IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Poeze, et al.
`In re Patent of:
`10,258,265 Attorney Docket No.: 50095-0006IP1
`U.S. Patent No.:
`April 16, 2019
`
`Issue Date:
`Appl. Serial No.: 16/212,440
`
`Filing Date:
`December 6, 2018
`
`Title:
`MULTI-STREAM DATA COLLECTION SYSTEM FOR NONIN-
`VASIVE MEASUREMENT OF BLOOD CONSTITUENTS
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 10,258,265 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §42.104 ............................. 1
`A. Grounds for Standing Under 37 C.F.R. §42.104(a).................................. 1
`B. Challenge Under 37 C.F.R. §42.104(b) and Relief Requested ................ 1
`C. Claim Construction under 37 C.F.R. §§42.104(b)(3) ............................... 3
`D. Level of Ordinary Skill in the Art ............................................................. 3
`SUMMARY OF THE ’265 PATENT ............................................................. 4
`A. Brief Description ....................................................................................... 4
`B. Summary of the Prosecution History of the ’265 Patent .......................... 6
`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE ............................ 6
`A. [GROUND-1A] – Claims 1-4, 6-14, 16, 17, 19-23, and 26-29 are
`rendered obvious by Aizawa in view of Inokawa .................................... 6
`1. Overview of Aizawa ........................................................................ 6
`2. Overview of Inokawa ...................................................................... 9
`3.
`Combination of Aizawa and Inokawa ........................................... 13
`4. Analysis ......................................................................................... 22
`B. [GROUND-1B] – Claims 1-4, 6-14, 16, 17, 19-23, and 26-29 are
`rendered obvious by Aizawa in view of Inokawa and Ohsaki ............... 48
`1. Overview of Ohsaki....................................................................... 48
`2. Analysis ......................................................................................... 50
`C. [GROUND-1C] – Claims 23-24 are rendered obvious by Aizawa in
`view of Inokawa and Mendelson-2006 ................................................... 51
`1. Overview of Mendelson-2006 ....................................................... 51
`2.
`Combination of Aizawa, Inokawa, and Mendelson-2006 ............. 53
`3. Analysis ......................................................................................... 55
`D. [GROUND-1D] – Claims 23-24 are rendered obvious by Aizawa in
`view of Inokawa, Goldsmith, and Lo ..................................................... 57
`1. Overview of Goldsmith ................................................................. 57
`2. Overview of Lo ............................................................................. 58
`3.
`Combination of Aizawa, Inokawa, Goldsmith, and Lo ................ 59
`4. Analysis ......................................................................................... 61
`E. [GROUND-1E] – Claim 25 is rendered obvious by Aizawa in view of
`Inokawa, Mendelson-2006, and Beyer ................................................... 62
`[GROUND-2A] – Claims 1-4, 6-14, 16-22, and 26-30 are rendered
`obvious by Mendelson-1988 in view of Inokawa .................................. 66
`1. Overview of Mendelson-1988 ....................................................... 66
`2.
`Combination of Mendelson-1988 and Inokawa ............................ 67
`3. Analysis ......................................................................................... 71
`
`F.
`
`i
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`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`G. [GROUND-2B] – Claims 23-24 are rendered obvious by Mendelson-
`1988 in view of Inokawa and Mendelson-2006 ..................................... 95
`1.
`Combination of Mendelson-1988, Inokawa, and Mendelson-2006
` ....................................................................................................... 95
`2. Analysis ......................................................................................... 97
`H. [GROUND-2C] – Claim 25 is rendered obvious by Mendelson-1988 in
`view of Inokawa, Mendelson-2006, and Beyer ...................................... 98
`IV. PAYMENT OF FEES – 37 C.F.R. §42.103 ................................................100
`V.
`PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION ........100
`A. Factor 1: Institution will increase the likelihood of stay ......................100
`B. Factor 2: District Court schedule ..........................................................100
`C. Factor 3: Apple’s investment in IPR outweighs forced investment in
`litigation to date ....................................................................................101
`D. Factor 4: The Petition raises unique issues ...........................................102
`E. Factor 5: Institution would provide the Board an opportunity to
`invalidate claims that could later be reasserted against others .............103
`F. Factor 6: Other circumstances support institution ................................104
`VI. CONCLUSION ............................................................................................104
`VII. MANDATORY NOTICES UNDER 37 C.F.R §42.8(a)(1) ........................104
`A. Real Party-In-Interest Under 37 C.F.R. §42.8(b)(1) .............................104
`B. Related Matters Under 37 C.F.R. §42.8(b)(2) ......................................104
`C. Lead And Back-Up Counsel Under 37 C.F.R. §42.8(b)(3) ..................105
`D. Service Information ..............................................................................105
`
`
`
`
`
`
`ii
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`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`
`
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 10,258,265 to Poeze, et al. (“the ’265 patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ’265 Patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Dr. Thomas W. Kenny
`
`APPLE-1004
`
`Curriculum Vitae of Dr. Thomas W. Kenny
`
`APPLE-1005
`
`Masimo Corporation, et al. v. Apple Inc., Complaint, Civil Ac-
`tion No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1006
`
` U.S. Pub. No. 2002/0188210 (“Aizawa”)
`
`APPLE-1007
`
`
`
`JP 2006-296564 (“Inokawa”)
`
`APPLE-1008
`
` Certified English Translation of Inokawa and Translator’s Dec-
`laration
`
`APPLE-1009
`
` U.S. Pat. No. 7,088,040 (“Ducharme”)
`
`APPLE-1010
`
` U.S. Pat. No. 8,177,720 (“Nanba”)
`
`APPLE-1011
`
` RESERVED
`
`APPLE-1012
`
` U.S. Pat. No. 6,853,304 (“Reisman”)
`
`APPLE-1013
`
` U.S. Pub. No. 2004/0220738 (“Nissila”)
`
`APPLE-1014
`
` U.S. Pub. No. 2001/0056243 (“Ohsaki”)
`
`APPLE-1015
`
`
`
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`
`iii
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic Institute,
`Biomedical Engineering Program, Worcester, MA 01609; As-
`sociation for the Advancement of Medical Instrumentation, vol.
`22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`“A Wearable Reflectance Pulse Oximeter for Remote Physio-
`logical Monitoring,” Y. Mendelson, et al.; Proceedings of the
`28th IEEE EMBS Annual International Conference, 2006; pp.
`912-915 (“Mendelson-2006”)
`
`APPLE-1016
`
`
`
`APPLE-1017
`
` Excerpt from Merriam-Webster Dictionary
`
`APPLE-1018
`
`APPLE-1019
`
`
`
`“Acrylic: Strong, stiff, clear plastic available in a variety of bril-
`liant colors,” available at https://www.curbellplastics.com/Re-
`search-Solutions/Materials/Acrylic
` U.S. Pat. No. 7,031,728 (“Beyer”)
`
`APPLE-1020
`
` U.S. Pat. No. 7,092,735 (“Osann, Jr.”)
`
`APPLE-1021
`
` U.S. Pat. No. 6,415,166 (“Van Hoy”)
`
`APPLE-1022
`
` QuickSpecs; HP iPAQ Pocket PC h4150 Series
`
`APPLE-1023
`
` U.S. Pat. App. Pub. No. 2007/0145255 (“Nishikawa”)
`
`APPLE-1024
`
`APPLE-1025
`APPLE-1026
`APPLE-1027
`APPLE-1028
`
`
`
`“Measurement Site and Photodetector Size Considerations in
`Optimizing Power Consumption of a Wearable Reflectance
`Pulse Oximeter,” Y. Mendelson, et al.; Proceedings of the 25th
`IEEE EMBS Annual International Conference, 2003; pp. 3016-
`3019 (“Mendelson-2003”)
` U.S. Pat. No. 6,801,799 (“Mendelson-’799”)
` Declaration of Jacob Munford
` U.S. Pub. No. 2007/0093786 (“Goldsmith”)
` U.S. Pub. No. 2004/0138568 (“Lo”)
`
`iv
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
` Wikipedia: The Free Encyclopedia, “Universal asynchronous
`receiver-transmitter” at https://en.wikipedia.org/wiki/Univer-
`sal_asynchronous_receiver-transmitter, last accessed
`08/27/2020
` RESERVED
` Scheduling Order, Masimo v. Apple et al., Case 8:20-cv-00048,
`Paper 37 (April 17, 2020)
` Stipulation by Apple
`
` Telephonic Status Conference, Masimo v. Apple et al., Case
`8:20-cv-00048, Paper 78 (July 13, 2020)
`Joseph Guzman, “Fauci says second wave of coronavirus is ‘in-
`evitable’”, TheHill.com (Apr. 29, 2020), available at:
`https://thehill.com/changing-america/resilience/natural-disas-
`ters/495211-fauci-says-second-wave-of-coronavirus-is
`“Tracking the coronavirus in Los Angeles County,”
`LATimes.com (Aug. 20, 2020), available at
`https://www.latimes.com/projects/california-coronavirus-
`cases-tracking-outbreak/los-angeles-county/
`
`
`
`APPLE-1029
`
`APPLE-1030
`APPLE-1031
`
`APPLE-1032
`APPLE-1033
`
`APPLE-1034
`
`APPLE-1035
`
`
`
`v
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`
`Apple Inc. (“Petitioner” or “Apple”) petitions for inter partes review
`
`(“IPR”) under 35 U.S.C. §§311–319 and 37 C.F.R. §42 of claims 1-4, 6-14, and
`
`16-30 (“the Challenged Claims”) of U.S. Patent No. 10,258,265 (“’265 patent”).
`
`As explained in this petition, there exists a reasonable likelihood that Apple will
`
`prevail with respect to at least one of the Challenged Claims.
`
`
`
`I.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §42.104
`A. Grounds for Standing Under 37 C.F.R. §42.104(a)
`Apple certifies that the ’265 Patent is available for IPR. The present petition
`
`is being filed within one year of service of a complaint against Apple in Masimo
`
`Corporation, et al. v. Apple Inc., Civil Action No. 8:20-cv-00048 (C.D. Cal.). Ap-
`
`ple is not barred or estopped from requesting this review challenging the Chal-
`
`lenged Claims on the below-identified grounds.
`
`B. Challenge Under 37 C.F.R. §42.104(b) and Relief Requested
`Apple requests an IPR of the Challenged Claims on the grounds set forth in
`
`the table below, and requests that each of the Challenged Claims be found un-
`
`patentable. Additional explanation and support is set forth in APPLE-1003, the
`
`Declaration of Dr. Thomas W. Kenny. See APPLE-1003, ¶¶20-240.
`
`Claims
`Ground
`Ground-1A 1-4, 6-14, 16, 17, 19-23,
`
`Basis for Rejection
`§103: Aizawa, Inokawa
`
`1
`
`

`

`Ground
`
`Claims
`
`26-29
`Ground-1B 1-4, 6-14, 16, 17, 19-23,
`26-29
`Ground-1C 23, 24
`
`Ground-1D 23, 24
`
`Ground-1E 25
`
`Ground-2A 1-4, 6-14, 16-22, 26-30
`Ground-2B 23, 24
`
`Ground-2C 25
`
`
`
`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`Basis for Rejection
`
`§103: Aizawa, Inokawa, Ohsaki
`
`§103: Aizawa, Inokawa, Mendel-
`son-2006
`§103: Aizawa, Inokawa, Goldsmith,
`Lo
`§103: Aizawa, Inokawa, Mendel-
`son-2006, Beyer
`§103: Mendelson-1988, Inokawa
`§103: Mendelson-1988, Inokawa,
`Mendelson-2006
`§103: Mendelson-1988, Inokawa,
`Mendelson-2006, Beyer
`
`The ’265 patent claims priority to a number of U.S. patent applications, with
`
`the earliest filed on 07/02/2009 and to various provisional applications, with the
`
`earliest filed on 07/03/2008. See APPLE-1001, Cover. Solely for purposes of
`
`evaluating prior art in this proceeding and without conceding the propriety of these
`
`priority claims, this Petition will treat 07/03/2008 as the earliest alleged effective
`
`filing date (i.e., the “Earliest Claimed Date”) of the ’265 patent. The references re-
`
`lied on in the above grounds qualify as prior art to the ’265 patent under either
`
`date, at least under the sections shown in the following table. See APPLE-1026.
`
`None of these references were considered during prosecution of the ’265 patent.
`
`APPLE-1002.
`
`2
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`Qualifying Date
`Earliest Claimed
`Date
`102(b)
`102(b)
`102(b)
`102(b)
`102(a)
`102(b)
`102(b)
`102(b)
`
`12/12/2002
`11/02/2006
`12/27/2001
`August-1988
`12/26/2007
`04/18/2006
`04/26/2007
`07/15/2004
`
`Reference
`
`Aizawa
`Inokawa
`Ohsaki
`Mendelson-1988
`Mendelson-2006
`Beyer
`Goldsmith
`Lo
`
`
`
`C. Claim Construction under 37 C.F.R. §§42.104(b)(3)
`Petitioner submits that all claim terms should be construed according to the
`
`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
`
`C.F.R. §42.100. Here, based on the evidence below and the prior art’s description
`
`of the claimed elements being similar to that of the ’265 patent specification, no
`
`formal claim constructions are necessary in this proceeding because “claim terms
`
`need only be construed to the extent necessary to resolve the controversy.” Well-
`
`man, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011).
`
`D. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art relating to the subject matter of the ’265
`
`patent as of July 3, 2008 (“POSITA”) would have been a person with a working
`
`knowledge of physiological monitoring technologies. The person would have had
`
`a Bachelor of Science degree in an academic discipline emphasizing the design of
`
`3
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`electrical, computer, or software technologies, in combination with training or at
`
`least one to two years of related work experience with capture and processing of
`
`data or information, including but not limited to physiological monitoring technol-
`
`ogies. APPLE-1003, ¶¶21-22. Alternatively, the person could have also had a
`
`Master of Science degree in a relevant academic discipline with less than a year of
`
`related work experience in the same discipline. Id.
`
`
`
`II.
`
`SUMMARY OF THE ’265 PATENT
`A. Brief Description
`The ’265 patent is directed to “noninvasive methods, devices, and systems
`
`for measuring...physiologically relevant patient characteristics.” APPLE-1001,
`
`2:22-28; APPLE-1003, ¶¶43-52.
`
`As illustrated in FIG. 1, the ’265 patent describes a system that “include[s] a
`
`sensor 101 (or multiple sensors) that is coupled to a processing device or physio-
`
`logical monitor 109,” where “the sensor 101 and the monitor 109 are integrated to-
`
`gether into a single unit” or “separate from each other and communicate one with
`
`another in any suitable manner, such as via a wired or wireless connection.” Id.,
`
`11:56-62.
`
`4
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`
`APPLE-1001, FIG. 1.
`
`
`
`In use, “the detectors 106 can capture and measure light transmitted from the
`
`emitter 104 that has been attenuated or reflected from the tissue in the measure-
`
`ment site 102,” and “[t]he detectors 106 can output a detector signal 107 respon-
`
`sive to the light captured or measured.” Id., 14:11-17. The signal can correspond
`
`to, for instance, the pulse rate of the user. Id., 2:28-30. Although the ’265 patent
`
`mostly describes a transmittance-type measurement device where the emitter and
`
`the detector are positioned on opposite sides of the measurement site, the claims do
`
`not distinguish over a reflectance-type device where the emitter and the detector
`
`are positioned on the same side of the measurement site. See id., 14:12-15, 26:37-
`
`38; APPLE-1003, ¶48.
`
`
`
`The ’265 patent further describes that its sensor can include a plurality of de-
`
`tectors that are disposed within a housing and covered by a transparent cover (i.e.,
`
`5
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`light permeable cover) having a protrusion. See APPLE-1001, 36:38-49, 14D; AP-
`
`PLE-1003, ¶50.
`
`B.
`Summary of the Prosecution History of the ’265 Patent
`U.S. Patent No. 10,258,265 issued on 04/16/2019 from U.S. Patent Applica-
`
`tion No. 16/212,440, which was filed on 12/06/2018. APPLE-1001, Cover. In al-
`
`lowing the application, the examiner amended, via an examiner’s amendment, the
`
`then independent claim 2 to add “the light permeable cover comprising a protru-
`
`sion arranged to cover the at least four detectors” and also amended the then inde-
`
`pendent claim 38 to add “the lens portion comprising a protrusion in optical com-
`
`munication with the at least four detectors,” in so doing suggesting that the prior
`
`art of record didn’t disclose such features. Id. But such features were well-known
`
`at the time of the ’265 patent, and, had the examiner been aware of the prior ad-
`
`vanced in this Petition, the application would not have been allowed.
`
`
`
`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A.
` [GROUND-1A] – Claims 1-4, 6-14, 16, 17, 19-23, and 26-29
`are rendered obvious by Aizawa in view of Inokawa
`1. Overview of Aizawa
`Aizawa describes a “pulse wave sensor for detecting a pulse wave by detect-
`
`ing light output from a light emitting diode and reflected from the artery of a wrist
`
`of a subject.” APPLE-1006, Abstract; APPLE-1003, ¶¶53-58.
`
`6
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`Aizawa’s sensor device detects a user’s pulse wave by using an emitter,
`
`namely LED 21 (shown in green), to emit light that is picked up by photodetectors
`
`22 (shown in red) that are arranged around the LED. APPLE-1006, [0023]. In
`
`particular, “[n]ear infrared radiation output toward the wrist 10 from the light emit-
`
`ting diode 21 is reflected by a red corpuscle running through the artery 11 of the
`
`wrist 10 and this reflected light is detected by the plurality of photodetectors 22 so
`
`as to detect a pulse wave.” Id., [0027].
`
`
`APPLE-1006, FIGS. 1(a)-1(b); APPLE-1003, ¶54.
`
`
`
`Aizawa teaches that more detectors may be provided to “further improve
`
`detection efficiency.” APPLE-1006, [0032]. In some cases, “a plurality of light
`
`emitting diodes 21” may be provided. Id., [0033]; APPLE-1003, ¶55.
`
`
`
`The pulse rate detector of Aizawa is designed to be worn on the wrist such
`
`that the emitter/detector assembly faces the wrist:
`
`7
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`
`
`APPLE-1006, [0026]; APPLE-1003, ¶58. The emitter/detector assembly is en-
`
`cased within a circular housing, shown in red above.
`
`Aizawa further teaches a light permeable cover in the form of an acrylic
`
`transparent plate 6 (blue) that is mounted at the detection face 23a:
`
`
`
`8
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`APPLE-1006, FIG. 1(b), [0023]; APPLE-1003, ¶¶56-57. This transparent plate
`
`not only provides a light permeable cover that covers the emitter/detector assem-
`
`bly, in a manner similar to what is described in the ’265 patent, but it also provides
`
`improved adhesion between the detector and the wrist to “further improv[e] the de-
`
`tection efficiency of a pulse wave.” APPLE-1006, [0030]; APPLE-1003, ¶57.
`
`2. Overview of Inokawa
`Similar to Aizawa, Inokawa teaches an optical “pulse sensor.” APPLE-
`
`1008, [0056]; APPLE-1003, ¶59.1 The pulse sensor of Inokawa can be attached
`
`the user’s wrist using a wristband 5:
`
`APPLE-1008, FIG. 1, [0057].
`
`
`
`
`1 JP 2006-296564 to Inokawa (APPLE-1007) was published in Japanese. Thus, all
`
`citations to Inokawa are to its English translation (APPLE-1008).
`
`9
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`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`Referring to FIG. 2 below, Inokawa senses pulse by using a photodiode de-
`
`tector 25 (shown in red) to receive “light reflected off of the body (i.e. change in
`
`the amount of hemoglobin in the capillary artery).” APPLE-1008, [0058]. In-
`
`okawa teaches that “sensor-side light-emitting means of various kinds, such as an
`
`infrared LED or a green LED” can be used and that “work can be divided be-
`
`tween” them as needed. APPLE-1008, [0014]. For example, green light from
`
`LED 21 (shown in green) can be used to sense the pulse while infrared light from
`
`LED 23 (shown in purple) can be used to sense body motion. APPLE-1008,
`
`[0058]-[0059] .
`
`APPLE-1008, FIG. 2; APPLE-1003, ¶60.
`
`
`
`
`
`Inokawa further teaches that a lens 27 can be “placed on the surface of the
`
`sensor-side light-emitting means” to thereby “make[] it possible to increase the
`
`light-gathering ability of the LED as well as to protect the LED or PD.” APPLE-
`
`1008, [0015], [0058]. This structure corresponds to the light permeable cover
`
`10
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`comprising a protrusion as recited in claim 1 of the ’265 patent. APPLE-1003,
`
`¶61.
`
`
`
`APPLE-1008, FIG. 2.
`
`
`
`Inokawa also teaches that its sensor (red) can be mounted onto a base device
`
`(blue) that acts as a “charger with communication functionality”:
`
`11
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`
`
`
`
`
`APPLE-1008, FIG. 3, [0060]; APPLE-1003, ¶62. When mounted, vital sign infor-
`
`mation can be transmitted from the sensor to the base device by using the same
`
`LEDs used to measure pulse and body motion. APPLE-1008, [0066]-[0077],
`
`[0109]-[0111]. Referring to FIG. 7, Inokawa teaches that vital sign information
`
`from the sensor can be transmitted to a PC (purple) via the base device:
`
`12
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`
`APPLE-1008, FIG. 7, [0066]-[0077]; APPLE-1003, ¶63.
`
`
`
`3.
`Combination of Aizawa and Inokawa
`A POSITA would have been motivated to combine Aizawa and Inokawa
`
`(“Aizawa-Inokawa”) to obtain additional benefits. APPLE-1003, ¶¶76-85, 94-99.
`
`Protrusion
`Beyond Aizawa’s disclosure that its light permeable cover is an acrylic
`
`(a)
`
`
`
`transparent plate that helps improve “detection efficiency,” Aizawa does not pro-
`
`vide much other detail, for instance regarding its shape. APPLE-1006, [0030]. A
`
`POSITA would have realized, however, that the plate could be given a shape to
`
`achieve Aizawa’s objective of improving detection efficiency and, further, would
`
`have known how to achieve such shape. Id., [0013], [0030], [0032]; APPLE-1009
`
`at 3:46-51; APPLE-1003, ¶94.
`
`13
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`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`A POSITA would have looked to Inokawa to enhance light collection effi-
`
`ciency, specifically by modifying the light permeable cover of Aizawa to include a
`
`convex protrusion that acts as a lens. APPLE-1003, ¶95-99. Indeed, as discussed
`
`above in Section III.A.2, Inokawa discloses a lens 27 that is positioned between the
`
`sensor and skin:
`
`
`
`APPLE-1008, FIG. 2; APPLE-1003, ¶95. Inokawa further discloses that the “lens
`
`makes it possible to increase the light-gathering ability of the LED.” APPLE-
`
`1008, [0015]. Thus, a POSITA would have sought to incorporate an Inokawa-like
`
`lens into the cover of Aizawa to increase the light collection efficiency, which
`
`would lead to an improved signal-to-noise ratio (and more reliable pulse detec-
`
`tion). APPLE-1003, ¶¶96-97. The lens of Inokawa would provide precisely such a
`
`benefit to Aizawa’s device by refracting/concentrating the incoming light signals
`
`reflected by the blood. Id.
`
`14
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`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`As illustrated below, the device resulting from the obvious combination of
`
`Aizawa and Inokawa would have replaced the flat cover (left) with a curved one as
`
`per Inokawa (right) to “increase the light-gathering ability.” APPLE-1008, [0015];
`
`APPLE-1003, ¶97.
`
`
`
`
`
`APPLE-1006, FIG. 1(b); APPLE-1003, ¶97.
`
`
`
`
`
`A POSITA would have understood how to implement Inokawa’s lens-
`
`shaped cover in Aizawa’s device with a reasonable expectation of success, stem-
`
`ming from the significant overlap across the references in their teaching. APPLE-
`
`1003, ¶98. For example, as illustrated below, Inokawa teaches that its cover may
`
`be either flat (left) such that “the surface is less prone to scratches,” APPLE-1008
`
`at [0106], or in the form of a lens (right) to “increase the light-gathering ability of
`
`the LED.” Id. at [0015].
`
`15
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`
`
`APPLE-1008, FIG. 17 (left), FIG. 16 (right); APPLE-1003, ¶98. A POSITA
`
`would have further recognized that the transparent acrylic material used to make
`
`Aizawa’s plate can be readily formed into a lens-like shape as in Inokawa. AP-
`
`PLE-1003, ¶99 (citing to APPLE-1009 at 3:46-51, FIG. 1, APPLE-1023, FIG. 6,
`
`[0022], [0032], [0035]). Thus, a POSITA wanting to achieve improved light col-
`
`lection efficiency over reduced susceptibility to scratches could have readily modi-
`
`fied Aizawa’s cover to have a lens shape as per Inokawa. APPLE-1003, ¶99.
`
`The above-described modification would require only routine knowledge of
`
`sensor design and assembly, which were well within the skill of a POSITA prior to
`
`the Critical Date. APPLE-1003, ¶99. Thus, to achieve Aizawa’s and Inokawa’s
`
`shared goal of improving light collection efficiency, a POSITA would have been
`
`motivated to modify Aizawa’s light permeable cover to have a lens shape as per
`
`Inokawa with a reasonable expectation of success. APPLE-1003, ¶¶94-99.
`
`16
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`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`
`Plurality of emitters
`While Aizawa contemplates the use of multiple emitters, Aizawa never spe-
`
`(b)
`
`cifically identifies the use of multiple emitters operating at different wavelengths in
`
`conjunction with multiple detectors. Id., [0033]; APPLE-1003, ¶¶74-85.
`
`In this context, Inokawa discloses using two different types of emitters “such
`
`as an infrared LED or a green LED” and that “work can be divided between the
`
`various means, with an infrared LED used to detect vital signs and transmit vital
`
`sign information, and a green LED used to detect pulse.” APPLE-1008, [0014];
`
`see also id., [0044], [0058], [0059]; APPLE-1003, ¶75.
`
`A POSITA reviewing Aizawa and Inokawa would have recognized In-
`
`okawa’s use of two different emitters operating at different wavelengths as a desir-
`
`able configuration that would reap similar benefits for Aizawa. APPLE-1003, ¶76.
`
`For example, while Aizawa only expressly mentions using “light having a wave-
`
`length of an infrared range” to detect the pulse rate, Inokawa discloses dividing the
`
`role of a single LED into two different LEDs, specifically “with an infrared LED
`
`used to detect vital signs and transmit vital sign information, and a green LED used
`
`to detect pulse.” APPLE-1008, [0014], [0044], [0058], [0059]. A POSITA would
`
`have recognized, in view of Inokawa, that providing an additional emitter to Ai-
`
`zawa would allow Aizawa’s device to use its existing infrared LED to detect body
`
`motion while using the added green LED to detect pulse. Id., [0059]; APPLE-
`
`17
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`1003, ¶77. Indeed, Inokawa expressly teaches that its “infrared LED 23 serves to
`
`sense body motion from the change in this reflected light” and that its “green LED
`
`21” is used to “sense the pulse from the light reflected off of the body.” APPLE-
`
`1008, [0059]. Various other prior art pulse sensing devices teach using a first LED
`
`emitting at less than 600 nm (e.g., green) for measuring blood flow and a second
`
`LED emitting at greater than 600 nm (e.g., infrared) for measuring body move-
`
`ment. APPLE-1003, ¶77 (citing to APPLE-1010, 8:45-50). The added ability to
`
`measure body movement can allow for a more reliable pulse measurement that
`
`takes into account and corrects for inaccurate readings stemming from body move-
`
`ment. Id. Thus, a POSITA would have been motivated and found it obvious to di-
`
`vide the single emitter of Aizawa, as shown below, into two emitters operating at
`
`two different wavelengths. Id.
`
`APPLE-1006, Fig. 1(b); APPLE-1003, ¶¶77-78.
`
`
`
`18
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`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`A POSITA would have found it obvious to modify Aizawa with Inokawa to
`
`add an additional emitter because doing so merely entails the use of known solu-
`
`tions to improve similar systems and methods in the same way. APPLE-1003,
`
`¶¶78-79. Indeed, “when a patent ‘simply arranges old elements with each perform-
`
`ing the same function it had been known to perform’ and yields no more than one
`
`would expect from such an arrangement, the combination is obvious.” KSR Int’l
`
`Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). A POSITA would have recognized
`
`that applying Inokawa’s teachings regarding two different LEDs to Aizawa’s sen-
`
`sor would have led to predictable results without significantly altering or hindering
`
`the functions performed by Aizawa’s sensor. APPLE-1003, ¶¶78-79. A POSITA
`
`would have been motivated to provide the well-known feature of providing multi-
`
`ple emitters to a pulse sensor to achieve the predictable benefits offered by In-
`
`okawa’s description of the same. Id. In fact, Aizawa itself contemplates the addi-
`
`tion of extra emitters, albeit for a different purpose. APPLE-1006, [0033]; AP-
`
`PLE-1003, ¶78.
`
`In addition to the above-described rationale for adding an extra emitter to
`
`Aizawa, Inokawa provides another, or alternative, motivation for improving
`
`Aizawa by adding a second LED/emitter. Specifically, Aizawa contemplates up-
`
`loading data to a base device yet is silent about how such data transmission would
`
`19
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`be implemented, instead leaving such implementation details to the POSITA. AP-
`
`PLE-1006, [0015], [0023], [0035]; APPLE-1003, ¶¶80-86. In this context, as de-
`
`scribed in Section III.A.2, Inokawa teaches a base device 17 (blue) that is able to
`
`both charge and receive data from the pulse sensor 1 (red):
`
`
`APPLE-1008, FIG. 3, [0060]; APPLE-1003, ¶81. By using the sensor’s infrared
`
`emitter to transmit data, “it is not necessary to use a wireless communication cir-
`
`cuit or to establish connections via communication cable, which makes it possible
`
`to easily transmit vital sign information with few malfunctions and with a simple
`
`structure.” APPLE-1008, [0007]. A POSITA would have been motivated and
`
`found it obvious and straightforward to incorporate Inokawa’s base device and
`
`LED-based data transmission into Aizawa to, for instance, “make[] it possible to
`
`transmit vital sign information to the base device 17 accurately, easily, and without
`
`20
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`malfunction.” Id., [0077]. A POSITA would have further recognized that incorpo-
`
`rating Inokawa’s base device and LED-based data transmission would allow Ai-
`
`zawa to upload data from its sensor in a way that is wireless (thus avoiding the
`
`problems of a physical cable) and that does not require a separate RF circuit. Id.,
`
`[0007]; APPLE-1003, ¶82.
`
`Notably, Inokawa’s sensor is able to transmit data using only a single IR
`
`LED. APPLE-1008, [0062]. However, with reference to FIG. 19 below, Inokawa
`
`further teaches that using two LEDs further helps improve data transmission accu-
`
`racy by using the second LED, such as green LED, to transmit checksum infor-
`
`mation such that “the accuracy of data can be increased.” Id., [0111], [0044],
`
`[0048]; APPLE-1003, ¶83.
`
`APPLE-1008, FIG. 19; APPLE-1003, ¶83. Thus, a POSITA would have been mo-
`
`tivated and found it obvious to supplement Aizawa’s IR LED/emitter with a green
`
`
`
`21
`
`

`

`Attorney Docket No. 50095-0006IP1
`IPR of U.S. Patent No. 10,258,265
`LED/emitter to, as per Inokawa, improve accuracy of data transmission from its
`
`sensor. APPLE-1003, ¶84
`
`A POSITA would have found it obvious to modify Aizawa with Inokawa in
`
`this manner because doing so entails the use of known solutions to improve similar
`
`systems and methods in the same way. APPLE-1003, ¶85. Here again, “when a
`
`patent ‘simply arranges old elements with each performing the same function it
`
`had been known to perform’ and yields no more than one would expect from such
`
`an arrangement, the combination is obvious.” KSR, 550 U.S. at 417. A PO