throbber
Attorney Docket No.: 50095-0005IP1
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Massi E. Kiani et al.
`U.S. Patent No.: 6,771,994
`Issue Date:
`August 3, 2004
`Appl. Serial No.: 10/374,303
`Filing Date:
`February 24, 2003
`Title:
`PULSE OXIMETER PROBE-OFF DETECTION SYSTEM
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 6,771,994 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`REQUIREMENTS FOR IPR .......................................................................... 3 
`A.  Grounds for Standing ................................................................................ 3 
`B.  Challenge and Relief Requested ............................................................... 3 
`THE ’994 PATENT ......................................................................................... 4 
`A.  Brief Description ....................................................................................... 4 
`B.  The Prosecution History ........................................................................... 7 
`C.  Level of Ordinary Skill in the Art ............................................................. 7 
`D.  Claim Construction ................................................................................... 8 
`III.  THE CHALLENGED CLAIM IS UNPATENTABLE ................................ 10 
`A.  [GROUND 1] – Claim 15 is obvious over Diab, Benjamin, and Melby10 
`B.  [GROUND 2] – Claim 15 is obvious over Webster and Melby ............. 29 
`C.  [GROUND 3] – Claim 15 is obvious over Fine ..................................... 45 
`D.  [GROUND 4] – Claim 15 is obvious over Fine, Benjamin, and Melby 59 
`IV.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 68 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 68 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 68 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 68 
`D.  Service Information ................................................................................ 69 
`PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION .......... 69 
`A.  Factor 1: Institution will increase the likelihood of stay ........................ 69 
`B.  Factor 2: District Court schedule ............................................................ 70 
`C.  Factor 3: Apple’s investment in IPR outweighs forced investment in
`litigation to date ................................................................................... 71 
`D.  Factor 4: The Petition raises unique issues ............................................. 72 
`E.  Factor 5: Institution would provide the Board an opportunity to
`invalidate claims that could later be reasserted against others............ 73 
`F.  Factor 6: Other circumstances support institution .................................. 73 
`VI.  PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................. 73 
`VII.  CONCLUSION .............................................................................................. 74 
`
`
`
`V. 
`
`i
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 6,771,994
`
`APPLE-1002
`
`File History for U.S. Patent No. 6,771,994
`
`APPLE-1003
`
`Declaration of Dr. Anthony
`
`APPLE-1004
`
`Reserved
`
`APPLE-1005
`
`Masimo Corporation, et al. v. Apple Inc., Complaint, Civil
`Action No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1006
`
`U.S. Patent No. 5,638,818 (“Diab”)
`
`APPLE-1007
`
`U.S. Patent No. 4,015,595 (“Benjamin”)
`
`APPLE-1008
`
`U.S. Patent No. 5,254,388 (“Melby”)
`
`APPLE-1009
`
`WO Pub. No. 1996/41566 (“Fine”)
`
`APPLE-1010
`
`Excerpts from Design of Pulse Oximeters, J.G. Webster;
`Institution of Physics Publishing, 1997 (“Webster”)
`
`APPLE-1011
`
`APPLE-1012
`
`Tremper, Pulse Oximetry, Anesthesiology, The Journal of the
`American Society of Anesthesiologists, Inc., Vol. 70, No. 1
`(January 1989) (“APPLE-1011”)
`
`Mendelson, Skin Reflectance Pulse Oximetry: In Vivo
`Measurements from the Forearm and Calf, Journal of Clinical
`Monitoring, Vol. 7, No. 1 (January 1991) (“APPLE-1012”)
`
`
`
`APPLE-1013
`
`Excerpts from Bronzino, The Biomedical Engineering
`Handbook, CRC Press, Inc. (1995) (“APPLE-1013”)
`
`APPLE-1014
`
`Konig, Reflectance Pulse Oximetry – Principles and Obstetric
`Application in the Zurich System, Journal of Clinical
`Monitoring, Vol. 14, No. 6 (August 1998) (“APPLE-1014”)
`
`ii
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`
`APPLE-1015
`
`Declaration of Jacob Munford
`
`APPLE-1016 to 1030
`
`Reserved
`
`APPLE-1031
`
`Scheduling Order, Masimo v. Apple et al., Case 8:20-cv-00048,
`Paper 37 (April 17, 2020)
`
`APPLE-1032
`
`Stipulation by Apple
`
`APPLE-1033
`
`Telephonic Status Conference, Masimo v. Apple et al., Case
`8:20-cv-00048, Paper 78 (July 13, 2020)
`
`APPLE-1034
`
`APPLE-1035
`
`
`
`Joseph Guzman, “Fauci says second wave of coronavirus is
`‘inevitable’”, TheHill.com (Apr. 29, 2020), available at:
`https://thehill.com/changing-america/resilience/natural-
`disasters/495211-fauci-says-second-wave-of-coronavirus-is
`
`“Tracking the coronavirus in Los Angeles County,”
`LATimes.com (Aug. 20, 2020), available at
`https://www.latimes.com/projects/california-coronavirus-cases-
`tracking-outbreak/los-angeles-county/
`
`
`iii
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`Apple Inc. (“Petitioner”) petitions for Inter Partes Review (“IPR”) of claim
`
`15 (“Challenged Claim”) of U.S. Patent No. 6,771,994 (“’994 Patent”) under 35
`
`U.S.C. §§ 311–319 and 37 C.F.R. § 42. As explained in this Petition, there exists a
`
`reasonable likelihood that Apple will prevail with respect to the Challenged Claim.
`
`The earliest filed application from which the ’994 Patent claims priority is
`
`U.S. Provisional Application No. 60/140,000, filed on June 18, 1999. Thus June
`
`18, 1999 (herein after “Critical Date” or “Earliest Effective Filing Date”) is the
`
`earliest possible priority date for the ’994 Patent. The ’994 Patent discloses a
`
`purported improvement to a “pulse oximeter probe to detect when the probe
`
`becomes partially or completely dislodged from the patient, but continues to
`
`detect” a signal within the normal operating range of the system. APPLE-1001,
`
`Abstract. According to the ’994 Patent, the improved pulse oximeter “provides a
`
`number of louvers placed in front of the probe’s photodetector” (id., 2:9-12) to
`
`“prevent light from an oblique angle from reaching the photodetector” and creating
`
`a “false signal” that could be interpreted as an actual physiological signal of a
`
`patient. Id., 2:16-19.
`
`But the claimed device is not new. APPLE-1003, [0016]-[0029]. To the
`
`contrary, the ’994 Patent was granted without full consideration of the wide body
`
`of applicable art. As the ’994 Patent acknowledges in its “Description of the
`
`Related Art,” pulse oximetry was a “widely accepted noninvasive procedure for
`
`
`
`1
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`measuring the oxygen saturation level of arterial blood” as of the Critical Date.
`
`APPLE-1001, 1:29-31. A pulse oximetry system at the time “generally consist[ed]
`
`of a probe attached to a patient” that included “both red and infrared (IR) light-
`
`emitting diode (LED) emitters and a photodiode detector.” Id., 1:31-36. Such a
`
`system “determines oxygen saturation by analyzing the differential absorption by
`
`arterial blood of the two wavelengths emitted by the probe.” Id., 1:44-49.
`
`Similar to the devices described in the ’994 Patent’s description of known
`
`systems and the references cited in this petition, the ’994 Patent describes and
`
`claims a sensor that generates light of “at least first and second wavelengths” and
`
`includes “at least one light emission device,” a “light sensitive detector.” Id., 8:21-
`
`36 (claim 15). The ’994 Patent also claims “a plurality of louvers” that accept light
`
`“originating from a general direction” of the light emission device. Id. The ’994
`
`Patent itself describes these louvers, in one “preferred embodiment,” as created
`
`from commercially available products such as “3M Light Control Film.” APPLE-
`
`1001, 6:39-41.
`
`Yet, as Dr. Anthony explains in his accompanying declaration (APPLE-
`
`1003) with respect to the applied prior art, optical physiological sensors such as
`
`pulse oximeters and other photoplethysmography sensors commonly included
`
`these features before the Critical Date, and a sensor including each feature of claim
`
`15 of the ’994 Patent would have been obvious to a person of ordinary skill in the
`
`
`
`2
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`art relating to the subject matter of the ’994 Patent as of the Critical Date
`
`(“POSITA.”) APPLE-1003, [0001]-[0168].
`
`For the reasons explained below, claim 15 of the ’994 Patent is eligible for
`
`IPR. Petitioner respectfully submits that IPR institution is warranted, and that
`
`claim 15 should be cancelled as unpatentable.
`
`I.
`
`REQUIREMENTS FOR IPR
`A. Grounds for Standing
`Apple certifies that the ’994 Patent is available for IPR. The present Petition
`
`is being filed within one year of service of a complaint against Apple in Masimo
`
`Corporation et al. v. Apple Inc., Case No. 8:20-cv-00048 (C.D. Cal., served
`
`January 13, 2020). Apple is not barred or estopped from requesting this review on
`
`the below-identified grounds.
`
`B. Challenge and Relief Requested
`Claim 15 is invalid based on the grounds noted in the table below, as further
`
`explained in this Petition. Accompanying explanations and support are provided in
`
`the Declaration of Dr. Brian Anthony (APPLE-1003). APPLE-1003, [0001]-
`
`[0168].
`
`Ground
`1
`2
`3
`4
`
`Claims
`15
`15
`15
`15
`
`Basis
`Obvious over Diab in view of Benjamin and Melby
`Obvious over Webster in view of Melby
`Obvious over Fine
`Obvious over Fine in view of Benjamin and Melby
`3
`
`
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`Each prior art reference cited in the present Petition pre-dates the Critical
`
`date. Petitioner does not take a position as to whether the ’994 Patent is entitled to
`
`priority as of the Critical Date, but has applied references that pre-date the Critical
`
`Date and qualify as prior art as shown in the table below.
`
`Reference
`
`Diab
`(APPLE-1006)
`Benjamin
`(APPLE-1007)
`Melby
`(APPLE-1008)
`Webster
`(APPLE-1010)
`Fine
`(APPLE-1009)
`
`
`
`Dates
`06/07/1997 (issued)
`
`Prior art basis
`102(b)
`
`04/05/1977 (issued)
`
`102(b)
`
`10/19/1993 (issued)
`
`102(b)
`
`1997 (published)
`
`102(b)
`
`12/27/1996 (published)
`
`102(b)
`
`II. THE ’994 PATENT
`A. Brief Description
`The ’994 Patent relates to a “pulse oximetry monitor (pulse oximeter).”
`
`APPLE-1001, 1:44-46. Specifically, the ’994 Patent is directed to a pulse oximetry
`
`sensor that includes a first LED, a second LED, and a photodetector, as shown in
`
`FIG. 1 (reproduced below). APPLE-1001, 3:21-55, FIG. 1.
`
`
`
`4
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`
`APPLE-1001, FIG. 1 (annotated)
`
`
`
`The two LEDs are “preferably configured to produce different wavelengths
`
`of light.” Id. Pulse oximetry “relies on the differential light absorption of
`
`oxygenated hemoglobin, HbO2, and deoxygenated hemoglobin, Hb” that is
`
`measured using two different wavelengths of light. Id., 3:3-20. For example,
`
`blood oxygen saturation measurements can be “based upon a ratio of the time-
`
`varying or AC portion” of the detected signals. Id.
`
`
`
`5
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`The ’994 Patent describes and depicts its photodetector as being 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.
`
`The ’994 Patent also includes a number of louvers placed in front of the
`
`sensor’s photodetector. Id., 6:24-41. The louvers “block light rays travelling
`
`along an oblique path 410 (i.e., light that does not originate from in front of the
`
`detector assembly 235….)” Id. By blocking light travelling along an oblique path,
`
`or at an angle, from reaching the detector, the louvers prevent inaccurate reads that
`
`can occur when rays of light travelling along the oblique path “generate an AC
`
`signal that could be interpreted by the pulse oximeter 140 as a physiological
`
`signal” (id.) even though the probe is not properly attached, which can lead to
`
`missed desaturation events. Id., 4:35-45. The louvers are, “[i]n a preferred
`
`embodiment…created from commercially available ‘3M Light Control Film.’’”
`
`Id., 6:39-41; see also APPLE-1003, [0030]-[0035].
`
`
`
`6
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`
`APPLE-1001, FIG. 5B (annotated)
`
`
`
`The Prosecution History
`B.
`The ’994 Patent has not been the subject of any previous IPRs. No Office
`
`Actions were issued during the prosecution of the application from which the ’994
`
`Patent issued. See generally APPLE-1002.
`
`C. Level of Ordinary Skill in the Art
`A POSITA would have been a person with a working knowledge of
`
`physiological monitoring technologies. The POSITA would have had 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
`
`
`
`7
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`information, including but not limited to physiological monitoring technologies.
`
`APPLE-1003, [0001]-[0015], [0036]-[0037]. Additional education in a relevant
`
`field or industry experience may compensate for one of the other aspects of the
`
`POSITA characteristics stated above. Id.
`
`D. Claim Construction
`Petitioner submits that all claim terms should be construed according to the
`
`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
`
`C.F.R. § 42.100. Here, based on the evidence below and the prior art’s description
`
`of the claimed elements being similar to that of the ’994 Patent specification, no
`
`formal claim constructions, except those discussed below, are necessary in this
`
`proceeding because “claim terms need only be construed to the extent necessary to
`
`resolve the controversy.” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
`
`1361 (Fed. Cir. 2011). Petitioner reserves the right to respond to any constructions
`
`that Patent Owner offers or the Board adopts. Petitioner is not waiving any
`
`arguments concerning indefiniteness or claim scope.
`
`1.
`
`“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.”
`Petitioner construes this claim limitation as requiring the light sensitive
`
`
`
`8
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`detector to be positioned opposite the at least one light emission device such that
`
`the body tissue carrying pulsing blood positioned between the light sensitive
`
`detector and the at least one light emission device. This construction is consistent
`
`with the specification and figures of the ’994 Patent, which only depict and
`
`describe the placement of the body tissue carrying pulsing blood between the at
`
`least one light emission device and the light sensitive detector. APPLE-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.”)
`
`APPLE-1001, FIG. 5B (annotated)
`
`
`
`Indeed, the plain language of the claim requires such a configuration, as the
`
`light that is accepted by the louvers must originate “from a general direction of the
`
`
`
`9
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`at least one light emission device,” and then transmit through the body tissue
`
`before “pass[ing] directly through the louvers 502 along a direct path 510.” Id.,
`
`6:30-34; APPLE-1003, [0038]-[0040].
`
`Petitioner does not concede that each challenged feature satisfies all
`
`statutory requirements, such as those recited in 35 U.S.C. § 112.
`
`III. THE CHALLENGED CLAIM IS UNPATENTABLE
`A.
`[GROUND 1] – Claim 15 is obvious over Diab, Benjamin, and
`Melby
`1. Overview of Diab
`Diab describes an “optical probe for measurements” (APPLE-1006,
`
`Abstract) for use in “non-invasive energy absorption (or reflection)” detection
`
`methods such as pulse oximetry. Id., 3:12-14. The device includes a “light source,
`
`such as an LED” (id., 3:30-31) and a “detector, such as a photodetector.” Id., 3:19-
`
`21. Diab’s light source includes, for example, two “LEDs 430a and 430b,” one
`
`which emits “red wavelengths” and one which emits “infrared wavelengths.” Id.,
`
`18:8-22.
`
`
`
`10
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`
`
`
`APPLE-1006, FIG. 24 (excerpt, annotated)
`
`Non-invasive methods, as described by Diab, are “often desirable” in order
`
`to “monitor a patient without unnecessary drawing of blood or tissue.” APPLE-
`
`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 use “light or
`
`sound energy…incident on the patient’s body” that is transmitted or reflected. Id.,
`
`1:13-22; APPLE-1003, [0041]-[0042].
`
`2. Overview of Benjamin
`Benjamin describes an improved “photoplethysmograph,” or device that
`
`uses a “light source and a specifically selected photo-sensitive cell that responds to
`11
`
`
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`light absorbed by the arterial blood in the peripheral vascular bed over which the
`
`sensor is placed.” APPLE-1007, 1:5-15. The photo-sensitive cell responds to the
`
`light absorbed by the blood such that the “amount of pulsating light it registers is
`
`proportional to the amount of pulsating arterial blood” within its field of detection
`
`and thus provides a measure of “pulsatile blood flow.” Id. 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…more nearly dependent only upon the light
`
`beam directly reflected from the field being measured.” Id., 2:53-57. Such light
`
`films were “known in the art and…commercially available.” Id., 2:50-52; APPLE-
`
`1003, [0043].
`
`APPLE-1007, FIG. 1 (annotated)
`
`
`
`
`
`12
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`
`3. Overview of Melby
`Melby, a patent from nearly 30 years ago and almost 6 years prior to the
`
`Critical Date, is assigned to the Minnesota Mining and Manufacturing Company
`
`(3M) and discloses a light control film, or a “louvered plastic film.” APPLE-1008,
`
`Abstract. Melby describes a film that includes “louver elements” that can be
`
`canted to direct light that passes through. Id., 1:9-22, 3:46-62. The ’994 patent
`
`itself notes that its “louvers” can be “created from commercially available ‘3M
`
`Light Control Film,’” such as that described in Melby. See APPLE-1001, 6:39-41;
`
`APPLE-1003, [0044].
`
`4.
`
`Claim 15
`(a)
`[15pre]: “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:”
`To the extent the preamble is limiting, in the combination, 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.” APPLE-1006, 3:12-43. Diab’s sensor includes “a probe for
`
`use in both invasive and non-invasive energy absorption (or reflection)
`
`
`
`13
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`measurements.” APPLE-1006, 3:11-47.1 The probe includes a “detector, such as
`
`a photodetector” and a “light source, such as an LED” that is affixed “opposite the
`
`photodetector.” Id. 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. The subject’s finger, for example,
`
`contains body tissue carrying pulsing blood. APPLE-1003, [0045]-[0048].
`
`As shown below, 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.” APPLE-1006, 18:43-47.
`
`
`
` 1
`
` All emphasis added unless indicated otherwise.
`
`
`
`14
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`
`APPLE-1006, FIG. 24 (annotated)
`
`
`
`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.” APPLE-1006, 17:62-18:8. These signals are “processed
`
`to determine the amount of oxygen available to the body” by “finding the
`
`saturation of oxygenated hemoglobin in blood comprising both oxygenated and
`
`deoxygenated hemoglobin.” Id. The two signals 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, for
`
`example, on top of the finger, and the photodetector is placed under the finger. Id.
`
`Accordingly, the combination of Diab, Benjamin, and Melby renders
`15
`
`
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`obvious 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.”
`
`(b)
`[15a]: “at least one light emission device;”
`As previously discussed (see [15pre]), in the combination, Diab teaches 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.
`
`APPLE-1006, 3:11-47, 17:62-18:22, FIG. 24; APPLE-1003, [0045]-[0048].
`
`As shown in FIG. 24 (reproduced below), Diab teaches two light emitting
`
`diodes (LEDs) that emit at two different wavelengths, and thus teaches at least one
`
`light emission device.
`
`APPLE-1006, FIG. 24 (annotated)
`
`
`
`
`
`16
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`Diab’s LEDs 430a and 430b (light emission devices) emit “red
`
`wavelengths” and “infrared wavelengths” and are “placed adjacent the finger 428.”
`
`APPLE-1006, 18:9-11; APPLE-1003, [0049]-[0052].
`
`Accordingly, the combination of the combination of Diab, Benjamin, and
`
`Melby renders obvious “at least one light emission device.”
`
`(c)
`[15b]: “a light sensitive detector; and”
`As explained above with respect to [15pre]-[15a], in the combination, 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. APPLE-1006, 3:11-47, 17:62-18:22, FIG. 24; APPLE-1003, [0045]-
`
`[0052].
`
`As shown in FIG. 24 (reproduced below), Diab’s photodetector “is mounted
`
`within the chamber, typically in the bottom of the chamber” (id., 3:19-21)
`
`positioned across from the two LEDs. Id., 3:30-31. The detector thus measures
`
`“[a]n attenuated light energy signal [that] emerges from the material, into the
`
`chamber” and “produces an electrical signal indicative of the intensity of the signal
`
`transmitted by the material.” Id., 3:34-35. This electrical signal is then input “to a
`
`processor which analyzes the signal to determine information about the medium
`
`through which light energy has been transmitted.” Id.
`
`
`
`17
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`
`
`
`APPLE-1006, FIG. 24 (annotated)
`
`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., 18:4-
`
`6. For example, the photodetector can be connected to “a single channel of
`
`common processing circuitry including an amplifier 530 which is in turn
`
`connected to a band pass filter 540” (id., 18:14-17) that includes “a plurality of
`
`output channels.” Id., 18:17-19. One of the output channels “is for signals
`
`corresponding to visible wavelengths and another output channel is for signals
`
`corresponding to infrared wavelengths.” Id., 18:19-22; APPLE-1003, [0053]-
`
`[0056].
`
`Accordingly the combination of the combination of Diab, Benjamin, and
`
`Melby renders obvious “a light sensitive detector.”
`
`
`
`18
`
`

`

`(d)
`
`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`[15c]: “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.”
`As previously discussed ([15pre]-[15b]), in the combination, Diab teaches 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.
`
`APPLE-1006, 3:11-47, 17:62-18:22, FIG. 24; APPLE-1003, [0045]-[0056].
`
`Diab further describes the use of 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. Id.,
`
`3:63-4:5. For example, Diab’s system can include a scattering medium “between
`
`the material [being tested] and the photodetector,” “result[ing] in an improved
`
`optical signal-to-noise ratio.” Id., 4:6-12.
`
`Benjamin also recognizes the problem of variations in the amount of
`
`scattered light reaching the detector as well. APPLE-1007, 1:35-49; APPLE-1003,
`
`[0059]. Benjamin describes a device that “senses blood flow by means of a probe
`
`placed on the surface of the skin of any part of the body.” APPLE-1007, 1:6-8.
`
`Benjamin’s probe “contains a tiny light source and a specifically selected photo-
`
`sensitive cell that responds to light absorbed by the arterial blood in the peripheral
`
`
`
`19
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`vascular bed over which the sensor is placed.” Id. 1:8-12, see also id., 2:26-61.
`
`The motivating factor behind Benjamin’s invention is 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.” Id., 1:35-40; APPLE-1003, [0057]-[0059].
`
`As a solution, Benjamin identifies, as one of its main improvements, the
`
`addition of light control film to stabilize the amount of scattered light that reaches
`
`the detector:
`
`In accordance with one feature of the invention
`means are provided for holding the operating point of the
`photocell constant by overcoming the adverse [effects] of
`the scattered light reaching the photocell. To this end, the
`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.
`Id., 1:56-66.
`
`For example, as shown in FIG. 1 of Benjamin, reproduced below, “a light
`
`control film 22 is mounted within the casing 12 to extend across the window 16”
`
`such that “the light emitted from the light source 18 passes through the light
`
`
`
`20
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`control film 22 to the field to be measured and light is reflected from this field
`
`back through the light control film 22 to the photo-sensitive cell 20.” Id., 2:42-61.
`
`Benjamin’s film is described as being made of “cellulose acetate butyrate” and as
`
`being “known in the art.” Id., 2:50-57. In further detail, the film “has the effect of
`
`collimating the light passing therethrough [sic] to thereby make the photo-
`
`sensitive cell 20 more nearly dependent only upon the light beam directly
`
`reflected from the field being measured” and “is commercially available.” Id.
`
`
`
`APPLE-1007, FIG. 1 (annotated)
`
`A POSITA 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. APPLE-1003, [0062]. Indeed, a POSITA would have been motivated
`
`and would have found it obvious to combine Diab and Benjamin to provide an
`
`
`
`21
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`optical physiological sensor that reduces variations in the amount of light detected
`
`by the photodetectors of the sensor in order to “collimat[e] the light emitted from
`
`the light source and reflected back to the photo-sensitive cell,” which would lead to
`
`a more consistent and accurate measurement of blood oxygen saturation. Id.,
`
`[0057]-[0062]; see, e.g., APPLE-1007, Abstract.
`
`A POSITA would have understood that the beneficial effects of a particular
`
`component as used within Benjamin’s system would have applied in a predictable
`
`manner to Diab’s system. APPLE-1003, [0064]. For example, both Diab and
`
`Benjamin describe photoplethysmograph (PPG) devices and relate to reducing the
`
`effects of noise in detected signals resulting from describes a pulse oximeter,
`
`which measures oxygen saturation level (SpO2) and is also a PPG. See APPLE-
`
`1006, 17:62-18:22. Diab’s device can measure the change in the volume of arterial
`
`blood with each pulse beat, and while it is more complex than Benjamin’s device,
`
`it operates according to similar principles. APPLE-1003, [0064]. Thus, a POSITA
`
`would have understood that Benjamin’s teachings as applied to its own system and
`
`resulting advantages would have been clearly applicable to Diab as well. Id.
`
`Based on the combined disclosure of Diab and Benjamin, a POSITA would
`
`have understood that a pulse oximeter having two emitters emitting light of two
`
`different wavelengths and a detector can be improved by placing a light control
`
`film over the detector to reduce the amount of light that reaches the detector but
`
`
`
`22
`
`

`

`Attorney Docket No. 50095-0005IP1
`IPR of U.S. Patent No. 6,771,994
`has not passed through the tissue. APPLE-1003, [0065]. Indeed, a POSITA would
`
`have understood that a light control film placed over the detector could thus accept
`
`light from the light emission device from a particular direction based on the angle
`
`of the louvers within the light control film. Id.
`
`As described above, the light from pulse oximeter emitters is directed at, for
`
`example, “a section

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