Trials@uspto.gov
`571-272-7822
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` Paper 43
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` Date: February 23, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`IPR2020-01537
`
`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
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`
`
`
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`
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`
`
`
`
` 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.
`
`IPR2020-01537
`
`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)
`
`
`
`
`
`
`
`IPR2020-01537
`Patent 10,588,553 B2
`
`
`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
`
`B2 (Ex. 1001, “the ’553 patent”). Paper 3 (“Pet.”). Masimo Corporation
`
`(“Patent Owner”) waived filing a Preliminary Response. Paper 8. We
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`instituted an inter partes review of all challenged claims 1–29 on all asserted
`
`grounds of unpatentability, pursuant to 35 U.S.C. § 314. Paper 9 (“Inst.
`
`Dec.”).
`
`After institution, Patent Owner filed a Response (Paper 24, “PO
`
`Resp.”) to the Petition, Petitioner filed a Reply (Paper 27, “Pet. Reply”), and
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`Patent Owner filed a Sur-reply (Paper 31, “Sur-reply”).1 An oral hearing
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`was held on December 7, 2021, and a transcript of the hearing is included in
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`the record. Paper 41 (“Tr.”).
`
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons set forth below, Petitioner has met
`
`its burden of showing, by a preponderance of the evidence, that challenged
`
`claims 1–29 of the ’553 patent are unpatentable.
`
`B. Related Proceedings
`
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`
`(C.D. Cal.) (filed Jan. 9, 2020);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01536 (PTAB Aug. 31,
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`2020) (challenging claims 1–29 of the ’553 patent);
`
`
`1 After the Sur-reply was filed, we authorized Petitioner to file an
`Identification of Testimony. Paper 37.
`
`
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`2
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`IPR2020-01537
`Patent 10,588,553 B2
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`Apple Inc. v. Masimo Corporation, IPR2020-01520 (PTAB Aug. 31,
`
`2020) (challenging claims of U.S. Patent No. 10,258,265 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01521 (PTAB Sept. 2,
`
`2020) (challenging claims of U.S. Patent No. 10,292,628 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01523 (PTAB Sept. 9,
`
`2020) (challenging claims of U.S. Patent No. 8,457,703 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01524 (PTAB Aug. 31,
`
`2020) (challenging claims of U.S. Patent No. 10,433,776 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01526 (PTAB Aug. 31,
`
`2020) (challenging claims of U.S. Patent No. 6,771,994 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01538 (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; Paper 5, 3.
`
`
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`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.
`
`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).
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`Patent 10,588,553 B2
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`The ’553 patent relates to noninvasive methods and devices for
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`measuring various blood constituents or analytes. Id. at code (57). The ’553
`
`patent discloses a two-part data collection system including a noninvasive
`
`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
`
`photodetectors, and is used to measure a blood constituent or analyte, e.g.,
`
`oxygen or glucose. Id. at 2:29–35, 2:64–65. 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
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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
`
`reflected from the tissue. Id. In response to the measured light,
`
`detectors 106 output detector signals 107 to monitor 109 through front-end
`
`interface 108 and detectors 106 can be implemented using photodiodes. Id.
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`at 14:7–10, 14:26–32. 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.
`
`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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`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
`
`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
`
`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
`
`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
`
`shield 1403 and may enclose detectors 1410c. Id. at 37:47–49.
`
`
`
`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
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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. 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:
`
`[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.
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`E. Applied References
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`Petitioner relies upon the following references:
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`Aizawa, U.S. Patent Application Publication No. 2002/0188210
`A1, filed May 23, 2002, published December 12, 2002 (Ex. 1006,
`“Aizawa”);
`
`Inokawa et al., Japanese Patent Application Publication
`No. 2006-296564 A, filed April 18, 2005, published November 2,
`2006 (Ex. 1007, “Inokawa”);2
`
`Ohsaki et al., U.S. Patent Application Publication No.
`2001/0056243 A1, filed May 11, 2001, published December 27, 2001
`(Ex. 1009, “Ohsaki”);
`
`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”); and
`
`Sherman, U.S. Patent No. 4,941,236, filed July 6, 1989, issued
`July 17, 1990 (Ex. 1011, “Sherman”).
`
`Pet. 9.
`
`Petitioner also submits, inter alia, a Declaration of Dr. Thomas W.
`
`Kenny, Ph.D. (Ex. 1003) and a Second Declaration of Dr. Kenny (Ex. 1047).
`
`Patent Owner submits, inter alia, the Declaration of Dr. Vijay K. Madisetti
`
`(Ex. 2004). The parties also provide deposition testimony from Dr. Kenny
`
`and Dr. Madisetti, including from this proceeding and others. Exs. 1041–
`
`1043, 2006–2009, 2027.
`
`
`2 Petitioner relies on a certified English translation of Inokawa (Ex. 1008).
`Ex. 1008, 24. In this Decision, we also refer to the translation.
`
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`F. Asserted Grounds of Unpatentability
`
`We instituted an inter partes review based on the following grounds.
`
`Inst. Dec. 9, 27.
`
`Claims Challenged
`
`35 U.S.C. §
`
`References/Basis
`
`1–6, 9–18, 20–24, 29
`
`7, 19
`
`8, 25–28
`
`
`
`103
`
`103
`
`103
`
`Aizawa, Inokawa, Ohsaki
`
`Aizawa, Inokawa, Ohsaki,
`Mendelson-2006
`
`Aizawa, Inokawa, Ohsaki,
`Mendelson-2006, Sherman
`
`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
`
`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. Patent Owner submits that claim terms should be given
`
`their ordinary and customary meaning, consistent with the Specification. PO
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`Resp. 8.
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`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).
`
`B. Principles of Law
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`
`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
`
`factual determinations, including (1) the scope and content of the prior art;
`
`(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
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`nonobviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`When evaluating a combination of teachings, we must also “determine
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`whether there was an apparent reason to combine the known elements in the
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`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
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`elements would have produced a predictable result weighs in the ultimate
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`determination of obviousness. Id. at 416–417.
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`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,
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`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To
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`prevail, Petitioner must support its challenge by a preponderance of the
`
`evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`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 having “a Bachelor of Science degree in an academic
`
`
`3 The parties have not presented objective evidence of non-obviousness.
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`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). “Additional education in a relevant
`
`field or industry experience may compensate for one of the other aspects of
`
`the . . . characteristics stated above.” Id.
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`Patent Owner makes several observations regarding Petitioner’s
`
`identified level of skill in the art but, “[f]or this proceeding, [Patent Owner]
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`nonetheless applies Petitioner’s asserted level of skill.” PO Resp. 8–9.
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`We 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
`Aizawa, Inokawa, and Ohsaki
`
`Petitioner contends that claims 1–6, 9–18, 20–24, and 29 of the ’553
`
`patent would have been obvious over the combined teachings of Aizawa,
`
`Inokawa, and Ohsaki. Pet. 9–74; see also Pet. Reply 1–29. Patent Owner
`
`disagrees. PO Resp. 10–54; see also Sur-reply 1–24.
`
`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 1–6, 9–18, 20–24, and 29 are
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`unpatentable.
`
`1. Overview of Aizawa (Ex. 1006)
`
`Aizawa is a U.S. patent application publication titled “Pulse Wave
`
`Sensor and Pulse Rate Detector,” and discloses a pulse wave sensor that
`
`detects light output from a light emitting diode and reflected from a patient’s
`
`artery. Ex. 1006, codes (54), (57).
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`Figure 1(a) of Aizawa is reproduced below.
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`
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`Figure 1(a) is a plan view of a pulse wave sensor. Id. ¶ 23. As shown in
`
`Figure 1(a), pulse wave sensor 2 includes light emitting diode (“LED”) 21,
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`four photodetectors 22 symmetrically disposed around LED 21, and
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`holder 23 for storing LED 21 and photodetectors 22. Id. Aizawa discloses
`
`that, “to further improve detection efficiency, . . . the number of the
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`photodetectors 22 may be increased.” Id. ¶ 32, Fig. 4(a). “The same effect
`
`can be obtained when the number of photodetectors 22 is 1 and a plurality of
`
`light emitting diodes 21 are disposed around the photodetector 22.” Id. ¶ 33.
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`
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`Figure 1(b) of Aizawa is reproduced below.
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`Figure 1(b) is a sectional view of the pulse wave sensor. Id. ¶ 23. As shown
`
`in Figure 1(b), pulse wave sensor 2 includes drive detection circuit 24 for
`
`detecting a pulse wave by amplifying the outputs of photodetectors 22. Id.
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`Arithmetic circuit 3 computes a pulse rate from the detected pulse wave and
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`transmitter 4 transmits the pulse rate data to an “unshown display.” Id. The
`
`pulse rate detector further includes outer casing 5 for storing pulse wave
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`sensor 2, acrylic transparent plate 6 mounted to detection face 23a of holder
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`23, and attachment belt 7. Id.
`
`Aizawa discloses that LED 21 and photodetectors 22 “are stored in
`
`cavities 23b and 23c formed in the detection face 23a” of the pulse wave
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`sensor. Id. ¶ 24. Detection face 23a “is a contact side between the holder 23
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`and a wrist 10, respectively, at positions where the light emitting face 21s of
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`the light emitting diode 21 and the light receiving faces 22s of the
`
`photodetectors 22 are set back from the above detection face 23a.” Id.
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`Aizawa discloses that “a subject carries the above pulse rate detector 1 on
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`the inner side of his/her wrist 10 . . . in such a manner that the light emitting
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`face 21s of the light emitting diode 21 faces down (on the wrist 10 side).”
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`Id. ¶ 26. Furthermore, “the above belt 7 is fastened such that the acrylic
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`transparent plate 6 becomes close to the artery 11 of the wrist 10. Thereby,
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`adhesion between the wrist 10 and the pulse rate detector 1 is improved.”
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`Id. ¶¶ 26, 34.
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`2. Overview of Inokawa (Exs. 1007, 1008)
`
`Inokawa is a Japanese published patent application titled “Optical
`
`Vital Sensor, Base Device, Vital Sign Information Gathering System, and
`
`Sensor Communication Method,” and discloses a pulse sensor device.
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`Ex. 1008 ¶ 6.
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`Figure 1 of Inokawa is reproduced below.
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`Figure 1 illustrates a schematic view of a pulse sensor. Id. ¶ 56. Pulse
`
`sensor 1 includes box-shaped sensor unit 3 and flexible annular wristband 5.
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`Id. ¶ 57. Sensor unit 3 includes a top surface with display 7 and control
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`switch 9, and a rear surface (sensor-side) with optical device component 11
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`for optically sensing a user’s pulse. Id.
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`Figure 2 of Inokawa is reproduced below.
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`Figure 2 illustrates a schematic view of the rear surface of the pulse sensor.
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`Id. ¶ 58. The rear-side (sensor-side) of pulse sensor 1 includes a pair of
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`light-emitting elements, i.e., green LED 21 and infrared LED 23, as well as
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`photodiode 25 and lens 27. Id. In various embodiments, Inokawa discloses
`
`that the sensor-side lens is convex. See id. ¶¶ 99, 107. Green LED 21 is
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`used to sense “the pulse from the light reflected off of the body (i.e.[,]
`
`change in the amount of hemoglobin in the capillary artery),” and infrared
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`LED 23 is used to sense body motion from the change in reflected light. Id.
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`¶ 59. The pulse sensor stores this information in memory. Id. ¶ 68. To read
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`and store information, the pulse sensor includes a CPU that “performs the
`
`processing to sense pulse, body motion, etc. from the signal . . . and
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`temporarily stores the analysis data in the memory.” Id. ¶ 69.
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`Figure 3 of Inokawa is reproduced below.
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`
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`Figure 3 illustrates a schematic view of a pulse sensor mounted to a base
`
`device. Id. ¶ 60. Pulse sensor 1 is depicted as mounted to base device 17,
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`which “is a charger with communication functionality.” Id. When so
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`mounted, sensor optical device component 11 and base optical device
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`component 41 face each other in close proximity. Id. ¶ 66. In this position,
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`pulse sensor 1 can output information to the base device through the coupled
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`optical device components. Id. ¶ 67. Specifically, the pulse sensor CPU
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`performs the controls necessary to transmit pulse information using infrared
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`LED 23 to photodetector 45 of base device 17. Id. ¶¶ 67, 70, 76. In an
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`alternative embodiment, additional sensor LEDs and base photodetectors can
`
`be used to efficiently transmit data and improve accuracy. Id. ¶ 111.
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`3. Overview of Ohsaki (Ex. 1009)
`
`Ohsaki is a U.S. patent application publication titled “Wristwatch-type
`
`Human Pulse Wave Sensor Attached on Back Side of User’s Wrist,” and
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`discloses an optical sensor for detecting a pulse wave of a human body.
`
`Ex. 1009, code (54), ¶ 3. Figure 1 of Ohsaki is reproduced below.
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`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
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`detecting element 2 and sensor body 3. Id. ¶ 16.
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`Figure 2 of Ohsaki, reproduced below, illustrates further detail of
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`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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`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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`17
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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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`4. Independent Claim 1
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`Petitioner contends that claim 1 would have been obvious over the
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`combined teachings of Aizawa, Inokawa, and Ohsaki. Pet. 16–45. Below,
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`we set forth how the combination of prior art references teaches or suggests
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`the claim limitations that are not disputed by the parties. For those
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`limitations and reasons for combining the references that are disputed, we
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`examine each of the parties’ contentions and then provide our analysis.
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`i. “A noninvasive optical physiological sensor comprising:”
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`The cited evidence supports Petitioner’s undisputed contention that
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`Aizawa satisfies the subject matter of the preamble.4 Pet. 32; see, e.g.,
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`Ex. 1006 ¶ 2, code (57) (“pulse wave sensor for detecting a pulse wave by
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`detecting light output from a light emitting diode and reflected from the
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`artery of a wrist of a subject”), Fig. 2 (depicting structure of optical pulse
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`wave sensor); see also Ex. 1003 ¶¶ 95–99.
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`4 Whether the preamble is limiting need not be resolved because Petitioner
`shows sufficiently that the preamble’s subject matter is satisfied by the art.
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`18
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`ii. “[a] a plurality of emitters configured to emit light into tissue of a user”
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`Petitioner’s Undisputed Contentions
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`Petitioner contends that Aizawa discloses an emitter—LED 21—and
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`also states that, in certain embodiments, multiple LEDs may be employed.
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`Pet. 16, 33. Patent Owner does not dispute this contention, and we agree.
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`See Ex. 1006 ¶¶ 23 (“LED 21”), 32 (“The arrangement of the light emitting
`
`diode 21 and the photodetectors 22 is not limited to this.”). For example,
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`Aizawa explains that “[t]he same effect can be obtained when the number of
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`photodetectors 22 is 1 and a plurality of light emitting diodes 21 are
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`disposed around the photodetector.” Id. ¶ 33.
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`Petitioner also contends that Inokawa teaches a sensor with two
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`LEDs–a green LED to sense pulse and an infrared LED to sense body
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`motion. Pet. 18, 34. Petitioner also contends that when Inokawa’s sensor is
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`mounted on a base device, the infrared LED also is used to wirelessly
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`transmit vital sign information to the base device. Id. at 18, 21, 34. Patent
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`Owner does not dispute these contentions, and we agree with Petitioner.
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`Inokawa teaches a pair of LEDs 21, 23, where “the basic function of the S-
`
`side green LED 21 is to sense the pulse from the light reflected off of the
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`body . . ., while the S-side infrared LED 23 serves to sense body motion
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`from the change in this reflected light.” Ex. 1008 ¶¶ 58–59. Inokawa also
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`explains that “vital sign information stored in the memory 63 [of the sensor],
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`such as pulse and body motion, is transmitted to the base device 17 using the
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`S-side infrared LED 23 of the pulse sensor 1 and the B-side PD 45 of the
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`base device 17,” such that “there is no need to use a special wireless
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`communication circuit or a communication cable.” Id. ¶¶ 76–77.
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`19
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`Petitioner’s Disputed Contentions
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`Moreover, Petitioner contends that a person of ordinary skill in the art
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`would have been motivated to modify Aizawa to “include an additional LED
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`as taught by Inokawa to improve the detected pulse wave by distinguishing
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`between blood flow detection and body movement.” Pet. 17, 18–24, 33–34;
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`Ex. 1003 ¶¶ 69, 108. Petitioner contends that “Aizawa-Inokawa would have
`
`utilized two LEDs that emit two different wavelengths,” such that “Aizawa’s
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`sensor would have been improved through the implementation of a separate
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`LED to account for motion load.” Pet. 20. According to Dr. Kenny, “one of
`
`ordinary skill would have recognized that this would improve Aizawa’s
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`sensor by enabling it to account for motion load through use of the second
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`LED, by detecting and recording body motion in addition to blood flow.”
`
`Ex. 1003 ¶¶ 76, 110.
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`As a second and independent motivation, Petitioner contends that such
`
`a modification also would have provided “additional functionality, including
`
`that of [a] wireless communication [method],” which would have
`
`“eliminat[ed] problems associated with a physical cable, and that does not
`
`require a separate RF circuit, as taught by Inokawa.” Pet. 21–24. Petitioner
`
`contends that although Aizawa discloses data transmission, Aizawa “is silent
`
`about how such transmission would be implemented.” Pet. 23. According
`
`to Petitioner, a skilled artisan would have recognized that Aizawa’s LED
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`could have been used for wireless data communication with a personal
`
`computer to eliminate problems associated with a physical cable, and, as
`
`taught by Inokawa, without requiring a separate RF circuit, which “would
`
`result in enhanced accuracy of the transmitted information.” Pet. 23–24
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`(citing Ex. 1003 ¶¶ 68–83). According to Dr. Kenny, “as one of ordinary
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`
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`20
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`skill would have recognized, the LEDs provided on the sensor can be used
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`not only to detect pulse rate, but also to ‘accurately, easily, and without
`
`malfunction’ transmit sensed data to a base station.” Ex. 1003 ¶¶ 112, 78.
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`To illustrate its proposed modification, Petitioner includes annotated
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`and modified views of Aizawa’s Figures 1(a) and 1(b), reproduced below.
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`Pet. 19–20; see also id. at 33–34 (similar figures); Ex. 1003 ¶ 75.
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`Petitioner’s annotated and modified figures depict the sensor of Aizawa with
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`an added “LED B” (illustrated in light purple), as Petitioner contends would
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`have been rendered obvious by Inokawa. Pet. 19–20, 23–24, 33–35; see
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`
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`also Ex. 1003 ¶¶ 72–83, 109–119.
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`Patent Owner’s Arguments
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`Patent Owner disputes Petitioner’s contentions regarding the
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`obviousness of modifying Aizawa to include two emitters. See PO
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`Resp. 48–54; Sur-reply 24–26.
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`21
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`First, Patent Owner argues that neither Aizawa nor Inokawa discloses
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`a device with both multiple detectors and multiple emitters in the same
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`sensor, because Aizawa’s embodiments have either a single emitter and
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`multiple detectors (e.g., Ex. 1006, Fig. 1(a)) or multiple emitters and a single
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`detector (e.g., id. ¶ 33), and Inokawa discloses multiple emitters and a single
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`detector (e.g., Ex. 1008, Fig. 2). See PO Resp. 48–49 (citing, e.g., Ex. 1006
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`¶ 33, Figs. 1, 2, 4, 5; Ex. 1008 ¶ 58, Fig. 2; Ex. 2004 ¶¶ 100–102). Patent
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`Owner concludes, therefore, that a person of ordinary skill in the art would
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`not have added a second emitter to Aizawa, when Aizawa already discloses
`
`an embodiment with multiple LEDs, i.e., an embodiment with only a single
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`detector. PO Resp. 49 (citing, e.g., Ex. 2004 ¶ 103).
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`Second, Patent Owner argues that the evidence does not support either
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`of Petitioner’s two proffered motivations for modifying Aizawa to include
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`two emitters. Id. As to the first motivation (to measure body movement
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`using a second emitter), Patent Owner asserts that Dr. Kenny erroneously
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`testifies that Aizawa cannot do this with its single emitter. Id. at 49–50
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`(citing, e.g., Ex. 1006 ¶ 15; Ex. 2007, 400:7–401:10; Ex. 2004 ¶ 104).
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`Patent Owner argues that “Dr. Kenny incorrectly believed Aizawa’s sensor
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`attempts to prevent motion rather than account for it,” yet, “Aizawa
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`expressly states that it already provides a ‘device for computing the amount
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`of motion load from the pulse rate’ based on its measured data.” Id. at 50
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`(quoting Ex. 1006 ¶ 15) (emphasis omitted). Thus, Patent Owner contends
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`that the proposed motivation would not realize an improvement over Aizawa
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`alone. Id.; Ex. 2004 ¶ 84.
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`As to Petitioner’s second motivation (to enable transmission of data to
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`a base device using an optical communication link), Patent Owner argues
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`22
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`that “Aizawa already includes a wireless transmitter . . . so Aizawa does not
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`need to incorporate Inokawa’s base-device [optical] data transmission
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`arrangement.” PO Resp. 51 (citing, e.g., Ex. 1006 ¶¶ 23, 28, 35; Ex. 2004
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`¶¶ 105–106). Indeed, Patent Owner argues “Dr. Kenny acknowledged
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`Aizawa does not indicate there are any problems with Aizawa’s form of data
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`transmission.” Id. (citing Ex. 2007, 409:13–410:2). Patent Owner further
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`argues that “Aizawa’s goal is ‘real-time measuring’ with the transmitter
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`‘transmitting the measured pulse rate data to a display’” but that “Inokawa’s
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`data transfer approach does not allow real-time display of measurements.”
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`Id. (citing, e.g., Ex. 1006 ¶¶ 4, 15; Ex. 1008 ¶¶ 70, 74; Ex. 2004 ¶ 107).
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`Patent Owner contends that “[t]ransforming Aizawa’s sensor to employ a
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`base-device transmitter eliminates the ability to take and display real-time
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`measurements, one of Aizawa’s stated goals, while increasing power
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`consumption and cost.” Id. at 51–52.
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`Patent Owner insists Inokawa does not aid Petitioner’s case, because
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`Inokawa discloses the benefits of using a second emitter in only two
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`situations, i.e., first, to avoid the risk of contact failure in a “cable”
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`communication and, second, to avoid use of a “dedicated wireless
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`communication circuit,” whereas “Aizawa already incorporates a transmitter
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`into its design.” Id. at 52 (citing, e.g., Ex. 1008 ¶ 4; Ex. 1006 ¶¶ 16, 23, 28;
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`Ex. 2004 ¶ 108).
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`Third, Patent Owner accuses Petitioner and Dr. Kenny of overlooking
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`further complications that would ensue from modifying Aizawa to have two
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`emitters. Id. at 53. Patent Owner argues that Dr. Kenny overlooked how
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`placing “two LEDs in close proximity may cause thermal interference that
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`could create significant issues for sensor performance,” and would require
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