Trials@uspto.gov
`571-272-7822
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`Paper 39
`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.
`____________
`
`IPR2020-01054
`Patent 9,872,623 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)
`Dismissing Petitioner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`571-272-7822
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`
`
`
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`
`Paper 39
`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.
`____________
`
`IPR2020-01054
`Patent 9,872,623 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)
`Dismissing Petitioner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`
`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.
`9,872,623 B2 (“the ’623 patent,” Ex. 1001). Paper 1 (“Pet.”).1 We
`instituted trial to determine whether the challenged claims were unpatentable
`as follows:
`Claims Challenged
`1, 2, 4, 5, 12, 14–17
`
`Reference(s)/Basis
`Goldberg,2 Kiani,3
`
`35 U.S.C. §
`103
`
`3
`
`6–11, 13, 18, 19
`
`20
`
`103
`
`103
`
`103
`
`Goldberg, Kiani, Fujisaki4
`
`Goldberg, Kiani, Money5
`
`Goldberg, Kiani, Money,
`Fujisaki, Estep,6 Taylor, 7
`Hylton8
`
`
`1 In support of its Petition, Petitioner relies on the Declaration of George E.
`Yanulis, D.Eng. (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. 4,425,921, issued on Jan. 17, 1984 (“Fujisaki”) (Ex. 1009).
`5 US Patent No. 5,919,141 issued on July 6, 1999 (“Money”) (Ex. 1008).
`6 PCT Publication No. WO 99/13698, published Mar. 18, 1999 (“Estep”)
`(Ex. 1010).
`7 PCT Publication WO 96/15994, published on May 23, 1996 (“Taylor”)
`(Ex. 1011).
`8 U.S. Patent No. 5,793,413 issued Aug. 11, 1998 (“Hylton”) (Ex. 1012).
`
`2
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`
`Claims Challenged
`1, 2, 4–19
`
`35 U.S.C. §
`103
`
`Reference(s)/Basis
`Money, Kiani, Akai9
`
`3
`
`20
`
`103
`
`103
`
`Money, Kiani, Akai,
`Fujisaki
`
`Money Kiani, Akai,
`Fujisaki, Estep, Taylor,
`Hylton
`
`See Paper 12 (“Inst. Dec.”).
`Masimo Corporation (“Patent Owner” or “Masimo”) timely filed a
`Patent Owner Response. Paper 20 (“PO Resp.”).10 Petitioner filed a Reply
`to the Response. Paper 24 (“Pet. Reply”).11 Patent Owner filed a Sur-reply.
`Paper 29 (“PO Sur-reply”). Petitioner also filed a Motion to Exclude.
`Paper 33 (“MTE”). Patent Owner filed an Opposition to that Motion to
`Exclude (Paper 34), to which Petitioner replied (Paper 35). We held an oral
`hearing on August 26, 2021.12 A transcript of the oral argument appears in
`the record. Paper 38 (“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 ’623
`patent are unpatentable. See 35 U.S.C. § 316(e).
`
`
`9 EP0880936A2 published on Dec. 2, 1998 (“Akai”) (Ex. 1007).
`10 In support of the Patent Owner Response, Patent Owner relies on a
`Declaration of Alan L. Oslan. Ex. 2010.
`11 In support of the Reply, Petitioner provides a Declaration of Bryan
`Bergeron, MD. Ex. 1040.
`12 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, and IPR2020-01054 (this proceeding).
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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 ’623 patent. Pet. 2; Paper 5, 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;
`IPR2020-01015, challenging U.S. Patent No. 9,795,300;
`IPR2020-01033, challenging U.S. Patent No. RE47,249;
`IPR2020-01078, challenging U.S. Patent No. RE47,218; and
`IPR2020-01082, challenging U.S. Patent No. 10,255,994.
`Paper 5, 2.13
`Patent Owner further identifies various applications that claim priority
`to, or share a priority claim with, the ’623 patent. Id. at 1–2.
`
`C. The ’623 Patent
`The ʼ623 patent is directed to an “Arm Mountable Portable Patient
`Monitor.” Ex. 1001, code (54). The ’623 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 ’623
`patent is directed to “[a]n arm mountable portable patient monitoring device
`
`
`13 With the exception of IPR2020-01082, trial was instituted in all of the
`noted proceedings.
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`configured for both on patient monitoring of parameter measurements using
`one or more sensors operatively connected to the portable patient monitoring
`device and wireless transmission of parameter measurements.” Id. at code
`(57). As is further described in the Abstract:
`The arm mountable portable patient monitoring device includes
`a pulse oximetry sensor configured to be wrapped around a digit
`of a patient, a housing having a size and shape configured for
`mounting to a lower arm of the patient, and a strap mountable to
`the back side of the housing and configured to secure the housing
`to the lower arm of the patient. The housing includes a display,
`a first sensor port positioned on the housing to face toward a hand
`of the patient, second and third sensor ports, a battery, signal
`processing arrangements
`to cause display of parameter
`measurements, and a transmitter to transmit information
`indicative of the measurements.
`
`Id.
`
`The ’623 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 2:22–24.
`And 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 ’623 patent is to allow wireless
`pulse oximetry monitoring. Id. at 2:34–38; compare Fig 1,14 with Fig. 3.
`
`
`14 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 ’623 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 ’623 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
`further 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 4:24–25.
`
`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
`Claim 1
`Preamble
`1(a)
`
`Claim Language
`An arm mountable portable patient monitoring device
`configured for both on-patient monitoring of
`parameter measurements using one or more sensors
`operatively connected to the portable patient
`monitoring device and wireless transmission of
`parameter measurements, the portable patient
`monitoring device comprising:
`
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`
`1(c)
`
`1(d)
`
`1(e)
`1(f)
`
`1(g)
`
`Designation
`Limitation
`1(b)
`
`Claim Language
`a pulse oximetry sensor configured to be wrapped
`around a digit of a patient, the pulse oximetry sensor
`including at least:
`a light emitter configured to emit light into a tissue
`site of the digit of the patient;
`a light detector configured output a signal responsive
`to at least a portion of the emitted light after
`attenuation by tissue of the tissue site; and
`a tail configured to electrically convey the signal;
`a housing configured for, and having a size and shape
`configured for, mounting to a lower arm of the
`patient, the housing including at least:
`a display positioned on a front side of the housing
`that is opposite a back side of the housing, the display
`configured to show a status of the portable patient
`monitoring device and one or more parameter
`measurements so as to be viewable by a user;
`a first sensor port positioned on a first side of the
`housing, the first side of the housing configured to
`face toward a hand having the digit of the patient
`under measurement,
`the first sensor port configured to physically couple
`to the tail of the pulse oximetry sensor and to
`electrically receive the signal from the pulse oximetry
`sensor,
`wherein the first sensor port is positioned on the first
`side of the housing such that, when the tail is
`physically coupled to the first sensor port, the tail
`extends from the first sensor port along an axis
`perpendicular to a face of the first side of the housing
`on which the first sensor port is positioned;
`a second sensor port configured to receive
`information from an EKG[15] sensor arrangement via
`a wired connection;
`
`15 We understand that the ’623 patent and Patent Owner use the abbreviation
`“EKG” to refer to electrocardiogram (see, e.g., Ex. 1001, 1:42; PO Resp.
`35), whereas Petitioner uses the abbreviation “ECG” (see, e.g., Pet. 31).
`9
`
`1(h)
`
`1(i)
`
`1(j)
`
`1(k)
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`IPR2020-01054
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`Designation
`1(l)
`
`1(m)
`
`1(n)
`
`1(o)
`1(p)
`
`1(q)
`
`1(r)
`1(s)
`
`1(t)
`
`Claim Language
`a third sensor port configured to receive information
`from a blood pressure sensor arrangement via a wired
`connection;
`a rechargeable battery configured to power the
`portable patient monitoring device including the
`pulse oximetry sensor;
`one or more signal processing arrangements
`configured to:
`receive the signal from the pulse oximetry sensor;
`derive, based on the signal, measurements of oxygen
`saturation and pulse rate; and
`cause to be displayed, on the display, the
`measurements of oxygen saturation and pulse rate;
`and
`a transmitter configured to:
`wirelessly transmit a transmit signal indicative of the
`measurements of oxygen saturation and pulse rate to
`a separate computing device configured to display the
`measurements of oxygen saturation and pulse rate;
`and
`strap mountable to the back side of the housing, the
`strap configured to secure the housing to the lower
`arm of the patient.
`
`Pet. xiii–xiv; see Ex. 1001, 13:14–14:6.
`Independent claims 17 and 20 (also challenged) are similar to claim 1
`and are each directed to an “arm mountable portable patient monitoring
`device.” Id. at 16:12–13.
`
`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
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`owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015).
`
`A. 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
`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.16 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.
`
`
`16 The parties have not directed our attention to any objective evidence of
`non-obviousness.
`
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`B. 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. 16 (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. 15.
`Based on the current record and for the purposes of this Decision, 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).
`
`C. 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
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`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) (citing
`Aventis Pharm. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir.
`2013). “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 “’623 patent’s claims are
`to be given their plain and ordinary meaning, as understood by one of
`ordinary skill in the art, in view of the ’623 patent’s specification.” Pet. 17.
`Petitioner further stated that “the Board need not construe any claim terms to
`find the claims invalid.” Id. at 17 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. 23. 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. 16–20; PO
`Sur-reply 1–6; Pet. Reply 1–5.
`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. 16; PO Sur-reply 1–2.
`
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`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 16–18 (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 19; see PO Sur-reply 2–6. More
`specifically, Patent Owner is of the view that a person of ordinary skill in the
`art “would understand that the term ‘sensor port’ to involve a removable
`connection, and does not include hardwired connections.” PO Resp. 19.
`Petitioner, in Reply, argues that “[t]he construction of ‘sensor port’ is
`not an issue that the Board must resolve to find the ’623 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, as discussed below, we determine that Kiani in combination
`with Goldberg teaches the claimed sensor ports under any reasonable
`definition, including those offered by Patent Owner, we need not further
`elaborate on the scope of a “sensor port” or “sensor ports.” See, e.g.,
`Tr. 34:23–35:23, 36:14–24, 40:20–41:16, 53:18–19. That is to say that even
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`if agree with Patent Owner that the term “sensor 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
`connection that is a sensor port as further explained below.17 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 expressly construe any additional claim
`term.
`
`D. 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
`
`17 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. 28 (“[B]oth experts now
`agree that Kiani 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.
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`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.
`Figure 2 of Goldberg is reproduced below.
`
`
`Figure 2 of Goldberg depicts portable device 101a with 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.
`
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`2. Kiani
`Kiani discloses a portable pulse oximetry sensor that communicates
`with conventional bedside monitors. Ex. 1006, code (57). Kiani seeks to
`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’s Figure 5 is reproduced below:
`
`
`Figure 5 above depicts a handheld embodiment of a Universal/Upgrading
`Pulse Oximeter (UPO). Ex. 1006, 7:2. Kiani describes that handheld
`embodiment 500 of the UPO that includes external power supply input 530,
`output port 540 for connection to the external pulse oximeter, and sensor
`input 550 at the top edge. Id. at 8:31–9:2. Kiani’s display 520 shows
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`measured oxygen saturation 522, pulse rate 524, confidence bar 528, low
`battery 572, and alarm enabled 574 status indicator. Id.
`
`3. Fujisaki
`Fujisaki is titled “Apparatus for Checking Pulse and Heart Rates.”
`Ex. 1009, code (54). Fujisaki teaches a small portable device for checking
`pulse rate and 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.
`
`
`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.
`
`4. 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. Id. at 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
`
`18
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`IPR2020-01054
`Patent 9,872,623 B2
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`interface to a wide variety of vital sign transducers, and process both analog
`and digital data.” Id. at 7:4–6. “[O]verall 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.
`
`5. Estep
`Estep teaches a wearable electric signal measurement device with a
`display 31 surrounded by a bezel (i.e., border). Ex. 1010, 4:24–27, Fig. 3C;
`Ex. 1003 ¶ 45.
`
`6. Taylor
`Taylor is titled “Wireless Radio Modem with Minimal Interdevice RF
`Interference.” Ex. 1011, code (54). Taylor’s Abstract reads as follows:
`A wireless radio modem that may be incorporated into a
`host system or connected through a PCMCIA or similar port to a
`host system includes radio frequency modulation/demodulation
`circuitry employing electronic device elements that operate in a
`frequency range that minimizes the RF interference between the
`radio modem and the host system. Radio modem power
`conservation is maximized by 1) simplifying signal modulation
`processing by use of a two-point waveform transition table,
`thereby reducing processing requirements; and 2) incorporating
`a “sleep mode” feature in which all non-timer circuitry is
`powered-down when not in use.
`Id. at code (57).
`7. Hylton
`Hylton is titled “Wireless Video Distribution.” Ex. 1012, code (54).
`Hylton’s Abstract is reproduced below:
`
`19
`
`
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`IPR2020-01054
`Patent 9,872,623 B2
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`
`A system and method for providing interactive multimedia
`services to subscriber premises utilizing wireless distribution
`within the subscriber premise. The service is provided via a
`communications link delivering to the subscriber premises broad
`band digital information including video and audio from a
`plurality of information providers and control signals in a
`multiplexed form. This multiplexed signal is then separated and
`processed on premise and distributed in a two-way fashion using
`frequency hopping code division multiple access (CDMA)
`spread spectrum using radio frequency signals preferably at UHF
`Upstream control signals from
`the user
`installation are
`communicated from the individual user terminals in the same
`wireless manner.
`Id. at code (57).
`
`8. 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).
`
`E. Asserted Obviousness in View of Goldberg and Kiani
`Petitioner asserts that claims 1, 2, 4, 5, 12, and 14–17 would have
`been obvious in view of Goldberg and Kiani. See Pet. 17–41. Patent Owner
`challenges that assertion. See PO Resp. 23–44; PO Sur-reply 6–14. We
`consider below the parties’ arguments made in connection with this ground.
`
`20
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`
`1. Summary of Petitioner’s Arguments and Evidence
`
`a) Claim 1
`
`(1) Preamble 1(a): “An arm mountable portable patient
`monitoring device configured for both on-patient
`monitoring of parameter measurements using one or more
`sensors operatively connected to the portable patient
`monitoring device and wireless transmission of parameter
`measurements, the portable patient monitoring device
`comprising:”
`Petitioner points to Goldberg as disclosing preamble 1(a) pertaining to
`an arm mountable portable patient monitoring device. Pet. 19–20. More
`particularly, Petitioner contends that “Goldberg teaches a portable device
`100 strapped to a person’s wrist or forearm, which receives data from at
`least a pulse oximetry sensor, a blood pressure cuff sensor, and a third sensor
`(e.g., an electrolyte sensor, etc.).” Id. at 19 (citing Ex. 1005, 4:57–67, 5:3–8,
`5:39–47; Ex. 1003 ¶ 59). Petitioner also contends that Goldberg discloses
`that “the sensor data collected by the portable device is transmitted to a
`remote computer 302.” Id. at 20 (citing Ex. 1003 ¶ 60; Ex. 1005, 5:9–24,
`5:39–47).18
`
`(2) Limitation 1(b): “a pulse oximetry sensor configured to be
`wrapped around a digit of a patient, the pulse oximetry
`sensor including at least:”
`With respect to limitation 1(b), Petitioner contends that “Goldberg
`teaches a pulse oximetry sensor wrapping around a patient’s finger.” Pet. 20
`(citing Ex. 1005, 4:60–64, Fig. 2; Ex. 1003 ¶ 62).
`
`18 The parties do not dispute that Goldberg teaches the subject matter recited
`in preamble. We agree that the preamble is satisfied by the prior art.
`Accordingly, we need not decide whether the preamble is limiting.
`21
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`IPR2020-01054
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`
`(3) Limitation 1(c): “a light emitter configured to emit light
`into a tissue site of the digit of the patient;”
`Concerning limitation 1(c), Petitioner notes that Goldberg teaches a
`pulse oximetry sensor, but that the sensor may not include a light emitter.
`Pet. 21. Petitioner, however, notes that “Kiani teaches pulse oximetry
`sensors [that] include a light emitter to detect oxygen saturation by emitting
`light into finger tissue.” Id. (citing Ex. 1006, 1:15–23; Ex. 1003 ¶ 64).
`Petitioner reasons that “it would have been obvious to modify Goldberg with
`Kiani because this modification represents a simple substitution of one
`known equivalent element (a pulse oximetry sensor) for another (a light-
`based oximetry sensor) to yield predictable results (non-invasively measure
`oxygen saturation using light absorption differential.)” Id. (citing KSR,
`550 U.S. at 415–16; Ex. 1006, 1:22–2:23; Ex. 1003 ¶ 65).
`
`(4) Limitation 1(d): “a light detector configured to output a
`signal responsive to at least a portion of the emitted light
`after attenuation by tissue of the tissue site; and”
`For limitation 1(d), Petitioner submits that “Kiani teaches the pulse
`oximetry sensor includes a light detector configured to output a signal
`responsive to an amount of light attenuated by tissue.” Pet. 21 (citing
`Ex. 1006, 1:15–23; Ex. 1003 ¶ 66).
`
`(5) Limitation 1(e): “a tail configured to electrically convey the
`signal;”
`As to limitation 1(e), Petitioner urges that the ’623 patent does not
`distinguish a “tail” from a wire, and that one of ordinary skill in the art
`would “assume that a tail is a wire.” Id. at 22 (citing Ex. 1003 ¶ 67).
`Petitioner also refers to Goldberg’s teaching of a wire connecting pulse
`
`22
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`oximetry sensor 104a to controller 102. Id. (citing Ex. 1003 ¶ 68; Ex. 1005,
`4:19–29, Fig. 2).
`
`(6) Limitation 1(f): “a housing configured for, and having a
`size and shape configured for, mounting to a lower arm of
`the patient, the housing including at least;”
`For limitation 1(f), Petitioner contends that Goldberg discloses a
`housing that is sized and shaped to be strapped to a patient’s wrist or
`forearm. Id. (citing Ex. 1005, 4:19–30, 4:57–60, Fig. 2; Ex. 1003 ¶ 69).
`Patent Owner does not challenge the above-noted contention. On this
`Limitation 1(g): “a display positioned on a front side of the housing that is
`opposite a back side of the housing, the display configured to show a status
`of the portable patient monitoring device and one or more parameter
`measurements so as to be viewable by a user;”
`As to limitation 1(g), Petitioner directs attention to Goldberg’s display
`108 and its display of sensor data that is visible when the device is strapped
`to a patient’s wrist. Pet. 23 (citing Ex. 100
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