board which is transparent to light,
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`and attached to the opening of the package 5. A convex surface is formed
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`on the top of the translucent board 8.” Id. ¶ 17. “[T]he convex surface of
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`the translucent board 8 is in intimate contact with the surface of the user’s
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`skin,” preventing detecting element 2 from slipping off the detecting
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`position of the user’s wrist. Id. ¶ 25. By preventing the detecting element
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`from moving, the convex surface suppresses “variation of the amount of the
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`reflected light which is emitted from the light emitting element 6 and
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`reaches the light receiving element 7 by being reflected by the surface of the
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`user’s skin.” Id. Additionally, the convex surface prevents penetration by
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`“noise such as disturbance light from the outside.” Id.
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`
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`Sensor body 3 is connected to detecting element 2 by signal line 13.
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`Id. ¶ 20. Signal line 13 connects detecting element 2 to drive circuit 11,
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`microcomputer 12, and a monitor display (not shown). Id. Drive circuit 11
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`drives light emitting element 6 to emit light toward wrist 4. Id. Detecting
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`element 2 receives reflected light which is used by microcomputer 12 to
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`calculate pulse rate. Id. “The monitor display shows the calculated pulse
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`rate.” Id.
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`3.
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`Independent Claim 1
`
`Petitioner contends that claim 1 would have been obvious over the
`
`combined teachings of Mendelson-799 and Ohsaki. Pet. 10–42.
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`i. “A noninvasive optical physiological sensor
`comprising”
`
`On this record, the cited evidence supports Petitioner’s undisputed
`
`contention that the combination of Mendelson-799 and Ohsaki satisfies the
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`subject matter of the preamble.3 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,
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`25, Figs. 1, 2, 4A, 4B; Ex. 1003 ¶¶ 55–69, 78–98, 99–103.
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`ii.“[a] a plurality of emitters configured to emit light into
`tissue of a user”
`
`On this record, the cited evidence supports Petitioner’s undisputed
`
`contention that Mendelson-799 discloses light emitting elements 12a, 12b,
`
`and 12c that emit light into a user’s tissue. Pet. 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
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`and 12c generating light of three different wavelengths.”), Fig. 7 (LEDs or
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`laser sources 12a, 12b and 12c); see also id. at 9:42–10:15 (noting that “[t]he
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`actual numbers of wavelengths used as a light source and the number of
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`photodetectors in each ring are not limited and depend only on the electronic
`
`circuitry inside the oximeter”). Further, Dr. Kenney 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
`
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`3 Whether the preamble is limiting need not be resolved at this stage of the
`proceeding, because Petitioner shows sufficiently for purposes of institution
`that the recitation in the preamble is satisfied by the prior art.
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`to emit light into tissue of a user.” Ex. 1003 ¶ 106; see also id. ¶¶ 55–69,
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`78–98, 104–107.
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`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;”
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`On this record, the cited evidence supports Petitioner’s undisputed
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`contentions regarding this limitation. Pet. 33–36. Specifically, Petitioner
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`contends that Mendelson-799 discloses twelve photodetectors located within
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`a sensor housing. Pet. 33; see, e.g., Ex. 1012, 9:22–48 (“The sensor 10
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`comprises . . . an array of discrete detectors (e.g., photodiodes).”), Fig. 7
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`(depicting rings of six far detectors 16 and six near detectors 18). Petitioner
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`further contends that “each of the twelve discrete photodiodes included in
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`the detector assembly illustrated in Mendelson ’799’s FIG. 7 (reproduced
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`below) are ‘adapted to detect reflected radiation . . . and to generate
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`respective signals’ that ‘are used to determine the parameter of the blood.’”
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`Pet. 33 (quoting Ex. 1012, code (57), 9:22–48). Petitioner provides an
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`annotated and modified view of Mendelson-799’s Figure 7, as well as an
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`added sectional view, both of which are reproduced below. Pet. 34; see also
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`id. at 38 (similar figures with slightly different annotations).
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`17
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`Petitioner’s modified and added figures depict the sensor of Mendelson-799
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`with “Far Detector 16” (illustrated in light blue) and “Near Detector 18”
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`(illustrated in dark blue).4 Id. at 31.
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`Petitioner next relies on Figure 3 of Mendelson-799, reproduced
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`below, that depicts traditional reflection-mode or backscatter type pulse
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`oximetry sensors.
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`4 Petitioner’s annotated figures also include an added opaque wall and an
`added top cover as discussed infra at Sections II.D.5.v and II.D.5.vi.
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`18
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`Figure 3 of Mendelson-799 depicts the relative disposition of light source
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`and detector in reflection-mode or backscatter type pulse oximetry.
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`Ex. 1012, 8:26–28. According to Petitioner, the sensors shown in Figure 3
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`features LEDs and a photodetector that are both mounted side-by-side next
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`to each other on the same planar substrate, which allows for measuring SaO2
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`from multiple convenient locations on the body. Pet. 34 (citing Ex. 1012
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`2:14–28, Fig. 3; Ex. 1003 ¶¶ 110–111 (“[A]lthough the sensor depicted in
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`Mendelson ’799’s FIG. 7 features two concentric rings of discrete
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`photodetectors that are arranged in a radially-symmetric manner about
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`central light emitting elements, the photodetectors and the light emitting
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`elements are arranged on the same planar substrate.”).
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`19
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`At this stage of the proceeding, we find Petitioner’s contentions for
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`these limitations are sufficiently supported, including by the unrebutted
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`testimony of Dr. Kenny. See, e.g., Ex. 1003 ¶¶ 108–113.
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`iv.“[c] a wall configured to circumscribe at least the at
`least four detectors; and”
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`On this record, the cited evidence supports Petitioner’s undisputed
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`contentions regarding this limitation. Pet. 36–53. Specifically, Petitioner
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`contends that Mendelson-799 discloses sensor housing 17 that encircles
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`detectors 16 and 18. Id. at 50; see, e.g., Ex. 1012, 9:23–40 (“All these
`
`elements are accommodated in a sensor housing 17.”), Fig. 7 (housing 17).
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`Petitioner further contends that a person of ordinary skill in the art would
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`have found it obvious “to connect, to the illustrated portion of sensor
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`housing 17, an opaque wall configured to circumscribe the array of discrete
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`detectors included in detector rings 16 and 18” to shield the detectors from
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`ambient light and to protect from external forces. Pet. 37–38; see, e.g.,
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`Ex. 1003 ¶¶ 114, 116–121.
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`As shown below, Petitioner alleges that it would have been obvious to
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`connect, to the illustrated portion of sensor housing 17, an opaque wall
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`configured to circumscribe the array of discrete detectors included in
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`detector rings 16 and 18. Pet. 37–38. Petitioner relies on Ohsaki’s
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`disclosure of a sensor including package 5 having a wall that surrounds light
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`emitting element 6 and light receiving element 7. Id.; see, e.g., Ex. 1009
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`¶ 17, Fig. 2 (detector 7 surrounded by wall of package 5); Ex. 1003 ¶¶ 122–
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`125.
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`20
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`Above, Petitioner depicts Mendelson-799’s Figure 7 and its modified
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`sectional view with several annotations and modifications. Pet. 38;
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`Ex. 1019, Fig. 7. Petitioner’s modified and added figures depict the sensor
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`of Mendelson-799 with an added opaque wall (illustrated in green)
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`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
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`obvious to a person of ordinary skill in the art. Pet. 37–39, 26.
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`At this stage of the proceeding, Petitioner’s stated reasoning for the
`
`proposed modification is sufficiently supported, including by the unrebutted
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`testimony of Dr. Kenny. See, e.g., Ex. 1003 ¶¶ 55–69, 88–90, 115–125.
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`21
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`v.“[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.”
`
`On this record, the cited evidence supports Petitioner’s undisputed
`
`contentions regarding this limitation. Pet. 22–24, 39–42. Specifically,
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`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
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`comprises a single protruding convex surface operable to conform [to] tissue
`
`of the user.” Id. at 22; see, e.g., Ex. 1009 ¶¶ 16 (“worn on the back side of
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`the user’s wrist”), 17 (“convex surface”), Figs. 1–2 (depicting translucent
`
`board 8 between tissue and detector); Ex. 1003 ¶ 83. Petitioner also
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`contends that Ohsaki’s Figure 2 depicts the user’s tissue conforming to the
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`shape of the convex surface of the cover. Pet. 22–25, 40–41; see, e.g., Ex.
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`1003 ¶¶ 55–69, 78–98, 127–136.
`
`Dr. Kenny testifies that a person of ordinary skill in the art “would
`
`have recognized that a light permeable cover with a protruding convex
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`surface would improve adhesion between the sensor and the user’s tissue,
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`improve detection efficiency, and protect the elements within sensor housing
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`17.” Ex. 1003 ¶ 81 (citing Ex. 1009 ¶¶ 15, 17, 25, Figs. 1, 2, 4A, 4B);
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`Pet. 21–22. Accordingly, Petitioner contends that, to achieve these benefits,
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`a person of ordinary skill in the art “would have added a transparent convex
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`cover to [Mendelson-799’s] sensor 10, the cover being located between
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`22
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`tissue of the user and the array of detectors 16 and 18 when worn,” and
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`would have “configured Mendelson-799’s circumscribing wall to operably
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`connect” to the convex and rigid cover. Pet. 25–26, 41–42; see, e.g.,
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`Ex. 1003 ¶¶ 55–69, 78–98, 127–136.
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`To illustrate its proposed modification, the Petition includes an
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`annotated and modified view of Mendelson-799’s Figure 7, as well as an
`
`added sectional view, both of which are reproduced below. Pet. 31; see also
`
`id. at 54 (same).
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`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
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`person of ordinary skill in the art. Pet. 41; Ex. 1003 ¶¶ 133–134.
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`
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`23
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`At this stage of the proceeding, Petitioner’s stated reasoning for the
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`proposed modification is sufficiently supported, including by the unrebutted
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`testimony of Dr. Kenny. See, e.g., Ex. 1003 ¶¶ 55–69, 78–98, 127–136.
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`vi. Summary
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`For the foregoing reasons, we are persuaded that Petitioner’s cited
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`evidence and reasoning demonstrates a reasonable likelihood that Petitioner
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`would prevail in its contentions regarding claim 1.
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`4.
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`Independent claims 10 and 20
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`Independent claims 10 and 20 consist of limitations that are
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`substantially similar to elements [a]–[d] of claim 1. Compare Ex. 1001,
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`44:50–67, with id. at 45:35–47 and id. at 46:22–46. In asserting that
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`claims 10 and 20 also would have been obvious over the combined teachings
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`of Mendelson-799 and Ohsaki, Petitioner refers to the same arguments
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`presented as to claim 1. See Pet. 45–50, 55–60. For the same reasons
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`discussed above, we are persuaded that Petitioner’s cited evidence and
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`reasoning demonstrates a reasonable likelihood that Petitioner would prevail
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`in its contentions regarding claims 10 and 20. See supra § II.D.3.i–v.
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`E.
`
`Remaining Grounds of Obviousness
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`As discussed in detail above, Petitioner has demonstrated a reasonable
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`likelihood of prevailing on the challenge to claims 1, 10, and 20 as having
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`been obvious over Mendelson-799 and Ohsaki. Therefore, pursuant to
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`USPTO policy implementing the decision in SAS Inst., Inc. v. Iancu, 138 S.
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`Ct. 1348 (2018) (“SAS”), we institute as to all claims challenged in the
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`24
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`petition and on all grounds in the petition. See PTAB Consolidated Trial
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`Practice Guide (Nov. 2019) (“Consolidated Guide”), 5–6, 64.
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`III. CONCLUSION
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`The Supreme Court held that a final written decision under 35 U.S.C.
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`§ 318(a) must decide the patentability of all claims challenged in the
`
`petition. SAS, 138 S. Ct. 1348. After considering the evidence and
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`arguments presented in the Petition, we determine that Petitioner has
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`demonstrated a reasonable likelihood of success in proving that at least
`
`claims 1, 10, and 20 of the ’553 patent are unpatentable. Accordingly, we
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`institute an inter partes review of all claims and all grounds set forth in the
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`Petition.5
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`At this stage of the proceeding, we have not made a final
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`determination as to the patentability of any challenged claim or as to the
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`construction of any claim term.
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`IV. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
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`review of claims 1–29 of the ’553 patent is instituted with respect to all
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`grounds set forth in the Petition; and
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`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4(b), inter partes review of the ’553 patent shall commence
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`
`5 The Petition addresses t
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