Trials@uspto.gov
`571-272-7822
`
`Paper 29
`Entered: April 29, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01524
`Patent 10,433,776 B2
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`KINDER, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 29
`Entered: April 29, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01524
`Patent 10,433,776 B2
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`KINDER, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01524
`Patent 10,433,776 B2
`
`
`I.
`
`INTRODUCTION
`
`Background
`A.
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–16 (“challenged claims”) of U.S. Patent
`No. 10,433,776 B2 (Ex. 1001, “the ’776 patent”). Paper 2 (“Pet.”). Masimo
`Corporation (“Patent Owner”) waived filing a Preliminary Response.
`Paper 6. We instituted an inter partes review of all challenged claims on all
`asserted grounds of unpatentability, pursuant to 35 U.S.C. § 314. Paper 7
`(“Inst. Dec.”).
`After institution, Patent Owner filed a Response (Paper 15, “PO
`Resp.”) to the Petition, Petitioner filed a Reply (Paper 18, “Pet. Reply”), and
`Patent Owner filed a Sur-reply (Paper 20, “Sur-reply”). An oral hearing was
`held on January 19, 2022, and a transcript of the hearing is included in the
`record. Paper 28 (“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. Based on the record before us and for the reasons set
`forth below, Petitioner has not met its burden of showing, by a
`preponderance of the evidence, that any challenged claim of the ’776 patent
`is unpatentable.
`
`Related Matters
`B.
`The parties identify the following matters related to the ’776 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);
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`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, IPR2020-01526 (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);
`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,588,553);
`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. 68; Paper 3, 2–3.
`
`The parties further identify certain pending patent applications, as
`well as other issued applications, that claim priority to, or share a priority
`claim with, the ’776 patent. Pet. 68; Paper 3, 1.
`
`The ’776 Patent
`C.
`The ’776 patent is titled “Low Power Pulse Oximeter,” and issued on
`October 8, 2019, from U.S. Patent Application No. 16/174,144, filed
`October 29, 2018. Ex. 1001, codes (21), (22), (45), (54). The ’776 patent
`claims priority through a series of continuation applications to Provisional
`Application No. 60/302,564, filed July 2, 2001. Id. at codes (60), (63).
`The ’776 patent relates to a pulse oximeter that may reduce power
`consumption in the absence of certain parameters that may be monitored to
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`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, 4:65–5:16, Figs. 3, 4.
`
`
`Figure 3 illustrates a top-level block diagram of a low power pulse oximeter.
`Id. at 4:41–42. Signal processor (340) may also derive signal
`statistics (344), such as signal strength, noise, and motion artifact. Id. at
`5:16–17, 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
`characteristics of sensor port (302) and by causing signal processor (340) to
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`vary its sample processing characteristics. Id. at 5:17–26, Figs. 3, 4.
`According to the ’776 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 5:26–29.
`The pulse oximeter uses the physiological measurements and signal
`statistics to determine “the occurrence of an event or low signal quality
`condition.” Ex. 1001, 6:28–31. 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 oxygen desaturation, a
`fast or irregular pulse rate or an unusual plethysmograph waveform.” Id. at
`6:31–37. 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 6:37–
`42.
`
`The pulse oximeter “utilizes multiple sampling mechanisms to alter
`power consumption.” Ex. 1001, 5:62–64. 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 5:64–6:2. The sampling mechanisms “modify power
`consumption by, in effect, increasing or decreasing the number of input
`samples received and processed.” Id. at 6:12–14. “Sampling, including
`acquiring input signal samples and subsequent sample processing, can be
`reduced during high signal quality periods and increased during low signal
`quality periods or when critical measurements are necessary.” Id. at 6:14–
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`18. “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 7:11–15. 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 8:47–61.
`
`Illustrative Claim
`D.
`Of the challenged claims, claims 1 and 11 are independent. Claim 1 is
`illustrative and is reproduced below.
`1.[p] A method of operating a patient monitor configured
`to monitor at least a pulse rate of a patient by processing signals
`responsive to light attenuated by body tissue, the method
`comprising:
`[a] operating the patient monitor according to a first
`control protocol, wherein said operating includes activating a
`first control protocol light source in accordance with the first
`control protocol, the first control protocol light source including
`one or more of a plurality of light sources;
`when operating according to the first control protocol,
`calculating, by the patient monitor, measurement values of the
`pulse rate, the measurement values responsive to light from the
`first control protocol light source, detected by a detector of an
`optical sensor after attenuation by body tissue of the patient using
`the patient monitor;
`[b] generating a trigger signal, wherein generating said
`trigger signal is responsive to at least one of: a comparison of
`processing characteristics to a predetermined threshold, a
`physiological event, or signal quality characteristics of signals
`received from the detector;
`[c] in response to receiving the trigger signal, operating the
`patient monitor according to a second control protocol different
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`from the first control protocol, wherein said operating includes
`activating a second control protocol light source in accordance
`with the second control protocol, the second control protocol
`light source including one or more of the plurality of light
`sources; and
`when operating the patient monitor according to the
`second control protocol, calculating the measurement values of
`the pulse rate, the measurement values responsive to light from
`the second control protocol light source, detected by the detector
`after attenuation by the body tissue of the patient using the
`patient monitor,
`[d] wherein said operating of the patient monitor
`according to the first control protocol operates the first control
`protocol light source according to a first duty cycle and said
`operating of the patient monitor according to the second control
`protocol operates the second control protocol light source
`according to a second duty cycle, wherein power consumption of
`the first control protocol light source according to the first duty
`cycle is different than power consumption of the second control
`protocol light source according to the second duty cycle.
`Ex. 1001, 11:40–12:21 (bracketed identifiers p–d added). Independent
`claim 11 is an apparatus claim that includes limitations substantially similar
`to limitations [a]–[d] of claim 1. Id. at 12:60–14:9.
`
`Applied References
`E.
`Petitioner relies upon the following references:
`Richardson et al., U.S. Patent No. 5,555,882, filed
`August 24, 1994, issued September 17, 1996 (Ex. 1004,
`“Richardson”);
`Bindszus et al., U.S. Patent No. 6,178,343 B1, filed
`May 20, 1999, issued January 23, 2001 (Ex. 1005, “Bindszus”); and
`Turcott, U.S. Patent No. 6,527,729 B1, filed October 11, 2000,
`issued March 4, 2003 (Ex. 1006, “Turcott”).
`Pet. 3–4.
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` Petitioner also submits, inter alia, the Declaration of Brian W.
`Anthony, Ph.D. (Ex. 1003). Patent Owner submits, inter alia, the
`Declaration of Vijay K. Madisetti, Ph.D. (Ex. 2002). The parties also
`provide deposition testimony from Dr. Anthony and Dr. Madisetti, including
`from this proceeding and others. Exs. 1038, 2005, 2006.
`
`Asserted Grounds of Unpatentability
`F.
`We instituted an inter partes review based on the following grounds.
`Inst. Dec. 9, 23.
`
`Claims Challenged
`1–8, 11–16
`1–9, 11–16
`
`35 U.S.C.
`§
`103
`103
`
`9, 10
`
`1–9, 11–16
`
`1–9, 11–16
`
`9, 10
`
`103
`
`103
`
`103
`
`103
`
`Reference(s)/Basis
`Richardson (first mapping)
`Richardson (second mapping)
`Richardson (either mapping)
`and Bindszus
`Richardson and Turcott (first
`mapping)
`Richardson and Turcott (second
`mapping)
`Richardson and Turcott (either
`mapping) and Bindszus
`
`II. DISCUSSION
`Claim Construction
`A.
`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. 7. Nonetheless, we determine that the parties’ briefing
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`identifies certain aspects of the claim language that implicate claim
`construction, as discussed below.
`
`1. Whether the “first duty cycle” must be different from the “second duty
`cycle.”
`Each independent claim requires “a first duty cycle” and “a second
`duty cycle.” For example, claim 1 requires in pertinent part:
`wherein said operating of the patient monitor according to the
`first control protocol operates the first control protocol light
`source according to a first duty cycle and said operating of the
`patient monitor according to the second control protocol operates
`the second control protocol light source according to a second
`duty cycle.
`
`Ex. 1001, 12:11–16 (emphases added), 14:1–4 (claim 11).
`Petitioner has based its patentability analysis on two alternative claim
`interpretations (two distinct “mappings”) of the claim limitations related to a
`“first duty cycle” and “second duty cycle.” See Pet. 3, 16. The first
`mapping, which Petitioner classifies as the proper construction, requires that
`the first and second duty cycles be different. Pet. 16 (“Accordingly,
`Richardson teaches operating the patient monitor according to different duty
`cycles, under the proper construction of 1[d].” (emphasis added)), Pet. 50
`(“[u]nder the proper construction of 1[d] requiring a different duty cycle for
`operating the infrared light source in State 2 than the duty cycle for
`operating the infrared or red light source in State 1”), 56 (similar argument).
`Petitioner argues that under a proper construction, the first and second duty
`cycles cannot be identical, but the Petition does not provide any argument or
`basis for this reasoning.
`Petitioner, in an alternative mapping, then posits a second claim
`interpretation theory for the “first duty cycle” and “second duty cycle”
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`limitations in which the first and second duty cycles need not be different.
`Pet. 30. Specifically, Petitioner argues, “Richardson teaches this limitation
`under an alternate construction of this limitation that does not require
`different duty cycles for the first duty cycle and the second duty cycle.” Id.
`Patent Owner, relying on the testimony of Dr. Madisetti, contends that
`the Board should construe the “first duty cycle” to be different from the
`“second duty cycle,” consistent with Petitioner’s first mapping. PO Resp. 22
`(citing Ex. 2002 ¶¶ 48–53). Patent Owner argues the Specification of the
`’776 patent requires different first and second duty cycles whereas claims 1
`and 11 use “first” and “second” to distinguish the duty cycles. Id. at 23
`(citing Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed.
`Cir. 2005) (“A claim construction that gives meaning to all the terms of the
`claim is preferred over one that does not do so.”). Patent Owner contends
`that “[c]laims 1 and 11 further clarify that one of the differences between the
`first and second control protocols are the duty cycles.” Id. (citing Ex. 1001,
`12:11–21).
`During the oral hearing, Petitioner conceded that it was now accepting
`the position that the first and second duty cycle must be different. Tr. 6:1–7
`(Petitioner’s counsel stating that “the parties agree that the claims require the
`first and second duty cycle to be different”).
`We determine that the surrounding claim language and the
`Specification of the ’776 patent support the now agreed upon interpretation
`that the first and second duty cycle must be different. See Ex. 1001, 11:45–
`46, 11:63–65, 12:11–21, 6:64–7:2 (distinguishing constant duty cycle pulse
`oximeters), 7:2–4, 8:4–24, Fig. 8.
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`As discussed more below, Petitioner has conceded that the grounds of
`unpatentability based upon its second mapping of Richardson are no longer
`viable under the interpretation that the first and second duty cycle must be
`different. See Tr. 6:8–9, 27:4–24; Pet. 16, 26. Based on Petitioner’s
`concession, our analysis below focuses on those arguments directed to the
`first mapping of Richardson – “[t]he first mapping assumes that the claims
`require the first and second duty cycles to be different.” Tr. 6:2–3.
`
`2.
`
`Construction of “duty cycle” and whether the “duty cycle” can be
`0%.
`Patent Owner requests that we “construe ‘duty cycle’ to mean ‘the
`ratio of operating time (or on time) of a light source to the total time period
`during which the light source is intermittently operated, expressed as a
`percentage.’” PO Resp. 17 (citing Ex. 2002 ¶ 36). Further, according to
`Patent Owner, “[t]he ‘first duty cycle’ and ‘second duty cycle’ cannot be 0%
`based on the claims and ’776 patent specification.” Id. at 19 (citing
`Ex. 2002 ¶¶ 40–47).
`Patent Owner contends that the person of ordinary skill in the art
`would have understood “duty cycle” to be “the ratio of operating time to
`total elapsed time of a device that operates intermittently, expressed as a
`percentage,” because “[t]he ’776 patent consistently describes the ‘duty
`cycle’ as the ratio of the operating time (or on time) of the red and infrared
`LEDs to the total time period during which the LEDs are intermittently
`operated, expressed as a percentage.” PO Resp. 17–18 (citing Ex. 2004,
`225; Ex. 2002 ¶¶ 37, 39; Ex. 1001, 2:43–44). Patent Owner notes that the
`’776 patent discloses a method of reducing the power consumption of a
`patient monitor by “intermittently reducing the drive current duty cycle.” Id.
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`(quoting Ex. 1001, 6:59–7:11). Patent Owner notes that “[t]he ‘drive
`current’ is the current supplied by the red and infrared LED drivers (also
`called the ‘emitter drivers’)”, and “[t]he LEDs operate (i.e., are turned on
`and emit light) when the LED drivers supply current.” Id. at 18 (citing
`Ex. 1001, 2:43–44, 8:16–20; Figs. 4, 8).
`Patent Owner relies on Figure 5 of the ’776 patent, seen below, which
`“illustrates an ‘emitter driver output current’ versus time profile for a pulse
`oximeter.” PO Resp. 18 (quoting Ex. 1001, 6:59–60).
`
`
`Patent Owner’s annotated Figure 5 depicts the LEDs operating in high duty
`cycle state 502 (red) and the LEDs operating in a low duty cycle state 504
`(green). Id. According to Patent Owner, the illustration shows that when
`the LEDs are operating in a high duty cycle, they receive current from the
`emitter driver and are operating (i.e., are turned on and emit light) for 25%
`of the total time period during which the LEDs are intermittently operated,
`and conversely, when the LEDS are operating in a low duty cycle, the LEDs
`receive current and operate (i.e., are turned on and emit light) for 3.125% of
`the total time period during which the LEDs are intermittently operated. Id.
`at 19 (citing Ex. 1001, 6:58–61, 7:4–8, 8:15–24, Fig. 8). Patent Owner thus
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`contends that the ’776 patent uses “duty cycle” to mean “the ratio of
`operating time to total elapsed time of a device that operates intermittently,
`expressed as a percentage.” Id. (citing Ex. 2002 ¶¶ 37–39).
`As to Patent Owner’s contention that the first duty cycle and second
`duty cycle cannot be 0%, Patent Owner first looks to the surrounding
`language of claim 1, and notes it “requires ‘operating the patient monitor
`according to a first control protocol,’ where the first control protocol
`‘operates the first control protocol light source according to a first duty
`cycle.’” PO Resp. 20 (quoting Ex. 1001, 11:45–46, 12:11–13). Patent
`Owner next relies on the claim language “that ‘when operating according to
`the first control protocol,’ the patient monitor calculates ‘measurement
`values of the pulse rate’ that are ‘responsive to light from the first control
`protocol light source.’” Id. (quoting Ex. 1001, 11:51–57). “Thus,”
`according to Patent Owner, the claims “require the ‘first control protocol
`light source’ to generate light so that the patient monitor can calculate the
`pulse rate based on the light.” Id. (citing Ex. 2002 ¶ 41). Patent Owner
`reasons that “if the first control protocol light source had a duty cycle of 0%,
`the light source would be inactive and would not generate light.” Id. (citing
`Ex. 2002 ¶ 42). Accordingly, if the first control protocol light source had a
`duty cycle of 0%, Patent Owner contends “the monitor could not calculate
`the ‘measurement values of the pulse rate’ as required by claims 1 and 11,”
`and, therefore, “the ‘first duty cycle’ must be a percentage greater than zero
`so that the first control protocol light source generates light, thereby
`permitting the monitor to calculate ‘measurement values of pulse rate’
`responsive to that light.” Id.
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`Patent Owner notes that the claim language related to the second
`control protocol operating the second control protocol light source is similar
`to that above, such that the patient monitor calculates “measurement values
`of the pulse rate” that are “responsive to light from the second control
`protocol light source.” PO Resp. 20–21 (quoting Ex. 1001, 12:4–10).
`Patent Owner similarly argues that “the ‘second duty cycle’ must be a
`percentage greater than zero so that the second control protocol light source
`generates light, thereby permitting the monitor to calculate ‘measurement
`values of pulse rate’ responsive to that light.” Id. at 21.
`Next, Patent Owner notes that the Specification “never mentions a
`duty cycle of 0%,” but instead the Specification “consistently describes a
`patient monitor having high and low duty cycles greater than 0%.” Id.
`(citing Ex. 1001, 2:39–44, 7:4–11, 8:14–15; Ex. 2002 ¶¶ 45–46). Patent
`Owner points out that the duty cycle of the preferred embodiment “is varied
`within a range from about 25% to about 3.125%.” Id. (quoting Ex. 1001,
`7:4–9).
`Next, Patent Owner distinguishes the “data off state” from the duty
`cycle. PO Resp. 21–22. According to Patent Owner, the “data off state” is
`the situation of having the LEDs inactive for longer than one cycle. Id.
`(citing Ex. 1001, 7:11–15; Ex. 2002 ¶ 46). Patent Owner argues that the
`Specification distinguishes the data off state from the first and second duty
`cycles and further relies on the language stating “[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. at 22 (quoting Ex. 1001, 7:11–
`15 (emphasis omitted)) (citing Ex. 1001, 8:14–15, 8:16–32, 8:47–61).
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`Patent Owner contends this language is “an example of first and second duty
`cycles in conjunction with a data off state,” and “[a] data off state is a
`different state where the light sources are turned off for more than one
`period.” Tr. 25:20–26:5. Further, Patent Owner contends that “in
`conjunction with” means that “it works together with.” Tr. 32:2–3, 32:11–
`14 (“I think it has its plain meaning. It means together with. They operate
`together with each other. . . . It doesn’t mean that they operate
`simultaneously and it doesn’t mean that they are replacements for each
`other.”).
`Petitioner contends that the “first duty cycle” can be 0%. Pet.
`Reply 1. Petitioner does not expressly disagree with the proposed
`construction of duty cycle to require a ratio of operating time, but Petitioner
`is firm that the duty cycle may be calculated to be zero percent. See id. at 1–
`3; Tr. 42:3–20 (“[T]hey’re adding on this requirement that that ratio can’t be
`zero. It’s not like you have a ratio of zero to some positive value is
`undefined. That actually you can compute that, it’s zero. So, I don’t see
`how the restriction that it can’t be zero flows from an argument that it has to
`be a ratio.”). Petitioner contends that nothing in the claim language or
`specification of the ’776 patent supports a restriction that the “first duty
`cycle” cannot be 0%. Pet. Reply 1.
`According to Petitioner, the claim requirements identified by Patent
`Owner are still satisfied when the “first duty cycle” is 0%. Id. More
`“[s]pecifically, claims 1 and 11 recite ‘the first control protocol light source
`including one or more of a plurality of light sources’ and ‘operating of the
`patient monitor according to the first control protocol operates the first
`control protocol light source according to a first duty cycle.’” Id. (quoting
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`Ex. 1001, 11:48–50, 12:11–13, 13:5–7, 13:35–14:1). Petitioner contends
`that “[a]s long as one of the plurality of light sources is operated at a duty
`cycle greater than 0%, the patient monitor can calculate measurement values
`of the pulse rate from that one light source even if another of the plurality of
`light sources is operated at a duty cycle of 0%.” Id. at 2.
`Petitioner next points to the claim language of dependent claims 6 and
`15 that requires a “data off state.” Pet. Reply 2. Petitioner argues that the
`language, “operating the patient monitor in accordance with the first control
`protocol comprises operating the first control protocol light source in a data
`off state,” allows for the “first duty cycle” to be 0%. Id. (quoting Ex. 1001,
`12:43–46, 14:23–26). According to Petitioner, the “first duty cycle”
`corresponds to “a data off state” and a “light source operating with a duty
`cycle of 0% is operating in a data off state.” Id.
`Petitioner reads the language from the Specification stating that
`operating in the data off state can be “[i]n conjunction with an intermittently
`reduced duty cycle,” as allowing the data off state and the reduced duty
`cycle to occur at the same time; i.e., the reduced duty cycle can correspond
`to the data off state. Id. at 3 (citing Ex. 1001, 7:11–15) (emphasis omitted).
`Further, Petitioner contends that the Specification describes three control
`states: “high duty cycle,” “low duty cycle,” and “data off,” but the
`Specification “does not indicate which control state corresponds to the
`claimed ‘first duty cycle’ and ‘second duty cycle.’” Id. (citing Ex. 1001,
`8:14–32, 8:47–61).
`Based on the final record, we find Patent Owner’s proposed
`interpretation of “duty cycle” persuasive. The evidence cited supports “duty
`cycle” to mean “the ratio of operating time (or on time) of a light source to
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`the total time period during which the light source is intermittently operated,
`expressed as a percentage.” See Ex. 2002 ¶ 36 (relying on an electronics
`dictionary and testifying as to how the ’776 patent uses “duty cycle”
`consistent with its plain and ordinary meaning to require a ratio of operating
`time to total elapsed time). We are persuaded by the Specification of the
`’776 patent describing the “duty cycle” as the ratio of the operating time (or
`on time) of the red and infrared LEDs to the total time period during which
`the LEDs are intermittently operated, expressed as a percentage. See
`Ex. 1001, 2:43–44; Ex. 2004, 225; Ex. 2002 ¶¶ 37, 39. The duty cycle is
`described as consistently being “in the range of about 3.125% to about
`25%.” Ex. 1001, 2:43–44, Figs. 5, 8.
`The weight of the evidence, including the claim language and
`Specification, convinces us that neither the first nor the second duty cycles
`can be 0%. The claims require the first and second control protocol light
`sources to generate light so that the patient monitor can calculate a pulse rate
`based on the light. See Ex. 1001, 11:45–12:21 (“when operating according
`to the first control protocol, calculating . . . measurement values of the pulse
`rate, . . . responsive to light from the first control protocol light source” and
`“calculating the measurement values of the pulse rate, . . . responsive to light
`from the second control protocol light source”); Ex. 2002 ¶¶ 41, 42. The
`first and second duty cycles cannot be 0% because the light sources of the
`first and second control protocol light source would not generate light to
`enable pulse rate calculation as required by the claims. See Ex. 2002 ¶ 42
`(“[I]f the first control protocol light source had a duty cycle of 0%, the light
`source would be inactive and would not generate light. If the light source
`did not generate light the monitor could not calculate the ‘measurement
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`values of the pulse rate” as required by claims 1 and 11.”) ¶ 44 (“[A]s with
`the first control protocol light source, if the second control protocol light
`source had a duty cycle of 0%, the light source would be inactive and would
`not generate light.”); Ex. 1001, 12:12–13.
`Based on the context of the claim language, and supporting
`explanations in the Specification, we determine that a 0% duty cycle is not
`within the scope of the invention. As explained persuasively by
`Dr. Madisetti:
`If the light source did not generate light, the monitor could not
`calculate the “measurement values of the pulse rate” as required
`by claims 1 and 11. For this reason, the “first duty cycle” must
`be a percentage greater than zero (i.e., it cannot be 0%) so that
`the first control protocol light source generates light, thereby
`permitting the monitor to calculate “measurement values of pulse
`rate” responsive to that light.
`
`Ex. 2002 ¶ 42. See also Tr. 44:14–20 (“[T]he claims require that when
`you’re operating according to the first control protocol you must calculate
`measurement values of the pulse rate and when you’re operating according
`to the second control protocol, . . . you must calculate the measurement
`values of the pulse rate and the problem is if the LEDs are turned off you
`cannot calculate the measurement value.”).
`We find unpersuasive Petitioner’s reliance on the claim language
`requiring “the first control protocol light source including one or more of a
`plurality of light sources,” to argue that as long as one of the plurality of
`light sources is operated at a duty cycle greater than 0%, the patient monitor
`can calculate measurement values of the pulse rate from that one light
`source. See Pet. Reply 1–2 (“As long as one of the plurality of light sources
`is operated at a duty cycle greater than 0%, the patient monitor can calculate
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`measurement values of the pulse rate from that one light source even if
`another of the plurality of light sources is operated at a duty cycle of 0%.”).
`As Patent Owner notes, “[t]he claims do not state that ‘one or more of a
`plurality of light sources’ operate according to a first duty cycle,” but
`instead, “the claims state, ‘the first control protocol operates the first control
`protocol light source according to a first duty cycle.’” Sur-reply 2 (emphasis
`omitted). Thus, we agree with Patent Owner that the claims presume that
`the individual light source(s) that comprise the first protocol light source
`operate as a unit according to the same, first duty cycle. See id.
`Dr. Madisetti testifies persuasively that a person of ordinary skill in the art
`would not have understood a “first duty cycle” or a “second duty cycle” to
`encompass two distinct percentages of on time for the different LEDs that
`may make up the “protocol light source.” Ex. 2002 ¶ 68. For example, the
`Specification of the ’776 patent consistently describes patient monitors
`having multiple LEDs, which operate as a unit at the same low or high duty
`cycle. See Ex. 1001, 6:59–7:18, Fig. 5. As noted by Patent Owner, the
`’776 patent does not disclose monitors that simultaneously drive multiple
`LEDs at different duty cycles. See Sur-reply 3; Ex. 2002 ¶¶ 45–46. We also
`agree with Dr. Madisetti that a person of ordinary skill in the art “would not
`have understood ‘duty cycle’ to refer to the additive percentages of ‘on time’
`of two drive signals that drive different LEDs.” Ex. 2002 ¶ 68.
`The “data off” state claimed in claims 6 and 15 does not support
`Petitioner’s position that the first duty cycle can be 0%. The ’776 patent
`distinguishes between high and low duty cycles and a “data off state” where
`the LEDs are inactive for longer than one cycle. See Ex. 2002 ¶¶ 45–46. We
`do not agree with Petitioner that to satisfy claims 6 and 15, the first duty
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`cycle can be in a data off state. Pet. Reply 2. Notably, claims 6 and 15 do
`not state that the first duty cycle is a data off state, as Petitioner argues.
`Rather, claims 6 and 15 use the word “comprises,” which requires operating
`according to the first control protocol to encompass operating the first
`control protocol light source both “ac
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