IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Jeroen Poeze et al.
`In re Patent of:
`U.S. Patent No.: 10,588,553
`Issue Date:
`March 17, 2020
`Appl. Serial No.: 16/534,949
`Filing Date:
`August 7, 2019
`Title:
`MULTI-STREAM DATA COLLECTION SYSTEM FOR
`NONINVASIVE MEASUREMENT OF BLOOD CONSTITU-
`ENTS
`
`Attorney Docket No.: 50095-0012IP1
`
`
`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. 10,588,553 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 3
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 3
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 3
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 4
`D. Service Information .................................................................................. 4
`PETITIONER HAS STANDING TO REQUEST IPR ................................... 4
`II.
`III. OVERVIEW OF THE ’553 PATENT ............................................................ 5
`A. Brief Description ....................................................................................... 5
`B. Level of Ordinary Skill in the Art ............................................................. 7
`C. Claim Construction ................................................................................... 7
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE ............................ 8
`A. Asserted Grounds and References ............................................................ 8
`B. GROUND 1: Claims 1-6, 9-18, 20-24, and 29 are obvious over
`Mendelson ’799 and Ohsaki ................................................................... 10
`1. Overview of Mendelson ’799 ........................................................ 10
`2. Overview of Ohsaki....................................................................... 18
`3.
`Combination of Mendelson ’799 and Ohsaki ............................... 20
`4. Analysis ......................................................................................... 29
`C. GROUND 2 – Claims 4, 18, and 24 are obvious over Mendelson ’799 in
`view of Ohsaki and Schulz ..................................................................... 62
`1. Overview of Schulz ....................................................................... 62
`2.
`Combination of Mendelson ’799, Ohsaki, and Schulz ................. 64
`3. Analysis ......................................................................................... 71
`D. GROUND 3 – Claim 25 is obvious over Mendelson ’799, Ohsaki, and
`Griffin ..................................................................................................... 74
`1. Overview of Griffin ....................................................................... 74
`2.
`Combination of Mendelson ’799, Ohsaki, and Griffin ................. 76
`3. Analysis ......................................................................................... 78
`E. GROUND 4 – Claims 7 and 19 are obvious over Mendelson ’799,
`Ohsaki, and Mendelson 2006 ................................................................. 79
`1. Overview of Mendelson 2006 ....................................................... 79
`2.
`Combination of Mendelson ’799, Ohsaki, and Mendelson 2006 . 81
`3. Analysis ......................................................................................... 90
`F. GROUND 5 – Claims 8 and 26-28 are obvious over Mendelson ’799,
`Ohsaki, Mendelson 2006, and Griffin .................................................... 97
`
`i
`
`

`

`1.
`
`V.
`
`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`Combination of Mendelson ’799, Ohsaki, Mendelson 2006, and
`Griffin ............................................................................................ 97
`2. Analysis ......................................................................................... 97
`PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION ........100
`A. Factor 1: Institution Will Increase Likelihood of Stay .........................101
`B. Factor 2: District Court Schedule .........................................................102
`C. Factor 3: Apple’s Investment in IPR Outweighs Forced Investment in
`Litigation to Date ..................................................................................102
`D. Factor 4: The Petition Raises Unique Issues ........................................103
`E. Factor 5: The Petition Enables the Board to Resolve Invalidity of Claims
`that Might Otherwise be Reasserted .....................................................104
`F. Factor 6: Other Circumstances Support Institution ..............................104
`VI. CONCLUSION ............................................................................................105
`VII. PAYMENT OF FEES – 37 C.F.R. § 42.103 ...............................................105
`
`
`
`ii
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`
`EXHIBITS
`
`APPLE-1001
`
`US Patent No. 10,588,553
`
`APPLE-1002
`
`File History for U.S. Patent No. 10,588,553
`
`APPLE-1003
`
`Declaration of Dr. Kenny
`
`APPLE-1004
`
`Curriculum Vitae of Dr. Kenny
`
`APPLE-1005
`
`Masimo Corporation, et al. v. Apple Inc., Complaint, Civil Ac-
`tion No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1006
`
`US Pub. No. 2002/0188210 (“Aizawa”)
`
`APPLE-1007
`
`JP Pub. No. 2006/296564 (“Inokawa”)
`
`APPLE-1008
`
`Certified English Translation of Inokawa and Translator’s Dec-
`laration
`
`APPLE-1009
`
`US Pub. No. 2001/0056243 (“Ohsaki”)
`
`APPLE-1010
`
`“A Wearable Reflectance Pulse Oximeter for Remote Physio-
`logical Monitoring,” Y. Mendelson, et al.; Proceedings of the
`28th IEEE EMBS Annual International Conference, 2006; pp.
`912-915 (“Mendelson-2006”)
`
`APPLE-1011
`
`RESERVED
`
`APPLE-1012
`
`US Patent No. 6,801,799 (“Mendelson ’799”)
`
`APPLE-1013
`
`US Pub. No. 2004/0054291 (“Schulz”)
`
`APPLE-1014
`
`US Patent No. 7,658,613 (“Griffin”)
`
`APPLE-1015
`
`RESERVED
`
`APPLE-1016
`
`RESERVED
`
`iii
`
`

`

`APPLE-1017
`
`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic Institute,
`Biomedical Engineering Program, Worcester, MA 01609; As-
`sociation for the Advancement of Medical Instrumentation, vol.
`22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`
`APPLE-1018
`
`“Skin Reflectance Pulse Oximetry: In Vivo Measurements from
`the Forearm and Calf,” Y. Mendelson, et al.; Journal of Clinical
`Monitoring, vol. 7, No. 1, January 1991 (“Mendelson 1991)
`
`APPLE-1019
`
`Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`
`APPLE-1020
`
`QuickSpecs; HP iPAQ Pocket PC h4150 Series
`
`APPLE-1021
`
`How to Do Everything with Windows Mobile, Frank McPher-
`son; McGraw Hill, 2006 (“McPherson”)
`
`APPLE-1022
`
`Master Visually Windows Mobile 2003, Bill Landon, et al.;
`Wiley Publishing, Inc., 2004 (“Landon”)
`
`APPLE-1023
`
`“Stimulating Student Learning with a Novel ‘In-House’ Pulse
`Oximeter Design,” J. Yao and S. Warren; Proceedings of the
`2005 American Society for Engineering Education Annual
`Conference & Exposition, 2005 (“Yao”)
`
`APPLE-1024
`
`US Pub. No. 2008/0194932 (“Ayers”)
`
`APPLE-1025
`
`U.S. Patent No. 7,031,728 (“Beyer”)
`
`APPLE-1026
`
`US Pub. No. 2007/0145255 (“Nishikawa”)
`
`APPLE-1027-1030
`
`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
`
`iv
`
`

`

`APPLE-1033
`
`APPLE-1034
`
`APPLE-1035
`
`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`Telephonic Status Conference, Masimo v. Apple et al., Case
`8:20-cv-00048, Paper 78 (July 13, 2020)
`
`Joseph Guzman, “Fauci says second wave of coronavirus is ‘in-
`evitable’”, TheHill.com (Apr. 29, 2020), available at:
`https://thehill.com/changing-america/resilience/natural-disas-
`ters/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/
`
`APPLE-1036
`
`Declaration of Jacob R. Munford
`
`
`
`
`
`
`
`v
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) of claims 1-29 (“the Challenged Claims”) of U.S. Patent No. 10,588,553
`
`(“’553 Patent”). As explained in this Petition, there exists a reasonable likelihood
`
`that Apple will prevail with respect to at least one of the Challenged Claims.
`
`The ’553 Patent describes and claims a purported improvement to a “nonin-
`
`vasive optical physiological sensor”: a cover with “a single protruding convex sur-
`
`face” that is configured to be located between “at least four” detectors and user tis-
`
`sue, and that is operable to conform user tissue to the surface when the sensor is
`
`worn. APPLE-1001, 14:3-10, 36:30-41, 44:50-67 (claim 1), FIGS. 1, 14D. Each
`
`detector “can be implemented using one or more photodiodes, phototransistors, or
`
`the like,” “can capture and measure light transmitted from [an] emitter … that has
`
`been attenuated or reflected from the tissue,” and can “output a detector signal …
`
`responsive to the light ….” Id., 14:3-10. Placement of a cover with a protrusion
`
`over the detectors is said to offer multiple benefits; the protrusion may, for exam-
`
`ple, “penetrate[] into the tissue and reduce[] the path length of the light ….” Id.,
`
`14:3-10, 24:16-35, 10:61-11:13.
`
`But the claimed sensor was not new. To the contrary, the ’553 Patent was
`
`granted without full consideration to the wide body of applicable prior art. See
`
`generally APPLE-1002 (no office actions issued during the prosecution of the ap-
`
`plication from which the ’553 Patent issued). And, as Dr. Thomas Kenny explains
`
`1
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`in his accompanying declaration with respect to the prior art applied in this Peti-
`
`tion, noninvasive optical physiological sensors such as pulse rate detectors and
`
`pulse oximeters commonly included covers by the ’553 Patent’s earliest effective
`
`filing date, and a sensor including each feature of the Challenged Claims would
`
`have been obvious to a POSITA. APPLE-1003, ¶¶[0040]-[0043]; APPLE-1001,
`
`44:50-47:22.
`
`For example, Mendelson ’799 (APPLE-1012) discloses a “sensor for use in
`
`an optical measurement device” featuring a sensor housing 17 that accommodates
`
`a “light source 12” and an array of twelve “discrete detectors (e.g., photodiodes).”
`
`APPLE-1012, Title, Abstract, 9:22-40, 10:16-37, FIGS. 7, 8. And, similar to the
`
`’553 Patent, Ohsaki (APPLE-1009) describes an optical sensor that features a
`
`cover with a protruding convex surface that is placed “in intimate contact with the
`
`surface of the user’s skin” when the sensor is worn. APPLE-1009, Title, Abstract,
`
`¶¶[0016], [0017], FIGS. 1, 2. Ohsaki is not alone, as Inokawa (APPLE-1007, AP-
`
`PLE-1008) and other references likewise disclose covers with protruding convex
`
`surfaces for use in optical sensors. APPLE-1008, ¶¶14-15, FIGS. 2, 3. And, as Dr.
`
`Kenny explains, a POSITA would have found it obvious to utilize such a cover in
`
`Mendelson’s ’799 sensor. APPLE-1003, ¶¶[0040]-[0043], [0078]-[0098].
`
`Accordingly, the Challenged Claims are unpatentable based on teachings set
`
`forth in at least the references presented in this Petition. APPLE-1003, ¶¶[0001]-
`
`2
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`[0325]. Apple respectfully submits that an IPR should be instituted, and that the
`
`Challenged Claims should be canceled as unpatentable.
`
`
`
`
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Apple Inc. is the real party-in-interest (RPI).
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Patent Owner filed a complaint on January 9, 2020 in the U.S. District Court
`
`for the Central District of California (CDCA) (Case No. 8:20-cv-00048) against
`
`Apple, alleging infringement by Apple of the ’553 patent. The complaint was
`
`served to Apple on January 13, 2020.
`
`This Petition is being filed concurrently with another petition for IPR of the
`
`’553 Patent (IPR2020-01537), and with a petition for IPR of related U.S. Patent
`
`No. 10,258,265 (IPR2020-01520). 1 No other petitions for IPR of the ’553 Patent
`
`have been filed.
`
`
`
` 1
`
` Pursuant to the Trial Practice Guide, both petitions for IPR of the ’553 Patent are
`
`being filed with a paper providing a succinct explanation of the differences be-
`
`tween the petitions, why the issues addressed by the differences are material, and
`
`why the Board should exercise its discretion to institute both petitions.
`
`3
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Apple provides the following designation of counsel.
`
`LEAD COUNSEL
`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR50095-0012IP1@fr.com
`
`
`BACKUP COUNSEL
`Andrew B. Patrick, Reg. No. 63,471
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: PTABInbound@fr.com
`
`D. Service Information
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR50095-0012IP1@fr.com
`
`(referencing No. 50095-0012IP1 and cc’ing PTABInbound@fr.com, axf-
`
`ptab@fr.com and patrick@fr.com.
`
`
`
`II. PETITIONER HAS STANDING TO REQUEST IPR
`Apple certifies that the ’553 patent is available for IPR. The present Petition is be-
`
`ing filed within one year of service of a complaint against Apple in Masimo Cor-
`
`poration et al. v. Apple Inc., Case No. 8:20-cv-00048 (C.D. Cal.). Apple is not
`
`barred or estopped from requesting this review challenging the Challenged Claims
`
`on the below-identified grounds.
`
`
`
`4
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`
`III. OVERVIEW OF THE ’553 PATENT
`A. Brief Description
`The system described by the ’553 Patent is said to include, in one embodi-
`
`
`
`ment, “a noninvasive sensor and a patient monitor communicating with the nonin-
`
`vasive sensor.” APPLE-1001, 2:38-40. The exemplary data collection system 100
`
`illustrated by the ’553 Patent’s FIG. 1 (reproduced below) includes “a sensor 101
`
`… that is coupled to a processing device or physiological monitor 109.” Id., 5:35-
`
`38, 11:47-49.
`
`
`
`APPLE-1001, FIG. 1.
`
`5
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`“The non-invasive sensor may include different architectures,” and the “pa-
`
`
`
`tient monitor” with which the sensor communicates may “include a display de-
`
`vice,” and “a network interface communicating with any one or combination of a
`
`computer network, a handheld computing device, a mobile phone, the Internet, or
`
`the like.” Id., 2:45-48.
`
`The ’553 Patent describes several potential sensor architectures with respect
`
`to FIGS. 14A-14I. APPLE-1001, 6:38-49, 35:36-38:20. For example, the ’553 Pa-
`
`tent’s FIG. 14C (reproduced below) illustrates a sensor featuring a “detector sub-
`
`mount 1400c … positioned under [a] protrusion 605b in a detector subassembly
`
`1450 illustrated in FIG. 14D” (also reproduced below).
`
`APPLE-1001, FIGS. 14C, 14D.
`
`
`
`6
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`As illustrated in FIG. 14D, a housing 1430 including “a transparent cover
`
`
`
`1432, upon which the protrusion 605b is disposed” surrounds each of the detectors
`
`1410c. APPLE-1001, 36:30-41.
`
`B. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art relating to the subject matter of the ’553
`
`Patent as of July 3, 2008 (“POSITA”) would have been a person with a working
`
`knowledge of physiological monitoring technologies. The person 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 information, including but not limited to physiological monitoring technol-
`
`ogies. APPLE-1003, ¶¶[0001]-[0018], [0020]-[0021]. Alternatively, the person
`
`could have also had a Master of Science degree in a relevant academic discipline
`
`with less than a year of related work experience in the same discipline. Id.
`
`C. 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 ’554 patent specification, no
`
`formal claim constructions are necessary in this proceeding because “claim terms
`
`7
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`need only be construed to the extent necessary to resolve the controversy.” Well-
`
`man, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). APPLE-
`
`1003, ¶[0022].
`
`Furthermore, Apple is not conceding that each challenged feature satisfies
`
`all statutory requirements such as 35 U.S.C. § 112. As this is an IPR petition, Ap-
`
`ple is pursuing prior art-based grounds. Apple is not waiving any arguments con-
`
`cerning other grounds that can only be raised in district court.
`
`
`
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Asserted Grounds and References
`The Challenged Claims are invalid over the grounds identified in the table
`
`below, as further explained in this Petition. Accompanying explanations and sup-
`
`port are provided in the Declaration of Dr. Thomas Kenny (APPLE-1003). AP-
`
`PLE-1003, ¶¶[0001]-[0325].
`
`Ground
`1
`
`2
`
`3
`
`4
`
`Claims
`1-3, 5, 6, 9-18, 20-24,
`and 29
`4, 18, and 24
`
`25
`
`7 and 19
`
`Basis for Rejection
`Obvious (§ 103) based on Mendelson
`’799 in combination with Ohsaki
`Obvious (§ 103) based on Mendelson
`’799 in combination with Ohsaki and
`Schulz
`Obvious (§ 103) based on Mendelson
`’799 in combination with Ohsaki and
`Griffin
`Mendelson ’799 in combination with
`
`8
`
`

`

`Ground
`
`Claims
`
`5
`
`8 and 26-28
`
`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`Basis for Rejection
`Ohsaki and Mendelson 2006
`Mendelson ’799 in combination with
`Ohsaki, Mendelson 2006, and Griffin
`
`Each applied reference pre-dates U.S. provisional application 61/078,207,
`
`filed on July 3, 2008, which is the earliest filed application from which the ’553
`
`Patent claims priority. Petitioner does not take a position as to whether the ’553
`
`Patent is entitled to the priority date of July 3, 2008 (hereinafter “Critical Date” or
`
`“Earliest Effective Filing Date”), but has applied references that pre-date the Criti-
`
`cal Date and qualify as prior art, as shown in the table below. APPLE-1003,
`
`¶[0019].
`
`Reference
`
`Date
`
`Section
`
`Mendelson ’799
`
`US 2002/0188210
`
`12/12/2002 (published)
`
`102(b)
`
`Ohsaki
`
`Schulz
`
`Griffin
`
`US 2001/0056243
`
`12/27/2001 (published)
`
`102(b)
`
`US 2004/0054291
`
`03/18/2004 (published)
`
`102(b)
`
`US 7,658,613
`
`01/16/2007 (filed)
`
`102(e)
`
`102(b)
`
`Mendelson 2006
`
`(NPL)
`
`09/2006 (published)
`
`
`
`
`
`
`
`
`9
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`B. GROUND 1: Claims 1-6, 9-18, 20-24, and 29 are obvious
`over Mendelson ’799 and Ohsaki
`1. Overview of Mendelson ’799
`Mendelson ’799 is titled “Pulse Oximeter and Method of Operation” and,
`
`similar to the ’553 Patent, it describes a “sensor for use in an optical measurement
`
`device and a method for non-invasive measurement of a blood parameter.” AP-
`
`PLE-1012, Title, Abstract; see APPLE-1036.
`
`In more detail, Mendelson ’799’s FIG. 7 (reproduced below) illustrates an
`
`optical sensor 10 that includes a “light source 12 composed of three closely spaced
`
`light emitting elements…generating light of three different wavelengths,” “an ar-
`
`ray of discrete detectors (e.g., photodiodes),” including “a ‘far’ detector 16 and a
`
`‘near’ detector 18, arranged in two concentric ring-like arrangements…surround-
`
`ing the light emitting elements; and a light shield 14.” Id., 9:22-33. “All these ele-
`
`ments are accommodated in a sensor housing 17,” with “[t]he light shield 14 [be-
`
`ing] positioned between the photodiodes and the light emitting elements” so as to
`
`prevent[] direct optical coupling between them, thereby maximizing the fraction of
`
`backscattered light passing through the arterially perfused vascular tissue in the de-
`
`tected light.” Id., 9:33-40.
`
`10
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`
`
`
`
`
`APPLE-1012, FIG. 7 (annotated)
`
`Mendelson ’799’s FIG. 7 illustrates sensor housing 17 as encircling the vari-
`
`ous components that sensor housing 17 is said to accommodate, but does not pre-
`
`sent sensor housing 17 in profile. See APPLE-1012, 9:23-40, Abstract, FIG. 7;
`
`APPLE-1003, ¶¶[0055]-[0066]. As explained below, to the extent that Mendelson
`
`’799 does not explicitly disclose sensor housing 17 as including an opaque wall
`
`that circumscribes the accommodated components, a POSITA would have found it
`
`obvious to connect, to the illustrated portion of sensor housing 17, an opaque wall
`
`configured to circumscribe the array of discrete detectors included in detector rings
`
`16 and 18, both to shield the detectors from ambient light, and protect the detectors
`
`from external forces. Id., 9:24-40, FIG. 7; APPLE-1003, ¶[0057].
`
`11
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`In more detail, Mendelson ’799 does not present light shield 14 in profile,
`
`but, as noted above, it describes light shield 14 as being “positioned between the
`
`photodiodes and the light emitting elements,” so as to “prevent[] direct optical cou-
`
`pling between them, thereby maximizing the fraction of backscattered light passing
`
`through the arterially perfused vascular tissue in the detected light.” APPLE-1012,
`
`9:35-40.
`
`From this and related description, a POSITA would have been motivated to
`
`connect an opaque wall to the portion of sensor housing 17 that Mendelson ’799
`
`illustrates as circumscribing detectors 16 and 18, so as to shield the detectors from
`
`ambient light, and protect the detectors from external forces. APPLE-1003,
`
`¶[0059]; APPLE-1012, Abstract, 9:22-40, 14:1-17, FIG. 7; see also APPLE-1019,
`
`79 (“the pulse oximeter designer must…limit the light reaching the photodiode to
`
`that which has traveled through tissue containing arterial blood”), 86 (“The probe
`
`… must be protected from ambient light”), 94; see APPLE-1036.
`
`Indeed, several references that are mentioned within Mendelson ’799 itself
`
`depict and describe pulse oximeter sensors that feature detectors housed within sur-
`
`rounding walls. APPLE-1003, ¶[0060]; APPLE-1012, 4:13-22 (describing Men-
`
`delson 1988 and Mendelson 1991); APPLE-1017, 2-3, 6, FIG. 1; see APPLE-1036;
`
`APPLE-1018, 1, 2, FIG. 2; see APPLE-1036.
`
`12
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`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`Yitzhak Mendelson’s 1988 paper “Design and Evaluation of a New Reflec-
`
`tance Pulse Oximeter Sensor,” for example, describes a sensor in which “LEDs
`
`and photodiode chips were mounted…on a ceramic substrate…that was housed in
`
`a standard…microelectronic package (AIRPAX, Cambridge, Maryland)….” AP-
`
`PLE-1017, 2-3, 6. As shown in Mendelson 1988’s FIG. 2 (reproduced below), the
`
`AIRPAX housing includes walls that surround each of the sensor’s six photodi-
`
`odes, and that are operably connected to the ceramic substrate on which the photo-
`
`diodes are arranged. APPLE-1003, ¶[0061], FIG. 2.
`
`
`
`13
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`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`
`
`
`APPLE-1017, FIG. 2 (annotated excerpt).
`
`Similarly, Yitzhak Mendelson’s 1991 paper “Skin Reflectance Pulse Oxime-
`
`try: In Vivo Measurements from the Forearm and Calf” describes a sensor in which
`
`a “multiple photodiode array…is arranged concentric with the LEDs” so as to
`
`“maximize[] the amount of backscattered light that is detected by the sensor.” AP-
`
`PLE-1018, 1-3, FIG. 1; APPLE-1003, ¶[0062]-[0063]. As shown in Mendelson
`
`1991’s FIG. 1 (reproduced below), the sensor features a silicone rubber wall that
`
`14
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`circumscribes each of the six detectors included in the photodiode array, and that is
`
`operably connected to the substrate on which the detectors are arranged. APPLE-
`
`1003, ¶[0063], FIG. 1.
`
`APPLE-1018, FIG. 1 (annotated)
`
`
`
`Similar to these and other known configurations in which an opaque wall in-
`
`cluded within an optical sensor’s housing surrounds the photodiodes accommo-
`
`dated by that housing, and thereby shields the photodiodes from both external
`
`15
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`forces and ambient light, a POSITA would have connected an opaque wall config-
`
`ured to circumscribe detectors 16 and 18 to the planar substrate provided by Men-
`
`delson ’799’s sensor housing 17, as shown below in the section view of the sensor
`
`that would have resulted. APPLE-1003, ¶[0064]; APPLE-1012, 4:13-22, 9:33-40,
`
`FIG. 7; APPLE-1017, 2-3, 6, FIG. 1; APPLE-1018, 1, 2, FIG. 2; APPLE-1019, 79,
`
`86, 94; APPLE-1009, ¶¶[0015], [0017], [0025], FIGS. 1, 2; APPLE-1006,
`
`¶¶[0023], [0024], FIG. 1(b) (illustrating an opaque wall that is connected to a sub-
`
`strate and configured to circumscribe detectors).
`
`APPLE-1012, FIG. 7 (annotated, with additional section view)
`
`
`
`16
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`As noted above, Mendelson ’799 describes its sensor as being configured
`
`“for use in an optical measurement device.” APPLE-1012, Abstract, 8:37-41,
`
`9:22-40, 10:15-22; FIGS. 7, 8; APPLE-1003, ¶[0064]. Mendelson ’799’s FIG. 8
`
`(reproduced below) “illustrates a block-diagram of a pulse oximeter 20 utiliz-
`
`ing…sensor 10” (Id., 8:39-40, 10:16-17):
`
`
`
`APPLE-1012, FIG. 8 (annotated)
`
`As shown, “[t]he pulse oximeter typically includes a control unit 21,
`
`which is composed of an electronic block 22 including A/D and D/A converters
`
`connectable to the sensor 10, a microprocessor 24 for analyzing measured data,
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`and a display 26 for presenting measurement results.” Id., 10:16-22; APPLE-
`
`1003, ¶¶[0055]-[0066].
`
`
`
`
`
`17
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`
`2. Overview of Ohsaki
`Ohsaki is titled “Wristwatch-type human pulse wave sensor attached on
`
`back side of user’s wrist” and, as illustrated in Ohsaki’s FIG. 1 (reproduced be-
`
`low), is generally directed to a wrist-worn “pulse wave sensor” 1 featuring a
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`“detecting element” 2 and a translucent board 8 with a convex surface that is
`
`placed “in intimate contact with the surface of the user’s skin” when the sensor
`
`is worn. APPLE-1009, Title, Abstract, ¶¶[0016], [0017].
`
`
`
`APPLE-1009, FIG. 1 (annotated)
`
`
`
`In more detail, and as illustrated in Ohsaki’s FIG. 2 (reproduced below),
`
`Ohsaki’s “detecting element” 2 includes “a package 5, a light emitting element
`
`6 (e.g., LED), a light receiving element 7 (e.g., PD), and a translucent board 8.”
`
`APPLE-1009, ¶[0017]. “The package 5 has an opening and includes a” sub-
`
`strate in the form of “circuit board 9,” on which light emitting element 6 and
`
`18
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`light receiving element 7 are arranged. Id.; APPLE-1003, ¶¶[0067]-[0069].
`
`
`
`
`
`APPLE-1009, FIG. 2 (annotated)
`
`Translucent board 8 is “attached to the opening of the package 5” and is
`
`arranged such that, when the sensor is worn “on the user’s wrist…the convex
`
`surface of the translucent board…is in intimate contact with the surface of the
`
`user’s skin”; this contact is said to prevent slippage, which increases the
`
`strength of the signals obtainable by Ohsaki’s sensor. APPLE-1009, ¶¶[0009],
`
`[0010], [0015], [0017], [0023]-[0025], FIGS. 1, 2, 4A, 4B; APPLE-1003,
`
`¶¶[0067]-[0069].
`
`
`
`
`
`
`
`19
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`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`3. Combination of Mendelson ’799 and Ohsaki
`As explained above in Section IV.B.1, Mendelson ’799 discloses a sensor
`
`featuring a sensor housing 17 that accommodates a “light source 12 composed of
`
`three closely spaced light emitting elements (e.g., LEDs or laser sources),” an “ar-
`
`ray of discrete detectors (e.g., photodiodes)” including a “‘far’ detector 16 and a
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`‘near’ detector 18,” and a “light shield 14” that is positioned between the photodi-
`
`odes and the light emitting elements.” Id., APPLE-1012, Title, Abstract, 9:22-40,
`
`10:16-37, FIGS. 7, 8.
`
`Further, to the extent that Mendelson ’799 does not explicitly disclose sensor
`
`housing 17 as including an opaque wall that circumscribes the accommodated
`
`components, a POSITA would have found it obvious to connect, to the portion of
`
`sensor housing 17 illustrated in Mendelson ’799’s FIG. 7 (reproduced below), an
`
`opaque wall configured to circumscribe the array of discrete detectors included in
`
`detector rings 16 and 18. Id., 9:24-40, FIG. 7; APPLE-1003, ¶¶[0078]-[0098].
`
`20
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`
`APPLE-1012, FIG. 7 (annotated, with additional section view)
`
`
`
`
`
`As detailed below, a POSITA would have been motivated to combine Men-
`
`delson ’799 and Ohsaki (hereinafter “Mendelson-Ohsaki combination” or “Men-
`
`delson-Ohsaki”) to obtain additional benefits. APPLE-1003, ¶¶[0078]-[0080].
`
`
`
`(a) Light permeable cover comprising a protruding convex surface
`
`Mendelson ’799 does not describe a cover configured to be located between
`
`user tissue and the components accommodated within sensor housing 17 when the
`
`sensor is worn, but a POSITA would have recognized that a light permeable cover
`
`with a protruding convex surface would improve adhesion between the sensor and
`
`21
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`the user’s tissue, improve detection efficiency, and protect the elements within sen-
`
`sor housing 17. APPLE-1003, ¶[0081]; APPLE-1009, ¶¶[0015], [0017], [0025],
`
`FIGS. 1, 2, 4A, 4B; see also APPLE-1008, ¶¶14-15, FIG. 2 (depicting a convex
`
`lens that enhances signal strength and protects a LED and photodetector); APPLE-
`
`1024, ¶¶[0033], [0035], FIG. 6 (depicting an LED featuring a convex lens).
`
`Indeed, by the Critical Date, noninvasive optical physiological sensors com-
`
`monly employed covers. See, e.g., APPLE-1009, ¶¶[0015], [0017], [0025], FIGS.
`
`1, 2, 4A, 4B; APPLE-1006, ¶¶[0012], [0013], [0023], [0024], [0030], FIGS. 1(a),
`
`1(b) (depicting a wrist-worn “pulse wave sensor” including a transparent cover lo-
`
`cated between photodetectors and the user’s skin, the cover being said to improve
`
`adhesion, “thereby further improving…detection efficiency”); APPLE-1008, ¶¶14-
`
`15, FIGS. 1, 2; APPLE-1003, ¶[0082].
`
`For example, and as described above in Section IV.B.2, Ohsaki discloses a
`
`wrist-worn “pulse wave sensor” that includes a light permeable convex cover –
`
`“translucent board 8” – that is configured to be located between user tissue and a
`
`detector when the sensor is worn, where the cover comprises a single protruding
`
`convex surface operable to conform tissue of the user, and where a wall operably
`
`connects to a substrate and to the cover. See APPLE-1009, ¶¶ [0015], [0017],
`
`[0025], FIGS. 1, 2, 4A, 4B; APPLE-1003, ¶¶[0067]-[0069], [0083].
`
`22
`
`

`

`Attorney Docket No. 50095-0012IP1
`IPR of U.S. Patent No. 10,588,553
`In more detail, and as shown in Ohsaki’s FIG. 2 (reproduced below), translu-
`
`cent board 8 is “attached to the opening of the package 5” and is arranged such
`
`that, when the sensor is worn “on the user’s wrist…the convex surface of the trans-
`
`lucent board…is in intimate contact with the surface of the user’s skin”; this con-
`
`tact is said to preve