Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 7
`Date: April 14, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01521
`Patent 10,292,628 B1
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`COCKS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 7
`Date: April 14, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01521
`Patent 10,292,628 B1
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`COCKS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
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`IPR2020-01521
`Patent 10,292,628 B1
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`I.
`
`INTRODUCTION
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–30 (“challenged claims”) of U.S. Patent No. 10,292,628
`B1 (Ex. 1001, “the ’628 patent”). Paper 2 (“Pet.”). Masimo Corporation
`(“Patent Owner”) waived filing a preliminary response. Paper 6 (“PO
`Waiver”).
`We have authority to determine whether to institute an inter partes
`review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review
`may not be instituted unless it is determined that “the information presented
`in the petition filed under section 311 and any response filed under section
`313 shows that there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes
`the trial on behalf of the Director.”).
`For the reasons provided below and based on the record before us, we
`determine that Petitioner has demonstrated a reasonable likelihood that
`Petitioner would prevail in showing the unpatentability of at least one of the
`challenged claims. Accordingly, we institute an inter partes review on all
`grounds set forth in the Petition.
`
`B. Related Matters
`The parties identify the following matters related to the ’628 patent:
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`(C.D. Cal.) (filed Jan. 9, 2020);
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`Apple Inc. v. Masimo Corporation, IPR2020-01520 (PTAB
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,258,265 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01521 (PTAB
`Sept. 2, 2020) (challenging claims of U.S. Patent No. 10,292,628 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01523 (PTAB
`Sept. 9, 2020) (challenging claims of U.S. Patent No. 8,457,703 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01524 (PTAB Aug.
`31, 2020) (challenging claims of U.S. Patent No. 10,433,776 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01526 (PTAB
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 6,771,994 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01536 (PTAB
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01538 (PTAB
`Sept. 2, 2020) (challenging claims of U.S. Patent No. 10,588,554 B2); and
`Apple Inc. v. Masimo Corporation, IPR2020-01539 (PTAB
`Sept. 2, 2020) (challenging claims of U.S. Patent No. 10,588,554 B2).
`Pet. 98, Paper 3, 1.
`
`Patent Owner further identifies numerous issued and abandoned
`applications that are said to claim priority to, or share a priority claim with,
`the ’628 patent. Paper 3, 3.
`
`C. The ’628 Patent
`The ’628 patent is titled “Multi-Stream Data Collection System for
`Noninvasive Measurement of Blood Constituents,” and issued on May 21,
`2019, from U.S. Patent Application No. 16/261,326, filed January 29, 2019.
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`Ex. 1001, codes (21), (22), (45), (54). The ’628 patent discloses a two-part
`data collection system including a noninvasive sensor that communicates
`with a patient monitor. Id. at 2:31–33. The sensor includes a sensor
`housing, an optical source, and several photodetectors, and is used to
`measure a blood constituent or analyte, e.g., oxygen or glucose. Id. at 2:55–
`3:5. The patient monitor includes a display and a network interface for
`communicating with a handheld computing device. Id. at 2:38–40.
`Figure 1 of the ’628 patent is reproduced below.
`
`
`
`Figure 1 illustrates a block diagram of data collection system 100 including
`sensor 101 and monitor 109. Id. at 5:26–29, 11:36–37. Sensor 101 includes
`optical emitter 104 and detectors 106. Id. at 11:48–50. Emitters 104 emit
`light that is attenuated or reflected by the patient’s tissue at measurement site
`102. Id. at 13:60–64. Detectors 106 capture and measure the light
`attenuated or reflected from the tissue. Id. In response to the measured
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`light, detectors 106 output detector signals 107 to monitor 109 through front-
`end interface 108. Id. at 13:64–67, 14:16–22. Sensor 101 also may include
`tissue shaper 105, which may be in the form of a convex surface that:
`(1) reduces the thickness of the patient’s measurement site; and (2) provides
`more surface area from which light can be detected. Id. at 10:51–11:3.
`Monitor 109 includes signal processor 110 and user interface 112. Id.
`at 15:6–8. “[S]ignal processor 110 includes processing logic that determines
`measurements for desired analytes . . . based on the signals received from
`the detectors 106.” Id. at 15:10–14. User interface 112 presents the
`measurements to a user on a display, e.g., a touch-screen display. Id.
`at 15:38–42. The monitor may be connected to storage device 114 and
`network interface 116. Id. at 15:52–16:3.
`
`The ’628 patent describes various examples of sensor devices.
`Figures 14D and 14F, reproduced below, illustrate sensor devices.
`
`
`Figure 14D illustrates portions of a detector submount and Figure 14F
`illustrates portions of a detector shell. Id. at 6:34–37. As shown in
`Figure 14D, multiple detectors 1410c are located within housing 1430 and
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`under transparent cover 1432, on which protrusion 605b (or partially
`cylindrical protrusion 605) is disposed. Id. at 36:15–35. Figure 14F
`illustrates a detector shell 306f including detectors 1410c on substrate 1400c.
`Id. at 36:62–37:3. Substrate 1400c is enclosed by shielding enclosure 1490
`and noise shield 1403, which include window 1492a and window 1492b,
`respectively, placed above detectors 1410c. Id. Alternatively, cylindrical
`housing 1430 may be disposed under noise shield 1403 and may enclose
`detectors 1410c. Id. at 37:34–36.
`
`Figures 4A and 4B, reproduced below, illustrate an alternative
`example of a tissue contact area of a sensor device.
`
`
`
`Figures 4A (left) and 4B (right) illustrate arrangements of protrusion 405
`including measurement contact area 470. Id. at 23:8–14. “[M]easurement
`site contact area 470 can include a surface that molds body tissue of a
`measurement site.” Id. “For example, the measurement site contact area
`470 can be generally curved and/or convex with respect to the measurement
`site.” Id. at 23:31–33. The measurement site contact area may include
`windows 420–423 that “mimic or approximately mimic a configuration of,
`or even house, a plurality of detectors.” Id. at 23:39–53.
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`D. Illustrative Claim
`Of the challenged claims, claims 1, 7, and 20 are independent.
`Claim 1 is illustrative and is reproduced below.
`1. A noninvasive optical physiological sensor comprising:
`
`[a] a plurality of emitters configured to emit light into
`tissue of a user;
`[b] a plurality of detectors configured to detect light that
`has been attenuated by tissue of the user, wherein the plurality of
`detectors comprises at least four detectors;
`[c] a housing configured to house at least the plurality of
`detectors; and
`[d]a light permeable cover configured to be located
`between tissue of the user and the plurality of detectors when the
`noninvasive optical physiological sensor is worn by the user,
`wherein the cover comprises an outwardly protruding convex
`surface configured to cause tissue of the user to conform to at
`least a portion of the outwardly protruding convex surface when
`the noninvasive optical physiological sensor is worn by the user
`and during operation of the noninvasive optical physiological
`sensor, and wherein the plurality of detectors are configured to
`receive light passed through the outwardly protruding convex
`surface after attenuation by tissue of the user.
`Ex. 1001, 44:36–56 (bracketed identifiers [a]–[d] added). Independent
`claims 7 and 20 include similar limitations. Id. at 45:9–22; 46:12–34.
`
`E. Evidence Relied Upon
`Petitioner relies on the following references:
`Reference
`Publication/Patent Number
`Aizawa
`U.S. Patent Application Publication No.
`2002/0188210 A1, filed May 23, 2002,
`published December 12, 2002
`Japanese Patent Application Publication
`No. 2006-296564 A, filed April 18, 2005,
`published November 2, 2006
`
`Inokawa
`
`Exhibit
`1006
`
`1007
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`Reference
`Oshaki
`
`Mendelson-
`2006
`
`Beyer
`
`Goldsmith
`
`Lo
`
`Mendelson-
`1988
`
`Publication/Patent Number
`U.S. Patent Application Publication No.
`2001/0056243 A1, filed May 11, 2001,
`published December 27, 2001
`“A Wearable Reflectance Pulse Oximeter for
`Remote Physiological Monitoring,” Proceedings
`of the 28th IEEE EMBS Annual International
`Conference, 912–915 (2006)
`U.S. Patent No. 7,031,728 B2 issued April 18,
`2006
`U.S. Patent Application Publication No.
`2007/0093786 A1, filed July 31, 2006,
`published April 26, 2007
`U.S. Patent Application Publication No.
`2004/0138568 A1, filed June 15, 2003,
`published July 15, 2004
`“Design and Evaluation of a New Reflectance
`Pulse Oximeter Sensor,” Worcester Polytechnic
`Institution, Biomedical Engineering Program,
`Worcester, MA 01609; Association for the
`Advancement of Medical Instrumentation, Vol.
`22, No. 4, 1988, 167–173
`
`Exhibit
`1014
`
`1016
`
`1019
`
`1027
`
`1028
`
`1015
`
`
`Pet. 1–2. Petitioner also relies on the Declaration of Thomas W. Kenny,
`Ph.D. (Ex. 1003).
`
`F. Asserted Grounds
`Petitioner asserts that claims 1–30 are unpatentable based upon the
`following grounds (Pet. 1–2):
`Claim(s) Challenged
`35 U.S.C. §
`1–15, 17, 20–26, 28
`103
`1–15, 17, 20–26, 28
`103
`
`References/Basis
`Aizawa, Inokawa
`Aizawa, Inokawa, Ohsaki
`Aizawa, Inokawa, Mendelson-
`2006, Beyer
`
`18, 19, 29, 30
`
`103
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`Claim(s) Challenged
`18, 19, 29, 30
`
`1–17, 20–28
`
`18, 19, 29, 30
`
`35 U.S.C. §
`103
`
`103
`
`103
`
`References/Basis
`Aizawa, Inokawa, Goldsmith,
`Lo
`Mendelson-1988, Inokawa
`Mendelson-1988, Inokawa,
`Mendelson-2006, Beyer
`
`II. ANALYSIS
`A. Claim Construction
`For petitions 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). Petitioner submits that no claim term requires express
`construction. Pet. 3.
`Based on our analysis of the issues in dispute at this stage of the
`proceeding, we agree that no claim terms require express construction at this
`time. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868
`F.3d 1013, 1017 (Fed. Cir. 2017).
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 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.” 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;
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`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of non-
`obviousness. 1 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
`evaluating a combination of teachings, we must also “determine whether
`there was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior art
`elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`In an inter partes review, the petitioner must show with particularity
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`Petitioner identifies the appropriate level of skill in the art as that
`possessed by a person having “a Bachelor of Science degree in an academic
`discipline emphasizing the design of 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.”
`Pet. 3–4 (citing Ex. 1003 ¶¶ 21–22). “Alternatively, the person could have
`
`
`1 Patent Owner does not present objective evidence of non-obviousness at
`this stage.
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`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. at 4.
`For purposes of this Decision, we generally adopt Petitioner’s
`assessment as set forth above, which appears consistent with the level of
`skill reflected in the Specification and prior art.
`
`D. Obviousness over Aizawa and Inokawa
`Petitioner presents undisputed contentions that claims 1–15, 17, 20–
`26, and 28 of the ’628 patent would have been obvious over the combined
`teachings of Aizawa and Inokawa. Pet. 6–43.
`
`1. Overview of Aizawa (Ex. 1006)
`Aizawa is a U.S. patent application publication titled “Pulse Wave
`Sensor and Pulse Rate Detector,” and discloses a pulse wave sensor that
`detects light output from a light emitting diode and reflected from a patient’s
`artery. Ex. 1006, codes (54), (57).
`Figure 1(a) of Aizawa is reproduced below.
`
`
`Figure 1(a) is a plan view of a pulse wave sensor. Id. ¶ 23. As shown in
`Figure 1(a), pulse wave sensor 2 includes light emitting diode (“LED”) 21,
`four photodetectors 22 symmetrically disposed around LED 21, and
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`holder 23 for storing LED 21 and photodetectors 22. Id. Aizawa discloses
`that, “to further improve detection efficiency, . . . the number of the
`photodetectors 22 may be increased.” Id. ¶ 32, Fig. 4(a). “The same effect
`can be obtained when the number of photodetectors 22 is 1 and a plurality of
`light emitting diodes 21 are disposed around the photodetector 22.” Id. ¶ 33.
`
`Figure 1(b) of Aizawa is reproduced below.
`
`
`Figure 1(b) is a sectional view of the pulse wave sensor. Id. ¶ 23. As shown
`in Figure 1(b), pulse wave sensor 2 includes drive detection circuit 24 for
`detecting a pulse wave by amplifying the outputs of photodetectors 22. Id.
`¶ 23. Arithmetic circuit 3 computes a pulse rate from the detected pulse
`wave and transmitter 4 transmits the pulse rate data to an “unshown
`display.” Id. The pulse rate detector further includes outer casing 5 for
`storing pulse wave sensor 2, acrylic transparent plate 6 mounted to detection
`face 23a of holder 23, and attachment belt 7. Id. ¶ 23.
`Aizawa discloses that LED 21 and photodetectors 22 “are stored in
`cavities 23b and 23c formed in the detection face 23a” of the pulse wave
`sensor. Id. ¶ 24. Detection face 23a “is a contact side between the holder 23
`and a wrist 10, respectively, at positions where the light emitting face 21s of
`the light emitting diode 21 and the light receiving faces 22s of the
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`photodetectors 22 are set back from the above detection face 23a.” Id. ¶ 24.
`Aizawa discloses that “a subject carries the above pulse rate detector 1 on
`the inner side of his/her wrist 10 . . . in such a manner that the light emitting
`face 21s of the light emitting diode 21 faces down (on the wrist 10 side).”
`Id. ¶ 26. Furthermore, “the above belt 7 is fastened such that the acrylic
`transparent plate 6 becomes close to the artery 11 of the wrist 10. Thereby,
`adhesion between the wrist 10 and the pulse rate detector 1 is improved.”
`Id. ¶¶ 26, 34.
`
`2. Overview of Inokawa (Ex. 1007)
`Inokawa is a Japanese published patent application titled “Optical
`Vital Sensor, Base Device, Vital Sign Information Gathering System, and
`Sensor Communication Method,” and discloses a pulse sensor device.
`Ex. 1008 ¶ 6. 2
`
`
`2 Exhibit 1008 is an English translation of Exhibit 1007. In this Decision, all
`citations are to the English translation.
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`Figure 1 of Inokawa is reproduced below.
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`Figure 1 illustrates a schematic view of a pulse sensor. Id. ¶ 56. Pulse
`sensor 1 includes box-shaped sensor unit 3 and flexible annular wristband 5.
`Id. ¶ 57. Sensor unit 3 includes a top surface with display 7 and control
`switch 9, and a rear surface (sensor-side) with optical device component 11
`for optically sensing a user’s pulse. Id.
`Figure 2 of Inokawa is reproduced below.
`
`
`Figure 2 illustrates a schematic view of the rear surface of the pulse sensor.
`Id. ¶ 58. The rear-side (sensor-side) of pulse sensor 1 includes a pair of
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`light-emitting elements, i.e., green LED 21 and infrared LED 23, as well as
`photodiode 25 and lens 27. Id. In various embodiments, Inokawa discloses
`that the sensor-side lens is convex. See id. ¶¶ 99, 107. Green LED 21
`senses “the pulse from the light reflected off of the body (i.e.[,] change in the
`amount of hemoglobin in the capillary artery),” and infrared LED 23 senses
`body motion from the change in reflected light. Id. ¶ 59. The pulse sensor
`stores this information in memory. Id. ¶ 68. To read and store information,
`the pulse sensor includes a CPU that “performs the processing to sense
`pulse, body motion, etc. from the signal . . . and temporarily stores the
`analysis data in the memory.” Id. ¶ 69.
`Figure 3 of Inokawa is reproduced below.
`
`
`Figure 3 illustrates a schematic view of a pulse sensor mounted to a base
`device. Id. ¶ 60. Pulse sensor 1 is depicted as mounted to base device 17,
`which “is a charger with communication functionality.” Id. When so
`mounted, sensor optical device component 11 and base optical device
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`component 41 face each other in close proximity. Id. ¶ 66. In this position,
`pulse sensor 1 can output information to the base device through the coupled
`optical device components. Id. ¶ 67. Specifically, the pulse sensor CPU
`performs the controls necessary to transmit pulse information using infrared
`LED 23 to photodetector 45 of base device 17. Id. ¶¶ 67, 70, 76.
`In an alternative embodiment, additional sensor LEDs and base
`photodetectors can be used to efficiently transmit data and improve
`accuracy. Id. ¶ 111.
`
`3. Independent Claim 1
`i. “A noninvasive optical physiological sensor comprising”
`The record supports Petitioner’s undisputed contention that Aizawa
`discloses a noninvasive optical sensor. 3 Pet. 23; see, e.g., Ex. 1006 ¶ 2
`(disclosing “pulse wave sensor for detecting the pulse wave of a subject
`from light reflected from a red corpuscle in the artery of a wrist of the
`subject by irradiating the artery of the wrist”).
`
`ii. “[1a]”a plurality of emitters configured to emit light into
`tissue of a user;”
`The record supports Petitioner’s undisputed contentions as to the
`above-noted feature. See Pet. 18–23, 24–25. In that regard, Petitioner points
`to Aizawa’s disclosure of “a centrally located LED/emitter,” but notes that
`“Aizawa never specifically identifies the use of multiple emitters operating
`at difference wavelengths in conjunction with multiple detectors.” Pet. 18
`
`
`3 Whether the preamble is limiting need not be resolved at this stage of the
`proceeding because Petitioner shows sufficiently for purposes of institution
`that the recitation in the preamble is satisfied by the prior art.
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`(citing Ex. 1006 ¶ 23). Petitioner, however, relies on Inokawa as disclosing
`“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.’” Id. at 18 (citing Ex. 1008 ¶¶ 14, 44, 58,
`59). Petitioner reasons that a person of ordinary skill in the art “would have
`found it obvious to incorporate the two LEDs of Inokawa into Aizawa.” Id.
`at 24. Petitioner also explains that “[i]t would have been obvious to split the
`single LED/emitter of Aizawa into two LEDs/emitters having different
`wavelengths to (i) acquire body motion information for improved pulse
`detection and/or (ii) more reliably transmit information from the sensor to a
`base device with less error.” Id. at 25 (citing Ex. 1008 ¶¶ 7, 14, 44, 48, 58,
`59, 60, 62, 77).
`At this stage, we find Petition’s expressed reasoning for combining
`the teachings of Aizawa and Inokawa to account for the claim requirement
`of a plurality of emitters is adequately supported, including by the
`unrebutted testimony of Dr. Kenny. See, e.g., Ex. 1003 ¶¶ 73–85.
`
`iii. “[1b]”a plurality of detectors configured to detect light that
`has been attenuated by tissue of the user, wherein the
`plurality of detectors comprises at least four detectors;”
`The record supports Petitioner’s undisputed contentions as to the
`disclosure of the above-noted feature in Aizawa. See Pet. 25–26. To that
`end, Petitioner relies on Aizawa’s disclosure of “four photodetectors 22”
`that operate to “detect light ‘reflected by a red corpuscle running through the
`artery 11 of the wrist 10 . . . so as to detect a pulse wave.’” Id. (citing
`Ex. 1006 ¶¶ 24, 27, 29, 32, Fig. 1(a)).
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`iv. “[1c] a housing configured to house at least the plurality of
`detectors, and”
`The record supports Petitioner’s undisputed contentions as to the
`disclosure of the above-noted housing feature in Aizawa. See Pet. 26.
`Petitioner points to Aizawa’s disclosure of “a holder 23 for storing the above
`light emitting diode 21 and the photodetectors 22.” Id. (quoting Ex. 1006
`¶¶ 23, 24). We are satisfied at this time that Petitioner sufficiently accounts
`for the housing feature of claim 1.
`
`v. “[1d] a light permeable cover configured to be located
`between tissue of the user and the plurality of detectors when
`the noninvasive optical physiological sensor is worn by the
`user, wherein the cover comprises an outwardly protruding
`convex surface configured to cause tissue of the user to
`conform to at least a portion of the outwardly protruding
`convex surface when the noninvasive optical physiological
`sensor is worn by the user and during operation of the
`noninvasive optical physiological sensor, and wherein the
`plurality of detectors are configured to receive light passed
`through the outwardly protruding convex surface after
`attenuation by tissue of the user.”
`The record supports Petitioner’s undisputed contentions as to the
`above-noted feature. See Pet. 14–17, 27–30. With reference to an annotated
`version of Aizawa’s Figure 1(b) (reproduced below), Petitioner contends
`that “Aizawa teaches a light permeable cover in the form of an acrylic
`transparent plate 6 (blue) that is mounted at the detection face 23a over at
`least a portion of the housing to cover the at least four detectors (red).”
`Pet. 27.
`
`18
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`The figure above shows Petitioner’s annotated and colorized version of
`Aizawa’s Figure 1(b). Petitioner expresses that beyond disclosure that the
`light permeable cover is an “acrylic transparent plate that helps to improve
`‘detection efficiency,’ Aizawa does not provide much other detail, for
`instance regarding its shape.” Id. at 14 (citing Ex. 1006 ¶ 30)
`
`Petitioner, however, reasons that one of ordinary skill in the art would
`have “looked to Inokawa to enhance light collection efficiency, specifically
`by modifying the light permeable cover of Aizawa to include a convex lens.”
`Id. In that regard, Petitioner points to Inokawa’s Figure 2. Petitioner’s
`annotated and colorized version of that figure is reproduced below.
`
`19
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`Pet. 15. Figure 2 above shows a version of Inokawa’s Figure 2 that
`emphasizes the shape of lens 27. Petitioner expresses that “Inokawa teaches
`that its cover may be either flat . . . such that ‘the surface is less prone to
`scratches’” or may be in the form of the shape shown above to “increase the
`light gathering ability of the LED.” Id. at 16 (quoting Ex. 1008 ¶ 15)
`Petitioner contends that a person of ordinary skill in the art “wanting to
`achieve improved light collection efficiency over reduced scratch-
`suseptibility could have modified Aizawa’s cover to have a lens shape as per
`Inokawa.” Id. at 17 (citing Ex. 1003 ¶ 96). Petitioner also contends that a
`skilled artisan would have had a reasonable expectation of success in
`combining those teachings. Id. (citing Ex. 1003 ¶ 96). At this time, we find
`Petitioner’s contentions credible and supported by the record.
`Limitation [1d] additionally reqiures that the outwardly protruding
`convex surface be “configured to cause tissue of the user to conform to at
`least a portion of the outwardly protruding convex surface.” With respect to
`
`20
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`that tissue conforming aspect, Petitioner additionally reasons that Aizawa’s
`light permeable cover “is designed to be pressed on to the skin of the user
`with pressure” (id. at 29 (citing Ex. 1001 ¶¶ 6, 26; Ex. 1003 ¶¶ 97–98)) and
`that implementing the convex shape of Inokawa’s lens in Aizawa’s light
`permeable cover “will cause the tissue of the user to further conform around
`the convex surface of the lens/protrusion when the device is pressed against
`the tissue” (id. at 29–30 (citing Ex. 1003 ¶¶ 97–98)).
`At this stage, we find that Petitioner’s expressed reasoning for
`combining the teachings to Aizawa and Inokawa to account for the features
`[1d] of claim 1 is adequately supported, including by the unrebutted
`testimony of Dr. Kenny. See, e.g., Ex. 1003 ¶¶ 96–98.
`
`vi. Summary
`For the foregoing reasons, we are persuaded that Petitioner’s cited
`evidence and reasoning demonstrates a reasonable likelihood that Petitioner
`would prevail in its contentions that claim 1 would have been obvious in
`light of the combined teachings of Aizawa and Inokawa.
`
`4. Claims 2–15, 17, 20–26, and 28
`Claims 2–6 ultimately depend from claim 1. Claims 7 and 20 are
`independent claims that have similar requirements as those of claim 1.
`Claims 8–15 ultimately depend from claim 7 and claims 21–26 and 28
`ultimately depend from claim 20. We have considered the Petitioner’s
`assessment, and supporting record evidence, in accounting for claims 2–15,
`17, 20–26, and 28. See Pet. 30–43. On this record, we conclude that
`Petitioner has also shown a reasonable likelihood of success in its challenges
`to those claims based on Aizawa and Inokawa.
`
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`E. Obviousness over Aizawa, Inokawa, and Ohsaki
`Petitioner also contends that claims 1–15, 17, 20–26, and 28 of the
`’628 patent would have been obvious over the combined teachings of
`Aizawa, Inokawa, and Ohsaki. Pet. 43–46.
`
`1. Overview of Ohsaki (Ex. 1014)
`Ohsaki is a U.S. patent application publication titled “Wristwatch-type
`Human Pulse Wave Sensor Attached on Back Side of User’s Wrist,” and
`discloses an optical sensor for detecting a pulse wave of a human body.
`Ex. 1014, code (54), ¶ 3. Figure 1 of Ohsaki is reproduced below.
`
`
`Figure 1 illustrates a cross-sectional view of pulse wave sensor 1 attached on
`the back side of user’s wrist 4. Id. ¶¶ 12, 16. Pulse wave sensor 1 includes
`detecting element 2 and sensor body 3. Id. ¶ 16.
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`Figure 2 of Ohsaki, reproduced below, illustrates further detail of
`
`detecting element 2.
`
`
`Figure 2 illustrates a mechanism for detecting a pulse wave. Id. ¶ 13.
`Detecting element 2 includes package 5, light emitting element 6, light
`receiving element 7, and translucent board 8. Id. ¶ 17. Light emitting
`element 6 and light receiving element 7 are arranged on circuit board 9
`inside package 5. Id. ¶¶ 17, 19.
`“[T]ranslucent board 8 is a glass board which is transparent to light,
`and attached to the opening of the package 5. A convex surface is formed
`on the top of the translucent board 8.” Id. ¶ 17. “[T]he convex surface of
`the translucent board 8 is in intimate contact with the surface of the user’s
`skin,” preventing detecting element 2 from slipping off the detecting
`position of the user’s wrist. Id. ¶ 25. By preventing the detecting element
`from moving, the convex surface suppresses “variation of the amount of the
`reflected light which is emitted from the light emitting element 6 and
`reaches the light receiving element 7 by being reflected by the surface of the
`user’s skin.” Id.
`
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`2. Discussion – Aizawa, Inokawa, and Ohsaki
`As discussed above, we conclude, on the record at hand, that
`Petitioner has established a reasonable likelihood that claims 1–15, 17, 20–
`26, and 28 would have been obvious over the combined teachings of
`Aizawa, and Inokawa. Petitioner points to Ohsaki as providing “additional
`motivation and rationale for a [person of ordinary skill in the art] to modify
`Aizawa to include a ‘light permeable cover comprising a protrusion’ as per
`element [1d].” Pet. 45 (citing Ex. 1003 ¶¶ 142–146). In that regard,
`Petitioner contends that “Ohsaki teaches that adding a convex surface to the
`light permeable cover (i.e., translucent board 8) can help prevent the device
`from slipping on the tissue when compared to a flat cover.” Id. at 45–46
`(citing Ex. 1014 ¶ 25; Ex. 1003 ¶ 144). Petitioner also contends that a
`person of ordinary skill in the art “reviewing Aizawa and Ohsaki would have
`recognized Ohsaki’s use of a convex protrusion in its light permeable cover
`as a desirable configuration that would help to further prevent slippage of
`Aizawa’s device.” Id. at 46. In our view, and on this record, that contention
`is reasonable.
`Accordingly, we conclude that the record adequately supports
`Petitioner’s contentions, for purposes of instituting trial, that claims 1–15,
`17, 20–26, and 28 would have been obvious in view of Aizawa, Inokawa,
`and Ohsaki.
`
`F. Additional Grounds
`Petitioner provides arguments and evidence, including the Kenny
`Declaration, in support of Petitioner’s following additional grounds:
`
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`Claims Challenged
`18, 19, 29, 30
`
`35 U.S.C. §
`103
`
`18, 19, 29, 30
`
`1–17, 20–28
`
`18, 19, 29, 30
`
`103
`
`103
`
`103
`
`References/Basis
`Aizawa, Inokawa, Mendelson-
`2006, Beyer
`Aizawa, Inokawa, Goldsmith,
`Lo
`Mendelson-1988, Inokawa
`Mendelson-1988, Inokawa,
`Mendelson-2006, Beyer
`
`See Pet. 46–93. Patent Owner does not offer, at this stage, any arguments
`addressing Petitioner’s substantive showing. See generally PO Waiver. We
`have reviewed Petitioner’s arguments and the cited evidence, and we
`determine Petitioner has demonstrated a reasonable likelihood of prevailing
`as to these contentions. Pursuant to USPTO policy implementing the
`decision in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“SAS”), we
`institute as to all claims challenged in the petition and on all grounds in the
`petition. See PTAB Consolidated Trial Practice Guide (Nov. 2019)4 5–6,
`64.
`
`III. CONCLUSION
`The Supreme Court
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