Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 39
`Date: October 14, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00916
`Patent 9,651,533 B2
`____________
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`PER CURIAM
`
`Opinion Concurring filed by Administrative Patent Judge HORVATH
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 39
`Date: October 14, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00916
`Patent 9,651,533 B2
`____________
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`PER CURIAM
`
`Opinion Concurring filed by Administrative Patent Judge HORVATH
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`
`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.”), 3. Omni
`MedSci Inc. (“Patent Owner”), filed a Preliminary Response. Paper 10
`(“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
`Response, we instituted inter partes review of all challenged claims on all
`grounds raised. Paper 16 (“Dec. Inst.”).
`Patent Owner filed a Response to the Petition (Paper 23, “PO Resp.”),
`Petitioner filed a Reply (Paper 28, “Pet. Reply”), and Patent Owner filed a
`Sur-Reply (Paper 32, “PO Sur-Reply”). An oral hearing was held on July
`16, 2020, and the hearing transcript is included in the record. See Paper 37
`(“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written
`Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
`set forth below, we find Petitioner has shown by a preponderance of
`evidence that claims 5, 7–10, 13, and 15–17 of the ’533 patent are
`unpatentable.
`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., IPR2019-00913 (PTAB); and Omni MedSci
`
`2
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`Inc. v. Apple Inc., 2-18-cv-00134-RWD (E.D. Tex.).1 See Pet. x; Paper 7, 1–
`2.
`
`C. Evidence Relied Upon2
`
`Date
`
`Exhibit
`
`Reference
`Mannheimer
`
`U.S. 5,746,206
`
`May 5, 1998
`
`Carlson
`
`U.S. 2005/0049468 A1 Mar. 3, 2005
`
`Lisogurski
`
`U.S. 9,241,676 B2
`
`May 31, 20123
`
`
`
`1008
`
`1009
`
`1011
`
`D. Instituted Grounds of Unpatentability
`Claims Challenged
`Basis
`References
`5, 7–10, 13, and 15–17
`§ 103(a)
`Lisogurski and Carlson
`Lisogurski, Carlson, and
`8, 9, 16, and 17
`§ 103(a)
`Mannheimer
`II. ANALYSIS
`
`A. The ’533 Patent
`The ’533 patent was filed on October 6, 2015, and claims priority to a
`utility application filed on December 17, 2013, and a provisional application
`filed on December 31, 2012. Ex. 1001, codes (22), (60), (63), 1:10–14. The
`’533 patent is directed toward a wearable physiological measurement
`
`
`1 This case was transferred to the Northern District of California. See Paper
`11, 1; Paper 13, 1; Ex. 1058, 9.
`2 Petitioner also relies upon the Declaration of Brian Anthony, Ph.D.,
`(Ex. 1003).
`3 Petitioner relies on the filing date of Lisogurski to establish its status as
`prior art. See Pet. 21.
`
`3
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`system. Id. code (57). 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
`that includes wearable measurement device 2401, personal device 2405, and
`cloud based server 2407. Id. at 7:7–10, 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
`a device is shown in Figure 18 of the ’533 patent, which is reproduced
`below.
`
`
`
`
`4
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`
`
`Figure 18 is a schematic diagram of a wearable physiological measurement
`device to “subtract out (or at least minimize the adverse effects of) light
`source fluctuations.” Id. at 18:43–46. The device includes light source 1801
`made from a plurality of light emitting diodes that output an optical beam at
`one or more wavelengths, including at least one wavelength between 700
`and 2500 nanometers. Id. at 5:37–43, 18:46–48. The device 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,
`18:46–55. The device includes a receiver that receives at least a portion of
`the analysis beam that has been reflected from or transmitted through the
`sample, and processes that signal to generate an output signal. Id. at 5:51–
`54, 18:55–59.
`
`Light source 1801 “is configured to increase signal-to-noise ratio by
`increasing a light intensity from at least one of the plurality of semi-
`conductor sources [e.g., LEDs] and by increasing a pulse rate of at least one
`of the plurality of semiconductor sources.” Id. at 5:43–47. For example,
`light source 1801 can be “an active illuminator” that allows “higher signal-
`
`5
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`to-noise ratios [to] be achieved.” Id. at 16:54–58. This can be done, for
`example, “us[ing] modulation and lock-in techniques” in which the “light
`source may be modulated, and then the detection system [is] synchronized
`with the light source.” Id. at 16:58–62. “[N]arrow band filtering around the
`modulation frequency may be used to reject noise outside the modulation
`frequency.” Id. at 16:64–65.
`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 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.
`
`6
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`
`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
`source comprising a plurality of semiconductor
`sources that are light emitting diodes, 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 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 pulses of 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
`
`7
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`
`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
`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,
`except that claim 5 is broader because it does not require (a) the light source,
`plurality of lenses, and receiver to be components of a wearable
`measurement device, (b) measurement of one or more physiological
`parameters, or (c) the remote device to be capable of storing a history of at
`least a portion of the received output status over a specified period of time.
`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
`
`8
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`[had] a good working knowledge of optical sensing techniques and their
`applications, and familiarity with optical system design and signal
`processing techniques.” Pet. 16; Ex. 1003 ¶ 35. Such a person 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 studying or developing
`physiological monitoring devices . . . in industry or academia.” Id. Patent
`Owner does not dispute this. See PO Resp. 8.
`We find Petitioner’s undisputed definition of the person of ordinary
`skill in the art to be consistent with the problems and solutions disclosed in
`the patent and prior art of record, and adopt it as our own. See, e.g., In re
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
`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) (2019). 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).
`1. Beam, plurality of lenses, pulse rate
`Petitioner requests construction of the terms “beam,” “plurality of
`lenses,” and “pulse rate.” See Pet. 18–20. We declined to expressly
`construe these terms in our Institution Decision because their construction
`
`9
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`was not needed to resolve any dispute between the parties. See Dec. Inst. 9.
`Neither party disputes that initial determination, which we maintain here.
`See PO Resp. 8–13; Pet. Reply 2–9.
`2. Personal device
`We expressly construed this term in our Institution Decision to resolve
`a dispute between the parties. See Dec. Inst. 11–12. Specifically, we
`construed the term to include, but not be limited to, “a computer or
`microprocessor-based device 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. Neither party disputes
`that construction, which we maintain here. See PO Resp. 8–13; Pet. Reply
`2–9.
`3. Light source
`In our Institution Decision, we expressly construed “a light source
`comprising a plurality of semiconductor sources that are light emitting
`diodes . . . configured to increase signal-to-noise ratio by . . . increasing a
`pulse rate of at least one of the plurality of semiconductor sources.” Dec.
`Inst. 9–11. In doing so, we noted the scant support for this term in the
`Specification, which twice repeats the same phrase with no explanation of its
`meaning. Id. at 10. We further noted the Specification and claims were
`amended at the same time to include this phrase, with no indication of how
`the phrase was supported by the originally filed Specification. Id. at 10, n.4.
`Nonetheless, we construed the phrase to mean “a light source containing two
`or more light emitting diodes (semiconductor sources), wherein at least one
`of the light emitting diodes is capable of having its pulse rate increased to
`increase a signal-to-noise ratio.” Id. at 10.
`
`10
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`
`Patent Owner disputes this construction, arguing it “eliminat[es] the
`claimed ‘actor’ that increases the pulse rate, i.e., the device,” and
`erroneously “replaces the claim term ‘configured to’ with the broader phrase
`‘is capable of.’” PO Resp. 9. Patent Owner argues the correct construction
`of this term is “a light source, containing two or more light emitting diodes
`(semiconductor sources), where the light source is configured to increase the
`pulse rate of at least one of the light emitting diodes to increase signal-to-
`noise ratio.” 4 Id. at 13. Patent Owner argues the Specification supports this
`construction by disclosing “‘use of an active illuminator, [whereby] a
`number of advantages may be achieved’ including ‘high signal-to-noise
`ratios.’” Id. at 12 (quoting Ex. 1001, 16:54–58).
`We are not persuaded by Patent Owner’s arguments. First, the
`limitation does not recite a “device” or “actor” configured to increase signal-
`to-noise by increasing LED pulse rate. Instead, it recites a “light source
`comprising a plurality of . . . light emitting diodes,” where the light source
`itself—i.e., the plurality of LEDs—is “configured to increase signal-to-noise
`ratio by increasing . . . a pulse rate of at least one of the plurality of [LEDs].”
`Ex. 1001, 16:48–50, 16:56–60. That is, the limitation recites a plurality of
`LEDs that are configured to increase signal-to-noise by increasing the pulse
`rate of at least one of the LEDs. No “device” or “actor” is recited to increase
`the pulse rate of the LEDs. Thus, the only reasonable construction is that the
`
`
`4 We note here that Patent Owner contradicts this proposed construction in
`its Sur-Reply, where Patent Owner argues “[t]he claim requires a light
`source ‘configured to increase SNR,’ not a light source ‘configured to
`increase a pulse rate.’” PO Sur-Reply 4.
`
`11
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`LEDs are “capable” of having their pulse rate increased to increase signal-
`to-noise, as we initially construed this phrase.
`Patent Owner argues that our construction is incorrect because
`“capable of” is a broader term than “configured to” and, therefore,
`“configured to” does not mean “capable of.” PO Resp. 10 (citing Aspex
`Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.
`2012)). In the context of these claims, we disagree. First, we note that
`Aspex Eyewear did not consider and did not construe “configured to.” See
`Aspex Eyewear, 672 F.3d at 1348–49. Instead, the term “magnetic members
`adapted to extend” was construed to mean “magnetic members . . . made to
`extend.” Id. at 1348 (emphases added). By contrast, the proper construction
`of “configured to” was considered in Superior Industries, Inc. v. Masaba,
`Inc., 650 Fed. App’x. 994 (Fed. Cir. 2016). In Superior Industries, the
`Federal Circuit considered and approved a district court’s construction of a
`“support frame . . . configured to support an end of an earthen ramp” to
`mean “the support frame be capable of supporting an earthen ramp.” Id. at
`996, 998 (emphases added).
`Accordingly, for these reasons, we maintain our construction of 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 is capable of having its pulse rate increased to increase a signal-to-
`noise ratio.”
`E. 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
`
`12
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`or more physiological sensors.” Ex. 1011, 3:44–46. The physiological
`sensors may include a “pulse oximeter [that] non-invasively measure[s] 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 site 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 4:8–11. 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,” including red
`and infrared (IR) wavelengths of light. Id. at 4:42–48.
`Figure 3 of Lisogurski is reproduced below.
`
`
`Figure 3 of Lisogurski is “a perspective view of an embodiment of a
`physiological monitoring system.” Id. at 2:23–25. The system includes
`
`
`
`13
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`sensor 312, monitor 314, and multi-parameter physiological monitor
`(“MPPM”) 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 that a subject’s physiological
`parameters are not within a predefined normal range.” Id. at 18:3–10.
`Monitor 314 is communicatively coupled to MPPM 326, with which it “may
`communicate wirelessly.” 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.
`MPPM 326 may “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 network to enable the sharing of information
`with servers or other workstations.” Id. at 18:62–65. The remote network
`servers may “be used to determine physiological parameters,” and may
`display the parameters on a remote display, display 320 of monitor 314, or
`
`14
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`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 the parameters
`available to a user.” Id. at 20:58–60.
`Lisogurski discloses 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 15:66–16:9. Figure 1 of
`Lisogurski is reproduced below.
`
`
`
`15
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`Figure 1 of Lisogurski is a “block diagram of an illustrative physiological
`monitoring system.” Id. at 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 light source and an IR light emitting light source,” such as Red and
`IR emitting LEDs, with the IR LED emitting light with a “wavelength [that]
`may be 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
`may be 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 “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.
`
`16
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`
`Backend 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” to “determine one or more
`physiological parameters.” Id. at 14:56–57, 14:60–64. Backend processing
`circuitry 170 is “communicatively coupled [to] use[r] 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.” Id. at 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.
`
`17
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`
`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
`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—660 nm and 890 nm—and can consist of two LEDs. Id. ¶ 50.
`Carlson’s pulsoximeter can be used to “survey the health condition of
`a person or an animal [that] is mobile.” Id. ¶ 72. Carlson teaches that
`patient mobility can cause “standard pulsoximeter sensors [to] suffer from
`
`18
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`signal instability and insufficient robustness versus environmental
`disturbances.” Id. ¶ 4. Environmental disturbances can include ambient
`light, such as sunlight. Id. ¶ 68. For example, a person walking or driving
`down a tree-lined avenue can experience “relatively quick changing
`conditions between sunlight and shadow,” such that a pulsoximeter sensor
`worn by the person will receive sunlight “at a certain frequency, which
`means that every time when passing a tree, sunlight is attenuated and
`between the trees sunlight is influencing the measurement of the
`pulsoximeter sensor.” Id.
`To address such problems, Carlson includes “optical and/or electronic
`means for increasing Signal-to-Noise ratio (S/N) . . . in rough (optical)
`environmental conditions.” Id. ¶ 10. In particular, Carlson’s LEDs emit
`light “not as a current or continuous light but as pulsed light.” Id. ¶ 69.
`Carlson “temporarily modulate[s] the optical radiation of the LED at the
`carrier frequency f0 in order to shift the power spectrum of the pulsoximeter
`signals into a higher frequency range where environmental optical radiation
`is unlikely.” Id. ¶ 65. Temporary modulation frequency f0 is “chosen in
`such a way that it is outside the frequency spectrum of sunlight and of
`ambient light.” Id. ¶ 69. This allows easy discrimination of pulsoximeter
`signals 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
`
`19
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`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.
`3. Mannheimer
`Mannheimer discloses a pulse oximetry device that “non-invasively
`measure[s] 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
`
`20
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`18/22. Id. at 3:18–20. Mannheimer calculates blood oxygen concentration
`in skin layer 12 from the intensity of two different wavelengths of light
`detected at detectors 20/24 at two different times. 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.
`
`21
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`
`F. Patentability of claims 5, 7–10, 13, and 15–17 over Lisogurski and
`Carlson
`Petitioner argues claims 5, 7–10, 13, and 15–17 are unpatentable as
`
`obvious over the combination of Lisogurski and Carlson. See Pet. 21–63.
`1. Petitioner’s proposed combination
`Petitioner proposes combining Lisogurski’s physiological monitoring
`system shown in Figures 1 and 3, in which sensor 102/312 wirelessly
`communicates with monitor 104/314, with Carlson’s teachings regarding
`pulsing an LED at a frequency that increases signal-to-noise in a wireless
`pulsoximeter sensor. See Pet. 24–26, 32–34, 38–39, 41–44, 47–51.
`Petitioner’s proposed combination relocates some components of
`Lisogurski’s monitor 104/314 to sensor 102/312, as illustrated in a series of
`Petitioner-modified versions of Lisogurski’s Figure 1, which we combine
`into a single modified version shown below. See id. at 33, 47, 50.
`
`
`
`22
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`Modified Figure 1 of Lisogurski illustrates Petitioner’s proposed
`combination, which involves relocating control circuitry 110, light drive
`circuitry 120, and front end processing circuitry 150 of monitor 104 to
`sensor 102 as illustrated. Id.
`Petitioner articulates sufficient reasoning with rational underpinning
`to demonstrate why a person of ordinary skill in the art would have modified
`Lisogurski’s sensor 102/312 and monitor 104/314 in the manner proposed.
`See id. at 6–12, 32–34, 47–49 (citing/quoting Ex. 1003 ¶¶ 48–56, 98–103,
`138, 142–146; Ex. 1005 ¶ 3; Ex. 1009 ¶ 4; Ex. 1011, 11:20–27, 11:38–41,
`11:5054, 16:2–9, 17:32–35, 17:55–59, 18:16–31, 25:52–55; Ex. 1020, 3, 6–
`7, 12; Ex. 1021, 2–4; Ex. 1022, 1; Ex. 1023, 1, 2, 5, 6; Ex. 1024, 459, 460,
`462; Ex. 1027, 9, 10, 15–31, 33, 35, 40–49; Ex. 1029, 221).
`First, Lisogurski expressly suggests the modification by teaching
`embodiments in which “the functionality of some of the components may be
`combined in a single component” and embodiments in which “the
`functionality of some of the components of monitor 104 . . . may be divided
`over multiple components.” Ex. 1011, 16:2–4, 16:7–9. Second, numerous
`industry trends motivate the modification. These include improving the
`capabilities of wearable sensors for use in sports and personal fitness
`applications and wirelessly c
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
