Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 14
`Filed: October 16, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00913
`Patent 9,651,533 B2
`____________
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 14
`Filed: October 16, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00913
`Patent 9,651,533 B2
`____________
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`
`
`IPR2019-00913
`Patent 9,651,533 B2
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`I. INTRODUCTION
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes review
`of claims 5, 7–10, 13, and 15–17 (“the challenged claims”) of U.S. Patent
`No. 9,651,533 B2 (Ex. 1001, “the ’533 patent”). Paper 1 (“Pet.”), 4. Omni
`MedSci Inc. (“Patent Owner”), filed a Preliminary Response. Paper 8
`(“Prelim. Resp.”). We have authority under 35 U.S.C. § 314. Upon
`consideration of the Petition and Preliminary Response we are persuaded
`that Petitioner has failed to demonstrate a reasonable likelihood that it would
`prevail in showing the unpatentability of at least one challenged claim of the
`’533 patent. Accordingly, we deny institution of inter partes review.
`B. Related Matters
`Petitioner and Patent Owner identify the following as matters that can
`affect or be affected by this proceeding: pending U.S. Patent Application
`Nos. 10/188,299, 10/172,523, 15/594,053, 16/015,737, and 16/241,628;
`Apple Inc. v. Omni MedSci Inc., IPR2019-00916 (PTAB); and Omni MedSci
`Inc. v. Apple Inc., 2-18-cv-00134-RWD (E.D.Tex).1 See Pet. xi; Paper 5, 1–
`2.
`
`
`1 This case has been transferred to the Northern District of California,
`however, has yet to be assigned a case number by that Court. See Paper 9, 1;
`Paper 11, 1; Ex. 1058, 9.
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`C. Evidence Relied Upon2
`
`Reference
`
`Publication
`Date
`Valencell 0933 U.S. 2012/0197093 A1 Aug. 2, 2012
`
`Valencell 0994 U.S. 2010/0217099 A1 Aug. 26, 2010
`
`Mannheimer
`
`U.S. 5,746,206
`
`May 5, 1998
`
`Carlson
`
`U.S. 2005/0049468 A1 Mar. 3, 2005
`
`Exhibit
`
`1005
`
`1006
`
`1008
`
`1009
`
`
`
`D. Asserted Grounds of Unpatentability5
`Claims Challenged
`Basis
`References
`5, 7–10, 13, and 15–17 § 103(a) Valencell 093 and Valencell 099
`5, 7–10, 13, and 15–17 § 103(a) Valencell 093, Valencell 099, and
`Carlson
`§ 103(a) Valencell 093, Valencell 099, and
`Mannheimer
`
`8, 9, 16, and 17
`
`
`2 Petitioner also relies upon the Declaration of Brian Anthony, Ph.D.,
`(Ex. 1003).
`3 Valencell is not listed as an inventor on the ’093 patent application
`publication. Nonetheless, we follow Petitioner’s convention and name the
`reference “Valencell 093.”
`4 Valencell is not listed as an inventor on the ’099 patent application
`publication. Nonetheless, we follow Petitioner’s convention and name the
`reference “Valencell 099.”
`5 Petitioner identifies the third ground as obviousness of claims 8, 9, 16, and
`17 over Valencell 093 and Valencell 099 in view of Mannheimer, with or
`without Carlson. See Pet. 4. We treat this as two separate grounds:
`(1) obviousness over Valencell 093, Valencell 099, and Mannheimer; and
`(2) obviousness over Valencell 093, Valencell 099, Carlson, and
`Mannheimer.
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`Claims Challenged
`8, 9, 16, and 17
`
`References
`Basis
`§ 103(a) Valencell 093, Valencell 099,
`Carlson, and Mannheimer
`
`II. ANALYSIS
`A. The ’533 Patent
`The ’533 patent is directed toward a physiological measurement
`system. The system is depicted in Figure 24 of the ’533 patent, which is
`reproduced below.
`
`
`Figure 24 is a schematic illustration of a physiological measurement system.
`Ex. 1001, 7:7–10. The system includes wearable measurement device 2401,
`personal device 2405, and cloud based server 2407. Id. at 26:49–27:20.
`The “wearable measurement device [is] for measuring one or more
`physiological parameters.” Id. at 5:35–37. A schematic illustration of such
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`a measurement device is shown in Figure 18 of the ’533 patent, which is
`reproduced below.
`
`
`
`Figure 18 is a schematic diagram of a device for measuring physiological
`parameters that may be used to “subtract out (or at least minimize the
`adverse effects of) light source fluctuations.” Id. at 18:43–46.
`Wearable measurement device 2401 includes light source 1801 made
`from a plurality of light emitting diodes that generate an output optical beam
`at one or more optical wavelengths, wherein at least one of the optical
`wavelengths is between 700 and 2500 nanometers. Id. at 5:37–43, 18:46–
`48. The light source can increase a signal-to-noise ratio by increasing either
`the LED intensity or pulse rate. Id. at 5:43–47. Wearable measurement
`device 2401 also includes a plurality of lenses that receive a portion of the
`output optical beam from the light source and deliver an analysis beam to a
`sample. Id. at 5:47–50. Lastly, wearable measurement device 2401 includes
`a receiver that receives at least a portion of the analysis beam that has been
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`reflected from or transmitted through the sample, and processes that signal
`to generate an output signal. Id. at 5:51–54.
`The physiological measurement system also includes personal device
`2405 having a wireless receiver, a wireless transmitter, a display, a
`microphone, a speaker, one or more buttons or knobs, a microprocessor and
`a touch screen. Id. at 5:54–59, 27:3–7. Personal device 2405 receives and
`processes at least a portion of the output signal generated by wearable
`measurement device 2401, and stores and displays the processed output
`signal. Id. at 5:59–61, 27:10–12. Personal device 2405 also transmits at
`least a portion of the processed output signal over a wireless transmission
`link to a remote device, such as an internet or “cloud” based server. Id. at
`5:61–63, 26:30–34, 27:12–15. Personal device 2405 can be “a smart phone,
`tablet cell phone, PDA, or computer,” or some “other microprocessor-based
`device.” Id. at 26:37–40, 26:49–55.
`The physiological measurement system also includes remote device
`2407 that receives the at least a portion of the processed output signal
`transmitted by personal device 2405 as an output status. Id. at 5:63–66,
`26:30–42, 27:12–15. Remote device 2407 processes the output status to
`generate and store processed data, and stores a history of the output status
`over a period of time. Id. at 5:66–6:1–3, 27:21–29, 27:34–37.
`B. Illustrative Claim
`Claim 13 of the ’533 patent is an independent and representative
`claim, and is reproduced below.
`13. A measurement system comprising:
`a wearable measurement device for measuring one
`or more physiological parameters, including a light
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`source comprising a plurality of semiconductor
`sources that are light emitting diodes [LEDs], the
`light emitting diodes configured to generate an
`output optical beam with one or more optical
`wavelengths, wherein at least a portion of the one
`or more optical wavelengths is a near-infrared
`wavelength between 700 nanometers and 2500
`nanometers,
`the light source configured to increase signal-to-
`noise ratio [SNR] by increasing a light intensity
`from at least one of the plurality of semiconductor
`sources and by increasing a pulse rate of at least
`one of the plurality of semiconductor sources;
`the wearable measurement device comprising a
`plurality of lenses configured to receive a portion
`of the output optical beam and to deliver an
`analysis output beam to a sample;
`the wearable measurement device further
`comprising a receiver configured to receive and
`process at least a portion of the analysis output
`beam reflected or transmitted from the sample and
`to generate an output signal, wherein the wearable
`measurement device receiver is configured to be
`synchronized to the light source;
`a personal device comprising a wireless receiver, a
`wireless transmitter, a display, a microphone, a
`speaker, one or more buttons or knobs, a
`microprocessor and a touch screen, the personal
`device configured to receive and process at least a
`portion of the output signal, wherein the personal
`device is configured to store and display the
`processed output signal, and wherein at least a
`portion of the processed output signal is
`configured to be transmitted over a wireless
`transmission link; and
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`a remote device configured to receive over the
`wireless transmission link an output status
`comprising the at least a portion of the processed
`output signal, to process the received output status
`to generate processed data and to store the
`processed data, and wherein the remote device is
`capable of storing a history of at least a portion of
`the received output status over a specified period
`of time.
`Ex. 1001, 30:46–31:20.
`Claim 5 is an independent claim that recites a measurement system
`that is substantially similar to the measurement system recited in claim 13,
`but does not require the light source, plurality of lenses, and receiver to be
`components of a wearable measurement device. Compare id. at 29:43–
`30:10, with id. at 30:46–31:20. Claims 7–10 depend from claim 5, and
`claims 15–17 depend from claim 13. Id. at 30:15–37, 32:1–18.
`C. Level of Ordinary Skill in the Art
`Petitioner, relying on the testimony of Dr. Anthony, identifies a
`person of ordinary skill in the art (“POSITA”) as someone who “would have
`[had] a good working knowledge of optical sensing techniques and their
`applications, and familiarity with optical system design and signal
`processing techniques.” Pet. 17; Ex. 1003 ¶ 35. Such a person, according to
`Petitioner, would have obtained such knowledge through “an undergraduate
`education in engineering (electrical, mechanical, biomedical, or optical) or a
`related field of study, along with relevant experience in studying or
`developing physiological monitoring devices . . . in industry or academia.”
`Pet. 17–18. Patent Owner does not offer an opinion on Petitioner’s
`definition, either agreeing or disagreeing, and does not offer a counter
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`definition of a person of ordinary skill in the art.
`On this record, we find Petitioner’s definition to be consistent with the
`problems and solutions disclosed in the patent and prior art of record. See,
`e.g., In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Accordingly,
`we accept that definition for purposes of this Decision.
`D. Claim Construction
`In inter partes reviews, we interpret a claim “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). Under this
`standard, we construe the claim “in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id. Only claim
`terms which are in controversy need to be construed and only to the extent
`necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`Petitioner requests construction of the terms “beam,” “plurality of
`lenses,” and “pulse rate.” Pet. 20–22. For the reasons discussed below,
`construction of these terms is not needed to resolve the fundamental
`controversy between the parties, i.e., whether Petitioner has demonstrated a
`reasonable likelihood of showing the unpatentability of claims 5, 7–10, 13,
`and 15–17. See Nidec, 868 F.3d at 1017.
`1. Light source
`Neither party requests construction of “a light source comprising a
`plurality of semiconductor sources that are light emitting diodes. . .
`configured to increase signal-to-noise ratio by increasing a light intensity
`from at least one of the plurality of semiconductor sources,” recited in
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`independent claims 5 and 13. A construction of the term is necessary,
`however, to resolve the parties’ dispute about whether Valencell 093
`discloses such a light source.
`The Specification provides scant support for the meaning of “a light
`source comprising a plurality of semiconductor sources that are light
`emitting diodes . . . configured to increase signal-to-noise ratio by increasing
`a light intensity from at least one of [a] plurality of semiconductor sources.”
`This exact phrase is repeated in two passages of the Specification, without
`further explanation of its meaning. See Ex. 1001, 5:10–14, 5:43–47.6
`Patent Owner argues that, in addition to one of the passages cited
`above, the ’533 patent supports an LED based light source increasing signal-
`to-noise by increasing LED light intensity. Prelim. Resp. 20 (citing Ex.
`1001, 4:15–17). The cited passage discloses “[m]ore light intensity can help
`to increase the signal levels, and, hence, the signal-to-noise ratio.” Ex. 1001,
`4:15–17. However, this disclosure appears in the context of discussing the
`difficulties encountered detecting certain signals “when a weak light source
`is used, such as a lamp.” Id. at 4:9–15.
`Elsewhere, the ’533 patent reinforces the notion of selecting a high
`intensity LED as a light source over a weak intensity lamp. See id. at 8:17–
`24 (“[I]n hyper-spectral imaging a lamp may be used as the light source.
`However . . . . it would be advantageous to have a broadband light source
`
`6 We note that these phrases were added to the Specification by an
`amendment dated July 6, 2016, the same date then pending claims 5 and 14
`(which issued as claims 5 and 13) were amended to contain the same
`limitation. See Ex. 1002, 495–496, 500–503. The applicant, in its remarks
`accompanying these amendments, did not indicate where they were
`supported by the Specification as originally filed. See id. at 505–507.
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`covering the SWIR [short wave infrared] that may be used in place of a
`lamp.”); 10:6–8 (“[U]sing a non-lamp based light source could lead to
`contact-free control and analysis of drugs.”), 19:36–46 (“Different light
`sources may be selected for the SWIR based on the needs of the application.
`Some of the features for selecting a particular light source include power or
`intensity. . . . Depending on the application, lamps [or] light emitting diodes
`(LEDs) . . . may be advantageously used.”), 19:50–66 (“Lamps may be used
`if low power or intensity of light is required in the SWIR. . . . LED’s can be
`used that have a higher power level in the SWIR wavelength range.”).
`These passages, which disclose the advantages of selecting a high intensity
`LED light source over a low intensity lamp, do not disclose increasing the
`intensity of at least one LED in a multi-LED based light source. Therefore,
`they are not relevant to the construction of the disputed claim term, which
`requires “a light source comprising a plurality of semiconductor sources that
`are light emitting diodes.” Id. at 30:48–50.
`Other passages of the ’533 patent disclose increasing the light
`intensity of a laser diode (LD) based light source, rather than an LED based
`light source, by combining the light output of the LDs. For example, the
`’533 patent discloses a “block diagram 1900 with building blocks for
`constructing the high power LDs” using “one or more diode bar stacks
`1901,” each of which may be “an array of several single emitter LDs.” Id. at
`20:51–55, Fig. 19. The brightness or intensity of this LD based light source
`“may be increased by spatially combining the beams from multiple stacks
`1903.” Id. at 20:59–60. This allows the power or intensity of the light
`source to be “increase[d] in multiples depending on the number of [laser]
`diodes multiplexed.” Id. at 21:14–17. These passages are also not relevant
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`to the construction of the disputed claim term, which requires a “light source
`comprising a plurality of semiconductor sources that are light emitting
`diodes,” and “increasing a light intensity from at least one of the plurality of
`semiconductor sources,” rather than by increasing light intensity by
`combining the light from a plurality of semiconductor sources. Id. at 30:48–
`50, 30:56–58.
`Given the scant disclosures in the Specification discussed above, for
`the purposes of this Decision, we construe “a light source comprising a
`plurality of semiconductor sources that are light emitting diodes . . .
`configured to increase signal-to-noise ratio by increasing a light intensity
`from at least one of [a] plurality of semiconductor sources” to mean “a light
`source containing two or more light emitting diodes (semiconductor
`sources), wherein at least one of the light emitting diodes has a variable
`intensity that can be increased in order to increase a signal-to-noise ratio.”
`This construction is supported by the Specification at column 5, lines 10
`through 14, and lines 43 through 47, and is consistent with the plain words
`used in the claim term at issue.7
`E. Overview of the Prior Art
`1. Valencell 093
`Valencell 093 discloses a wearable monitoring apparatus, such as an
`earpiece or earbud, having a sensor module that “includes an energy emitter,
`a detector, a filter, and at least one processor.” Ex. 1005 ¶ 6. “The energy
`emitter directs energy (e.g., optical energy . . .) at a target region of the
`subject and the detector detects an energy response signal” indicative of “a
`
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`7 See note 6, supra.
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`physiological condition of the subject.” Id. The “processor controls
`operations of the energy emitter, detector, and/or filter.” Id. ¶ 7.
`A system level diagram of Valencell 093’s wearable monitoring
`apparatus is shown in Figure 1, reproduced below.
`
`
`Figure 1 of Valencell 093 is a schematic illustration of a “filtering apparatus/
`method 100.” Id. ¶ 107. “A pulsed driving circuit 101 is used to drive at
`least one energy emitter 102 at one or more pulsed frequencies to interrogate
`at least one target region of . . . medium 130 with . . . pulsed energy 110.”
`Id. Energy emitter 102 can include “one or more optical sources,” such as
`LEDs, “emitting one or more optical wavelengths,” such as “UV, visible,
`and IR wavelengths.” Id. ¶¶ 9, 109.
`The optical energy reaching medium 130 “generate[s] at least one
`energy response signal 111, such as an optical scatter signal 111.” Id. ¶ 107.
`Optical scatter signal 111 “is detected by at least one detector 103,
`configured to detect energy . . . in the form of optical energy scattered from
`the medium 130.” Id. The output of detector 103 is “sent to at least one
`analog-to-digital converter (ADC) 105 and the digitized output may be sent
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`to at least one interference filter 106 . . . to remove the effects of time-
`varying environmental interference 140.” Id.
`Pulsed driving circuit 101 modulates the intensity of pulsed optical
`energy 110 “such that the intensity is time-varying with at least two states,
`preferably an on state and an off state.” Id. ¶ 108. “A first optical
`interaction response is obtained by at least one detector 103 . . . when the
`pulsed optical energy 110 is in the on state,” and a “second energy response
`. . . is obtained by the optical detector 103 when the pulsed optical energy
`110 is in the off state.” Id. “The first and second energy response signals
`. . . are processed via an interference filter 106 to produce a processed
`energy response signal.” Id. Interference filter 106 “removes time-varying
`environmental interference caused by an interferant, such as sunlight,
`ambient light, airflow, temperature, etc.” Id. “The output of the interference
`filter 106 is then processed by a signal extraction filter 107 to accurately
`extract at least one physiological property of the subject.” Id.
`2. Valencell 099
`Valencell 099 discloses “a method of monitoring the health of one or
`more subjects [by] receiving physiological . . . information from each
`subject via respective portable monitoring devices.” Ex. 1006 ¶ 14. Each
`monitoring device contains a physiological sensor “to detect and/or measure
`physiological information from the subject” that may be “analyzed locally
`via the monitoring device or may be transmitted to a location geographically
`remote from the subject for analysis.” Id. The monitoring device may be a
`“headset, and earbud of a headset, or another portable device.” Id. ¶ 7. The
`monitoring device can “transmit information wirelessly to a recording
`device, such as . . . a cell phone, a personal digital assistant (PDA), and/or a
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`computer” that is “capable of processing and organizing the data into
`meaningful displays.” Id. ¶ 18. This allows a user to “monitor heath . . .
`data in real-time, and [to] access records of collected data throughout the
`day, week, month, etc., by observing charts and data through an audio-visual
`display.” Id.
`Valencell 099’s health monitoring system is shown in Figure 2, which
`is reproduced below.
`
`
`Figure 2 of Valencell 099 is a “block diagram of a telemetric network for
`health . . . monitoring through portable telemetric monitoring devices.” Id.
`¶ 21. The network consists of portable or wearable sensor module 21,
`portable telecommunication device 22, transmission system 23, user
`interface 24, personal database 25, and anonymous database 26. Id. ¶ 94.
`“The wearable sensor module 21 communicates wirelessly with the portable
`telecommunication device 22,” which can be “any portable device, such as a
`cell phone . . . PDA, laptop computer, Blackberry . . . or other portable,
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`telemetric device.” Id. ¶ 96. “[T]he main purpose of the portable
`telecommunication device is to transmit the local wireless signal from the
`sensor module 21 over longer distances.” Id. Portable telecommunication
`device 22 may contain user interface 24 to allow “data from the wearable
`sensor module 21 [to] be stored, analyzed, summarized, and displayed.” Id.
`¶ 97. Portable telecommunication device 22 also “sends/receives wireless
`information directly to/from a transmission system 23 for transmission to a
`database (such as personal database 25 and/or anonymous database 26) for
`storage, analysis, and retrieval of data.” Id. ¶ 98. The database is “typically
`located far away from the user and telecommunication module,” and
`information from the wearable sensor module 21 and telecommunication
`device 21 is “sent to [the] database through the Internet.” Id.
`3. Carlson
`Carlson discloses an “optical pulsoximetry [device] used for non-
`invasive measurement of pulsation and oxygen saturation in arterial human
`or animal blood.” Ex. 1009 ¶ 2. The device measures the light “absorption
`of reduced (Hb)—and oxidized (HbO2) h[e]moglobin at two optical
`wavelengths, where the relative absorption coefficients differ significantly.”
`Id. ¶ 3. Figure 2 of Carlson is reproduced below.
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`Figure 2 of Carlson is a schematic illustration of an ear clip sensor 1 of a
`pulsoximeter device. Id. ¶¶ 33, 49. Sensor 1 includes light source 15, which
`transmits light beam 8 through a patient’s earlobe 2, and light detector 11 to
`detect the transmitted light. Id. ¶ 49. Light source 15 emits light at two
`wavelengths—660nm and 890nm—and can consist of two LEDs. Id. ¶ 50.
`Carlson’s pulsoximeter can be used to “survey the heath condition of
`a person or an animal [that] is mobile,” and is “not restricted for use in, e.g.,
`a hospital.” Id. ¶ 72. Carlson teaches that “standard pulsoximeter sensors
`suffer from signal instability and insufficient robustness versus
`environmental disturbances.” Id. ¶ 4. For example, when a pulsoximeter
`sensor is worn by a person driving along a tree-lined avenue, the sensor will
`receive sunlight “at a certain frequency,” such that “every time when passing
`a tree, sunlight is attenuated and between the trees sunlight is influencing the
`measurement of the pulsoximeter sensor.” Id. ¶ 68. To address such
`problems, Carlson’s pulsoximeter includes “optical and/or electronic means
`for increasing the Signal-to-Noise ratio (S/N) . . . of a pulsoximeter sensor
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`for robust application of pulsoximetry in telemedicine- and near patient
`testing applications in rough (optical) environmental conditions.” Id. ¶ 10.
`In particular, the device’s LEDs emit light “not as a current or continuous
`light but as pulsed light.” Id. ¶ 69. The device also uses “AC-Coupling or
`Lock-In Amplification (synchronous detection) . . . to temporarily modulate
`the amplitude of the optical radiation of . . . the LED at a carrier frequency f0
`in order to shift the power spectrum of the pulsoximeter signals into a higher
`frequency range.” Id. ¶ 20. Modulation frequency f0 is chosen so that “it is
`outside the frequency spectrum of sunlight and of ambient light.” Id. ¶ 69.
`This allows the pulsoximeter signals to be easily discriminated from
`environmental signals, such as variable amounts of sunlight and ambient
`light, and “increas[es] significantly the Signal-to-Noise and Signal-to-
`Background ratio.” Id.
`Carson further discloses the pulsoximeter sensor can be wirelessly
`connected to “a special unit worn by [a] person or patient,” where “a signal
`is generated if [a] measured value is not within a predetermined range.” Id.
`¶¶ 77–78. The generated signal can be “transmitted to a respective person,
`to a medical doctor, to a hospital, etc.” Id. ¶ 78. The pulsoximeter can also
`include a “GPS device which at any time gives the location of the person
`using the pulsoximetric sensor monitoring configuration.” Id.
`4. Mannheimer
`Mannheimer discloses a pulse oximetry device that “non-invasively
`measure[s] oxygen saturation of arterial blood flow in vivo.” Ex. 1008,
`1:10–13. Mannheimer’s device performs a “pulsed oximetry measurement
`[that] isolates arterial saturation levels for particular ranges of tissue layers
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`. . . by utilizing multiple spaced detectors and/or emitters.” Id. at 2:1–6.
`Figure 1A of Mannheimer is reproduced below.
`
`
`Figure 1A of Mannheimer is a schematic diagram of a first embodiment of a
`pulse oximeter having one emitter 16 and two detectors 20/24. Id. at 2:40–
`42. Emitter 16 can be a single LED or multiple LEDs collocated to simulate
`a single point source. Id. at 3:13–18. Emitter 16 is separated from detector
`20 by a first distance r1, and is separated from detector 24 by a second
`distance r2. Id. at 3:23–24. Light from emitter 16 is scattered by skin layer
`14 and deeper skin layer 12, and reaches detectors 20/24 via respective paths
`18/22. Id. at 3:18–20. Mannheimer calculates the blood oxygen
`concentration in skin layer 12 from the intensity of light detected at detectors
`20/24 at two different times and two different wavelengths. Id. at 3:35–4:63.
`In addition to the embodiment shown in Figure 1A, Mannheimer
`discloses a second embodiment of a pulse oximeter in Figure 1B, reproduced
`below.
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`Figure 1B of Mannheimer is a schematic diagram of a second embodiment
`of a pulse oximeter having two emitters 16/17 and one detector 24. Id. at
`2:43–44, 3:37–39. As shown in Figure 1B, emitter 17 is separated from
`detector 24 by a first distance r1, and emitter 16 is separated from detector
`24 by a second distance r2. Mannheimer discloses that “[t]hose of skill in
`the art will appreciate that the operation” of the second embodiment shown
`in Figure 1B “is similar to that described above” in reference to the first
`embodiment shown in Figure 1A. Id. at 5:58–62.
`F. Patentability of claims 5, 7–10, 13, and 15–17
`Petitioner argues claims 5, 7–10, 13, and 15–17 are unpatentable as
`
`obvious over the combination of Valencell 093 and Valencell 099, and over
`the combination of Valencell 093, Valencell 099, and Carlson. Pet. 23–69.
`Petitioner further argues claims 8, 9, 16, and 17 are unpatentable as obvious
`over the combination of Valencell 093, Valencell 099, and Mannheimer, and
`over the combination of Valencell 093, Valencell 099, Carlson, and
`Mannheimer. Id. at 69–75.
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`Independent claim 13 recites a measurement system comprising “a
`light source comprising a plurality of semiconductor sources that are light
`emitting diodes . . . configured to increase signal-to-noise ratio by increasing
`a light intensity from at least one of the plurality of semiconductor sources.”
`Ex. 1001, 30:46–58. Claim 5, the only other independent challenged claim,
`recites a measurement system having the same light source. Compare id. at
`29:43–53, with id. at 30:46–58. As discussed above, we construe this
`limitation to mean “a light source containing two or more light emitting
`diodes (semiconductor sources), wherein at least one of the light emitting
`diodes (semiconductor sources) has a variable intensity that can be increased
`in order to increase a signal-to-noise ratio.”
`Petitioner argues, in each of the grounds presented, that Valencell 093
`discloses a light source “configured to increase signal-to-noise ratio by
`increasing a light intensity from at least one of the plurality of
`semiconductor sources.” See Pet. 36–37, 55; id. at 64–69 (relying on
`Valencell 093 to teach increasing signal-to-noise ratio by increasing the
`intensity of at least one LED, and Carlson to teach increasing signal-to-noise
`ratio by increasing the pulse rate of at least one LED); id. at 69–74 (relying
`on Valencell 093 to teach increasing signal-to-noise ratio by increasing the
`intensity of at least one LED). Specifically, Petitioner argues that Valencell
`093 discloses a Bluetooth headset having a physiological sensor that
`includes one or more LED emitters 102. Id. at 33–34 (citing Ex. 1005 ¶¶ 6,
`38, 104, 108, Figs. 1, 14). Petitioner further argues that LED emitters 102
`are controlled by a processor such that “the intensity of the optical emitter
`102 may be increased to increase the ratio of physiological optical scatter
`111 from blood vessels with respect to unwanted sunlight.” Id. at 36 (citing
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`Ex. 1005 ¶¶ 7, 107, 117; quoting id. ¶ 123). Therefore, Petitioner argues,
`Valencell 093 teaches increasing LED light intensity to increase the signal-
`to-noise ratio as required by claims 5 and 13. Id. at 36–37.
`Patent Owner argues Valencell 093 fails to disclose increasing light
`intensity to increase the signal-to-noise ratio. Prelim. Resp. 23–25. Rather,
`Patent Owner argues, Valencell 093’s “disclosure of increasing intensity
`refers to a design process where a human sets a fixed light intensity value,
`not the claimed configuration in which the light source of the sensor module
`207 increases light intensity to increase the SNR.” Id. at 24. In particular,
`Patent Owner argues that Valencell 093 teaches using an “interference filter
`106 . . . to remove the effects of time-varying environmental interference
`140,” and that such filters “may reduce ‘the amount of optical scatter 111
`(FIG. 1) of interest from the medium 130.’” Id. at 23–24 (quoting Ex. 1005
`¶¶ 107, 123). Therefore, Patent Owner argues, Valencell 093 teaches
`“designing the emitter 102 to emit light at a higher intensity ‘[t]o offset this
`unwanted reduction in optical scatter 111.’” Id. at 24 (quoting Ex. 1005
`¶ 123). That is, Patent Owner argues Valencell 093 teaches selecting a filter
`106 to remove sunlight, and selecting an LED of sufficient intensity to offset
`the attenuation of LED light intensity caused by filter 106.
`We are persuaded by Patent Owner’s argument. Valencell 093
`discloses an embodiment in which an optical filter 710 “serve[s] as . . . an
`attenuation filter.” Ex. 1005 ¶ 123. Regarding this embodiment, Valencell
`093 explains: “Because sunlight is so powerful, it may be beneficial to
`reduce sunligh
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