Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 41
`Date: November 23, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-00954
`Patent 9,788,735 B2
`____________
`
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
` Dismissing Petitioner’s Motion to Exclude
`37 C.F.R. §§ 42.155(c), 42.64
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 41
`Date: November 23, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-00954
`Patent 9,788,735 B2
`____________
`
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
` Dismissing Petitioner’s Motion to Exclude
`37 C.F.R. §§ 42.155(c), 42.64
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`
`
`I. INTRODUCTION
`
`A.
`
`Background and Summary
`
`Sotera Wireless, Inc. (“Petitioner”)1 filed a Petition requesting inter
`partes review of U.S. Patent No. 9,788,735 B2 (“the ’735 patent,”
`Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the patentability of
`claims 1–20 of the ’735 patent. Masimo Corporation (“Patent Owner” or
`“Masimo”) filed a Preliminary Response to the Petition. Paper 7.
`On November 25, 2020, we instituted trial. Paper 13 (“Inst. Dec.” or
`“Decision to Institute”). Patent Owner filed a Response. Paper 21 (“PO
`Resp.”). Petitioner filed a Reply. Paper 25 (“Pet. Reply”). Patent Owner
`filed a Sur-Reply. Paper 30 (“Sur-Reply”). An oral argument was held on
`August 26, 2021, and a transcript was entered into the record. Paper 40
`(“Tr.”).
`We have jurisdiction to conduct this inter partes review under
`35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we
`determine that Petitioner has shown, by a preponderance of the evidence,
`that all challenged claims (claims 1–20) of the ’735 patent are unpatentable.
`
`B.
`
`Related Proceedings
`
`Petitioner identifies Masimo Corp. v. Sotera Wireless, Inc., Case No.
`3:19-cv-01100-BAS-NLS (S.D. Cal.), served on June 13, 2019, as a related
`
`
`1 Petitioner identifies Hon Hai Precision Industry Co., Ltd. as a real party-in-
`interest “because Hon Hai agrees to be bound by the estoppel provisions of
`35 U.S.C. § 315(e).” Pet. 1.
`
`2
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`proceeding involving the ’735 patent. Pet. 2; Ex. 1029; Ex. 1030. Petitioner
`also identifies IPR2020-00912, involving the same parties and U.S. Patent
`No. 10,213,108, which is a parent to the ’735 patent. Pet. 2.
`
`C.
`
`The ’735 Patent
`
`The ʼ735 patent is directed to an “Body Worn Mobile Medical Patient
`Monitor.” Ex. 1001, code (54). The ’735 patent claims priority through a
`series of continuation applications to Provisional Application No.
`60/367,428, filed on March 25, 2002. Id. at codes (63), (60). The invention
`relates to “[a] body worn mobile medical monitoring device configured to
`minimize cable wiring from a sensor by placement of one or more sensor
`communication ports.” Id. at code (57). Structurally, the “device includes a
`housing securable on a lower arm of a patient, a display, and a sensor
`communication port positioned on a side of the housing.” Id. The body
`worn medical monitoring device may have other input or output ports that
`download software or provide a wired connection to other measurement
`instruments. Id. at 5:56–61.
`The Specification describes a drawback to “[c]onventional
`physiological measurement systems,” as requiring a “patient cable
`connection between sensor and monitor.” Id. at 2:22–24. The Specification
`also describes the problems related with “disconnection of monitoring
`equipment and a corresponding loss of measurements,” when needing to
`move patients. Id. at 2:25–28. A goal of the ’735 patent was to allow
`patient mobility by providing “wireless communication links between
`sensors and monitors.” Id. at 2:28–38; Fig. 3. The invention also sought “to
`provide a communications adapter that is plug-compatible both with existing
`
`3
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`sensors and monitors and that implements a wireless link replacement for the
`patient cable.” Id.
`As depicted in Figure 4A below, sensor module 400 is plug-
`compatible with conventional sensor 310. Id. at 4:58–59. Wrist-mounted
`module 410 has module connector 414 with auxiliary cable 420 running
`therefrom to mate with sensor connector 318. Id. at Fig. 4A, 5:27–61.
`
`
`Figure 4A illustrates an embodiment of the “communications adapter sensor
`modules.” Id. at 4:5–6. Wrist-mounted module 410 may have display 415
`that shows sensor measurements, module status, and other visual indicators,
`such as monitor status. Id. at 5:39–42.
`
`The Specification explains that in certain embodiments wrist-mounted
`module 410 may have other input or output ports that download software,
`configure the module, or provide a wired connection to other measurement
`instruments or computing devices. Id. at 5:54–61. In such embodiments,
`the wearable device can communicate with multiple sensors, and a multiple
`
`4
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`parameter sensor module with sensor interfaces and signal processors may
`be used as depicted in Figure 13, below. Id. at 11:56–66.
`
`
`Figure 13 depicts a functional block diagram of a sensor module configured
`for multiple sensors. Id. at 4:24–25. The Specification also notes that
`sensor signal conditioning may be performed in the analog domain or digital
`domain or both. Id. at 6:61–65.
`
`D.
`
`Illustrative Claim
`
`Claim 1, reproduced below in chart form with Petitioner’s added
`designations to identify each limitation, is illustrative of the claims at issue:
`Designation
`Claim Language
`Claim1
`A body worn mobile medical monitoring device
`(Preamble)
`configured to minimize cable wiring from a sensor
`1(a)
`by placement of one or more sensor
`communication ports, the mobile medical
`monitoring device comprising:
`
`5
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`
`Designation
`Limitation
`1(b)
`
`1(c)
`
`1(d)
`
`1(e)
`
`1(f)
`
`1(g)
`
`1(h)
`
`1(i)
`
`1(j)
`
`Claim Language
`a housing configured to be secured on a lower arm
`of a patient being monitored via a strap extending
`around the lower arm of the patient;
`a display positioned on a face of the housing,
`opposite the strap, so as to be visible to a user;
`a first sensor communication port positioned on a
`side of the housing and configured to face a hand
`of the lower arm of the patient when the mobile
`medical monitoring device is mounted to the lower
`arm of the patient, wherein: the side of the housing
`faces the hand of the lower arm of the patient of
`the patient when the mobile medical monitoring
`device is mounted to the lower arm of the patient,
`the first sensor communication port is configured
`to provide wired communication with a pulse
`oximetry sensor attached to a digit of the hand of
`the patient,
`the wired communication with the pulse oximetry
`sensor provided at least partly in the analog
`domain, and
`the first sensor communication port is positioned
`on the side of the housing such that a path from the
`first sensor communication port on the side of the
`housing to the digit of the patient is substantially
`perpendicular to the side of the housing and
`shorter than any other path from any other side of
`the housing to the digit of the patient;
`a plurality of additional sensor communications
`ports positioned on the housing and configured to
`provide wired communication with a plurality of
`additional physiological sensors at least partly in
`the digital domain; and
`one or more processors and a transmitter
`configured to:
`display, on the display, physiological
`measurements derived from the pulse oximetry
`sensor and the plurality of additional physiological
`sensors; and
`
`6
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`
`Designation
`1(k)
`
`Claim Language
`wirelessly transmit information indicative of the
`physiological measurements to a remote
`computing device.
`Ex. 1001, 13:14–56; Pet. xiii–xiv (Listing of Claims).
`Independent claim 13 (also challenged) is similar in scope to claim 1,
`but also requires the “a battery configured to provide power to the medical
`monitoring device” as well as “a case configured to house the battery.” Ex.
`1001, 14:38–15:9. Independent claim 20 incorporates many of the
`limitations of the dependent claims and has unique limitations not found in
`claim 1, such as “the front side of the housing comprises a single user
`interface and a bezel,” and “a rechargeable battery.” Id. at 15:59–18:18.
`
`Evidence
`E.
`Petitioner relies on the following references:
`
`Reference
`U.S. Patent No. 6,840,904, filed on Oct. 11, 2001 and issued
`Jan. 11, 2005 (“Goldberg”)
`PCT Publication No. WO 00/42911, published on July 27, 2000
`(“Kiani”)
`EP0880936A2, filed on Oct. 30, 1997 and published on Dec. 2,
`1998 (“Akai”)
`U.S. Patent No. 5,919,141, filed on Sept. 13, 1996 and issued on
`July 6, 1999 (“Money”)
`PCT Publication No. WO 99/13698 filed on Aug. 28, 1998 and
`published Mar. 18, 1999 (“Estep”)
`U.S. Patent No. 4,425,921, filed on Sept. 11, 1981 and issued on
`Jan. 17, 1984 (“Fujisaki”)
`
`Exhibit
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1016
`
`7
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`
`Petitioner also relies on the Declaration of George E. Yanulis, D.Eng.
`(Ex. 1003) in support of its arguments as well as the Reply Declaration of
`Bryan Bergeron, M.D. (Ex. 1040). Patent Owner relies on the Declaration
`of Alan L. Oslan (Ex. 2010) in support of its arguments. The parties rely on
`additional evidence and exhibits as further discussed below.
`
`F.
`
`Asserted Grounds of Unpatentability
`
`Petitioner asserts that the challenged claims of the ’735 patent are
`unpatentable based on the following grounds (Pet. 6–7):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1, 2, 7–9
`103(a)
`Goldberg, Kiani, Money
`
`3–6, 13–19
`
`10–12
`
`20
`
`1, 2, 7–9
`
`3–6, 13–19
`
`10–12
`
`20
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Goldberg, Kiani, Money,
`Fujisaki
`Goldberg, Kiani, Money, Estep
`
`Goldberg, Kiani, Money,
`Fujisaki, Estep
`Money, Akai, Kiani.
`
`Money, Akai, Kiani, Fujisaki
`
`Money, Akai, Kiani, Estep
`
`Money, Akai, Kiani, Fujisaki,
`Estep
`
`II. ANALYSIS
`
`Petitioner bears the burden of establishing the unpatentability of any
`claim by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d). This burden of persuasion never shifts to the patent owner.
`
`8
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015).
`
`A.
`
`Principles of Law
`
`1.
`
`Obviousness
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. 2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In
`that regard, an obviousness analysis “need not seek out precise teachings
`directed to the specific subject matter of the challenged claim, for a court
`can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
`Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007).
`
`2.
`
`Level of Ordinary Skill in the Art
`
`Petitioner contends that a person of ordinary skill in the art “would
`have been a person with at least a B.S. degree in electrical or biomedical
`engineering or a related field with at least two years’ experience designing
`
`
`2 The parties have not directed our attention to any objective evidence of
`non-obviousness in the final record before us.
`
`9
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`patient monitoring systems.” Pet. 14 (citing Ex. 1003 ¶¶ 25–32). “Patent
`Owner does not dispute Petitioner’s characterization of the level of ordinary
`skill in the art.” PO Resp. 14.
`Based on the final record, we adopt Petitioner’s proposed description
`of the person of ordinary skill in the art.
`
`B.
`
`Claim Construction
`
`In an inter partes review for a petition filed on or after November 13,
`2018, a claim “shall be construed 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). In applying this claim
`construction standard, we are guided by the principle that the words of a
`claim “are generally given their ordinary and customary meaning,” as
`understood by a person of ordinary skill in the art in question at the time of
`the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005) (en banc) (citation omitted). “In determining the meaning of the
`disputed claim limitation, we look principally to the intrinsic evidence of
`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17). Of course, “[t]here is a heavy presumption that claim
`terms are to be given their ordinary and customary meaning.” Aylus
`Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1358 (Fed. Cir. 2017).
`“Properly viewed, the ‘ordinary meaning’ of a claim term is its meaning to
`the ordinary artisan after reading the entire patent.” Id. (quoting Phillips,
`415 F.3d at 1321).
`
`10
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`
`Petitioner contends that the claim terms “are to be given their plain
`and ordinary meaning, as understood by one of ordinary skill in the art, in
`view of the ’735 patent’s specification.” Pet. 14. Petitioner further states
`that “the Board need not construe any claim terms to find the claims
`invalid.” Pet. 14–15 n.1.
`In our Decision to Institute, we gave the claim terms their plain and
`ordinary meaning and determined that it was unnecessary to further construe
`any claim term. We did note, however, that the claims require “sensor
`communication port(s).” See, e.g., Ex. 1001, claim 1. We invited the parties
`to address this term to the extent the parties contend that “sensor
`communication port” has any special meaning or otherwise should be
`construed. Inst. Dec. 21.
`In its Response, Patent Owner contends that we “should construe
`‘sensor communication port,’ according to its plain and ordinary meaning of
`a ‘connector that mates with a compatible connector from a sensor.’” PO
`Resp. 15. Patent Owner cites to various portions of the Specification
`describing how sensor ports connect to modules though use of a cable and
`also how a sensor connector mates with an auxiliary cable providing a wired
`link between a conventional sensor and a wrist-mounted module. Id. at 15–
`17 (citing Ex. 1001, 4:65–5:2, 5:33–38, Figs. 3, 4A). Patent Owner also
`cites to contemporaneous dictionaries to confirm that a port is a connector
`that mates with a compatible connector from a sensor. Id. at 17–18 (citing
`Exs. 2020, 2021, 2019).
`Patent Owner argues that the Specification “distinguishes the ‘port’
`type connection illustrated in Figure 4A from a hardwired or direct
`connection.” PO Resp. 18. Thus, Patent Owner contends that “a PHOSITA
`
`11
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`[person having ordinary skill in the art] would understand that the term
`‘sensor communication port’ involves a removable connection and does not
`include hardwired connections.” Id. (citing Ex. 2010 ¶ 39). Patent Owner
`states that “[a]ll other terms in the ’735 Patent should also be given their
`plain and ordinary meanings.” Id. at 19.
`Petitioner, in Reply, argues that “[t]he construction of ‘sensor
`communication port’ is not an issue that the Board must resolve to find the
`’735 Patent invalid,” and “Masimo makes no contention that the prior art
`ports are not ports under its construction.” Pet. Reply 1–2. Petitioner
`additionally argues that “Masimo’s expert freely admitted that ports were
`known,” and “[a]s such, construction of this term is not case dispositive.”
`Id. at 2 (citing Ex. 1042, 23:3–5). See also Tr. 35:16–23 (“[T]hey cite the
`dictionary definitions technically a port does not have to be removed. I
`think in the more normal sense of a port it’s removable but . . . the dictionary
`definitions don’t require removable. It does not matter. We’ve got prior art
`all over the place.”). We agree with Petitioner that it is not necessary to
`further define a sensor communication port.
`Because we determine that Kiani in combination with Goldberg
`teaches the claimed sensor communication port under any reasonable
`definition, including those offered by Patent Owner, we need not further
`elaborate on the scope of a “sensor communication port.” See Tr. 34:23–
`35:23, 36:14–24, 40:20–41:16. That is to say that even if agree with Patent
`Owner that the term “sensor communication port” involves a removable
`connection, and does not include hardwired connections (PO Resp. 19), such
`a determination is not dispositive because Kiani clearly teaches a removable
`
`12
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`connection as further explained below. 3 Only those terms that are in
`controversy need be construed, and only to the extent necessary to resolve
`the controversy (e.g., whether the claim reads on a prior art reference). See
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017). We do not see the need to further construe any
`additional claim term.
`
`C.
`
`The Asserted Prior Art
`
`1.
`
`Goldberg
`
`Goldberg is titled, “Medical Monitoring Device and System,” and it
`broadly discloses a wireless, wearable patient monitoring device. Ex. 1005,
`codes (54), (57). More specifically, Goldberg teaches portable device 100
`that receives data from multiple sensors, displays the sensor data, and
`wirelessly transmits sensor data to a remote computer. Id. at 1:29–44, 2:27–
`29, 4:20–30, 4:50–56, 5:3–8, 2:37–42, 2:47–55. Goldberg discloses that
`“[v]arious sensors 104 are known in the art for converting physiological
`characteristics . . . into electrical signals,” and that “sensor(s) 104 can be
`coupled to the controller 102 and/or memory by wire or wirelessly, and such
`ways for coupling are well known in the art.” Id. at 4:23–30.
`
`
`3 Indeed, we also note that Patent Owner itself describes Kiani as disclosing
`a sensor port, albeit in connection with other arguments discounting Kiani as
`disclosing multiple sensor ports. See PO Resp. 26 (“both experts now agree
`that Kiania teaches a single sensor port, not multiple ports.”). Furthermore,
`at the oral hearing, counsel for Patent Owner acknowledged that “Kiani
`would have a single sensor input port under our construction.” Tr. 53:18–
`19.
`
`13
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`
`Figure 2 of Goldberg is reproduced below.
`
`
`Figure 2 of Goldberg depicts portable device 101a mounted in an assembly
`or housing 112 that is sized to be carried by an individual and strapped to the
`wrist or forearm by any conventional strap apparatus. Ex. 1005, 4:57–60. In
`this embodiment, sensor 104a is a pulse oximetry sensor and blood pressure
`cuff sensor 104b monitors blood pressure. Id. at 4:63–67.
`In other embodiments, “the medical monitoring device may contain
`one, all, or any combination of the above-mentioned sensor types,” including
`also a sensor to measure electrolyte levels. Id. at 5:1–8. The Specification
`states that the “invention may be comprised of any type of physiological
`sensor 104 suitable [f]or use with a portable monitoring device.” Id.
`Kiani
`2.
`
`Kiani discloses a portable pulse oximetry sensor that communicates
`with conventional bedside monitors. Ex. 1006, code (57). Kiani seeks to
`
`14
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`provide a transportable pulse oximeter that can stay with and continuously
`monitor the patient as they are transported. Id. at 3:1–4. Kiani describes
`conventional pulse oximetry sensors, including sensors with sensor ports, as
`well as portable devices having both batteries and displaying status
`indicators. Id. at 3:21–23, 5:21–22, 8:31–9:2, Fig. 5. Kiani notes that its
`portable docking station combination is also universally compatible with
`pulse oximeters from various manufacturers. Id. at code (57). Kiani
`describes its portable portion as being “removably attached” and in
`communication with the docking station when the portable portion is
`attached to the docking station. Id. at 19:22–26.
`As depicted below, Kiani describes handheld embodiment 500 of the
`universal/upgrading pulse oximeter that includes external power supply
`input 530, oximeter output port 540 for connection to the external pulse
`oximeter, and single sensor input 550 at the top edge. Id. at Fig. 5, 8:31–9:2.
`
`
`Figure 5 of Kiani depicts a handheld embodiment. As shown, Kiani’s
`display 520 shows measured oxygen saturation 522, pulse rate 524,
`confidence bar 528, low battery 572, and alarm enabled 574 status indicator.
`Id.
`
`15
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`
`3. Money
`
`Money is titled “Vital Sign Remote Monitoring Device.” Ex. 1008,
`code (54). Money teaches a portable, multi-parameter patient monitor that
`receives digital signals from some sensors and analog signals from other
`sensors. Ex. 1008, 5:48–51, 5:61–6:10, 7:4–8. An RF transmitter transmits
`both analog and digital vital sign data to a remote monitoring station. Id. at
`code (57). The remote patient monitoring device “must provide an
`electronic interface to a wide variety of vital sign transducers, and process
`both analog and digital data.” Id. at 7:4–6. Overall logic control and
`processing of data by the remote patient monitoring device is determined by
`a processor, which has “integral analog to digital (A/D) conversion
`capabilities . . . to allow direct connection of vital sign data in analog
`format.” Id. at 7:32–34, 7:49–52.
`Fujisaki
`4.
`
`Fujisaki is titled “Apparatus for Checking Pulse and Heart Rates.”
`Ex. 1016, code (54). Fujisaki is a small portable device for checking pulse
`rate and it teaches that wearable devices include removable cables to
`interface with sensors. Id. at code (57), 5:37–44, Figs. 2, 6.
`Figure 2 of Fujisaki is reproduced below.
`
`
`
`16
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`Figure 2 of Fujisaki depicts a partial perspective view of connector pin 5
`provided for receiving connector plug 8 to create a removable connection for
`either a heart or pulse sensor. Ex. 1016, 5:37–44.
`5. Estep
`Estep teaches a wearable electric signal measurement device with a
`display 31 surrounded by a bezel (i.e., border). Ex. 1009, 4:24–27, Fig. 3C;
`Ex. 1003 ¶ 45.
`6. Akai
`Akai is titled “Monitoring physical condition of a patient by
`telemetry,” and it discloses a wearable monitoring device for monitoring
`blood glucose levels. Ex. 1007, codes (54), (57). Akai teaches a
`measurement unit that connects to three or more sensors, displays readings
`from the sensors, and wirelessly transmits those readings to a central
`computer. Id. at code (57). Akai’s housing has a wired connection with a
`pulse oximetry sensor that extends along a path substantially perpendicular
`to the side of housing 112 facing the hand. Id. at Fig. 1.
`
`D.
`
`Asserted Obviousness in View of Goldberg, Kiani, and Money
`
`Petitioner asserts that claims 1, 2, and 7–9 would have been obvious
`in view of Goldberg, Kiani, and Money. See Pet. 16–35. We discuss below
`the parties’ arguments as to claim 1, as well as Petitioner’s contentions as to
`claims 2 and 7–9, and then provide our analysis and determinations.
`Petitioner’s Arguments and Evidence
`1.
`
`As described in more detail in the Petition, Petitioner relies on
`Goldberg, Kiani, and Money for teaching the limitations of claim 1. See
`Pet. 16–35. For ease of reference, we refer to each claim limitation
`
`17
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`according to the labeling set forth above, and adopted by Petitioner. See
`Pet. xiii–xiv.
`Claim 1
`Petitioner first notes that “Goldberg, Kiani, and Money are all related
`to the same field (portable, wearable patient monitoring) and describe the
`same device: a portable medical monitor,” and “all use portability to solve
`the same problem, namely, to portably monitor a patient.” Pet. 16.
`Petitioner relies on Kiani for its teachings that portable electronic devices
`require battery power, and wired connections often include sensor ports.
`Pet. 18, 22, 39. Petitioner also contends sensor ports would be features a
`person of ordinary skill in the art would understand Goldberg to also
`implicitly disclose. Id. Petitioner relies on Money for its teaching of a
`system that may receive both “analog signals from some sensors and digital
`signals from others,” as explained more below. Pet. 28. Petitioner also
`argues that combining Kiani and Goldberg represents a combination of prior
`art elements according to known methods to yield predictable results.
`Pet. 23. Petitioner likewise argues that “modifying Goldberg/Kiani with
`Money would have been a combination of familiar elements according to
`known methods yielding predictable results.” Pet. 29.
`Petitioner contends the preamble (1a) is not limiting, but even if it
`were limiting, Goldberg teaches the claimed “body worn medical monitoring
`device to minimize cable wiring from a sensor by placement of one or more
`sensor communication ports.” Pet. 17; Ex. 1005, 4:57–67. Goldberg
`discloses portable device 100 strapped to a person’s wrist or forearm, which
`may receive data from at least a pulse oximetry sensor, a blood pressure cuff
`
`18
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`sensor, and a third sensor such as an electrolyte sensor. Pet. 17; Ex. 1005,
`4:57–67, 5:3–8, 5:39–47.
`As shown in Figure 1, Goldberg teaches that the pulse oximetry
`sensor 104a is positioned on a user’s finger, and the blood pressure cuff
`sensor 104b is positioned on a person’s forearm or wrist. According to
`Petitioner, Goldberg teaches the wire between pulse oximetry sensor 104a
`and housing 112 is “at the closest possible location to the patient’s hand,
`where a pulse oximetry sensor attaches to minimize the length of the wire
`using the shortest distance between two points.” Pet. 17–18 (citing Ex. 1003
`¶ 57; Ex. 1005, 4:26–29, 4:60–62, Fig. 2). 4
`As for the preamble discussion of one or more sensor communication
`ports, Petitioner argues that a person of ordinary skill in the art “would
`understand the wire electrically connects to the housing via a port, or it
`would have been obvious to include a port as part of this electrical
`connection in view of Kiani.” Pet. 18. These sensor communication port
`limitations are discussed more below. As explained more below, Petitioner
`establishes that the recitations in the preamble are satisfied by the prior art.
`As for limitation 1(b), Petitioner shows that Goldberg teaches a
`housing secured or strapped to the person being measured at the person’s
`wrist or forearm. Pet. 18–19 (citing Ex. 1003 ¶¶ 59–60; Ex. 1005, 4:19–30,
`4:57–60, 4:64–67, Fig. 2). Goldberg’s blood pressure cuff sensor 104b
`functions as both a sensor and a strap secured to the back of the housing to
`fix the portable device to the patient’s wrist. Id.
`
`
`4 The parties do not dispute that Goldberg teaches the subject matter recited
`in the preamble. We agree that the preamble is satisfied by the prior art.
`Accordingly, we need not decide whether the preamble is limiting.
`
`19
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`
`Limitation 1(c) requires a “display positioned on a face of the
`housing.” See supra. Petitioner shows how Goldberg teaches a display 108
`that displays sensor data and is located on a face of the housing opposite the
`strap and visible to a user. Pet. 19 (citing Ex. 1003 ¶ 62; Ex. 1005, 6:32–45,
`Figs. 6A–B).
`Petitioner next shows how Goldberg teaches the limitations of 1(d)
`related to “a first sensor communication port positioned on a side of the
`housing and configured to face a hand of the lower arm.” Pet. 20–21.
`Dr. Yanulis testifies that “[a] port is typically a female connection or socket
`of a wired connection.” Ex. 1003 ¶ 64 (citing Ex. 1001, 5:33–36, Fig. 4B).
`Dr. Yanulis testifies that a person of ordinary skill in the art would assume
`that Goldberg would use a port to transmit the signals into the housing and
`to the controller because “the male-female relationship of wired connections
`is a preferred method of electrical connection because it provides a more
`secure connection than merely contacting two electrical conductors.” Id.
`Dr. Yanulis testifies that “[p]orts are also preferable over hardwiring a
`sensor to a monitor because hardwiring a sensor to a monitor provides no
`adaptability,” and patients benefit from the adaptability to connect wired
`connects through ports, which provide an end user the ability to disconnect
`and connect a variety of sensors as needed. Id.; Pet. 23 (a person of ordinary
`skill would understand how to “build wired connections that allow for
`sensors to be readily connected and disconnected as needed, and ports were
`known to provide such adaptability”).
`Petitioner and Dr. Yanulis note that the types of connections Goldberg
`could use would be limited to a select few, including a hardwired connection
`
`20
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`or a port. Ex. 1003 ¶ 64; Pet. 21–22. Petitioner contends that Kiani
`provides specific teachings and motivation for using a port in Goldberg:
`To the extent Goldberg doesn’t explicitly recite a port,
`Kiani teaches that sensor input ports 540,[5] 550 were well-
`known for wired communication. EX1006, 3:21-27, 8:31-9:2.
`As such, Kiani explicitly explains that which was implicitly
`known to a PHOSITA: wired connections can communicate
`with electrical devices via ports, such as the wired connection of
`the pulse oximetry sensor 104a shown in Goldberg. Id.; EX1003,
`¶ 65. It would have been obvious to include the port taught by
`Kiani on the portable device of Goldberg to establish easy
`removal and replacement of the sensor 104a, and predictably
`resulting in a secure, wired connection. EX1006, 2:34-3:4;
`EX1003, ¶¶ 64-65.
`Pet. 22. Similarly, Dr. Yanulis testifies that Kiani shows that sensor input
`ports were a known vehicle for wired communication, and including a port
`on Goldberg’s housing would predictably enable wired communication with
`pulse oximeter 104a while allowing easy removal and replacement of sensor
`104a providing the adaptability required by clinicians. Ex. 1003 ¶ 65.
`Figure 2 of Goldberg shows the first sensor communication port faces
`the hand and exists on the side of the housing facing the hand when the
`person is wearing the portable device as further required by this claim
`limitation 1(d) and as depicted below. Pet. 20 (citing Ex. 1003 ¶ 66).
`
`
`5 Port 540 is the oximeter output for connection to the external pulse
`oximeter. Ex. 1006, Fig. 5, 8:31–9:2. A sensor input port is listed as 550
`but not shown. Id.
`
`21
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
`
`
`
`Petitioner’s annotated Figure 2 of Goldberg (Pet. 21) with added notation
`showing where Petitioner contends Kiani’s sensor port would be located.
`Petitioner shows how the combination of Goldberg and Kiani teaches
`that the pulse oximetry sensor 104a provides electrical signals representing
`oxygen saturation to the electronic controller 102 via a wired connection and
`through the first sensor communication port. Pet. 21, 23–24. As further
`required by limitation 1(e), Petitioner demonstrates that Goldberg’s pulse
`oximetry sensor is attached to a finger of the patient’s hand. Pet. 24.
`Limitation 1(f) requires that “the wired communication with the pulse
`oximetry sensor provided at least partly in the analog domain.” See supra.
`Petitioner recognizes that G
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
