IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Jeroen Poeze et al.
`In re Patent of:
`U.S. Patent No.: 10,588,554
`Issue Date:
`March 17, 2020
`Appl. Serial No.: 16/544,713
`Filing Date:
`August 19, 2019
`Title:
`MULTI-STREAM DATA COLLECTION SYSTEM FOR
`NONINVASIVE MEASUREMENT OF BLOOD CONSTITU-
`ENTS
`
`Attorney Docket No.: 50095-0013IP1
`
`
`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. 10,588,554 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`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 .................................................................................. 5
`PETITIONER HAS STANDING TO REQUEST IPR ................................... 5
`II.
`III. OVERVIEW OF THE ’554 PATENT ............................................................ 5
`A. Brief Description ....................................................................................... 5
`B. Level of Ordinary Skill in the Art ........................................................... 10
`C. Claim Construction ................................................................................. 11
`IV. APPLICATION OF PRIOR ART TO THE ’554 PATENT CLAIMS ......... 11
`A. Asserted Grounds and References .......................................................... 11
`B. GROUND 1: Claims 1-7 and 20-28 are obvious over Mendelson-799,
`Ohsaki, Schulz, and Mendelson-2006 .................................................... 12
`1. Overview of Mendelson-799 ......................................................... 12
`2. Overview of Ohsaki....................................................................... 20
`3. Overview of Schulz ....................................................................... 22
`4. Overview of Mendelson-2006 ....................................................... 23
`5.
`Combination of Mendelson-799, Ohsaki, Schulz, and Mendelson-
`2006 ............................................................................................... 25
`6. Analysis ......................................................................................... 43
`PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION .......... 97
`A. Factor 1: Institution Will Increase Likelihood of Stay ........................... 97
`B. Factor 2: District Court Schedule ........................................................... 98
`C. Factor 3: Apple’s Investment in IPR Outweighs Forced Investment in
`Litigation to Date .................................................................................... 99
`D. Factor 4: The Petition Raises Unique Issues .......................................... 99
`E. Factor 5: The Petition Enables the Board to Resolve Invalidity of Claims
`that Might Otherwise be Reasserted .....................................................100
`F. Factor 6: Other Circumstances Support Institution ..............................100
`VI. CONCLUSION ............................................................................................101
`VII. PAYMENT OF FEES – 37 C.F.R. § 42.103 ...............................................101
`
`
`
`
`V.
`
`i
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`
`EXHIBITS
`
`APPLE-1001
`
`US Patent No. 10,588,554
`
`APPLE-1002
`
`File History for U.S. Patent No. 10,588,554
`
`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 (“Mendelson799”)
`
`APPLE-1013
`
`US Pub. No. 2004/0054291 (“Schulz”)
`
`APPLE-1014
`
`RESERVED
`
`APPLE-1015
`
`RESERVED
`
`APPLE-1016
`
`RESERVED
`
`ii
`
`

`

`APPLE-1017
`
`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`“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
`
`Excerpts from Design of Pulse Oximeters, J.G. Webster; Insti-
`tution of Physics Publishing, 1997 (“Webster”)
`
`APPLE-1020
`
`QuickSpecs; HP iPAQ Pocket PC h4150 Series
`
`APPLE-1021
`
`Excerpts from How to Do Everything with Windows Mobile,
`Frank McPherson; McGraw Hill, 2006 (“McPherson”)
`
`APPLE-1022
`
`Excerpts from 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
`
`National Instruments LabVIEW User Manual
`
`APPLE-1028 to 1030
`
`RESERVED
`
`APPLE-1031
`
`Scheduling Order, Masimo v. Apple et al., Case 8:20-cv-00048,
`Paper 37 (April 17, 2020)
`
`iii
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`
`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 ‘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
`
`
`
`
`
`
`
`iv
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) of claims 1-7 and 20-28 (“the Challenged Claims”) of U.S. Patent No.
`
`10,588,554 (“’554 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 ’554 Patent describes and claims a purported improvement to a “physio-
`
`logical sensor device” included within a “physiological measurement system”: a
`
`cover with “a single protruding convex surface” that is configured to be located be-
`
`tween “at least four” detectors and user tissue, and that is sufficiently rigid to cause
`
`user tissue to conform to the surface when the sensor is worn. APPLE-1001, 14:3-
`
`10, 36:30-41, 44:50-45:21 (claim 1), FIGS. 1, 14D. Each detector “can be imple-
`
`mented using one or more photodiodes, phototransistors, or the like,” “can capture
`
`and measure light transmitted from [an] emitter … that has been attenuated or re-
`
`flected 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 example, “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 ’554 Patent was
`
`granted without full consideration to the wide body of applicable prior art. See
`
`1
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`generally APPLE-1002. And, as Dr. Thomas Kenny explains in his accompanying
`
`declaration with respect to the prior art applied in this Petition, physiological sen-
`
`sor devices such as pulse rate detectors and pulse oximeters commonly included
`
`covers by the ’554 Patent’s earliest effective filing date, and a sensor including
`
`each feature of the sensor device of the Challenged Claims would have been obvi-
`
`ous to a POSITA. APPLE-1003, ¶¶[0001]-[0273]; 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
`
`’554 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, ¶¶[0081]-0110].
`
`In addition to the “physiological sensor device” described above, the ’554
`
`2
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`Patent’s claimed “physiological measurement system” includes “a handheld com-
`
`puting device in wireless communication with the physiological sensor device.”
`
`See, e.g., APPLE-1001, 45:4-22 (claim 1).
`
`Yet, physiological sensor devices commonly communicated with handheld
`
`computing devices by the ’554 Patent’s earliest effective filing date. Mendelson-
`
`2006, for example, describes a “wireless wearable pulse oximeter” system in which
`
`a body-worn pulse oximeter communicates wirelessly with a PDA. APPLE-1010,
`
`Abstract, 1-4, FIGS. 1-3. Moreover, and as Dr. Kenny explains, the claimed
`
`“handheld computing device” is a generic computing device, and each of its recited
`
`components are generic computing components. APPLE-1003, ¶¶[0040]-[0059];
`
`APPLE-1001, 2:45-48, 15:60-16:11, 18:9-28, FIGS. 1, 2D.
`
`Accordingly, the Challenged Claims are unpatentable based on teachings set
`
`forth in at least the references presented in this Petition. APPLE-1003, ¶¶[0001]-
`
`[0273]. 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
`
`3
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`Apple, alleging infringement by Apple of the ’554 patent. The complaint was
`
`served to Apple on January 13, 2020.
`
`This Petition is being filed concurrently with another petition for IPR of the
`
`’554 Patent (IPR2020-01539),1 and with a petition for IPR of related U.S. Patent
`
`10,292,628 (IPR2020-01521). No other petitions for IPR of the ’554 Patent have
`
`been filed. On August 31, 2020, Apple filed petitions for IPR of related U.S. Pa-
`
`tents 10,588,553 (IPR2020-01536 and IPR2020-01537) and 10,258,265 (IPR2020-
`
`01520).
`
`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: IPR50095-0013IP1@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
`
`
`
` 1
`
` Pursuant to the Trial Practice Guide, both petitions for IPR of the ’554 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.
`
`4
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`
`
`
`D. Service Information
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR50095-0013IP1@fr.com
`
`(referencing No. 50095-0013IP1 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 ’554 patent is available for IPR. This present Peti-
`
`tion 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.). Ap-
`
`ple is not barred or estopped from requesting this review challenging the Chal-
`
`lenged Claims on the below-identified grounds.
`
`III. OVERVIEW OF THE ’554 PATENT
`A. Brief Description
`The system described by the ’554 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 ’554 Patent explains that “[t]he non-
`
`invasive sensor may include different architectures,” adding that “an artisan will
`
`recognize that the non-invasive sensor may include or may be coupled to other
`
`components, such as a network interface, and the like.” Id., 2:40-44. The “patient
`
`5
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`monitor” with which the sensor communicates may itself “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.
`
`
`
`In more detail, the exemplary physiological measurement system 100 illus-
`
`trated by the ’554 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.
`
`6
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`The ’554 Patent explains that “[i]n an embodiment, the sensor 101 and the
`
`
`
`monitor 109 are integrated together into a single unit.” Id., 11:49-51. “In another
`
`embodiment, the sensor 101 and the monitor 109 are separate from each other and
`
`communicate one with another in any suitable manner, such as via a wired or
`
`wireless connection.” Id., 11:51-57; 17:40-44.
`
`In more detail, the ’554 Patent’s FIGS. 2A-2D (reproduced below) illustrate
`
`“example monitoring devices 200 in which the data collection system 100 can be
`
`housed.” APPLE-1001, 5:39-42, 16:20-31.
`
`APPLE-1001, FIGS. 2A-2D.
`
`7
`
`
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`Each of the illustrated “monitoring devices 200” include a sensor 201 and a
`
`
`
`monitor 209. Id., FIGS. 2A-2D, 16:20-18:28. From this and related description, a
`
`POSITA would have understood that the sensor and monitor described by the ’554
`
`Patent together act as components of a physiological sensor device, regardless of
`
`whether they are integrated into a single unit, or are instead separated but config-
`
`ured to communicate with each other. APPLE-1003, ¶¶[0040]-[0049]; APPLE-
`
`1001, 2:38-48, 11:49-57, 16:20-18:28, FIGS. 1, 2A-2D.
`
`FIG. 2D illustrates a “monitoring device 200D [that] includes a finger clip
`
`sensor 201d connected to a monitor 209d via a cable 212,” in addition to “an op-
`
`tional universal serial bus (USB) port 216 and an Ethernet port 218 [that] can be
`
`used, for example, to transfer information between the monitor 209d and a com-
`
`puter (not shown) via a cable.” Id., 18:9-28.
`
`
`
`From this and related description, a POSITA would have understood that the
`
`sensor 201 and monitor 209 together act as components of a physiological sensor
`
`device, and that in at least one embodiment that device is part of a larger system in-
`
`cluding a computer with which the physiological sensor device communicates.
`
`APPLE-1003, ¶¶[0049]-[0050]; APPLE-1001, 2:38-48, 11:49-57, 16:20-18:28,
`
`FIGS. 1, 2A-2D.
`
`8
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`The sensor included in the physiological sensor device “may include differ-
`
`
`
`ent architectures”; the ’554 Patent describes several potential architectures with re-
`
`spect to FIGS. 14A-14I. APPLE-1001, 6:38-49, 35:36-38:20. For example, the
`
`’554 Patent’s FIG. 14C (reproduced below) illustrates a sensor featuring a “detec-
`
`tor submount 1400c…positioned under [a] protrusion 605b in a detector subassem-
`
`bly 1450 illustrated in FIG. 14D” (also reproduced below).
`
`APPLE-1001, FIGS. 14C, 14D.
`
`
`
`
`
`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. As illustrated in FIG. 14F (reproduced below),
`
`the sensor may also include a “shielding enclosure 1490” featuring a window
`
`1492a corresponding to each of “the detectors 1410c, which allows light to be
`
`9
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`transmitted onto the detectors 1410c.” Id., 37:9-17; see also id., 23:61-63, FIGS.
`
`4A-4C; APPLE-1003, ¶¶[0051]-[0059].
`
`APPLE-1001, FIG. 14F.
`
`
`
`B. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art relating to the subject matter of the ’554
`
`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
`
`10
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`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
`
`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].
`
`
`IV. APPLICATION OF PRIOR ART TO THE ’554 PATENT CLAIMS
`A. Asserted Grounds and References
`The Challenged Claims are invalid based on the ground noted 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]-[0273].
`
`11
`
`

`

`Ground
`1
`
`Claims
`1-7 and 20-28
`
`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`Basis for Rejection
`Obvious (§ 103) based on Mendelson-
`799 in combination with Ohsaki, Schulz,
`and Mendelson-2006
`
`
`
`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 ’554
`
`patent claims priority. Petitioner does not take a position as to whether the ’554
`
`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.
`
`Reference
`
`Date
`
`Mendelson-799
`
`US 6,801,799
`
`07/31/2003 (published)
`
`Ohsaki
`
`Schulz
`
`US 2001/0056243
`
`12/27/2001 (published)
`
`US 2004/0054291
`
`03/18/2004 (published)
`
`Mendelson-2006
`
`(NPL)
`
`09/2006 (published)
`
`Section
`
`102(b)
`
`102(b)
`
`102(b)
`
`102(b)
`
`
`
`B. GROUND 1: Claims 1-7 and 20-28 are obvious over
`Mendelson-799, Ohsaki, Schulz, and Mendelson-2006
`1. Overview of Mendelson-799
`Mendelson-799 is titled “Pulse Oximeter and Method of Operation” and,
`
`similar to the ’554 Patent, it describes a “sensor for use in an optical measurement
`
`12
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`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
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`backscattered light passing through the arterially perfused vascular tissue in the de-
`
`tected light.” Id., 9:33-40.
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`13
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`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`
`
`
`
`
`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, ¶¶[0061]-[0071]. 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 ob-
`
`vious 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, ¶[0063].
`
`14
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`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 il-
`
`lustrates as circumscribing detectors 16 and 18, so as to shield the detectors from
`
`ambient light, and protect the detectors from external forces. APPLE-1003,
`
`¶¶[0064]-[0065]; APPLE-1012, Abstract, 9:22-40, 14:1-17, FIG. 7; see also AP-
`
`PLE-1019, 79 (“the pulse oximeter designer must attempt to limit the light reach-
`
`ing the photodiode to that which has traveled through tissue”), 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, ¶[0066]; APPLE-1012, 4:13-22; APPLE-1017, 2-3,
`
`6, FIG. 1; see APPLE-1036; APPLE-1018, 1, 2, FIG. 2; see APPLE-1036.
`
`Yitzhak Mendelson’s 1988 paper “Design and Evaluation of a New Reflec-
`
`15
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`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`tance Pulse Oximeter Sensor,” for example, describes “an optical reflectance sen-
`
`sor” in which “LEDs and photodiode chips were mounted…on a ceramic substrate
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`…that was housed in a standard…microelectronic package (AIRPAX, Cambridge,
`
`Maryland).” APPLE-1017, 2-3, 6. As shown in Mendelson 1988’s FIG. 2 (repro-
`
`duced below), the AIRPAX housing includes walls that surround each of the sen-
`
`sor’s six photodiodes, and that are operably connected to the ceramic substrate on
`
`which the photodiodes are arranged. APPLE-1003, ¶[0067], FIG. 2.
`
`APPLE-1017, FIG. 2 (annotated excerpt).
`
`
`
`16
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`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`Similarly, Yitzhak Mendelson’s 1991 paper “Skin Reflectance Pulse Oxime-
`
`try: In Vivo Measurements from the Forearm and Calf” describes “a reflectance
`
`pulse oximeter sensor” in which a “multiple photodiode array…is arranged con-
`
`centric with the LEDs” so as to “maximize[] the amount of backscattered light that
`
`is detected by the sensor.” APPLE-1018, 1-3, FIG. 1; APPLE-1003, ¶[0062]-
`
`[0063]. As shown in Mendelson 1991’s FIG. 1 (reproduced below), the sensor fea-
`
`tures a silicone rubber wall that 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)
`
`17
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`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`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
`
`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, ¶¶[0068]-[0069]; 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-
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`1006, ¶¶[0023], [0024], FIG. 1(b) (illustrating an opaque wall that is connected to a
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`substrate and configured to circumscribe detectors).
`
`APPLE-1012, FIG. 7 (annotated, with additional section view)
`
`
`
`18
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`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`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, ¶[0070]. Mendelson-799’s FIG. 8
`
`(reproduced below) “illustrates a block-diagram of a pulse oximeter 20 utiliz-
`
`ing…sensor 10” (APPLE-1012, 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 connecta-
`
`ble to the sensor 10, a microprocessor 24 for analyzing measured data, and a dis-
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`play 26 for presenting measurement results.” Id., 10:16-22; APPLE-1003,
`
`¶¶[0061]-[0071].
`
`
`
`
`
`19
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`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`
`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
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`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
`
`20
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`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 between the convex surface and the user’s skin is said
`
`to prevent slippage, which increases the strength of the signals obtainable by
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`Ohsaki’s sensor. APPLE-1009, ¶¶[0009], [0010], [0015], [0017], [0023]-
`
`[0025], FIGS. 1, 2, 4A, 4B; APPLE-1003, ¶¶[0072]-[0074].
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`
`
`
`
`21
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`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`
`3. Overview of Schulz
`Schulz is titled “Pulse Oximetry Ear Sensor”; as illustrated in Schulz’s
`
`FIG. 19C (reproduced below), Schulz describes a sensor with “opposingly posi-
`
`tioned housings 1902 and 1903 that house one or more sensor optical compo-
`
`nents.” APPLE-1013, ¶[0065].
`
`Schulz, FIG. 19C.
`
`
`
`22
`
`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`The “inward facing shells 1905 and 1906” included within these housings
`
`are said to feature “windows 1919 and 1924 that provide an aperture for transmis-
`
`sion of optical energy to or from a tissue site”; “lenses 1920 and 1921” are pro-
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`vided in the form of “[t]ranslucent silicone material” that “covers windows 1919
`
`and 1924.” Id., ¶[0067], FIGS. 19A-D.
`
`Schulz avoids “saturation of the light detector” by placing “a thin sheet of
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`opaque material” “beneath window 1919 or 1924,” with “a window in the opaque
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`material provid[ing] an aperture for transmission of optical energy to or from the
`
`tissue site.” Id., [0073], FIGS. 19A-D. The opaque material blocks light, “and the
`
`window in the opaque material can be sized as needed to block the proper amount
`
`of light from entering the aperture to, for example, avoid saturation of the light de-
`
`tector.” Id.; APPLE-1003, ¶¶[0075]-[0077].
`
`4. Overview of Mendelson-2006
`Mendelson-2006 details the structure and testing of a “wireless wearable
`
`pulse oximeter” system. APPLE-1010, Abstract. Mendelson-2006’s system uses
`
`pulse oximetry to monitor a subject’s physiological signals. Id., 1. By wirelessly
`
`transmitting the collected data, Mendelson-2006’s system provides “numerous ad-
`
`vantages,” including the ability to determine the condition of a subject “remotely.”
`
`Id.
`
`The system includes a sensor module, a receiver module, and a PDA. Id.,
`
`23
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`

`

`Attorney Docket No. 50095-0013IP1
`IPR of U.S. Patent No. 10,588,554
`913. As shown in Mendelson 2006’s FIGS. 1 and 2 (reproduced below), the
`
`sensor module includes an “optical reflectance transducer” having two LEDs
`
`and a photodiode that “receives and processes the [photoplethysmographic
`
`(PPG)] signals” and transmits these signals wirelessly to the PDA through the
`
`receiver module. Id.; FIGS. 1 a