Trials@uspto.gov
`571-272-7822
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`
`
`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.
`
`IPR2020-01523
`Patent 8,457,703 B2
`
`
`
`
`
`
`
`
`
`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.
`
`IPR2020-01523
`Patent 8,457,703 B2
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`IPR2020-01523
`Patent 8,457,703 B2
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`I.
`
`INTRODUCTION
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–7, 9–18, and 20–24 (“challenged claims”) of U.S. Patent
`No. 8,457,703 B1 (Ex. 1001, “the ’703 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.
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`B. Related Matters
`The parties identify the following matters related to the ’703 patent:
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`
`(C.D. Cal.) (filed Jan. 9, 2020);
`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, IPR2020-01524 (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. 75; Paper 3, 2.
`
`C. The ’703 Patent
`The ’703 patent is titled “Low Power Pulse Oximeter,” and issued on
`June 4, 2013, from U.S. Patent Application No. 16/174,144, filed
`November 13, 2007. Ex. 1001, codes (21), (22), (45), (54). The ’703 patent
`relates to a pulse oximeter that may reduce power consumption in the
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`absence of certain parameters that may be monitored to trigger or override
`the reduced power consumption state. Id. at code (57). “In this manner, a
`pulse oximeter can lower power consumption without sacrificing
`performance during, for example, high noise conditions or oxygen
`desaturations.” Id.
`As depicted below, the low power pulse oximeter has signal
`processor 340 that derives physiological measurements 342, including
`oxygen saturation, pulse rate, and plethysmograph, from input sensor signal
`322. Ex.1001, 4:64–5:10, Figs. 3, 4.
`
`
`Figure 3 above illustrates a top-level block diagram of a low power pulse
`oximeter. Id. at 4:40–41. Signal processor 340 may also derive signal
`statistics (344), such as signal strength, noise, and motion artifact. Id. at
`5:14–15, Figs. 3, 4. Physiological measurements 342 and signal
`statistics 344 may be input into sampling controller 360, which outputs
`sampling controls 362 that in turn are used to regulate pulse oximeter power
`dissipation by causing sensor interface 320 to vary the sampling
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`characteristics of sensor port 302 and by causing signal processor 340 to
`vary its sample processing characteristics. Id. at 5:15–27, Figs. 3, 4.
`According to the ’703 patent, power dissipation “is responsive not only to
`output parameters, such as the physiological measurements 342, but also to
`internal parameters, such as the signal statistics 344.” Id. at 5:24–27.
`The pulse oximeter uses the physiological measurements and signal
`statistics to determine “the occurrence of an event or low signal quality
`condition.” Ex. 1001, 6:25–28. An event determination is based upon the
`physiological measurements and “may be any physiological-related
`indication that justifies the processing of more sensor samples and an
`associated higher power consumption level, such as an oxygen desaturation,
`a fast or irregular pulse rate or an unusual plethysmograph waveform.” Id.
`at 6:28–34. A low signal quality condition is based upon the signal statistics
`and “may be any signal-related indication that justifies the processing or
`more sensor samples and an associated higher power consumption level,
`such as a low signal level, a high noise level or motion artifact.” Id. at 6:34–
`41.
`
`The pulse oximeter “utilizes multiple sampling mechanisms to alter
`power consumption.” Ex. 1001, 5:59–61. One sampling mechanism is “an
`emitter duty cycle control” that “determines the duty cycle of the current
`supplied by the emitter drive outputs 482 to both red and IR sensor
`emitters.” Id. at 5:61–66. The sampling mechanisms “modify power
`consumption by, in effect, increasing or decreasing the number of input
`samples received and processed.” Id. at 6:9–11. “Sampling, including
`acquiring input signal samples and subsequent sample processing, can be
`reduced during high signal quality periods and increased during low signal
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`quality periods or when critical measurements are necessary.” Id. at 6:11–
`15. “In conjunction with an intermittently reduced duty cycle or as an
`independent sampling mechanism, there may be a ‘data off’ time period
`longer than one drive current cycle where the emitter drivers . . . are turned
`off.” Id. at 7:8–12. The occurrence of an event or low signal quality
`triggers a higher duty sensor sampling, allowing high fidelity monitoring of
`the event and providing a larger signal-to-noise ratio. Id. at 8:44–57.
`
`D. Illustrative Claims
`Of the challenged claims, claims 1, 9, 12, 15, 20, and 22 are
`independent. Claims 1 and 9 are illustrative and are reproduced below.
`1. A method of managing power consumption during continuous
`patient monitoring by adjusting behavior of a patient monitor, the
`method comprising:
`
`[a] driving one or more light sources configured to emit
`light into tissue of a monitored patient;
`[b] receiving on or more signals from one or more
`detectors configured to detect said light after attenuation by said
`tissue;
`[c] continuously operating a patient monitor at a lower
`power consumption level to determine measurement values for
`one or more physiological parameters of a patient;
`[d]
`comparing
`processing
`characteristics
`predetermined threshold; and
`[e] when said processing characteristics pass said
`threshold, transitioning to continuously operating said patient
`monitor at a higher power consumption level,
`[f] wherein said continuously operating at said lower
`power consumption level comprises reducing activation of an
`attached sensor,
`[g] said sensor positioning said light sources and said
`detectors proximate said tissue.
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`to
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`9. A method of managing power consumption during continuous
`patient monitoring by adjusting behavior of a patient monitor, the
`method comprising:
`[a] driving one or more light sources configured to emit
`light into tissue of a monitored patient;
`[b] receiving one or more signals from one or more
`detectors configured to detect said light after attenuation by said
`tissue;
`[c] continuously operating a patient monitor at a lower
`power consumption level to determine measurement values for
`one or more physiological parameters of a patient;
`[d]
`comparing
`processing
`characteristics
`predetermined threshold; and
`[e] when said processing characteristics pass said
`threshold, transitioning to continuously operating said patient
`monitor at a higher power consumption level,
`[f] wherein said continuously operating at said lower
`power consumption level comprises reducing an amount of
`processing by a signal processor.
`Ex. 1001, 11:32–51, 12:5–22 (bracketed identifiers [a]–[g] and [a]–[f]
`added).
`Independent 12 is also a method claim that includes similar
`limitations, but its last clause recites “wherein said processing characteristics
`include an override condition.” Id. at 12:29–46. Independent claims 15, 20,
`and 22 are corresponding apparatus claims, each directed to a “patient
`monitor.” Id. at 12:53–67; 13:16–14:3; 14:6–21.
`
`to
`
`a
`
`E. Evidence Relied Upon
`Petitioner relies on the following references:
`Exhibit
`Reference
`Publication/Patent Number
`Diab
`U.S. Patent No. 5,632,272 issued May 27, 1997 1007
`Amano
`U.S. Patent No. 6,293915 B1 issued Sept. 25,
`1004
`2001
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`Reference
`Edgar
`
`Turcott
`
`Publication/Patent Number
`U.S. Patent No. 6,393,311 B1 issued May 21,
`2002
`U.S. Patent No. 6,527,729 B1 issued Mar. 4,
`2003
`
`Exhibit
`1005
`
`1006
`
`
`Pet. 3. Petitioner also relies on the Declaration of Brian W. Anthony, Ph.D.
`(Ex. 1003).
`
`103
`
`F. Asserted Grounds
`Petitioner asserts that claims 1–7, 9–18, and 20–24 are unpatentable
`based upon the following grounds (Pet. 3):
`Claim(s) Challenged
`35 U.S.C. §
`9, 10, 12–14, 20, 22–
`103
`24
`11, 21
`103
`1–7, 15–18
`103
`
`Reference(s)/Basis
`Diab, Amano
`Diab, Amano, Edgar
`Diab, Amano, Turcott
`Diab and “the General
`Knowledge of a [person of
`ordinary skill in the art]” (“GK-
`POSITA”)
`Diab, GK-POSITA, Edgar
`103
`Diab, GK-POSITA, Turcott
`103
`Amano
`103
`Amano, Turcott
`103
`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 provides an express claim construction for a
`
`9, 10, 12–14, 20, 22–
`24
`
`11, 21
`1–7, 15–18
`9, 10, 12–14, 20, 22–
`24
`1–3, 15–17
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`phrase that appears in each of claims 1 and 15. Specifically, Petitioner
`contends that the phrase “reducing activation of an attached sensor”
`(claim 1) and “reduce activation of an attached sensor” (claim 15) should be
`construed as “‘reducing the duty cycle of an emitter driver output to the
`sensor’ or ‘entering a data off state for a time period in which the emitter
`drivers are turned off.’” Pet. 6 (citing Ex. 1003 ¶ 36). According to
`Petitioner, that construction arises from disclosure in the ’703 patent, which
`states that:
`“[i]ntermittently reducing the drive current duty cycle can
`advantageously reduce power dissipation” and “[i]n conjunction
`with an intermittently reduced duty cycle or as an independent
`sampling mechanism, there may be a ‘data off’ time period
`longer than one drive current cycle where the emitter drivers . . .
`are turned off.”
`Id. (quoting Ex. 1001, 3:28–30, 6:66–7:1, 7:8–12).
`For purposes of this Decision, we adopt Petitioner’s presently
`unopposed construction of the above-noted claim phrase in each of claims 1
`and 15. Based on our analysis of the issues in dispute at this stage of the
`proceeding, we conclude that no further 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
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`(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 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
`
`1 Patent Owner does not present objective evidence of non-obviousness at
`this stage.
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`data or information, including but not limited to physiological
`monitoring technologies or a Master of Science degree in a
`relevant academic discipline with less than a year of related work
`experience in the same discipline.
`Pet. 5 (citing Ex. 1003 ¶ 33).
`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 Diab and Amano
`Petitioner presents undisputed contentions that claims 9, 10, 12–14,
`20, and 22–24 of the ’703 patent would have been obvious over the
`combined teachings of Diab and Amano. Pet. 7–28.
`
`1. Overview of Diab (Ex. 1007)
`Diab is a U.S. Patent titled “Signal Processing Apparatus.” Ex. 1007,
`code (54). Diab discloses a “method and apparatus for analyzing two
`measured signals that are modeled as containing primary and secondary
`portions” particularly with respect to blood oximetry measurements. Id. at
`code (57). Diab further presents “[a] physiological monitor particularly
`adapted to pulse oximetry oxygen saturation measurement comprises two
`light emitting diodes (LED’s) which emit light at difference wavelengths to
`produce first and second signals.” Id. at 4:51–54.
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`Diab’s Figure 11 is reproduced below:
`
`
`
`Figure 11 above shows “[a] schematic of a physiological monitor for pulse
`oximetry” that “depicts a general hardware block diagram of a pulse
`oximeter 299.” Id. at 34:10–12. Pulse oximeter 299 includes sensor 300
`with light emitters 301 and 302, “digital signal processing system 334,” and
`display 336. Id. at 34:12–25. Digital signal processing system 334 provides
`outputs to display 336 that may include “blood oxygen saturation, heart rate,
`and a clean plethysmographic waveform.” Id. at 34:25–29.
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`Diab’s Figure 14 is reproduced below:
`
`
`
`Figure 14 depicts a “functional block diagram[] of the operations of the
`pulse oximeter 299 carried out by the digital signal processing system 334.”
`Id. at 38:61–63. Data entering processing system 334 undergoes various
`operations include “demodulation” by demodulation module 400,
`“decimation” by decimation module 402, certain statistical calculations by
`statistics module 404, and a “saturation transform” by saturation transform
`module 406. Id. at 38:66–39:10. “The data subjected to the statistics
`operations and the data subjected to the saturation transform operations are
`forwarded to the saturation operations as represented by a saturation
`calculation module 408 and pulse rate operations as represented in a pulse
`rate calculation module 410.” Id. at 39:10–15.
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`Diab’s Figure 20 is reproduced below:
`
`
`
`Figure 20 shows pulse rate module 410. Id. at 47:30. Pule rate module 410
`includes, inter alia, “motion status module 584” and “motion artifact
`suppression module 580.” Id. at 47:33–34. An “average peak width value”
`is provided to motion status module 584 and “if the peaks are wide, this is
`taken as an indication of motion.” Id. at 47:50–52. “In the case of motion,
`motion artifacts are suppressed using the motion artifact suppression module
`580.” Id. at 47:55–56. “If motion is not detected, spectral estimation on the
`signals is carried out directly without motion artifact suppression.” Id. at
`47:52–54.
`
`2. Overview of Amano (Ex. 1004)
`Amano is a U.S. Patent titled “Pulse Wave Examination Apparatus,
`Blood Pressure Monitor, Pulse Waveform Motion, and Pharmacological
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`Action Monitor.” Ex. 1004, code (54). Amano characterizes its disclosure
`as follows:
`
`The present invention relates to a pulse wave examination
`apparatus suitable for specifying the type of human pulse wave,
`a blood pressure monitor using the mean blood pressure and
`pulse pressure as its parameters and a pulse waveform monitor
`and a pharmacological action monitor which use a parameter
`related to a dicrotic notch part of an arterial pressure waveform.
`Id. at 1:7–13. 2
`
`Amano’s Figures 37A and 37B are reproduced below:
`
`Figure 37A “is a view showing the condition of a wrist watch-type pulse
`wave examination apparatus which is installed.” Id. at 16:38–40. Figure
`
`
`
`
`2 A “pulse wave is usually defined as a wave of blood which is output from
`the heart and propagates through a blood vessel.” Id. at 1:17–19.
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`37B “is a view showing a pulse wave detecting section of a wrist watch-type
`pulse wave examination apparatus.” Id. at 16:41–43. Wrist watch-type
`pulse examination apparatus 1 includes device body 100 with cable 101
`connecting to pulse wave detecting section 10. Id. at 40:23–27.
`
`Amano’s Figure 1 is reproduced below:
`
`
`Figure 1 above “is a block diagram showing the functional structure of the
`pulse wave examination apparatus according to” an embodiment. Id. at
`21:3–5. Pulse wave detecting section 10 detects a pulse waveform and
`outputs the detected signal to body movement elimination section 30. Id. at
`21:5–8. The pulse wave examination apparatus also includes, inter alia,
`body movement detecting section 20, waveform treating section 21, and
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`judging section 22. “[B]ody movement detection section 20 comprises, for
`instance, an acceleration sensor and detects the body movement of a subject
`to output the detected signal as a signal TH to . . . waveform treating section
`21.” Id. at 21:9–12. “[J]udging section 22 determines whether body
`movement is present or not, based on the body movement waveform TH, to
`yield a control signal C.” Id. at 21:58–60. “[W]hen control signal C
`indicates that no body movement is present the operations of the waveform
`treating section 21 and body movement component elimination section 30
`are suspended.” Id. at 21:64–22:2. Such suspension can result in “reduce[d]
`power consumption in the apparatus.” Id. at 22:6.
`
`3. Independent Claim 9
`Petitioner presents undisputed contentions that claim 9 would have
`been obvious over the combined teachings of Diab and Amano. Pet. 11–85.
`
`i. “A method of managing power consumption during
`continuous patient monitoring by adjusting behavior of a
`patient monitor, the method comprising:”
`On this record, the cited evidence supports Petitioner’s undisputed
`contention that the combined teachings of Diab and Amano account for the
`preamble of claim 9. 3 Petitioner points to disclosure in Diab as disclosing “a
`method for operating ‘a physiological monitor for pulse oximetry’ referred
`to as ‘pulse oximeter 299’ that ‘compute[s] the arterial and venous blood
`oxygen saturations of a physiological system on a continuous or nearly
`continuous time basis.’” Pet. 11 (citing Ex. 1007, 34:10–12, 63:38–41,
`
`
`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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`Fig. 11; Ex. 1003 ¶ 46). Petitioner also directs attention to Diab’s teachings
`pertaining to its “motion status module 584” and “motion artifact
`suppression module 580” and contends that “Diab adjusts the behavior of the
`oximeter by (1) not performing motion artifact suppression when motion is
`not detected and (2) suppressing motion artifacts when motion is detected.”
`Id. at 12 (citing Ex. 1007, 47:30–38, 47:47–49, 47:52–56, Figs. 14, 20,
`Ex. 1003 ¶¶ 47–48). Petitioner further relies on Amano’s teachings that
`when no body movement is present its “body movement component
`eliminating section” is suspended resulting in reduced power consumption.
`Id. (citing Ex. 1004, 21:50–22:6, 35:54–64). Petitioner reasons the
`following:
`
`A POSITA would have found obvious that operating
`Diab’s “motion artifact suppression module 580” consumes
`power based on Amano’s teaching that “power is consumed by
`the body movement eliminating operation’ to Diab’s oximeter.
`Additionally, a POSITA would have found obvious that
`performing “spectral estimation on the signals… directly without
`motion artifact suppression” reduces power consumption based
`on Amano’s teaching that suspending “the operations of… body
`movement component eliminating section” reduces power
`consumption. A POSITA would have been motivated and would
`have found it obvious and straightforward to combine Diab with
`Amano to manage power consumption by “reducing calculation
`time and power consumption,” as suggested by Amano, “[i]f
`motion is not detected” by performing “spectral estimation on the
`signals… directly without motion artifact suppression,” as taught
`by Diab.
`Pet. 12–13 (citing Ex. 1004, 21:50–22:6, 35:54–64; Ex. 1007, 48:34–49:38;
`Ex. 1003 ¶¶ 49–50).
`At this stage of the proceeding, Petitioner’s assessment of the
`combined teachings of Diab and Amano and stated reasoning for the
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`combining those teachings is sufficiently supported, including by the
`unrebutted testimony of Dr. Anthony. See, e.g., Ex. 1003 ¶¶ 46–50.
`
`ii. “[a] driving one or more light sources configured to emit
`light into tissue of a monitored patient;”
`“[b] receiving one or more signals from one or more
`detectors configured to detect said light after attenuation by
`said tissue;”
`With respect to limitations 9[a] and 9[b], Petitioner relies on Diab’s
`disclosure that its “oximeter 299 includes ‘red and infrared light emitters
`310, 302 [that] each emits energy which is absorbed by the finger 310 and
`received by the photodetector 320’ after attenuation by the finger,” which
`“comprises skin, tissue, muscle, both arterial blood and venous blood, fat,
`etc., each of which absorbs light energy.” Id. at 13–14 (citing Ex. 1007,
`35:23–27, 4:51–57, 33:51–64, 34:12–19, Fig. 11 (annotated); Ex. 1003
`¶ 51). We are satisfied that, at this time, the cited evidence supports
`Petitioner’s undisputed contentions regarding these limitations.
`
`iii. “[c] continuously operating a patient monitor at a lower
`power consumption level to determine measurement values
`for one or more physiological parameters of a patient;”
`For limitation 9[c], Petitioner relies on Diab’s disclosure as to the
`operation of its oximeter 299 that “continuously operates by ‘comput[ing]
`the arterial and venous blood oxygen saturations of a physiological system
`on a continuous or nearly continuous time bases’” in situations in which
`motion artifact suppression is both carried out and not carried out. Pet. 14–
`18 (citing various disclosure of Ex. 1007; Ex. 1003 ¶¶ 52–54). Petitioner
`also points to Amano’s “teaching of suspending ‘the operations of… body
`movement component eliminating section’ ‘when not body movement is
`
`19
`
`
`
`IPR2020-01523
`Patent 8,457,703 B2
`
`present,’ and that such suspension “reduces power consumption.” Id. at 17–
`18 (citing Ex. 1004, 21:50–22:6, 35:54–64; Ex. 1007, 48:34–49:38; Ex.
`1003 ¶¶ 54–55). Petitioner reasons the following:
`A POSITA would have been motivated and would have found it
`obvious and straightforward to combine Diab with Amano to
`“reduc[e] calculation
`time and power consumption,” as
`suggested by Amano, “[i]f motions is not detected” by
`performing “spectral estimation on the signals… directly without
`motion artifact suppression,” as taught by Diab. Accordingly,
`the combination of Diab and Amano renders obvious
`continuously operating
`the oximeter at a
`lower power
`consumption level “[i]f motion is not detected” to determine
`measurement values for one or more physiological parameters of
`a patient.”
`Id. at 18. Dr. Anthony agrees with this assessment. Ex. 1003 ¶ 55.
`
`We are persuaded that the cited evidence of record supports
`Petitioner’s undisputed contention that the combined teachings of Diab and
`Amano account for the above-noted feature of claim 9.
`
`iv. “[d] comparing processing characteristics to a predetermined
`threshold; and”
`For limitation 9[d], Petitioner points to operation of Diab’s signal
`processor 334, and the operation of that processor in “calculat[ing] ‘peak
`width of a power curve’ where ‘[t]he width of the peaks provides some
`indication of motion by the patient—wider peaks indicating motion.’” Pet.
`18–19 (citing Ex. 1007, 46:13–20, 46:53–55). Petitioner reasons that “A
`POSITA would have understood that in order to determine whether the
`peaks are ‘wide,’ the ‘average peak width value would be compared to a
`width value above which the peaks are considered ‘wide’ (a threshold).” Id.
`at 19–20 (citing Ex. 1007, 47:50–56; Ex. 1003 ¶ 57). Dr. Anthony testifies
`
`20
`
`
`
`IPR2020-01523
`Patent 8,457,703 B2
`
`that “Diab teaches comparing processing characteristics (‘average peak
`width value’) to a predetermined threshold (a value corresponding to ‘wider
`peaks indicating motion’).” Ex. 1003 ¶ 57. At this time, we are persuaded
`that the cited evidence, including the testimony of Dr. Anthony, satisfy
`limitation 9[d].
`
`v. “[e] when said processing characteristics pass said
`threshold, transitioning to continuously operating said patient
`monitor at a higher power consumption level,”
`With respect to limitation 1[e], Petitioner refers to prior discussion of
`the teachings of Diab and Amano concerning the presence or absence of
`motion affecting whether motion artifact suppression occurs, and thus
`impacting the level of power consumption. Pet. 20. Petitioner contends that
`in light of the combined teachings of Diab and Amano:
`[A] POSITA would have found obvious that, during operation at
`the lower power consumption level “without motion artifact
`suppression,” when motion is detected based on processing
`characteristics (“average peak width value”) passing of the
`threshold (a value corresponding to “wider peaks indicating
`motion”), the signal processor 334 transitions to the higher power
`consumption level where “motion artifacts are suppressed using
`the motion artifact suppression module 580.” In the
`combination, Diab’s oximeter continuously operates by
`“comput[ing] the arterial and venous blood oxygen saturations of
`a physiological system on a continuous or nearly continuous
`time basis… regardless of whether or not the physiological
`system undergoes voluntary motion.
`Id. (citing Ex. 1007, 34:10–12, 47:52–56, 63:38–41, Fig. 11; Ex. 1004,
`21:50–22:6, 35:54–64; Ex. 1003 ¶¶ 58, 46–50, 52–55).
`
`21
`
`
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`IPR2020-01523
`Patent 8,457,703 B2
`
`On this record, we determine that the cited evidence adequately
`
`supports Petitioner’s undisputed contentions that the combined teachings of
`Diab and Amano satisfy limitation 9[e].
`
`vi. “[f] wherein said continuously operating at said lower power
`consumption level comprises reducing an amount of
`processing by a signal processor.”
`In conjunction with limitation 9[f], Petitioner also references prior
`assessment of the teachings of Diab and Amano with regard to the impact of
`motion artifact suppression on power consumption. Pet. 21–22 (referencing
`discussion pertaining to “9[c]” and “9[e]” and citing various portions of
`Exs. 1004, 1007; Ex. 1003 ¶¶ 61, 52–55, 46–50, 58, 61–62).
`At this stage of the proceeding, we determine that the cited evidence
`adequately supports Petitioner’s undisputed contentions that the combined
`teachings of Diab and Amano satisfy limitation 9[f].
`
`vii. Summary
`On this record, we are persuaded that Petitioner has shown a
`reasonable likelihood of success in its challenged to claim 9 as unpatentable
`based on the combined teachings of Diab and Amano.
`
`4. Independent Claim 12
`Independent claim 12 is also a method claim that requires similar
`limitations [a]–[f] as those set forth in claim 9. Where the claims differ is in
`the final wherein clauses (limitation [f]). In claim 12, that clause reads
`“wherein said processing characteristics include an override condition.”
`Ex. 1001, 12:29–46. With respect to that clause, Petitioner initially refers to
`its assessment in connection with limitation 9[d]. Pet. 23–24. In particular,
`
`22
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`
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`IPR2020-01523
`Patent 8,457,703 B2
`
`Petitioner references Diab’s disclosure pertaining to the effect of motion
`detection on the suppression of motion artifacts. Id. (citing Ex. 1007, 47:50–
`56; Ex. 1003 ¶¶ 56–57). Petitioner also references its discussion of the
`combined teachings of Diab and Amano as applied to the preamble of
`claim 9 and limitation 9[c]. To that end, Petitioner contends the following:
`[A] POSITA would have found obvious that, during operation at
`the lower power consumption level “without motion artifact
`suppression,” when motion is detected based on processing
`characteristics (“average peak width value”) passing
`the
`threshold (a value corresponding to “wider peaks indicating
`motion”), the signal processor 334 transitions to the higher power
`consumption level where “motion artifacts are suppressed using
`the motion artifact suppression module 580.”
`Id. at 24 (citing Ex. 1007, 47:50–56; Ex. 1004, 21:50–22:6, 35:54–64;
`Ex. 1003 ¶¶ 46–50, 52–55). Petitioner subsequently argues the following:
`A POSITA would have understood that when motion is present,
`the detected condition overrides the reduced power consumption
`state (where the signal processor processes only infrared samples
`“without motion artifact suppression”) causing the oximeter to
`continuously operate at a higher power consumption level where
`the signal processor processes more data (red samples and
`saturation value in addition to infrared samples) using the
`“motion artifact suppression module 580.”
`Id. (citing Ex. 1003 ¶ 60). Petitioner lastly contends that “[a]ccordingly, the
`processing charact
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