Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: April 16, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`KINDER, 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
`Entered: April 16, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`KINDER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`I.
`
`INTRODUCTION
`
`Background
`A.
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claim 15 of U.S. Patent No. 6,771,994 B2 (Ex. 1001, “the ’994
`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 claim 15.
`Accordingly, we institute an inter partes review on all grounds set forth in
`the Petition.
`
`Related Matters
`B.
`The parties identify the following matters related to the ’994 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);
`
`2
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`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, IPR2020-01536 (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. 68; Paper 3, 2.
`
`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 ’994 patent. Paper 3, 1.
`
`The ’994 Patent
`C.
`The ’994 patent is titled “Pulse Oximeter Probe-Off Detection
`System,” and issued on August 3, 2004, from U.S. Patent Application
`No. 10/374,303, filed February 24, 2003. Ex. 1001, codes (21), (22), (45),
`(54). The ’994 patent claims priority through a series of applications to
`Provisional Application No. 60/140,000, filed June 18, 1999. Id. at
`codes (60), (62).
`
`3
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`The ’994 patent relates to a pulse oximeter probe that detects when a
`probe has become dislodged from a patient or that acts to prevent a potential
`probe-off condition. Ex. 1001, code (57). The ’994 patent relies on
`electrical contacts that contact the skin of a patient when the probe is
`properly attached and a number of louvers placed in front of a sensor’s
`photodetector to filter out oblique light rays that do not originate from a
`point in front of the detector. Id. According to one aspect of the invention,
`if the emitter and photodetector are not properly aligned, the photodetector
`will not produce a signal within the valid operating range of the pulse
`oximeter, which may trigger an alarm or warning. Id.
`As depicted in Figure 1 below, pulse oximeter 140 is attached through
`connector 142 to probe 110 and probe 110 comprises LEDs 112, 114, which
`are “preferably configured to produce different wavelengths of light.” Id. at
`3:21–55, Fig. 1.
`
`
`Figure 1 illustrates a schematic of a pulse oximeter system. Id. at 2:30–31.
`The wavelengths of light pass through the flesh of a patient to be detected by
`
`4
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`photodetector 116. Id. at 3:34–37, Fig. 1. The ’994 patent describes certain
`embodiments where the photodetector is placed opposite the light emitters to
`detect transmitted light as it emerges from the user’s body tissue. See id.,
`1:41–43 (describing the configuration of known pulse oximetry probes as
`positioning the detector “opposite the LED”), 4:19–25 (“the emitters located
`within the probe are spaced opposite the detector assembly 235 . . . such that
`the light from the emitters passes . . . through the finger 250 and is incident
`upon the detector assembly 235”), Figs. 2A–B, 4, 5A–B.
`As illustrated in Figure 5B below, if probe 202 is properly attached
`emitter aperture 220 will be directly in front of detector assembly 235 and
`light rays will pass directly through louvers 502 along direct path 510. Id. at
`6:29–33.
`
`
`Figure 5B illustrates a properly attached probe wherein a number of
`louvers (502) are placed in front of the detector assembly. Ex. 1001, 2:60–
`62.
`
`
`
`
`5
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`D. Claim 15
`Claim 15 is the only challenged claim and it is reproduced below.
`1. A sensor which generates at least first and second
`intensity signals from a light-sensitive detector which detects
`light of at least first and second wavelengths transmitted through
`body tissue carrying pulsing blood; the sensor comprising:
`[a] at least one light emission device;
`[b] a light sensitive detector; and
`[c] a plurality of louvers positioned over the light sensitive
`detector to accept light from the at least one light emission device
`originating from a general direction of the at least one light
`emission device and then transmitting through body tissue
`carrying pulsing blood, wherein the louvers accept the light when
`the sensor is properly applied to tissue of a patient.
`Ex. 1001, 8:21–35 (bracketed identifiers a–c added).
`
`Applied References
`E.
`Petitioner relies upon the following references:
`Diab et al., U.S. Patent No. 5,638,818, filed November 1, 1994,
`issued June 17, 1997 (Ex. 1006, “Diab”);
`Benjamin et al., U.S. Patent No. 4,015,595, filed
`September 15, 1975, issued April 5, 1977 (Ex. 1007, “Benjamin”);
`Melby et al., U.S. Patent No. 5,254,388, filed December 20,
`1991, issued October 19, 1993 (Ex. 1008, “Melby”);
`Fine, WO Pub. No. 1996/41566, filed June 6, 1995, published
`December 27, 1996 (Ex. 1009, “Fine”); and,
`Webster, Excerpts from Design of Pulse Oximeters, J.G.
`Webster; Institution of Physics Publishing, 1997 (Ex. 1010,
`“Webster”).
`
`
`
`6
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`Pet. 3-4.
` Petitioner also submits, inter alia, the Declaration of Brian W.
`Anthony, Ph.D. (Ex. 1003).
`
`Asserted Grounds
`F.
`Petitioner asserts that claim 15 is unpatentable based upon the
`following grounds:
`
`Claim Challenged
`
`15
`15
`15
`15
`
`35 U.S.C.
`§
`103
`103
`103
`103
`
`Reference(s)/Basis
`Diab, Benjamin, Melby
`Webster, Melby
`Fine
`Fine, Benjamin, Melby
`
`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), including
`construing the claim in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b)
`(2019).
`Petitioner submits that the entirety of clause 1[c] requires
`construction. Pet. 8. As noted above, Patent Owner did not file a
`Preliminary Response. See generally PO Waiver.
`Clause 1[c] (set forth above), requires in part, “a plurality of louvers
`positioned over the light sensitive detector to accept light from the at least
`
`7
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`one light emission device originating from a general direction of the at least
`one light emission device and then transmitting through body tissue.”
`Ex. 1001, 8:29–35 (emphases added). Petitioner contends that this limitation
`requires that the light sensitive detector must “be positioned opposite the at
`least one light emission device.” Pet. 8–9. Petitioner seemingly bases this
`interpretation on one embodiment in the Specification, “which only depict[s]
`and describe the placement of the body tissue carrying pulsing blood
`between the at least one light emission device and the light sensitive
`detector.” Pet. 9 (citing Ex. 1001, 1:41–43 (“The photodiode is positioned
`opposite the LED so as to detect the LED transmitted light as it emerges
`from the [body] tissue.”)).
`Although Petitioner describes one embodiment of the invention that
`may be encompassed by the claim scope, this one embodiment is narrower
`in scope than the claim language of clause 1[c]. For example, the claim
`requires the louvers positioned over the detector to accept light originating
`from a general direction of the at least one light emission device, while the
`light also passes through tissue. Petitioner contends that for this to occur the
`detector must be positioned opposite the light emission device, as depicted
`in Figure 5B. Pet. 9.
`Petitioner’s position is understandable because the claim also requires
`that the louvers accept the light when the sensor is properly applied to tissue
`of a patient, which as Petitioner notes encompasses the embodiment of
`Figure 5B. Petitioner does not explain, however, why it is even necessary to
`adopt its proposed claim construction. For purposes of our analysis, we
`accept that the embodiment Petitioner relies upon (positioned opposite) is
`within the claim scope of clause 1[c], but we are not prepared to limit the
`
`8
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`claim to just this embodiment without further explanation and evidence.
`Indeed, clause 1[c] provides sufficient detail as to the positioning of
`elements such that further defining the limitation does not seem necessary
`based on the limited record before us.1
`The parties should also bring to the Board’s attention any arguments
`or decisions in related proceedings or the related district court litigation that
`impact the claim interpretation of any claim term in the ’994 patent. See
`Facebook, Inc. v. Sound View Innovations, LLC, IPR2017-00998, Paper 13
`(PTAB Sept. 5, 2017); see also 37 C.F.R. § 42.100(b) (“Any prior claim
`construction determination concerning a term of the claim in a civil action,
`or a proceeding before the International Trade Commission, that is timely
`made of record in the inter partes review proceeding will be considered.”).
`
`Principles of Law
`B.
`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
`
`
`1 We understand that Petitioner’s grounds based upon the “Fine” reference
`rely on an interpretation of the elements of 15[c] that encompasses
`“reflectance pulse oximeters, in which the emitters and detectors are
`positioned on the same side of the body tissue carrying pulsing blood.”
`Pet. 45. Petitioner should clarify in its reply which grounds are dependent
`on which claim interpretation, and further explain which interpretation it
`contends is proper, after considering Patent Owner’s response. Petitioner’s
`proposed interpretation would seemingly exclude the grounds based on
`“Fine.”
`
`9
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`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.2 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.
`
`Level of Ordinary Skill in the Art
`C.
`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,
`
`
`2 At this stage of the proceeding, neither party has introduced objective
`evidence of non-obviousness.
`
`10
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`including but not limited to physiological monitoring technologies.” Pet. 7–
`8 (citing Ex. 1003 ¶¶ 1–15, 36–37). “Additional education in a relevant field
`or industry experience may compensate for one of the other aspects of the
`POSITA characteristics stated above.” Id.
`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, Benjamin, and Melby
`Petitioner presents undisputed contentions that claim 15 of the ’994
`patent would have been obvious over the teachings of Diab, Benjamin, and
`Melby. Pet. 10–29.
`
`Overview of Diab (Ex. 1006)
`1.
`Diab is titled “Low Noise Optical Probe.” Ex. 1006, code (54). Diab
`describes an “optical probe for measurements” for use in “non-invasive
`energy absorption (or reflection)” detection methods such as pulse oximetry.
`Id. at 3:12–14, Fig. 24, 17:66–67. The device includes a “light source, such
`as an LED” and a “detector, such as a photodetector.” Id. at 3:19–21, 3:30–
`31. Diab’s light source includes, for example, two “LEDs 430a and 430b,”
`one which emits “red wavelengths” and one which emits “infrared
`wavelengths.” Id. at 18:8–22.
`Petitioner provides the following annotated figure highlighting Diab’s
`LEDs 430a and 430b as well as photodetector 426.
`
`11
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`
`Petitioner’s partial view of Figure 24 of Diab shows a schematic employing
`a probe with Petitioner’s annotations of LEDs 430a and 430b (blue) and
`photodetector 426 (green). Pet. 11; Ex. 1006, 5:25–26. Finger probe 400 is
`employed to measure a red and infrared signal that are alternatively passed
`through finger 428. Ex. 1006, 18:1–4. Signals measured at photodetector
`426 are then processed to determine the amount of oxygen available to the
`body. Id. at 18:4–6. LED 430a emits red wavelengths and LED 430b emits
`infrared wavelengths and both are placed adjacent finger 428. Id. at 18:9–
`14. Finger probe 400 is placed underneath finger 428, aperture 420, and
`chamber 422, which is located directly adjacent finger pad 404. Id.
`Non-invasive methods, as described by Diab, are “often desirable” in
`order to “monitor a patient without unnecessary drawing of blood or tissue.”
`Ex. 1006, 5:49–59. For example, “in the medical field, instead of extracting
`material from a patient’s body for testing,” non-invasive techniques often
`
`12
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`use “light or sound energy . . . incident on the patient’s body” that is
`transmitted or reflected. Id. at 1:13–22.
`
`Overview of Benjamin (Ex. 1007)
`2.
`Benjamin is titled “Photoplethysmographs.” Ex. 1007, code (54).
`According to Benjamin, a “photoplethysmograph,” is a device that uses a
`“light source and a specifically selected photo-sensitive cell that responds to
`light absorbed by the arterial blood in the peripheral vascular bed over which
`the sensor is placed.” Ex. 1007, 1:5–15. Benjamin describes using a probe
`including “a light source, a photo-sensitive cell and a light control film
`positioned in front of the light source and photo-sensitive cell for collimating
`the light emitted from the light source and reflected back to the photo-
`sensitive cell.” Id. at code (57).
`In order to “improve the accuracy of the photoplethysmographic
`pickup of the blood flow pulse,” Benjamin employs a “light control film” to
`collimate light passing through and “thereby make the photosensitive cell 20
`more nearly dependent only upon the light beam directly reflected from the
`field being measured.” Id. at 2:53–57. Benjamin states that such light films
`were “known in the art and . . . commercially available.” Id. at 2:50–52. As
`illustrated below, light source 18 directs light through window 16 and photo-
`sensitive cell 20 responds to light reflected from the field. Id. at 2:26–38.
`
`13
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`
`Figure 1 of Benjamin is a sectional view of a photoplethysmographic probe.
`Ex. 1007, 2:16–17. Benjamin describes mounting light control film 22
`within casing 12 to extend across window 16. Light emitted from light
`source 18 passes through light control film 22 to the field to be measured
`and light is reflected from this field back through light control film 22 to
`photo-sensitive cell 20. Id. at 42–50.
`
`Overview of Melby (Ex. 1008)
`3.
`Melby is titled “Light Control Film with Reduced Ghost Images.”
`Ex. 1008, code (54). Melby discloses a light control film, or a “louvered
`plastic film.” Id. at code (57). Melby describes a film that includes “louver
`elements,” and Melby acknowledges that it was known to cant louver
`elements with respect to a louvered plastic film, which produces a film that
`transmits light in a direction other than perpendicular to the surface of the
`film. Id. at 1:9–22, 3:46–62. Melby describes using louvers having an outer
`portion with a relatively low optical density and an inner portion having a
`relatively high optical density. Id. at 3:21–22.
`
`14
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`Independent Claim 15
`4.
`Petitioner contends that claim 15 would have been obvious over Diab,
`Benjamin, and Melby. Pet. 10–29. Petitioner has established a reasonable
`likelihood of prevailing on this asserted ground.
`
`i. [15 pre] “A sensor which generates at least first and
`second intensity signals from a light-sensitive detector
`which detects light of at least first and second wavelengths
`transmitted through body tissue carrying pulsing blood;
`the sensor comprising:”
`On this record, the cited evidence supports Petitioner’s undisputed
`contention that Diab, Benjamin, and Melby satisfy the subject matter of the
`preamble.3 Pet. 13–15. According to Petitioner, Diab teaches a sensor
`having a detector that detects “attenuated light energy signal [that] emerges
`from” a section of a subject’s body, “such as a finger, an earlobe, a toe, an
`organ, or a portion of tissue.” Pet. 13; Ex. 1006, 3:12–43. Notably, Diab’s
`sensor includes “a probe for use in both invasive and non-invasive energy
`absorption (or reflection) measurements,” and the probe includes a “detector,
`such as a photodetector” and a “light source, such as an LED” that is affixed
`“opposite the photodetector.” Id. at 3:11–47. Diab’s LED “emits light
`energy which propagates through and is absorbed by the material along the
`optical path length” and “an attenuated light energy signal emerges from the
`material.” Id. Diab’s “photodetector produces an electrical signal indicative
`of the intensity of the signal transmitted by the material,” such as a subject’s
`“finger 428.” Id. Petitioner explains that “[t]he subject’s finger, for
`
`
`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.
`
`15
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`example, contains body tissue carrying pulsing blood.” Pet. 14 (citing
`Ex. 1003 ¶¶ 45–48).
`As shown above in Figure 24, Diab’s device includes two
`“LEDs 430a and 430b” that “alternately emit[] energy which is absorbed by
`the finger 428 and received by the photodetector 426” such that the
`photodetector “produces an electrical signal which corresponds to the
`intensity of the light energy striking the photodetector 426 surface.”
`Ex. 1006, 18:43–47. Petitioner contends that “Diab’s probe is ‘coupled to an
`oximeter. . . known in the art which utilizes light attenuation measurements,’
`such as a ‘pulse oximeter’ that measures signals from ‘two measured
`signals at different wavelengths, one of which is typically red and the other
`of which is typically infrared, [that] are alternately passed through the finger
`428.’” Pet. 15 (quoting Ex. 1006, 17:62–18:8). These signals are used to
`determine the amount of oxygen available to the body and are generated by
`“[t]wo LEDs 430a and 430b, one LED 430a emitting red wavelengths and
`another LED 430b emitting infrared wavelengths” that are placed adjacent to
`the subject’s finger. Ex. 1006, 17:62–18:8; Pet. 15.
`
`ii. “[a] at least one light emission device;”
`On this record, the cited evidence supports Petitioner’s undisputed
`contention that Diab discloses this limitation. Pet. 16–17. Specifically, Diab
`discloses two light emitting diodes (LEDs) that emit at two different
`wavelengths, as discussed in detail above. See Ex. 1006, Fig. 24
`(LEDs 430a, 430b), 3:11–47, 17:62–18:22.
`
`16
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`iii. “[b] a light sensitive detector; and;”
`On this record, the cited evidence supports Petitioner’s undisputed
`contentions regarding this limitation. Pet. 17–18. Specifically, Petitioner
`contends that Diab describes a sensor that measures first and second
`intensity signals using a photodetector to detect light from at least two LEDs
`emitting at two different wavelengths. Pet. 17–18 (citing Ex. 1006, 3:11–47,
`17:62–18:22, Fig. 24; Ex. 1003 ¶¶ 45–52). “Diab’s photodetector produces
`signals that can be ‘processed to determine the amount of oxygen available
`to the body’ as part of a pulse oximeter.” Id. at 18 (quoting Ex. 1006, 18:4–
`6) (emphasis omitted).
`
`iv. “[c] a plurality of louvers positioned over the light
`sensitive detector to accept light from the at least one light
`emission device originating from a general direction of the
`at least one light emission device and then transmitting
`through body tissue carrying pulsing blood, wherein the
`louvers accept the light when the sensor is properly
`applied to tissue of a patient.”
`On this record, the cited evidence supports Petitioner’s undisputed
`contentions regarding these limitations. Pet. 19–29. Petitioner relies on the
`combined teachings of Diab, Benjamin, and Melby for teaching these
`limitations. Id.
`Diab teaches using a scattering medium positioned over the
`photodetector to provide an “improved optical signal-to-noise ratio” by
`minimizing the effects of local artifacts resulting from scattering as a result
`of motion. Ex. 1006, 3:63–4:5. Further, the scattering medium may be
`located between the material being tested and the photodetector, which
`results in an improved optical signal-to-noise ratio. Id. at 4:6–12; Pet. 19.
`Petitioner relies further on Diab’s disclosure that the film has the effect of
`
`17
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`collimating the light passing through to make the photosensitive cell more
`nearly dependent only upon the light beam directly reflected from the field
`being measured. Id. at 2:50–57.
`Petitioner, relying on the testimony of Dr. Anthony, contends that a
`person of ordinary skill in the art “would have been motivated by the
`disclosure of Benjamin to modify Diab’s sensor to include a light control
`film in place of Diab’s scattering medium.” Pet. 21 (citing Ex. 1003 ¶ 62).
`Benjamin recognizes that “variations in the amount of scattered light
`reaching the photocell cause variations in the operating point of the
`photocell,” which “adversely affects the accuracy of the measurement.”
`Ex. 1007, 1:35–40; Ex. 1003 ¶¶ 57–59. Petitioner relies on Benjamin’s
`improvement of adding a light control film to stabilize the amount of
`scattered light that reaches the detector. Pet. 20 (quoting Ex. 1007, 1:56–66
`(“[T]he amount of scattered light reaching the photocell can be made closer
`to constant by placing in front of the photocell and light source a small piece
`of light control film. This film has the effect of collimating the light thereby
`to make the sensor more nearly dependent only upon the light beam directly
`reflected from the pulsating blood field.”)).
`On the current record, Petitioner argues persuasively that a person of
`ordinary skill in the art would have been motivated to combine Diab and
`Benjamin to provide an optical physiological sensor that reduces variations
`in the amount of light detected by the photodetectors of the sensor in order
`to collimate the light emitted from the light source and reflected back to the
`photo-sensitive cell. Pet. 22 (citing Ex. 1003 ¶¶ 57–62; Ex. 1007,
`code (57)). The references describe these advantages as leading to a more
`consistent and accurate measurement of blood oxygen saturation. Id.
`
`18
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`Petitioner next relies on Melby as teaching the use of a louvered
`plastic film in the Diab/Benjamin combination. Pet. 25. Melby describes a
`“louvered plastic film [that] has louvers including central regions with a
`relatively high coefficient[] of extinction and outer regions with relatively
`low coefficients of extinction.” Ex. 1008, code (57). Petitioner notes that
`Melby is a patent assigned to Minnesota Mining and Manufacturing
`Company (3M) that describes a commercially available louvered light film
`made of “cellulose acetate butyrate (CAB).” Id. at 2:19–23, code (57);
`Pet. 13. Petitioner contends that a person of ordinary skill in the art would
`have considered the Melby louvered plastic film well known and the ’994
`patent itself notes that its “louvers” can be “created from commercially
`available ‘3M Light Control Film,’” such as that described in Melby.
`Ex. 1001, 6:39–41; Ex. 1003 ¶¶ 44, 69.
`Dr. Anthony testifies that “Melby describes a light control film that
`can be used with the combined Diab/Benjamin system” and “[a] POSITA
`would have been motivated to make this modification to further increase the
`directionality of the light signal received in the combined device, thereby
`leading to a device that is less susceptible to the influence of ambient light
`and thus provides more accurate readings.” Ex. 1003 ¶ 69. Petitioner relies
`on Melby’s teaching that “the effective optical density of a medium is
`directly proportional to the distance that the light must travel through that
`medium and the fact that reflection at an interface between two materials
`with different indices of refraction increases with increasing angle of
`incidence.” Pet. 27 (quoting Ex. 1008, 4:11–17) (citing Ex. 1003 ¶¶ 69–72).
`Petitioner contends that based on these disclosures, a person of ordinary skill
`in the art “would have recognized that Melby’s film could be used in the
`
`19
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`Diab/Benjamin device to control light such that only light originating from
`the direction of the light emitters reaches the detector. Pet. 27–28. Further,
`Dr. Anthony testifies that incorporating Melby’s details regarding the
`implementation of Benjamin’s light control film would have been obvious to
`a person of ordinary skill in the art because doing so entails the use of
`known solutions to improve similar systems and methods in the same way.
`Ex. 1003 ¶ 73. Petitioner sufficiently shows on this record that it would
`have been obvious to a person of ordinary skill in the art to combine the
`specified teachings of Melby, Bejamin, and Diab for the reasons set forth
`above.
`
`v. Summary
`Petitioner sufficiently shows on this record, based on the
`uncontroverted testimony of Dr. Anthony, that a person of ordinary skill in
`the art would have found the sensor resulting from the combination of Diab,
`Benjamin, and Melby to render obvious the requirements of limitation 15[c],
`as well as claim 15 as a whole. See Ex. 1003 ¶¶ 57–74. 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 regarding claim 15.
`
`E. Obviousness over Webster and Melby
`Petitioner presents undisputed contentions that claim 15 of the ’994
`patent would have been obvious over the teachings of Webster and Melby.
`Pet. 29–44.
`
`20
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`Overview of Webster (Ex. 1010)
`1.
`Webster is a book that provides an overview of the history and design
`of pulse oximeters, stating that “[p]ulse oximetry was introduced in 1983 as
`a noninvasive method for monitoring the arterial oxygen saturation of a
`patient’s blood.” Ex. 1010, xv4. The book details “both the hardware and
`software required to fabricate a pulse oximeter as well as the equations,
`methods, and software required for effective functioning” in addition to
`“testing methods.” Id. Petitioner relies on Webster for its comprehensive
`summary of the state of the art as of 1997, and its description of the purpose
`of components of a pulse oximeter as well as the design process and
`selection criteria for particular components. Pet. 30; Ex. 1003 ¶ 75. See
`generally Ex. 1010, Chs. 2, 5–7.
`
`Independent Claim 15
`2.
`Petitioner contends that claim 15 would have been obvious over
`Webster and Melby. Pet. 29–44. Petitioner has established a reasonable
`likelihood of prevailing on this asserted ground.
`
`
`4 Although Petitioner has added page numbering to the bottom of Exhibit
`1010, Petitioner cites to the original page numbers at the top of the book.
`We adopt Petitioner’s citations for clarity. But even still, Petitioner quotes
`from page xv, but cites to page xvi. For future reference, Petitioner should
`have cited to its added page numbering for such a reference. See 37 C.F.R.
`§ 42.63(d)(2)(i).
`
`21
`
`
`
`IPR2020-01526
`Patent 6,771,994 B2
`
`
`i. [15 pre] “A sensor which generates at least first and
`second intensity signals from a light-sensitive detector
`which detects light of at least first and second wavelengths
`transmitted through body tissue carrying pulsing blood;
`the sensor comprising:”
`On this record, the cited evidence supports Petitioner’s undisputed
`contention that Webster and Melby satisfy the subject matter of the
`preamble. Pet. 29–32. According to Petitioner, Webster describes devices
`known as “pulse oximeters,” which provide “an empirical measure of
`arterial saturation.” Pet. 30 (quoting Ex. 1010, 13). Webster describes the
`operation of the devices as shining “light of two wavelengths through a
`tissue bed such as the finger or earlobe and measures the transmitted light
`signal.” Id. (q
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
