Trials@uspto.gov
`571-272-7822
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`Paper 43
`Date: November 24, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01015
`Patent 9,795,300 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Granting In Part and Dismissing In Part Petitioner’s Motion to Correct
`Typographical Errors in the Petition
`37 C.F.R. § 42.104(c)
`Dismissing Petitioner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`571-272-7822
`
`
`
`
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`Paper 43
`Date: November 24, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01015
`Patent 9,795,300 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Granting In Part and Dismissing In Part Petitioner’s Motion to Correct
`Typographical Errors in the Petition
`37 C.F.R. § 42.104(c)
`Dismissing Petitioner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`
`IPR2020-01015
`Patent 9,795,300 B2
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`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`Sotera Wireless, Inc. (“Petitioner”) filed a Petition requesting inter
`
`partes review of claims 1–20 (“the challenged claims”) of U.S. Patent No.
`9,795,300 B2 (“the ’300 patent,” Ex. 1001). Paper 1 (“Pet.”).1 We
`instituted trial to determine whether the challenged claims were unpatentable
`as follows:
`Claims Challenged
`1–20
`
`Reference(s)/Basis
`Goldberg,2 Kiani,3 Money4
`
`35 U.S.C. §
`103
`
`1–20
`
`1–5, 10–20
`
`1–5, 10–20
`
`6–9
`
`103
`
`103
`
`103
`
`103
`
`Money, Kiani, Akai5
`
`Goldberg, Kiani, Money,
`Taylor6
`
`Money, Kiani, Akai,
`Taylor
`
`Goldberg, Kiani, Money
`Taylor, Hylton7
`
`
`1 In support of its Petition, Petitioner relies on the Declaration of Dr. George
`Yanulis (Ex. 1003).
`2 US Patent No. 6,840,904 issued Jan. 11, 2005 (“Goldberg”) (Ex. 1005).
`3 PCT Publication No. WO 00/42911, published on July 27, 2000 (“Kiani”)
`(Ex. 1006).
`4 US Patent No. 5,919,141 issued on July 6, 1999 (“Money”) (Ex. 1008).
`5 EP0880936A2 published on Dec. 2, 1998 (“Akai”) (Ex. 1007).
`6 PCT Publication WO 96/15994, published on May 23, 1996 (“Taylor”)
`(Ex. 1009).
`7 U.S. Patent No. 5,793,413 issued Aug. 11, 1998 (“Hylton”) (Ex. 1010).
`2
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`Patent 9,795,300 B2
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`
`Claims Challenged
`
`6–9
`
`35 U.S.C. §
`103
`
`Reference(s)/Basis
`Money, Kiani, Akai,
`Taylor, Hylton
`
`See Paper 12 (“Inst. Dec.”).
`Masimo Corporation (“Patent Owner” or “Masimo”) timely filed a
`Patent Owner Response. Paper 23 (“PO Resp.”).8, 9 Petitioner filed a Reply
`to the Response. Paper 27 (“Pet. Reply”).10 Patent Owner filed a Sur-reply.
`Paper 32 (“PO Sur-reply”). Petitioner also filed a Motion to Exclude.
`Paper 36 (“MTE”). Patent Owner filed an Opposition to that Motion to
`Exclude (Paper 36, “PO Opp. MTE”), to which Petitioner replied (Paper 38,
`“Pet. Reply MTE”). We held an oral hearing on August 26, 2021.11 A
`transcript of the oral argument appears in the record. Paper 42 (“Tr.”).
`For the reasons set forth below, we determine that Petitioner has
`shown by a preponderance of the evidence that claims 1–20 of the ’300
`patent are unpatentable. See 35 U.S.C. § 316(e).
`
`
`8 Patent Owner provides a “Declaration of Alan L. Oslan In support of
`Patent Owner’s Response” (Ex. 2010).
`9 As was authorized by the panel (Paper 15), and prior to the filing of the
`Patent Owner Response, Petitioner filed a “Petitioner’s Motion to Correct
`Typographical Errors in the Petition Under 37 C.F.R. § 42.104(c).”
`Paper 16 (“MTC”). Patent Owner filed an Opposition to that Motion. Paper
`17 (“Opp. MTC”). We address Petitioner’s Motion to the extent necessary
`in this Final Written Decision.
`10 In support of the Reply, Petitioner provides a Declaration of Bryan
`Bergeron, MD. Ex. 1040.
`11 As was requested by both parties (Papers 33, 34), we held a consolidated
`oral argument that involved each of IPR2020-00912, IPR2020-00954,
`IPR2020-01015 (this proceeding), and IPR2020-01054.
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`B. Related Proceedings
`The parties identify 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
`proceeding involving the ’300 patent. Pet. 2; Paper 4, 1. Patent Owner also
`identifies the following inter partes review proceedings involving patents
`asserted in the related proceeding:
`IPR2020-00912, challenging U.S. Patent No. 10,213,108;
`IPR2020-00954, challenging U.S. Patent No. 9,788,735;
`IPR2020-00967, challenging U.S. Patent No. RE47,244;
`IPR2020-01019, challenging U.S. Patent No. RE47,353;
`IPR2020-01033, challenging U.S. Patent No. RE47,249;
`IPR2020-01054, challenging U.S. Patent No. 9,872,623;
`IPR2020-01078, challenging U.S. Patent No. RE47,218; and
`IPR2020-01082, challenging U.S. Patent No. 10,255,994.
`Paper 4, 2.12
`Patent Owner further identifies various applications that claim priority
`to, or share a priority claim with, the ’300 patent. Id. at 1–2.
`
`C. The ’300 Patent
`The ʼ300 patent is titled “Wearable Portable Patient Monitor.”
`Ex. 1001, code (54). The ’300 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 ’300 patent is directed to
`“[a] wearable portable physiological monitor configured to wirelessly
`
`
`12 With the exception of IPR2020-01082, trial was instituted in all of the
`noted proceedings.
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`transmit real time information regarding a plurality [of] physiological
`parameters.” Id. at code (57). As is further described in the Abstract:
`The portable monitor includes a plurality of sensor ports, where
`at least a first sensor port is positioned on a side of a housing of
`the portable monitor such that, when the portable monitor is
`attached to an arm of a patient, a wired connection extending
`from the first sensor port to a first physiological sensor
`positioned on a digit of the patient follows a path to the digit of
`the patient that avoids tangling of the wired connection. The
`portable monitor further includes one or more processing devices
`configured to cause display of parameter values, combine
`information indicative of the signals into a single word or bit
`stream, and encode and generate a baseband signal. Further
`includes a transmitter to modulate the baseband signal and
`wirelessly transmit.
`
`Id.
`
`The ’300 patent additionally expresses that a drawback to
`“[c]onventional physiological measurement systems,” is the requirement of a
`“patient cable connection between sensor and monitor.” Id. at 2:23–24.
`And it describes the problems related with “disconnection of monitoring
`equipment and a corresponding loss of measurements,” when needing to
`move patients. Id. at 2:24–28. A goal of the ’300 patent is to allow wireless
`pulse oximetry monitoring. Id. at 2:34–38; compare Fig 113, with Fig. 3.
`
`
`13 Figure 1 is labeled “Prior Art” and is described as “an illustration of a
`prior art pulse oximetry system.” Id. at 3:66–67.
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`Figure 3 of the ’300 patent is reproduced below:
`
`
`Figure 3 above illustrates “a physiological measurement communications
`adapter.” Id. at 4:3–4. Communications adapter 300 includes sensor
`module 400 and monitor module 500. Id. at 4:49–50.
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`Figure 4A of the ’300 patent is reproduced below:
`
`
`Figure 4A above shows an embodiment of sensor module 400. Id. at 5:28–
`29. Sensor module 400 includes wrist-mounted module 410, which in turn
`includes wrist strap 411, case 412 and auxiliary cable 420. Id. at 5:29–31.
`Auxiliary cable 420 mates to sensor connector 318 and provides a wired link
`between sensor 310 and wrist-mounted module 410. Id. at 5:35–38. 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. 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 5:56–62. In such embodiments, the wearable
`device can communicate with multiple sensors, and a multiple parameter
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`sensor module with sensor interfaces and signal processors may be used as
`depicted in Figure 13 (reproduced below). Id. at 11:54–67.
`
`
`
`Figure 13 depicts a functional block diagram of a sensor module
`configured for multiple sensors. Id. at 4:26–27.
`
`D. Illustrative Claim
`Claim 1 is illustrative of the claims at issue and is reproduced below
`in chart form with Petitioner’s added designations for ease of discussion in
`this Decision:
`Designation
`Claim1
`Preamble
`1(a)
`
`Claim Language
`A wearable, portable physiological monitor
`configured to wirelessly transmit real time
`information regarding a plurality physiological
`parameters, the portable monitor comprising:
`
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`Patent 9,795,300 B2
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`
`Designation
`Limitation
`1(b)
`
`1(c)
`
`1(d)
`1(e)
`
`1(f)
`
`1(g)
`
`1(h)
`
`1(i)
`1(j)
`
`1(k)
`
`Claim Language
`a plurality of sensor ports positioned on a housing of
`the portable monitor and configured to provide
`respective wired interfaces with different respective
`physiological sensors of a plurality of physiological
`sensors, wherein:
`at least a first sensor port of the plurality of sensor
`ports is positioned on a side of the housing of the
`portable monitor such that, when the portable monitor
`is attached to an arm of a patient, a wired connection
`extending from the first sensor port to a first
`physiological sensor positioned on a digit of the
`patient follows a path to the digit of the patient that is
`substantially perpendicular to the side of the housing
`and avoids tangling of the wired connection;
`one or more processing devices configured to:
`receive, via the plurality of sensor ports, a plurality of
`signals from the plurality of physiological sensors, at
`least some of the plurality of signals including digital
`information, and at least some of the plurality of
`signals including analog information;
`cause to be displayed, on a display of the portable
`monitor, a plurality of physiological parameters
`values responsive to the plurality of signals;
`combine information indicative of the plurality of
`signals into a single digital word or bit stream; and
`encode the single digital word or bit stream to
`generate a baseband signal; and
`a transmitter configured to:
`modulate the baseband signal with a carrier to
`generate a transmit signal; and
`wirelessly transmit the transmit signal to a remote
`patient monitoring device configured to decode the
`signal and display, on a remote display, the plurality
`of physiological parameters values responsive to the
`plurality of signals.
`
`Pet. xii; see Ex. 1001, 13:12–49.
`
`9
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`
`Independent claim 16 (also challenged) is similar to claim 1 and
`directed to a “battery-powered wearable physiological monitoring device.”
`Id. at 14:44–45. Claim 16 specifies that a “plurality of sensor
`communication ports” includes a first, second, and third sensor
`communication port. Id. at 14:48–66. Similar to claim 1, claim 16 also
`distinctively requires “the first signal including analog information,” and
`“the second signal including digital information.” Id. at 15:3–7.
`
`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. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015).
`
`A. Petitioner’s Motion to Correct
`As authorized by the panel (Paper 15), Petitioner filed a “Motion to
`Correct Typographical Errors in the Petition Under 37 C.F.R. § 42.104(c).”
`See Paper 16 (“MTC” or “Motion to Correct”). As was also authorized,
`Patent Owner filed an “Opposition to Petitioner’s Motion Under 37 C.F.R.
`§ 42.104(c).” See Paper 17 (“Opp. MTC”). In the Motion to Correct,
`Petitioner seeks to correct what it characterizes as “[t]wo typographical
`errors (a ‘numerical typo’ and an ‘alphabetical typo’) [that] occurred in
`several cross-references in the petition.” MTC 1. Patent Owner opposes the
`motion on the basis that, in its view, each of four factors evaluated by the
`panel in Ivantis, Inc. v. Glaukos Corp., IPR2018-01180, Paper 14 at 9
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`10
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`(PTAB 2018) in considering a Rule 41.104(c) motion weighs against
`Petitioner’s Motion. Opp. MTC 2.14
`1. Numerical Typos
`We turn first to the “numerical typo[s]” that Petitioner seeks to
`correct. See MTC 1. Petitioner contends the following:
`The numerical typo occurred on pages 45 and 74, in Sections
`IX.A.17.d, IX.A.17.e, IX.B.17.d, and IX.B.17.e. In each of these
`sections, the petition says, “See Section IX.A.11.a”, “See Section
`IX.A.11.b”, “See Section IX.B.11.a” or “See Section IX.B.11.b”.
`Petitioner seeks to correct the petition to remove the lowercase
`“a” or “b” in these four instances. This error is clear because the
`(uncorrected) referenced subsections (…11.a, …11.b) do not
`exist, as recognized in Patent Owner’s Preliminary Response
`(“POPR”).
`
`***
`Regarding the numerical typos, in earlier drafts of the petition,
`Petitioner separated Sections IX.A/B.11 into two subsections
`based on claim 10’s multiple limitations, and Sections IX.A/B.11
`previously had subsections “11.a” and “11.b”. Subsequently,
`subsections 11.a and 11.b were merged into one section, resulting
`in Sections IX.A.11 and IX.B.11. Due to an oversight, Petitioner
`failed to update the cross-references in Sections IX.A.17.d,
`IX.A.17.e, IX.B.17.d, and IX.B.17.e to reflect that merger.
`MTC 1, 2.
`
`Thus, with respect, for instance, to page 45 of the Petition, Petitioner
`contends that the noted references to sections “IX.A.11.a” and “IX.A.11.b”
`in addressing claim 16 were inadvertent vestiges of a preliminary draft of the
`
`
`14 Those factors are stated to include “Nature of the error” (Opp. MTC 2),
`“Length of time” (id. at 3), “Prejudice to Patent Owner by allowing the
`proposed revisions” (id.), and “Impact of the proposed revisions on the
`proceeding” (id. at 5).
`
`11
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`IPR2020-01015
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`Petition, and that the Petition intended to simply reference section “IX.A.11”
`as a whole.
`
`It is apparent that there are no separate subsections “a” and “b” as a
`part of section IX.A.11. But, it is also clear that there is only one section
`“IX.A.11” (the entirety of which appears on page 39 of the Petition), which
`conveys that the references on page 45 of the Petition to sections
`“IX.A.11.a” and “IX.A.11.b” plainly direct a reader to the portion of the
`Petition on page 39 that constitutes section “IX.A.11.” That section
`“IX.A.11” addresses claim 10, which depends from claim 1 and adds the
`features of “a second sensor port configured to receive a signal from an EKG
`sensor arrangement; and a third sensor port configured to receive a signal
`from a blood pressure sensor arrangement.” Ex. 1001, 14:18–21. The
`identified portions of claim 16 on page 45, designated as limitations “16(d)”
`and “16(e)” in the Petition, refer to components of “a plurality of sensor
`communication ports,” which include “a second sensor communication port”
`and “a third sensor communication port.” Id. at 13:48, 58–65. Despite the
`errant references to subsections “a” and “b” as a part of page 45 of the
`Petition, it follows plainly and logically that the Petition seeks to address the
`“second sensor communication port” and “third sensor communication port”
`limitations of claim 16 via the discussion of the “second sensor port” and
`“third sensor port” limitations that are recited in claim 10 (as is discussed in
`section IX.A.11 appearing on page 39 of the Petition). Given the apparent
`similarities of the added additional second and third port limitations of
`claim 10 considered alongside the second and third port limitations of claim
`16 (limitations 16(d) and 16(e)), it is difficult to reach the conclusion that the
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`Petition is unintelligible in that regard, as is seemingly advocated by Patent
`Owner (see, e.g., PO Resp. 15–16).
`
`We are cognizant of Patent Owner’s view that the above-noted
`“numerical typos” correction to the Petition sought by Petitioner constitutes
`a substantive change to the Petition (Opp. MTC 1–2), was not made in a
`timely fashion (id. at 3), presents prejudice to Patent Owner (id. at 3–5), and
`presents what Patent Owner regards as a “new unpatentability ground[]” (id.
`at 4). We, however, cannot conclude that the transparent mistaken reference
`in the Petition to sections “IX.A.11.a” and “IX.A.11.b” in lieu simply of a
`reference to section “IX.A.11” introduces a new ground that is of
`substantively distinct character to what was set forth in the Petition. As
`discussed above, there is manifest correspondence as between the “second
`sensor port” and “third sensor port” limitations of claim 10 with the “second
`sensor communication port” and “third sensor communication port”
`limitations of claim 16. That is plainly true irrespective of the minor
`indirection that may be attributed to the errant “a” and “b” subsection
`identifiers present at page 45 of the Petition. Indeed, in other briefing of
`record, Patent Owner, itself, characterizes the terms “sensor port” and
`“sensor communication port” as being “interchangeabl[e].” PO Sur-reply 2
`n.2.
`
`Moreover, we do not agree with Patent Owner’s assertions that it
`faces prejudice on the basis that the proposed correction of the noted
`numerical typo on page 45 of the Petition constitutes a “new unpatentability
`ground[]” (MTC Opp. 4), or because of the timing of Petitioner’s request to
`correct that typo (id. at 3). Initially, we observe that Petitioner filed its
`Motion to Correct on January 11, 2021 (Paper 16), nearly two months before
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`the filing of the Patent Owner Response on March 2, 2021 (Paper 23). Thus,
`Patent Owner was on notice well before the filing of its Patent Owner
`response as to Petitioner’s position concerning the typos on page 45 in
`mistakenly referencing subsections “a” and “b” of section IX.A.11.15
`Furthermore, a central dispute as a part of this proceeding, and which
`is the focus of both parties’ briefings to the panel, is whether the recitation of
`multiple sensor ports as a part of the claims of the ’300 patent distinguishes
`those claims over the prior art of record. Independent claim 1 of the ’300
`patent, for instance, includes the requirement of “a plurality of sensor ports”
`(Ex. 1001, 13:16), and dependent claim 10 specifically introduces “a second
`sensor port” and “a third sensor port” (id. at 14:16–21). Petitioner
`unambiguously proposes that the combined teachings of Goldberg and Kiani
`account for those requirements of multiple sensor ports. See, e.g., Pet. 18–
`23, 39. Patent Owner had the opportunity, and, indeed, availed itself of that
`opportunity, to challenge the Petition in that regard. See, e.g., PO Resp. 21–
`36; PO Sur-reply 6–15. It is a dubious proposition that the mistaken
`references to subsections “a” and “b” in connection with section IX.A.11 in
`the Petition (Pet. 45) suggest that Patent Owner was unaware or lacked
`notice that Petitioner was also challenging claim 16, and specifically its
`recited “second sensor communication port” and “third sensor
`communication port” features, based on the combined teachings of Goldberg
`
`
`15 We note in passing, as does Petitioner (MTC 3–4), that the declaration of
`Dr. Yanulis that accompanied the Petition included cross-references
`addressing claim limitations, including those of claim 16, without any
`typographical errors.
`
`14
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`and Kiani as expressed in section IX.A.11 (appearing on page 39 of the
`Petition).
`Even further, as noted above, both parties requested a consolidated
`oral argument involving each of IPR2020-00912, IPR2020-00954, IPR2020-
`01015, and IPR2020-01054. Patent Owner, in particular, requested such
`consolidation “[d]ue to the overlap in issues between the four IPRs.”
`Paper 33, 2. Each of the patents underlying IPR2020-00912, IPR2020-
`00954, and IPR2020-01054 includes claims that require multiple sensor
`ports, and specifically second and third sensor ports.16 In each of those three
`proceedings, Petitioner advances grounds of unpatentability based, in part,
`on Goldberg and Kiani, whose teachings are stated to account for second and
`third sensor ports in essentially the same manner as Petitioner does here with
`respect to all of the claims of the ’300 patent, including claim 16.
`For instance, in IPR2020-00912, Petitioner proposes that Goldberg’s
`and Kiani’s teachings account for limitations in claim 1 of the ’108 patent of
`“a second sensor port” and “a third sensor port.” See IPR2020-00912,
`Paper 1, xii, 28–30. In IPR2020-00954, Petitioner contends that Goldberg
`and Kiani teach the limitations in claim 13 of the ’735 patent of “a second
`sensor communication port” and “a third sensor communication port.” See
`IPR2020-00954, Paper 1, xvi, 41. Similarly, in IPR2020-01054, Petitioner
`conveys that Goldberg and Kiani teach the limitations in claim 1 of the ’623
`patent of “a second sensor port” and “a third sensor port.” IPR2020-01054,
`
`16 See, e.g.: (1) US Patent No. 10, 213,108 B2 (“the’108 patent”) (IPR2020-
`00912, Ex. 1001), claims 1 and 19; (2) US Patent No. 9,788,735 B2 (“the
`’735 patent”) (IPR2020-00954, Ex. 1001), claims 1, 13, and 20; and (3) US
`Patent No. 9,872,623 B2(“the ’623 patent”) (IPR2020-01054, Ex. 1001),
`claims 1, 17, and 20.
`
`15
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`Paper 1, xiv, 31–32. Additionally, during the oral hearing, which involved
`all four of the pertinent proceedings, counsel for Patent Owner expressed
`recognition that a basis of Petitioner’s proposal of unpatentability is “to
`modify Goldberg in view of Kiani to add three sensor ports[.]” Tr. 57:22–
`58:4. Given the above, and particularly given Patent Owner’s recognition of
`the “overlap in issues” between the four proceedings, this is not a
`circumstance that supports Patent Owner’s view that the typos on at least
`page 45 of the Petition obfuscated Petitioner’s clear intent, as a part of its
`Petition, to apply Goldberg’s and Kiani’s teachings to elements 16(d) and
`16(e) of the ’300 patent involved here.
`Accordingly, having considered the respective positions of the parties
`as to Petitioner’s Motion to Correct, we conclude that granting in part of the
`Motion is warranted at least to the extent that we regard the numerical typos
`pertaining to the references to “a” and b” in connection with section IX.A.11
`that appear on page 45 as clearly inadvertent errors that do not obscure the
`Petition’s assessment of the noted requirements of claim 16 in conjunction
`with the prior art. In that regard, in considering the Motion to Correct taken
`with the Petition, it is clear that page 45 of the Petition directs attention to
`section IX.A.11 that appears on page 39 of the Petition, which plainly
`correlates limitations of claim 10, pertaining to second and third sensor
`ports, with corresponding limitations of claim 16.17
`
`
`17 We determine that it is unnecessary to reach the same conclusion when it
`comes to the numerical typos on pages 74 of the Petition. Those typos apply
`to alternative proposed grounds of unpatentability based primarily on
`Money. As discussed infra, however, we determine that it is unnecessary to
`address those grounds based on Money. Accordingly, we need not reach the
`Motion to Correct when it comes to those grounds, and, therefore, dismiss
`16
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`
`2. Alphabetical Typos
`The errors in the Petition that Petitioner characterizes as the
`“alphabetical typo[s]” are more substantial in nature than the numerical
`typos discussed above. See MTC 1. We also are cognizant of the
`inconsistencies noted by Patent Owner when it comes to Petitioner’s Motion
`addressing those alphabetical typos. Opp. MTC 2. Specifically, as Patent
`Owner notes (id.), the Motion requests “to correct the petition to replace the
`letter “A” with “B” in . . . twelve instances” in sections appearing on pages
`77, 79, and 83–85, yet those pages include fourteen instances of the
`appearance of “A” in reference to sections of the Petition. See MTC 1;
`Pet. 77, 79, and 83–85. It is not particularly clear just precisely which
`instances of “A” Petitioner actually seeks to change to “B.” Nevertheless,
`all of the alphabetical typos are directed to proposed grounds of
`unpatentability based primarily on Money. As discussed below, we
`determine that it is not necessary to reach the merits of those grounds.
`Accordingly, we conclude that we need not reach the Motion to
`Correct in connection with the alphabetical typos, and dismiss the Motion
`pertaining to those particular alphabetical typos as moot.
`
`B. Principles of Law
`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
`
`
`the Motion to Correct in connection with the numerical typo on page 74 of
`the Petition as moot.
`
`17
`
`
`
`IPR2020-01015
`Patent 9,795,300 B2
`
`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.18 See 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).
`At this final stage, we determine whether a preponderance of the
`evidence of record shows that the challenged claims would have been
`rendered obvious in view of the asserted prior art. We analyze the asserted
`grounds of unpatentability in accordance with these principles.
`
`C. 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
`patient monitoring systems.” Pet. 14–15 (citing Ex. 1003 ¶¶ 27–32). Patent
`Owner does not dispute Petitioner’s contention on the final record, or
`propose its own assessment of the level of ordinary skill in the art. See PO
`Resp. 11.
`
`
`18 The parties have not directed our attention to any objective evidence of
`non-obviousness.
`
`18
`
`
`
`IPR2020-01015
`Patent 9,795,300 B2
`
`
`Based on the record before us, we adopt Petitioner’s proposed
`description of the person of ordinary skill in the art. We also note that the
`applied prior art reflects the appropriate level of skill at the time of the
`claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001).
`
`D. 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).
`In the Petition, Petitioner expressed that “the terms of the unexpired
`’300 patent’s claims are to be given their plain and ordinary meaning, as
`
`19
`
`
`
`IPR2020-01015
`Patent 9,795,300 B2
`
`understood by one of ordinary skill in the art, in view of the ’300 patent’s
`specification.” Pet. 15. Petitioner further stated that “the Board need not
`construe any claim terms to find the claims invalid.” Id. at 15 n.1.
`In our Decision on Institution, we gave all claim terms their plain and
`ordinary meaning and determined that it was unnecessary to make explicit
`that meaning for any claim term. Inst. Dec. 22. We, however, did note that
`“the claims require multiple ‘sensor ports’,” and expressed that “[t]o the
`extent the parties contend this term has any special meaning or otherwise
`should be construed, the parties should clearly identify what they contend
`the scope of a ‘sensor port’ encompasses.” Id. Both parties have provided
`discussion as to the meaning of “sensor port,” although neither party
`contends that “sensor port” has a special meaning. See PO Resp. 11–15; PO
`Sur-reply 1–6; Pet. Reply 1–4.
`According to Patent Owner, “sensor port” should be given its plain
`and ordinary meaning, and that such meaning is a “connector that mates with
`a compatible connector from a sensor.” PO Resp. 11; PO Sur-reply 1–2.19
`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. PO Resp. 11–13 (citing
`Ex. 1001, 5:1–5, 5:33–36, Figs. 3, 4A). In essence, Patent Owner seeks to
`distinguish a connection that is a “port” from a connection regarded as a
`“hardwired or direct connection.” Id. at 14; see PO Sur-reply 2–6. More
`specifically, Patent Owner is of the view that a person of ordinary skill in the
`
`
`19 Patent Owner also characterizes its proposed meaning as applying to
`“sensor communication port.” PO Sur-reply 2.
`20
`
`
`
`IPR2020-01015
`Patent 9,795,300 B2
`
`art “would understand that the term ‘sensor port’ involves a removable
`connection, and does not include hardwired connections.” PO Resp. 14.
`Petitioner, in Reply, argues that “[t]he construction of ‘sensor port’ is
`not an issue that the Board must resolve to find the ’300 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 even if you look at slide 15 of their deck,
`the dictionary definitions don’t require removable. It does not matter.
`We’ve got prior art all over the place.”).
`Because we dete
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