Paper No. 8
`Trials@uspto.gov
`571.272.7822 Filed: April 27, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC PLC,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00057
`Patent 8,560,034 B1
`____________
`
`
`
`Before KEN B. BARRETT, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Trials@uspto.gov
`571.272.7822 Filed: April 27, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC PLC,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00057
`Patent 8,560,034 B1
`____________
`
`
`
`Before KEN B. BARRETT, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2016-00057
`Patent 8,560,034 B1
`
`
`I.
`INTRODUCTION
`Medtronic PLC (“Petitioner”) filed a Petition requesting inter partes
`
`review of U.S. Patent No. 8,560,034 B1 (“the ’034 patent”). Paper 1
`(“Pet.”). The Petition challenges the patentability of claims 1, 5, and 6 of
`the ’034 patent on the ground of obviousness under 35 U.S.C. § 103.
`Masimo Corporation (Patent Owner) filed a Preliminary Response to the
`Petition. Paper 7 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`“unless . . . the information presented in the petition . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.”
`
`After considering the information presented in the Petition, we
`determine that Petitioner has not established a reasonable likelihood that it
`would prevail with respect to any of the claims challenged in the Petition.
`Accordingly, we do not authorize an inter partes review to be instituted as to
`any challenged claim of the ’034 patent.
`
`A. Related Proceedings
`One or both parties identify, as matters involving or related to the
`
`’034 patent, Patent Trial and Appeal Board cases IPR2016-00058 (the ’034
`patent) and IPR2016-00056 (U.S. Patent No. 7,496,393), and Board of
`Patent Appeals and Interferences case Interference No. 105,471. Pet. 1;
`Paper 5, 3; see, e.g., Prelim. Resp. 1.
`
`Additionally, Patent Owner identifies several judicial and
`administrative matters concerning related patents. See Paper 5, 1–4.
`
`2
`
`
`
`IPR2016-00057
`Patent 8,560,034 B1
`
`
`B. The’034 Patent
`The ’034 patent pertains to the processing of measured signals, in the
`
`context of blood oxygen saturation systems, in a way “which facilitates
`minimizing the correlation between the primary signal portion and the
`secondary signal portion in order to produce a primary and/or secondary
`signal.” Ex. 1001, col. 1, ll. 15–29. “Complications arising in these
`measurements are often due to motion of the patient, both external and
`internal (muscle movement, vessel movement, and probe movement, for
`example), during the measurement process.” Id. at col. 2, ll. 22–26. Motion
`artifacts, introduced by patient movement, distort the measured signal. Id. at
`col. 3, ll. 5–8.
`
`A monitor for pulse oximetry saturation measurement uses two light
`emitting diodes (LEDs) that emit light at different wavelengths, for example,
`red (R) and infrared (IR). Id. at col. 4, l. 46–49, col. 33, ll. 58-65. The light
`passes through a portion of the body where blood flows, such as a finger,
`and is received by a photodetector positioned on the opposite side of the
`finger. Id. at col. 4, ll. 49–52, col. 33, ll. 58–62. The ’034 patent explains
`that “[t]he attenuated signals generally comprise both primary . . . and
`secondary (noise) signal portions.” Id. at col. 4, ll. 52–54. The “noise” of
`the secondary signal includes “venous oxygen saturation and other
`parameters.” Id. at col. 5, ll. 25–26. These other parameters of the
`secondary portion include “artifacts due to patient movement which causes
`the venous blood to flow in an unpredictable manner.” Id. at col. 4, ll. 31–
`38; see also id. at col. 34, l. 7–15 (the ’034 patent also referring to “[e]rratic
`motion induced noise”). According to the ’034 patent, where the two light
`signals are measured substantially simultaneously, the secondary signal
`
`3
`
`
`
`IPR2016-00057
`Patent 8,560,034 B1
`
`components are correlated to each other “because any random or erratic
`functions affect each measurement in nearly the same fashion” and the
`primary signal components are correlated to each other. Id. at col. 12, ll. 4–
`10.
`In the model of the ’034 patent, coefficients relating the two signal
`
`portions may be determined by minimizing the correlation between the
`primary and secondary signal portions. Id. at col. 5, ll. 19–29. In the
`method of claim 1, the two signals (e.g., red and infrared) are
`mathematically manipulated based on two assumptions. First, the model
`assumes that the amount of motion affecting each of the two light signals is
`the same because the two signals are measured so closely together in time.
`Id. at col. 64, ll. 43–44; see id. at col. 12, ll. 4–10 (“any random or erratic
`functions affect each measurement in nearly the same fashion.”). Second,
`the model assumes that the motion components of the two signals are
`proportional to each other. Id. at col. 64, ll. 45–46; see id. at col. 12, ll. 5–25
`(discussing proportionality constants between the secondary signal portions).
`
`C. The Claim
`Claims 1 and 5 are independent claims. Claim 1, reproduced below,
`
`is illustrative:
`1. A method for measuring saturation of a blood constituent
`in a patient comprising the steps of:
`
`irradiating said patient with electromagnetic radiation of
`two discrete, different wavelengths;
`
`sensing an intensity of said radiation for each of said
`wavelengths after it passes through a portion of said patient to
`produce first and second intensity signals including motion
`components; and
`
`determining said saturation by mathematically
`
`4
`
`
`
`IPR2016-00057
`Patent 8,560,034 B1
`
`
`manipulating said first and second intensity signals without
`subtracting said motion components and with the assumptions
`that
`
`i) an amount of motion is the same at the same
`
`time for each of said intensity signals, and
`
`ii) the motion components of said intensity signals
`are proportional to one another.
`Ex. 1001, col. 64, ll. 31–46. Independent claim 5 recites an apparatus
`having a “control means for determining said saturation.” Id. at col. 65,
`l. 48–col. 66, l. 11.
`
`D. Applied References
`
`Reference
`WO 92/15955
`Diab
`US 5,208,786
`Weinstein
`Admitted Prior Art in the ’034 patent
`
`Sept. 17, 1992
`May 4, 1993
`
`Exhibit No.
`Ex. 1003
`Ex. 1004
`Ex. 1001
`
`Petitioner relies also on the Declaration of Dr. Daniel van der Weide,
`
`dated October 20, 2015, (Ex. 1002) in support of Petitioner’s arguments.
`
`E. Asserted Ground of Unpatentability
`Petitioner asserts that claims 1, 5, and 6 are unpatentable under 35
`
`U.S.C. § 103(a) as obvious over Diab, Weinstein, and Admitted Prior Art.
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
`
`5
`
`
`
`IPR2016-00057
`Patent 8,560,034 B1
`
`Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted
`sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). Under the
`broadest reasonable construction standard, claim terms are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire patent disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`On this record and for purposes of this Decision, we determine that
`none of the claim terms require an express construction to resolve the
`dispositive issues discussed below.
`
`B. The Ground of Alleged Obviousness over
`Diab, Weinstein, and Admitted Prior Art
`Petitioner asserts that claims 1, 5, and 6 are obvious over Diab
`
`(Ex. 1003), Weinstein (Ex. 1004), and Admitted Prior Art (Ex. 1001).
`Pet. 26–60. Patent Owner opposes. Prelim. Resp. 41–55.
`
`Diab discloses a pulse oximeter that uses “an adaptive noise canceler
`that removes erratic motion-induced undesired signal portions i[n] a pulse
`oximeter.” Ex. 1003, 64–65.1 Figure 10 of Diab is reproduced below:
`
`
`1 Citations are to the page numbers of the underlying Diab reference rather
`than the page numbers of the exhibit.
`
`6
`
`
`
`IPR2016-00057
`Patent 8,560,034 B1
`
`
`
`Figure 10 depicts a pulse oximetry monitor incorporating a processor with
`an adaptive noise canceler. Id. at 21. LEDs 300 and 302 emit red and
`infrared wavelengths which pass through finger 310 and are received by
`photodetector 320. Id. at 66, 68. Photodetector 320 produces electronic
`signals corresponding to the attenuated red and infrared light signals. See id.
`at 66–67. After filtering and other processing, the signals are input to
`microprocessor 420 “for calculation of a noise reference signal via the
`processing technique of [Diab] and removal of undesired signal portions via
`an adaptive noise canceler.” Id. at 68–69.
`
`Weinstein pertains to a signal processing system including a plurality
`of detectors receiving a plurality of signals which are subjected to an
`unknown transfer function. Ex. 1004, col. 2, ll. 4–8. The plurality of signals
`received by the detectors contain components of multiple sources, e.g.,
`multiple microphones will have components from both the speaker and
`background noise. Id. at col. 1, ll. 11–19. Figure 7 of Diab is reproduced
`
`7
`
`
`
`IPR2016-00057
`Patent 8,560,034 B1
`
`below:
`
`
`Figure 7 depicts a speech enhancing and noise cancellation system using the
`signal processing circuit of Diab. Id. at col. 4, ll. 1–3. In the embodiment of
`Figure 7, the voice signals from individual 61 are separated from interfering
`noise signals from TV or radio 60. Id. at col. 12, ll. 58–67. The system
`utilizes microphone 54 located near the noise source and microphone 56
`located near the desired signal source from the individual. Id. Due to the
`room acoustics, both microphones pick up signals from both sources, thus
`each detected signal contains desired voice and undesired noise components.
`See id. at col. 12, ll. 67–68. “A processor receives the observed signals and
`estimates the components of the transfer function, which are used to produce
`a filter (for example, but not necessarily, an inverse filter) for reconstructing
`the input source signals.” Id. at col. 2, ll. 8–12. Figures 2 and 3 of Diab are
`reproduced below:
`
`8
`
`
`
`IPR2016-00057
`Patent 8,560,034 B1
`
`
`
`
`Figure 2 illustrates a general two channel system where H11, H12, H21, and
`H22 represent the transfer functions of four single-input single-output
`systems, and Figure 3 represents a schematic representation of H-1, the
`inverse of the estimated system of Figure 2. Id. at col. 3, ll. 56–60. The
`inputs to the system of Figure 2 are the original source signals, sa and sb,
`from the detectors, and the outputs of the inverse of the system (Figure 3)
`are s1 and s2, the reconstructed separated source signals processed by the
`filters. See id. at col. 2, ll. 21–24.
`
`Petitioner argues that Diab discloses the claimed inventions except for
`“mathematically manipulating said first and second intensity signals without
`subtracting said motion components.” Pet. 28. Petitioner relies on
`Weinstein for the missing aspect, arguing “this type of mathematical
`manipulation was already well known in the art for this type of signal
`model.” Id. at 26–27. Petitioner characterizes certain portions of the ’034
`patent specification as Admitted Prior Art and relies on those portions for
`the disclosure that it was well known in the art to determine oxygen
`saturation based on the ratio of the intensity of red and infrared light. See id.
`at 33–34 (citing Ex. 1001, col. 41, ll. 28–32, col. 61, ll. 38–39).
`
`Patent Owner argues that the proposed combination fails to disclose
`the claimed feature of determining saturation without subtraction. Prelim.
`Resp. 43. Specifically, Patent Owner argues that Weinstein discloses the use
`
`9
`
`
`
`IPR2016-00057
`Patent 8,560,034 B1
`
`of subtraction to determine the desired primary signal (id. at 41–42) and that
`Petitioner “endeavors to eliminate the required subtraction or
`‘reconstruction’ step of Weinstein by simply omitting it, arguing ‘there is no
`need to take the steps to reconstruct those signals’” (id. at 46 (quoting Pet.
`at 50)). Patent Owner points to Weinstein’s Figure 3 and the corresponding
`discussion of subtraction. Id. at 45 (quoting Ex. 1004, col. 7, ll. 9–16).
`
`We determine that Petitioner does not explain adequately and with the
`necessary specificity how the references’ teachings are proposed to be
`combined or why one would have combined the references as proposed.
`
`Petitioner initially appears to propose incorporating the entirety of
`Weinstein’s signal processing algorithm into Diab’s processor 420. See
`Pet. 38; id. at 38–39 (The resulting combination is Diab’s “microprocessor
`420 running Weinstein’s signal separation algorithm.”). For example, in
`arguing that Weinstein discloses the “control means” of claim 5, Petitioner
`relies on Weinstein’s disclosure of reconstructed source signals, s1 and s2,
`and a reconstruction filter. Id. at 50; see id. at 49 (arguing that an
`assumption of the ’034 patent is the same as Weinstein’s assumption used to
`produce the reconstruction filter). Petitioner, however, appears to propose
`that only a portion of the Weinstein algorithm be utilized in Diab. Petitioner
`states:
`
`Weinstein iterates through potential values to solve for
`the values in its matrix. ([Ex. 1004] at 5:55-6:15.) These
`values may be used to create in [sic] inverse filter for
`reconstructing the desired signals. (Id.; see also id. at 6:17-21.)
`However, when applied to Diab’s pulse oximeter, there is no
`need to take the steps to reconstruct those signals. Instead,
`solving for the matrix values relates the measured red and
`infrared signals to the arterial pulse signal such that one can
`
`10
`
`
`
`IPR2016-00057
`Patent 8,560,034 B1
`
`
`directly determine the arterial saturation, just as the ’034 patent
`teaches solving for ra in a matrix and then determining
`saturation from it. (Ex. 1002 at ¶¶ 78-80.)
`Pet. 50 (emphasis added, italicizing in original omitted). Thus, Petitioner
`also is proposing to modify Weinstein’s overall algorithm by omitting the
`steps related to the reconstruction filter. Diab, in describing Figure 3,
`explains that the reconstruction filter uses an inverse filter to reconstruct the
`desired source signals, s1 and s2, and that subtraction is involved in the
`process leading to the reconstructed source signals. Ex. 1004, col. 7, ll. 7–
`16. Petitioner does not explain adequately why one of ordinary skill in the
`art would incorporate only part of Weinstein’s algorithm into Diab’s
`processor. See Pet. 50; Ex. 1002 ¶ 80. Therefore, we are unpersuaded by
`Petitioner’s argument.
`
`Patent Owner further contests Petitioner’s position, arguing that
`Weinstein’s system—utilizing two detectors (e.g., microphones) with one
`primarily for noise and one primarily for the desired signal—is inapplicable
`to Diab’s pulse oximetry system utilizing a single detector. Prelim. Resp.
`42; see id. 49–55.
`
`We determine that Petitioner has not adequately and persuasively
`explained how Weinstein’s algorithm is compatible with Diab’s system such
`that the modification would yield the claimed subject matter—including the
`“manipulating . . . without subtracting” aspect—and that a person of
`ordinary skill in the art would have found it obvious to combine the two
`systems in the manner proposed.
`
`As Patent Owner asserts, Weinstein’s signal processing algorithm
`addresses the situation “where there is a single desired source signal and two
`microphones (or sensors) spaced apart in two different locations to detect the
`
`11
`
`
`
`IPR2016-00057
`Patent 8,560,034 B1
`
`source signal” but Diab applies to the situation where there are two sources
`and a single detector. Prelim. Resp. 51. Weinstein, through its algorithm,
`processes interfering signals detected by the two sensors. See Ex. 1004,
`col. 3, ll. 20–40; id. at col. 3, ll. 18–20 (Weinstein describing one
`embodiment: “The first microphone detects the desired speech signal with
`some noise, and the second microphone detects mainly the noise with some
`speech language.”). That interfering signal situation does not appear to be
`present in Diab’s system with a single detector which, according to
`Petitioner, receives two signals containing desired and undesired
`components correlated respectively across the two signals. See Pet. 28.
`
`Petitioner argues that both references disclose that their respective
`techniques may be used in electrocardiography and one would have been
`motivated to combine their teachings and “would have had a reasonable
`expectation of success.” Id. (citing Ex. 1002 ¶¶55–56).2 Pet. 36. Petitioner,
`however, acknowledges that “pulse oximetry differs somewhat from
`electrocardiography” but does not explain whether that difference is
`insignificant. See id. That the references disclose the common application
`of electrocardiograms does not persuade us that one of ordinary skill in the
`art would recognize that Weinstein’s specific algorithm, as opposed to signal
`processing generally, has applicability in Diab’s single-detector pulse
`oximetry system. Therefore, we are unpersuaded by Petitioner’s argument.
`
`
`2 We note that Petitioner’s declarant’s testimony regarding the applicability
`of signal processing to physiological monitoring contexts, such as pulse
`oximetry, relies on the teachings of the ’034 patent. Ex. 1002 ¶ 56. Such
`reliance suggests the opinion testimony is based on impermissible hindsight.
`
`12
`
`
`
`IPR2016-00057
`Patent 8,560,034 B1
`
`Accordingly, we find Petitioner has not demonstrated that there is a
`
`reasonable likelihood that it would prevail in showing that the subject matter
`of the challenged claims 1, 5, and 6 would have been obvious over Diab,
`Weinstein, and Admitted Prior Art.
`
`III. CONCLUSION
`We determine Petitioner has not demonstrated there is a reasonable
`
`likelihood of establishing the unpatentability of claims 1, 5, and 6 of the
`’034 patent.
`
`IV. ORDER
`For the foregoing reasons, it is
`
`ORDERED that the Petition is denied as to all challenged claims, and
`
`no trial is instituted.
`
`
`
`
`
`13
`
`
`
`IPR2016-00057
`Patent 8,560,034 B1
`
`For PETITIONER:
`Kathleen Daley
`Jason Stach
`Luke McCammon
`Arpita Bhattacharyya
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`kathleen.daley@finnegan.com
`jason.stach@finnegan.com
`luke.mccammon@finnegan.com
`arpita.bhattacharyya@finnegan.com
`
`
`
`For PATENT OWNER:
`
`Brenton R. Babcock
`Jarom D. Kesler
`Ted M. Cannon
`KNOBBE, MARTENS, OLSON & BEAR LLP
`2brb@knobbe.com
`2jzk@knobbe.com
`2tmc@knobbe.com
`
`14
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
