Trials@uspto.gov
`571-272-7822
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`Paper No. 13
`Filed: November 6, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`IPR2019-00914
`Patent 9,861,286 B1
`____________
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 13
`Filed: November 6, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`IPR2019-00914
`Patent 9,861,286 B1
`____________
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00914
`Patent 9,861,286 B1
`
`
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 16, 17, 19, and 20 (“the challenged claims”) of U.S. Patent
`No. 9,861,286 B1 (Ex. 1001, “the ’286 patent”). Paper 1 (“Pet.”), 3. Omni
`MedSci Inc. (“Patent Owner”), filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”). With Board pre-authorization (Paper 9), Petitioner filed a
`Reply (Paper 10, “Reply”) and Patent Owner filed a Sur-Reply (Paper 12,
`“Sur-Reply”). We have jurisdiction under 35 U.S.C. § 314.
`Based on the information presented, for the reasons that follow, we
`find that Petitioner demonstrates a reasonable likelihood that it would
`prevail at trial in showing the unpatentability of at least one challenged
`claim of the ’286 patent. Accordingly, we institute inter partes review of all
`challenged claims on all grounds of unpatentability raised in the Petition.
`
`I. BACKGROUND
`A. Related Matters
`The parties agree that Patent Owner asserts the ’286 patent against
`Petitioner in two district court actions: Omni MedSci Inc. v. Apple Inc., 2-
`18-cv-00134-RWD (E.D. Tex.); and Omni MedSci Inc. v. Apple Inc., 2-18-
`cv-00429-RWD (E.D. Tex.).1 See Pet. xi; Paper 3, 1–2.
`
`
`1 The district court cases recently were transferred to the Northern District
`of California. Paper 8, 1; see Sur-Reply 1 (citing Ex. 2013, 33; Ex. 1057, 1).
`The first identified action forms the basis for Patent Owner’s contention
`(discussed infra pp. 33–35) that the Board should issue a discretionary
`denial under 35 U.S.C. § 314(a) based on the advanced stage of a parallel
`district court proceeding. Prelim. Resp. 4 (citing Ex. 1004). That case has
`been transferred to “Judge Gonzalez Rogers,” but no “schedule for the
`remaining briefs or a trial date” has been set. Sur-Reply 2.
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`2
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`IPR2019-00914
`Patent 9,861,286 B1
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`The ’286 patent is the subject of a second petition in IPR2019-00911
`filed by Petitioner on the same day as the instant Petition. Concurrently
`herewith, we file a decision denying institution of inter partes review in that
`related proceeding. We previously denied Petitioner’s request for review in
`IPR2019-00910 (Paper 16 in that proceeding) and granted Petitioner’s
`request in IPR2019-00917 (Paper 14 in that proceeding), both of which,
`according to Petitioner, relate to a patent in the same family as the ’286
`patent. Pet. xi.
`
`B. Evidence Relied Upon
`
`Reference
`US 6,505,133 B1
`
`Hanna
`
`Mannheimer
`
`US 5,746,206
`
`Jan. 7, 2003
`
`May 5, 1998
`
`Date
`
`Exhibit
`
`1007
`
`1008
`
`1009
`
`1011
`
`Carlson
`
`US 2005/0049468 A1
`
`Mar. 3, 2005
`
`Lisogurski
`
`US 9,241,676 B2
`
`May 31, 20122
`
`
`Petitioner also relies upon the Declaration of Brian Anthony, Ph.D.,
`
`(Ex. 1003). Based on information provided in his Declaration (Ex. 1003
`¶¶ 2–9) and Curriculum Vitae (Ex. 1053), for purposes of this Decision only,
`we determine that Dr. Anthony is qualified to opine about the level of
`ordinary skill in the art. Patent Owner is free to oppose this preliminary
`determination in a timely filed Response.
`
`
`
`
`2 Petitioner relies on the filing date of Lisogurski to establish its status as
`prior art. See Pet. 20.
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`3
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`C. Asserted Grounds of Unpatentability
`
`Claims Challenged
`16, 17, 19, and 20
`16, 17, 19, and 20
`20
`
`35 U.S.C. §
`103
`103
`103
`
`References
`Lisogurski and Carlson
`Lisogurski, Carlson, and Hanna
`Lisogurski, Carlson, and
`Mannheimer with or without Hanna
`
`
`D. Overview of the ’286 Patent
`The ’286 patent is titled “Short-Wave Infrared Super-Continuum
`Lasers for Early Detection of Dental Caries.” Ex. 1001, code (54). The
`invention relates to “[a] wearable device for use with a smart phone or
`tablet” that includes light emitting diodes (“LEDs”) “for measuring
`physiological parameters by modulating the LEDs and generating a near-
`infrared multi-wavelength optical beam.” Ex. 1001, code (57). “At least
`one LED emits at a first wavelength having a first penetration depth and at
`least another LED emits at a second wavelength having a second penetration
`depth into tissue.” Id. Lenses “deliver the optical beam to . . . tissue, which
`reflects the first and second wavelengths. A receiver is configured to
`capture light while the LEDs are off and while at least one of the LEDs is
`on.” Id. The receiver also is configured “to difference” the “corresponding
`signals to improve a signal-to-noise ratio of the optical beam reflected from
`the tissue. The signal-to-noise ratio is further increased by increasing light
`intensity of at least one of the LEDs.” Id. Further, the device may generate
`“an output signal representing a non-invasive measurement on blood within
`the tissue.” Id.
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`The Specification of the ’286 patent describes a device that employs
`near-infrared light, that is, light in the spectrum between approximately 700
`nanometers to about 2500 nanometers, to provide non-invasive and non-
`contact detection of dental caries in teeth. Id. at 2:62–3:14, 3:30–42, 6:7–9,
`6:31–43. The Specification also describes the use of a light to determine
`blood flow and blood constituents in blood vessels. Id. at 8:67–9:4; see id.
`at 16:3–1 (“In one embodiment shown in FIG. 6A, the dorsal of the hand
`600 may be used for measuring blood constituents or analytes.”). This light
`is provided in an input beam generated by a plurality of LEDs. Id. at code
`(57), 5:46–54. A sample of tissue, such as skin or teeth, reflects at least a
`portion of the input optical beam and a receiver receives the reflected beam
`to generate an output signal representing, at least in part, a non-invasive
`measurement on blood contained within the sample. Id. at code (57), 5:3–
`13, 39:43, 6:4–17. The Specification further describes, and the claimed
`invention requires, a light source that is “configured to further improve the
`signal-to-noise ratio of the input optical beam reflected from the tissue by
`increasing the light intensity relative to the initial light intensity from at least
`one of the LEDs.” Id. at 30:15–18 (claim 1); see id. at code (57), 5:14–18,
`6:17–21 (describing that configuration). Figure 1 is illustrative and
`reproduced below:
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`Ex. 1001, Fig. 1. Figure 1 is an illustration of the structure of tooth 100, and
`further illustrates a system that includes light source 111, transmission
`spectrometer, receiver, or camera 112, and reflectance spectrometer, receiver
`or camera 113. Id. at 6:64, 13:13–37.
`As shown in Figure 1, light from light source 111 is directed towards
`tooth 100 with crown 101 and root 102. Id. at 13:13–37. A reflectance
`measurement is taken by detecting the reflectance at reflectance
`spectrometer/receiver/camera 113. Id. An output signal includes a
`measurement on blood contained within the tissue. Id. at code (57), 4:24–
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`27. The light source is configured to improve a signal-to-noise ratio of the
`optical beam reflected from the tissue by increasing the light intensity of the
`light source from an initial light intensity to an increased light intensity. Id.
`at code (57), 3:56–60, 4:12–24, 51–55, 5:12–16, 30:15–18. The
`Specification further discloses “change detection schemes” that “may be
`used, where the detection system captures the signal with the light source on
`and with the light source off. . . . Then, the signal with and without the light
`source is differenced. This may enable the sun light changes to be
`subtracted out.” Id. at 24:20–26.
`E. Illustrative Claim
`Claim 16 of the ’286 patent, reproduced below, is the only challenged
`independent claim and illustrates the subject matter at issue.
`16. A wearable device for use with a smart phone
`or tablet, the wearable device comprising:
`a measurement device including a light
`source comprising a plurality of light emitting
`diodes (LEDs) for measuring one or more
`physiological parameters, the measurement device
`configured to generate, by modulating at least one
`of the LEDs having an initial light intensity, an
`optical beam having a plurality of optical
`wavelengths, wherein at least a portion of the
`plurality of optical wavelengths is a near-infrared
`wavelength between 700 nanometers and 2500
`nanometers;
`the measurement device comprising one or
`more lenses configured to receive and to deliver a
`portion of the optical beam to tissue, wherein the
`tissue reflects at least a portion of the optical beam
`delivered
`to
`the
`tissue, and wherein
`the
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`measurement device is adapted to be placed on a
`wrist or an ear of a user;
`the measurement device further comprising a
`receiver configured to:
`capture light while the LEDs are off
`and convert the captured light into a first
`signal and
`capture light while at least one of the
`LEDs is on and convert the captured light into
`a second signal, the captured light including
`at least a portion of the optical beam reflected
`from the tissue;
`to
`the measurement device configured
`improve a signal-to-noise ratio of the optical beam
`reflected from the tissue by differencing the first
`signal and the second signal;
`the light source configured to further improve
`the signal-to-noise ratio of the input optical beam
`reflected from the tissue by increasing the light
`intensity relative to the initial light intensity from at
`least one of the LEDs;
`the measurement device further configured to
`generate an output signal representing at least in
`part a non-invasive measurement on blood
`contained within the tissue; and
`wherein the receiver includes a plurality of
`spatially separated detectors, wherein at least one
`analog to digital converter is coupled to the spatially
`separated detectors.
`Ex. 1001, 29:33–30:25.
`
`
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`II. ANALYSIS
`A. Person of Ordinary Skill in the Art
`Petitioner asserts:
`A person of ordinary skill in the art (“skilled person”)
`would have a good working knowledge of optical sensing
`techniques and their applications, and familiarity with optical
`system design and signal processing techniques. That
`knowledge would have been gained via 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 (e.g., non-invasive optical biosensors) in industry or
`academia.
`Pet. 15 (citing Ex. 1003 ¶ 35). Petitioner further asserts, “[t]his description
`is approximate; varying combinations of education and practical experience
`also would be sufficient.” Id. Patent Owner does not contest or discuss this
`description in the Preliminary Response.
`For purposes of this Decision, we adopt Petitioner’s proposed
`definition because it is consistent with the level of skill reflected in the
`asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001) (the prior art may reflect an appropriate level of skill in the art).
`Patent Owner is free to dispute that issue in a timely filed Response.
`
`B. Claim Construction
`In an inter partes review, we interpret claim terms 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). Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`and Appeal Board, 83 Fed. Reg. 51,340, 51,343 (Oct. 11, 2018) (amending
`37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37
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`C.F.R. § 42.100(b) (2019)). Under that 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 in dispute need be construed
`and then 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). The parties discuss possible claim constructions for the
`terms “beam” (Pet. 17–18; Prelim. Resp. 10–11); “optical beam” (Prelim.
`Resp. 10–11); “one or more lenses” (Pet. 18–19; Prelim. Resp. 11–12); and
`“modulating at least one of the LEDs” (Pet. 19–20; Prelim. Resp. 12–14).
`With respect to the term “modulating at least one of the LEDs,”
`Petitioner and Patent Owner both propose that we use the construction
`adopted by the District Court in the Eastern District of Texas, namely
`“varying the amplitude, frequency, or phase of the light produced by at least
`one of the LEDs to include information.” Pet. 16–17; Prelim Resp. 12–14.
`In analyzing this term, the District Court found “modulation includes
`information about the source of the light” because the Specification
`discloses “[t]he ‘optical light’ and or ‘optical beam’ and or ‘light beam’ may
`be modulated or unmodulated, which also means that they may or may not
`contain information.” Ex. 2007, 15 (quoting Ex 1001, 8:27–29). Thus,
`according to the District Court, “under the customary meaning of
`‘modulating,’ pulsing may add information by turning the light on and off.”
`Id. at 16. We accept this construction as proposed by both parties, because
`the construction is consistent with the Specification and, as explained by the
`District Court, includes pulsing a light source to turn it on and off.
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`We determine at this time that no other claim terms require
`construction in order to complete our analysis.
`
`C. Overview of the Prior Art
`1. Lisogurski
`Lisogurski discloses a “physiological monitoring system [that]
`monitor[s] one or more physiological parameters of a patient . . . using one
`or more physiological sensors.” Ex. 1011, 3:44–46. The physiological
`sensors may include a “pulse oximeter [that] non-invasively measures the
`oxygen saturation of a patient’s blood.” Id. at 3:62–64. The pulse oximeter
`includes “a light sensor that is placed at a sight on a patient, typically a
`fingertip, toe, forehead, or earlobe.” Id. at 4:6–7. The light sensor “pass[es]
`light through blood perfused tissue and photoelectrically sense[s] the
`absorption of the light in the tissue.” Id. at 4:8–10. The light sensor emits
`“one or more wavelengths [of light] that are attenuated by the blood in an
`amount representative of the blood constituent concentration,” and may
`include red and infrared (IR) wavelengths of light. Id. at 4:42–48. Figure 3
`of Lisogurski is reproduced below.
`
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`Patent 9,861,286 B1
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`Figure 3 of Lisogurski is “a perspective view of a physiological monitoring
`system.” Id. at 2:23–25. The system includes sensor 312, monitor 314, and
`multi-parameter physiological monitor 326. Id. at 17:35–36, 18:44–45.
`Sensor 312 includes “one or more light sources 316 for emitting light at one
`or more wavelengths,” and detector 318 for “detecting the light that is
`reflected by or has traveled through the subject’s tissue.” Id. at 17:37–42.
`Sensor 312 may have “[a]ny suitable configuration of light source 316 and
`detector 318,” and “may include multiple light sources and detectors [that]
`may be spaced apart.” Id. at 17:42–45. Light source 316 may include
`“LEDs of multiple wavelengths, for example a red LED and an IR [LED].”
`Id. at 19:25–27. Sensor 312 may be “wirelessly connected to monitor 314.”
`Id. at 17:57–59.
`
`Monitor 314 “calculate[s] physiological parameters based at least in
`part on data relating to light emission . . . received from one or more sensor
`units such as sensor unit 312.” Id. at 17:59–62. Monitor 314 includes
`“display 320 . . . to display the physiological parameters,” and “speaker 322
`to provide an audible . . . alarm in the event a subject’s physiological
`parameters are not within a predefined normal range.” Id. at 18:3–10.
`Monitor 314 is “communicatively coupled to multi-parameter physiological
`monitor 326” (“MPPM 326”) and “may communicate wirelessly” with
`MPPM 326. Id. at 18:58–61. Monitor 314 may also be “coupled to a
`network to enable the sharing of information with servers or other
`workstations.” Id. at 18:62–65.
`Multi-parameter physiological monitor 326 may also “calculate
`physiological parameters and . . . provide a display 328 for information from
`monitor 314.” Id. at 18:49–52. MPPM 326 may also be “coupled to a
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`network to enable the sharing of information with servers or other
`workstations.” Id. at 18:62–65. The remote network servers may also “be
`used to determine physiological parameters,” and may display the
`parameters on a remote display, display 320 of monitor 314, or display 328
`of MPPM 326. Id. at 20:53–58. The remote servers may also “publish the
`data to a server or website,” or otherwise “make them available to a user.”
`Id. at 20:58–60.
`Lisogurski discloses that the monitoring system shown in Figure 3,
`described above, “may include one or more components of physiological
`monitoring system 100 of FIG. 1.” Id. at 17:32–35. Lisogurski further
`discloses that although “the components of physiological monitoring system
`100 . . . are shown and described as separate components. . . . the
`functionality of some of the components may be combined in a single
`component,” and “the functionality of some of the components . . . may be
`divided over multiple components.” Id. at 15:66–16:8. Figure 1 of
`Lisogurski is reproduced below.
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`Figure 1 of Lisogurski is a “block diagram of an illustrative physiological
`monitoring system.” Ex. 1011, 2:11–13. The system includes “sensor 102
`and monitor 104 for generating and processing physiological signals of a
`subject.” Id. at 10:44–46. Sensor 102 includes “light source 130 and
`detector 140.” Id. at 10:48–49. Light source 130 includes “a Red light
`emitting source and an IR light emitting source,” such as Red and IR
`emitting LEDs, with the IR LED emitting light with a “wavelength between
`about 800 nm and 1000 nm.” Id. at 10:52–58. Detector 140 “detect[s] the
`intensity of light at the Red and IR wavelengths,” converts them to an
`electrical signal, and “send[s] the detection signal to monitor 104, where the
`detection signal may be processed and physiological parameters
`determined.” Id. at 11:9–10, 11:20–23.
`Monitor 104 includes user interface 180, communication interface
`190, and control circuitry 110 for controlling (a) light drive circuitry 120, (b)
`front end processing circuitry 150, and (c) back end processing circuitry 170
`via “timing control signals.” Id. at 11:33–38, Fig. 1. Light drive circuitry
`120 “generate[s] a light drive signal . . . used to turn on and off the light
`source 130, based on the timing control signals.” Id. at 11:38–40. The light
`drive signal “control[s] the intensity of light source 130 and the timing of
`when the light source 130 is turned on and off.” Id. at 11:50–54. Front end
`processing circuitry 150 “receive[s] a detection signal from detector 140 and
`provides one or more processed signals to back end processing circuitry
`170.” Id. at 12:42–45. Front end processing circuitry 150 also
`“synchronize[s] the operation of an analog-to-digital converter and a
`demultiplexer with the light drive signal based on the timing control
`signals.” Id. at 11:43–46.
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`Back end processing circuitry 170 “use[s] the timing control signals to
`coordinate its operation with front end processing circuitry 150.” Id. at
`11:46–49. Backend processing circuitry 170 includes processor 172 and
`memory 174, and “receive[s] and process[es] physiological signals received
`from front end processing circuitry 150” in order to “determine one or more
`physiological parameters.” Ex. 1011, 14:56–57, 14:60–64. Backend
`processing circuitry 170 is “communicatively coupled [to] user interface 180
`and communication interface 190.” Id. at 15:16–18. User interface 180
`includes “user input 182, display 184, and speaker 186,” and may include “a
`keyboard, a mouse, a touch screen, buttons, switches, [and] a microphone.”
`Id. at 15:19–22. Communication interface 190 allows “monitor 104 to
`exchange information with external devices,” and includes transmitters and
`receivers to allow wireless communications. Id. at 15:43–44, 15:48–57.
`
`Lisogurski teaches the physiological monitoring system may modulate
`the light drive signal to have a “period the same as or closely related to the
`period of [a] cardiac cycle.” Ex. 1011, 25:49–51. Thus, “[t]he system may
`vary parameters related to the light drive signal including drive current or
`light brightness, duty cycle, firing rate, . . . [and] other suitable parameters.”
`Id. at 25:52–55. Lisogurski further teaches, “the system may alter the
`cardiac cycle modulation technique based on the level of noise, ambient
`light, [and] other suitable reasons.” Id. at 9:46–48. Thus, “[t]he system may
`increase the brightness of the light sources in response to [any] noise to
`improve the signal-to-noise ratio.” Id. at 9:50–52. The system may also
`“change from a modulated light output to a constant light output in response
`to noise, patient motion, or ambient light.” Id. at 9:57–60.
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`2. 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.
`
`
`Figure 2 of Carlson is a schematic illustration of an ear clip sensor 1 of a
`pulse oximeter 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—660 nm and 890 nm—and can consist of two LEDs. Id.
`¶ 50.
`Carlson’s pulse oximeter can be used to “survey the heath condition
`of a person or an animal [that] is mobile,” and is “not restricted for use in,
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`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 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 includes “optical and/or electronic means for increasing
`Signal-to-Noise ratio (S/N) . . . of a pulsoximeter sensor for robust
`application of pulsoximetry in telemedicine- and near patient testing
`applications in rough (optical) environmental conditions.” Id. ¶ 10. In
`particular, the LEDs in Carlson’s sensor emit light “not as a current or
`continuous light but as pulsed light.” Id. ¶ 69. Carlson’s sensor 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 selected to be “outside the frequency spectrum of sunlight
`and of ambient light.” Id. ¶ 69. This allows the pulse oximeter signal to be
`easily discriminated from environmental signals, such as sunlight and
`ambient light, and “increas[es] significantly the Signal-to-Noise and Signal-
`to-Background ratio.” Id.
`Carlson further discloses that sensor 1 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
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`doctor, to a hospital, etc.” Id. ¶ 78. The pulse oximeter can also include a
`“GPS device which at any time gives the location of the person using the
`pulsoximetric sensor monitoring configuration.” Id.
`3. Mannheimer
`Mannheimer discloses a pulse oximetry device that “non-invasively
`measure[s] blood oxygen saturation of arterial blood 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
`. . . 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
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`IPR2019-00914
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`18/22. Id. at 3:18–20. Mannheimer calculates the blood oxygen
`concentration in skin layer 12 from the intensity of detected light 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.
`
`
`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.
`4. Hanna
`Hanna discloses a pulse oximeter that is wearable on a user’s earlobe,
`finger, or nasal septum to measure oxygen saturation or other properties of
`
`19
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`blood. Ex. 1007, code (57), 1:33–39, 4:29–43. Hanna’s oximeter includes
`multiple light sources, which may be LEDs, and one or more detectors,
`which detect the reflected light. Id. at 4:36–40, 4:66–5:1.
`Hanna discloses that the signals from the light sources or emitters “are
`modulated using different code sequences.” Id. at 4:43–51, 6:12–23. This
`allows the determination of “the contribution of each source” to the detected
`light. Id. at 6:19–23.
`D. Assessment of the Asserted Grounds of Unpatentability
`Petitioner argues that claims 16, 17, 19, and 20 are unpatentable as
`obvious over the combination of Lisogurski and Carlson. See Pet. 20–61.
`For reasons stated below, at this stage of the proceeding, we find Petitioner
`demonstrates a reasonable likelihood of showing the unpatentability of these
`claims over Lisogurski and Carlson. In reaching our conclusion, we take
`account of Petitioner’s assertion, which is not opposed by Patent Owner at
`this stage of the proceeding, that no secondary considerations of non-
`obviousness outweigh the evidence of unpatentability. Pet. 71; see generally
`Prelim. Resp. (including no a challenge to that assertion at this juncture, nor
`any objective evidence of non-obviousness during this preliminary phase).
`1. Reasons for Combining Lisogurski and Carlson
`Petitioner proposes combining Lisogurski’s physiological monitoring
`system shown in Figure 1 with Carlson’s teachings regarding using lenses to
`receive and deliver an optical beam to tissue. See Pet. 23–25, 33–38.
`Petitioner relies on several annotated versions of Figure 1, reproduced
`below:
`
`20
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`Id. at 49.
`
`
`
`
`
`Id. at 39. Modified Figures 1 are block diagrams of a physiological
`monitoring system including sensor 102 and monitor 104. Petitioner
`proposes modifying sensor 102 to include Light Source 130, Light Drive
`Circuitry 120, and Control Circuitry 110, which Petitioner highlights in
`green and annotates as together comprising a “[l]ight source comprising a
`plurality of LEDs.” Id. at 49. Petitioner further proposes modifying
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`sensor 102 to include Detector 140 and Back-End Processing Circuitry 150,
`which Petitioner highlights in blue and annotates as together comprising a
`“receiver.” Id. at 39.
`We acknowledge that the proposed combination relocates some
`components of Lisogurski’s monitor 104 (i.e., control circuitry 110, light
`drive circuitry 120, and front end processing circuitry 150) to sensor 102 as
`illustrated in the Petitioner-annotated versions of Figure 1 provided in the
`Petition. Pet. 39, 49. Petitioner argues that Lisogurski teaches or suggests
`these modifications by teaching “[i]n some embodiments the functionality of
`some of the components may be combined in a single component . . . [or]
`the functionality of some of the components of monitor 104 . . . may be
`divided over multiple components.” Id. at 41 (quoting Ex. 1011, 16:2–9;
`citing Ex. 1003 ¶ 134), 49 (citing Ex. 1003 ¶¶ 157–158). Petitioner further
`argues that general industry trends suggest these modifications by
`encouraging “inclusion of additional features into wearable devices” and
`“favoring integration of multiple features and capabilities in wearable
`devices to improve their operation in mobile monitoring systems or for
`sports and personal fitness applications.” Id. at 41 (citing Ex. 1003 ¶ 135),
`51 (citing Ex. 1003 ¶ 161); see id. at 25 (citing Ex. 1003 ¶¶ 48–56).
`Petitioner also argues that several industry trends would have
`suggested its proposed modifications to Lisogurski’s sensor 102/312 and
`monitor 104/314. The first was the “development of wireless monitoring
`technologies that could be worn by the patient and used to transmit data to a
`remote physician or care provider” in order to “respond to the challenge of
`providing medical care for patients in their homes or in locations where
`there was not easy access to a physician.” Pet. 6–7 (citing Ex. 1003 ¶¶ 52–
`
`22
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`53; Ex. 1021, 2 (“[r]emote monitoring systems have the potential to mitigate
`problematic patient access issues”); Ex. 1024, 462 (“wireless technology
`promises benefits for medical monitoring applications by freeing patients
`from inconvenient and restrictive wires” allowing them to “remain in their
`homes while still under medical supervision”); Ex. 1027, 15–31 (disclosing
`growth in the remote patient monitoring market “exceeding expectations”
`and not being negatively impacted by the 2009 financial crisis).
`The second industry trend was “bring[ing] heart rate sensing devices
`based on pulsoximetry to the consumer market for personal fitness tracking
`and other uses.” Pet. 7 (citing Ex. 1003 ¶¶ 49–50; Ex. 1005 ¶ 3 (“[t]here is a
`growing market demand for personal health . . . monitors”); Ex. 1009 ¶ 4
`(“[p]ulsoximetry measuring devices are also used in sports for control and
`su
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