`571-272-7822
`
`Paper 9
`Date: March 2, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01537
`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
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`
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`IPR2020-01537
`Patent 10,588,553 B2
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`I.
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`INTRODUCTION
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`A.
`
`Background
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`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
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`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
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`(“Patent Owner”) waived filing a preliminary response. Paper 8 (“PO
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`Waiver”).
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`We have authority to determine whether to institute an inter partes
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`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
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`in the petition filed under section 311 and any response filed under section
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`313 shows that there is a reasonable likelihood that the petitioner would
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`prevail with respect to at least 1 of the claims challenged in the petition.”
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`35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (“The Board institutes
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`the trial on behalf of the Director.”).
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`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
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`grounds set forth in the Petition.
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`B.
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`Related Matters
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`The parties identify the following matters related to the ’553 patent:
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`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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`IPR2020-01537
`Patent 10,588,553 B2
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`Apple Inc. v. Masimo Corporation, IPR2020-01536 (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);
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`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,
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`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).
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`Pet. 3; 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 second the instant proceeding and ranking first
`IPR2020-01536. 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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`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.
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`The ’553 Patent
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`The ’553 patent is titled “Multi-Stream Data Collection System for
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`Noninvasive Measurement of Blood Constituents,” and issued on March 17,
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`2020, from U.S. Patent Application No. 16/534,949, filed August 7, 2019.
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`Ex. 1001, codes (21), (22), (45), (54). The ’553 patent claims priority
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`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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`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
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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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`4
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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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`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 37:47–49.
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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
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`Of the challenged claims, claims 1, 10, and 20 are independent.
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`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.
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`Ex. 1001, 44:50–67 (bracketed identifiers a–d added). Independent
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`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.
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`E.
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`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
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`Ohsaki et al., U.S. Patent Application Publication No.
`2001/0056243 A1, filed May 11, 2001, published December 27, 2001
`(Ex. 1009, “Ohsaki”);
`
`
`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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`8
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`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, the Declaration of Thomas W.
`
`Kenny, Ph.D. (Ex. 1003).
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`F.
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`Asserted Grounds
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`Petitioner asserts that claims 1–29 are unpatentable based upon the
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`following grounds:
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`Claims Challenged
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`35 U.S.C. §
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`References/Basis
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`1–6, 9–18, 20–24, 29
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`7, 19
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`8, 25–28
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`
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`103
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`103
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`103
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`Aizawa, Inokawa, Ohsaki
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`Aizawa, Inokawa, Ohsaki,
`Mendelson-2006
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`Aizawa, Inokawa, Ohsaki,
`Mendelson-2006, Sherman
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`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.
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`§ 42.100(b) (2019). Petitioner submits that no claim term requires express
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`construction. Pet. 7–8.
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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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`9
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`time. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
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`1013, 1017 (Fed. Cir. 2017).
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`B.
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`Principles of Law
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`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.3 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
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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
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`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
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`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
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`3 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).
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`We analyze the challenges presented in the Petition in accordance
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`with the above-stated principles.
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`C.
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`Level of Ordinary Skill in the Art
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`Petitioner identifies the appropriate level of skill in the art as that
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`possessed by a person having “a Bachelor of Science degree in an academic
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`discipline emphasizing the design of electrical, computer, or software
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`technologies, in combination with training or at least one to two years of
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`related work experience with capture and processing of data or information.”
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`Pet. 7 (citing Ex. 1003 ¶¶ 1–18, 20–21). “Additional education in a relevant
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`field or industry experience may compensate for one of the other aspects of
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`the . . . characteristics stated above.” Id.
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`For purposes of this Decision, we generally adopt Petitioner’s
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`assessment as set forth above, which appears consistent with the level of
`
`skill reflected in the Specification and prior art.
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`D. Obviousness over the Combined Teachings of
`Aizawa, Inokawa, and Ohsaki
`
`Petitioner presents undisputed contentions that claims 1–6, 9–18, 20–
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`24, and 29 of the ’553 patent would have been obvious over the combined
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`teachings of Aizawa, Inokawa, and Ohsaki. Pet. 9–74.
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`1.
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`Overview of Aizawa (Ex. 1006)
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`Aizawa is titled “Pulse Wave Sensor and Pulse Rate Detector,” and
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`discloses a pulse wave sensor that detects light output from a light emitting
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`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
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`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
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`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
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`can be obtained when the number of photodetectors 22 is 1 and a plurality of
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`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
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`in Figure 1(b), pulse wave sensor 2 includes drive detection circuit 24 for
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`detecting a pulse wave by amplifying the outputs of photodetectors 22. Id.
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`¶ 23. Arithmetic circuit 3 computes a pulse rate from the detected pulse
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`wave and transmitter 4 transmits the pulse rate data to an “unshown
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`display.” Id. The pulse rate detector further includes outer casing 5 for
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`storing pulse wave sensor 2, acrylic transparent plate 6 mounted to detection
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`face 23a of holder 23, and attachment belt 7. Id. ¶ 23.
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`Aizawa discloses that LED 21 and photodetectors 22 “are stored in
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`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
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`photodetectors 22 are set back from the above detection face 23a.” Id. ¶ 24.
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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.
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`Overview of Inokawa (Exs. 1007 and 1008)
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`Inokawa is a Japanese published patent application titled “Optical
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`Vital Sensor, Base Device, Vital Sign Information Gathering System, and
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`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
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`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
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`that the sensor-side lens is convex. See id. ¶¶ 99, 107. Green LED 21
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`senses “the pulse from the light reflected off of the body (i.e.[,] change in the
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`amount of hemoglobin in the capillary artery),” and infrared LED 23 senses
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`body motion from the change in reflected light. Id. ¶ 59. The pulse sensor
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`stores this information in memory. Id. ¶ 68. To read and store information,
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`the pulse sensor includes a CPU that “performs the processing to sense
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`pulse, body motion, etc. from the signal . . . and temporarily stores the
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`analysis data in the memory.” Id. ¶ 69.
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`Figure 3 of Inokawa is reproduced below.
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`Figure 3 illustrates a schematic view of a pulse sensor mounted to a base
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`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
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`be used to efficiently transmit data and improve accuracy. Id. ¶ 111.
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`3.
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`Overview of Ohsaki (Ex. 1009)
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`Ohsaki is titled “Wristwatch-type Human Pulse Wave Sensor
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`Attached on Back Side of User’s Wrist,” and discloses an optical sensor for
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`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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`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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`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.
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`Independent Claim 1
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`Petitioner presents undisputed contentions that claim 1 would have
`
`been obvious over the combined teachings of Aizawa, Inokawa, and Ohsaki.
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`Pet. 32–74.
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`i. “A noninvasive optical physiological sensor
`comprising:”
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`On this record, the cited evidence supports Petitioner’s undisputed
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`contention that Aizawa discloses a pulse sensor including a pulse rate
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`detector.4 Pet. 32; see, e.g., Ex. 1006 ¶ 2 (disclosing “a pulse wave sensor
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`for detecting the pulse wave of a subject”), ¶ 23 (pulse wave sensor 2), Figs.
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`1(a)–(b) (depicting pulse wave sensor 2).
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`ii.“[a] a plurality of emitters configured to emit light into
`tissue of a user;”
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`On this record, the cited evidence supports Petitioner’s undisputed
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`contentions regarding this limitation. Specifically, Petitioner contends that
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`4 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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`Aizawa discloses LED 21 and states that, in certain embodiments, multiple
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`LEDs may be employed. Pet. 10, 16, 33–34; see, e.g., Ex. 1006 ¶¶ 23
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`(“LED 21 . . . for emitting light having a wavelength of a near infrared
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`range”), 33 (explaining that instead of having a plurality of photodetectors
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`and one LED, “[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 22”).
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`Petitioner also contends that Inokawa discloses using two emitters of
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`different wavelengths “to improve the detected pulse wave by distinguishing
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`between blood flow detection and body movement.” Pet. 17, 33–44; see,
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`e.g., Ex. 1008 ¶¶ 58 (a pair of LEDs 21, 23), 59 (detecting pulse and body
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`motion). Petitioner also contends that when Inokawa’s sensor is mounted on
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`its base device, the infrared LED is used to transmit vital information to the
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`base device. Pet. 13–14; see, e.g., Ex. 1008 ¶¶ 76–77 (explaining that “vital
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`sign information stored in the memory 63 [of the sensor], such as pulse and
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`body motion, is transmitted to the base device 17 using the S-side infrared
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`LED 23 of the pulse sensor 1 and the B-side PD 45 of the base device 17,”
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`such that “there is no need to use a special wireless communication circuit or
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`a communication cable”); Ex. 1003 ¶¶ 61–62.
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`Petitioner further 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, 23–24, 26;
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`Ex. 1003 ¶ 108 (“To obtain the advantages described by Inokawa (e.g., to
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`improve the detected pulse wave by enabling the sensor to distinguish
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`between blood flow detection and body movement, in addition to enabling
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`19
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`wireless communication between the sensor and a base station), . . . modify
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`Aizawa’s pulse wave sensor to include an additional LED.”). Petitioner
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`contends that such a modification also would have provided additional
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`functionality, including that of a wireless communication method, which
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`would have “eliminate[d] problems associated with a physical cable, and
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`that does not require a separate RF circuit, as taught by Inokawa.” Pet. 23–
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`24 (citing Ex. 1008 ¶¶ 3, 67, 75; Ex. 1003 ¶ 81).
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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 ¶ 109.
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`Petitioner’s modified figures depict the sensor of Aizawa with an added
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`“LED B,” (illustrated in light purple) as Petitioner contends would have
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`been rendered obvious by Inokawa. Pet. 19–20; see also id. at 33–34.
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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 ¶¶ 100–119.
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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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`contention that Aizawa discloses at least four detectors, each stored in a
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`cavity 23c. Pet. 34–40; see, e.g., Ex. 1006 ¶¶ 23 (“four phototransistors
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`22”), 24 (“stored in cavities” and “set back from . . . detection face 23a”),
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`Figs. 1(a)–1(b) (depicting cavities 23c housing detectors 22); Ex. 1003
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`¶¶ 55–63, 68–94. According to Petitioner, “Aizawa discloses a sensor that
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`‘detect[s] light output from a light emitting diode and reflected from the
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`artery of a wrist of a subject.’” Pet. 34–35 (quoting Ex. 1006 ¶ 9). Aizawa
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`also teaches near infrared radiation reflected by a red corpuscle running
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`through the artery 11 of the wrist 10 and then this reflected light is detected
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`by the plurality of photodetectors 22. Pet. 35 (citing Ex. 1006 ¶ 27).
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`Petitioner notes that Aizawa’s photodetectors may be disposed
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`symmetrically within holder 23 and used “to detect the pulse wave of the
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`wrist,” and other potential arrangements are also suggested. Pet. 36 (citing
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`Ex. 1006, ¶ 32).
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`Petitioner notes that Aizawa may not explicitly describe
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`photodetectors 22 as being arranged on a substrate. Pet. 38. Petitioner
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`contends that a person of ordinary skill in the art “would have found it
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`obvious that Aizawa’s photodetectors are arranged on a substrate because
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`photodetectors 22 are disposed on a surface of holder 23 and are further
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`21
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`connected, through the surface of holder 23, to drive detection circuit 24.”
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`Id. Dr. Kenny explains that “one of ordinary skill would have understood
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`that the surface of holder 23 acts as a substrate through which
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`photodetectors 22 and drive detection circuit 24 are connected and on which
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`they are arranged because it reduces the manufacturing complexity and
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`footprint of the device as compared to using wires.” Ex. 1003 ¶ 125.
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`Dr. Kenny testifies that “one of ordinary skill would have found it obvious
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`to use such a substrate because it provides a simpler manufacturing process
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`and more compact design than using and routing wires would allow.” Id. ¶
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`126. Dr. Kenny also notes that Aizawa illustrates a substrate in Figure 1(b),
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`but does not otherwise label or describe such a structure.
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`Alternatively, Petitioner argues that it would have been obvious to
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`modify Aizawa to incorporate Ohsaki’s circuit board 9 (substrate) to create a
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`substrate on which photodetectors are arranged. Pet. 39–40 (citing Ex. 1009,
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`¶ 17, Fig. 2; Ex. 1003 ¶¶ 120–129). Petitioner contends the combination
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`creates a noninvasive optical physiological sensor with at least four detectors
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`that are evenly spaced from one another on a substrate, and that are
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`configured to detect light that has been attenuated by the user’s tissue. Id.
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`According to Dr. Kenny, a person of ordinary skill would have been
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`motivated to modify Aizawa to incorporate circuit board 9 to enable
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`photodetectors 22 to send signals to other portions of the sensor. Ex. 1003
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`¶ 127.
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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 ¶¶ 120–129.
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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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`contention that Aizawa discloses holder 23, which is a wall that surrounds
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`detectors 22, as well as other elements. Pet. 40–43; see, e.g., Ex. 1006 ¶ 23
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`(“holder 23 for storing . . . light emitting diode 21 and the
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`photodetectors 22”), Fig. 1(b) (depicting holder 23 surrounding each
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`detector 22).
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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. 24–28, 43–45. Specifically,
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`Petitioner contends that Aizawa discloses a cover, i.e., an “acrylic
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`transparent plate positioned between the photodetectors and the wrist.” Id.
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`at 12; Ex. 1006 ¶ 34 (“[A]crylic transparent plate 6 is provided on the
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`detection face 23a of the holder 23 to improve adhesion to the wrist 10.”),
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`Fig. 1(b) (depicting flat, transparent plate 6 between sensor 2 and wrist 10).
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`Petitioner also contends that Ohsaki teaches a wrist-worn sensor that
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`includes a “translucent board” having a convex surface that contacts the
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`user’s skin to prevent slippage of the sensor. Pet. 15, 24–26; see, e.g.,
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`Ex. 1009 ¶¶ 16 (“worn on the back side of the user’s wrist”), 17 (“convex
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`surface”), 25 (“intimate contact” prevents slippage), Figs. 1–2 (depicting
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`convex translucent board 8 between tissue and detector).
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`Petitioner further contends, with reference to the modified and
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`annotated figures reproduced below