Trials@uspto.gov
`571-272-7822
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`Paper 31
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`Entered: May 2, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01713
`Patent 10,624,564 B1
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`
`
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`
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`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`KINDER, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`571-272-7822
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`Paper 31
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`Entered: May 2, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01713
`Patent 10,624,564 B1
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`KINDER, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
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`IPR2020-01713
`Patent 10,624,564 B1
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`
`I. INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–30 (“challenged claims”) of U.S. Patent No. 10,624,564
`B1 (Ex. 1001, “the ’564 patent”). Paper 2 (“Pet.”). Masimo Corporation
`(“Patent Owner”) waived filing a Preliminary Response. Paper 6. We
`instituted an inter partes review of all challenged claims 1–30 on all asserted
`grounds of unpatentability, pursuant to 35 U.S.C. § 314. Paper 7 (“Inst.
`Dec.”).
`After institution, Patent Owner filed a Response (Paper 14, “PO
`Resp.”) to the Petition, Petitioner filed a Reply (Paper 18, “Pet. Reply”), and
`Patent Owner filed a Sur-reply (Paper 21, “Sur-reply”). An oral hearing was
`held on February 9, 2022, and a transcript of the hearing is included in the
`record. Paper 30 (“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons set forth below, Petitioner has met
`its burden of showing, by a preponderance of the evidence, that challenged
`claims 1–30 of the ’564 patent are unpatentable.
`
`B. Related Proceedings
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`(C.D. Cal.) (filed Jan. 9, 2020);
`Apple Inc. v. Masimo Corporation, IPR2020-01520 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 10,258,265 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01521 (PTAB Sept. 2,
`2020) (challenging claims of U.S. Patent No. 10,292,628 B1);
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`Apple Inc. v. Masimo Corporation, IPR2020-01523 (PTAB Sept. 9,
`2020) (challenging claims of U.S. Patent No. 8,457,703 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01524 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 10,433,776 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01526 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 6,771,994 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01536 (PTAB Aug. 31,
`2020) (challenging claims 1–29 of U.S. Patent No. 10,588,553 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB Aug. 31,
`2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01538 (PTAB Sept. 2,
`2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01539 (PTAB Sept. 2,
`2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01714 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01715 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01716 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,702,194 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01722 (PTAB Oct. 2,
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01723 (PTAB Oct. 2,
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01733 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,702,195 B1); and
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`Apple Inc. v. Masimo Corporation, IPR2020-01737 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,709,366 B1).
`Pet. 3; Paper 3, 1, 3–4.
`
`Patent Owner further identifies certain pending patent applications, as
`well as other issued and abandoned applications, that claim priority to, or
`share a priority claim with, the ’564 patent. Paper 3, 1–2.
`
`C. The ’564 Patent
`The ’564 patent is titled “Multi-Stream Data Collection System for
`Noninvasive Measurement of Blood Constituents,” and issued on April 21,
`2020, from U.S. Patent Application No. 16/725,292, filed December 23,
`2019. Ex. 1001, codes (21), (22), (45), (54). The ’564 patent claims priority
`through a series of continuation and continuation-in-part applications to
`Provisional Application Nos. 61/086,060, 61/086,108, 61/086,063, and
`61/086,057, each filed on August 4, 2008, as well as 61/091,732, filed on
`August 25, 2008, and 61/078,228 and 61/078,207, both filed on July 3,
`2008. Id. at codes (60), (63).
`The ’564 patent discloses a two-part data collection system including
`a noninvasive sensor that communicates with a patient monitor. Id. at 2:47–
`51. The sensor includes a sensor housing, an optical source, and several
`photodetectors, and is used to measure a blood constituent or analyte, e.g.,
`oxygen or glucose. Id. at 2:38–46, 3:4–6. The patient monitor includes a
`display and a network interface for communicating with a handheld
`computing device. Id. at 2:54–57.
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`Figure 1 of the ’564 patent is reproduced below.
`
`
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`Figure 1 illustrates a block diagram of data collection system 100 including
`sensor 101 and monitor 109. Id. at 11:56–67. Sensor 101 includes
`emitter 104 and detectors 106. Id. at 12:1–5. Emitter 104 emits light that is
`attenuated or reflected by the patient’s tissue at measurement site 102. Id. at
`14:11–16. Detectors 106 capture and measure the light attenuated or
`reflected from the tissue. Id. In response to the measured light,
`detectors 106 output detector signal 107 to monitor 109 through front-end
`interface 108. Id. at 14:16–19, 36–42. Sensor 101 also may include tissue
`shaper 105, which may be in the form of a convex surface that: (1) reduces
`the thickness of the patient’s measurement site; and (2) provides more
`surface area from which light can be detected. Id. at 11:7–23.
`Monitor 109 includes signal processor 110 and user interface 112. Id.
`at 15:27–29. “[S]ignal processor 110 includes processing logic that
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`determines measurements for desired analytes . . . based on the signals
`received from the detectors 106.” Id. at 15:32–35. User interface 112
`presents the measurements to a user on a display, e.g., a touch-screen
`display. Id. at 15:57–61. In response to user input or device orientation,
`user interface 112 can “reorient its display indicia.” Id. at 15:63–67. The
`monitor may be connected to storage device 114 and network interface 116.
`Id. at 16:4–22. In some embodiments, the monitor, including the display, is
`attached to the patient by a strap. Id. at 17:56–59, 18:16–19.
`The ’564 patent describes various examples of sensor devices.
`Figures 14D and 14F, reproduced below, illustrate sensor devices.
`
`
`
`Figure 14D illustrates a detector submount and Figure 14F illustrates
`portions of a detector shell. Id. at 6:54–57. As shown in Figure 14D,
`multiple detectors 1410c are located within housing 1430 and under
`transparent cover 1432, on which protrusion 605b is disposed. Id. at 36:40–
`47. Figure 14F illustrates detector shell 306f including detectors 1410c on
`substrate 1400c. Id. at 37:20–21. In some embodiments, the detector shell
`includes walls to separate individual photodiode arrays and to “prevent or
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`reduce mixing of light signals.” Id. at 22:46–53. Substrate 1400c is
`enclosed by shielding enclosure 1490 and noise shield 1403, which include
`window 1492a and window 1492b, respectively, placed above
`detectors 1410c. Id. at 22:20–36.
`Figures 4A and 4B, reproduced below, illustrate an alternative
`example of a tissue contact area of a sensor device.
`
`
`
`Figures 4A and 4B illustrate arrangements of protrusion 405 including
`measurement site contact area 470. Id. at 23:30–36. “[M]easurement site
`contact area 470 can include a surface that molds body tissue of a
`measurement site.” Id. “For example, the measurement site contact
`area 470 can be generally curved and/or convex with respect to the
`measurement site.” Id. at 23:53–55. The measurement site contact area
`includes windows 420–423 that “mimic or approximately mimic a
`configuration of, or even house, a plurality of detectors.” Id. at 23:61–24:8.
`
`D. Illustrative Claim
`Of the challenged claims, claim 1 is independent. Claim 1 is
`illustrative and is reproduced below.
`1. [pre] A user-worn physiological measurement device
`comprising:
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`[a] one or more emitters configured to emit light into tissue
`of a user;
`[b] at least four detectors arranged on a substrate;
`[c] a cover comprising a protruding convex surface,
`wherein the protruding convex surface extends over all of the at
`least four detectors arranged on the substrate, wherein at least a
`portion of the protruding convex surface is rigid;
`[d] one or more processors configured to: receive one or
`more signals from at least one of the at least four detectors, the
`one or more signals responsive to at least a physiological
`parameter of the user; and process the one or more signals to
`determine measurements of the physiological parameter;
`[e] a network interface configured to communicate with a
`mobile phone;
`[f] a touch-screen display configured to provide a user
`interface,
`[g] wherein: the user interface is configured to
`display indicia responsive to the measurements of the
`physiological parameter, and
`the user
`[h] an orientation of
`configurable responsive to a user input;
`[i] a wall that surrounds at least the at least four detectors,
`wherein the wall operably connects to the substrate and the
`cover;
`[j] a storage device configured to at least temporarily store
`at least the measurements of the physiological parameter; and
`[k] a strap configured to position the physiological
`measurement device on the user.
`Ex. 1001, 44:63–45:29 (bracketed lettering [pre]–[k] added).
`
`interface
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`is
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`E. Applied References
`Petitioner relies upon the following references:
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`Sherman et al., U.S. Patent No. 4,941,236, filed July 6, 1989,
`issued July 17, 1990 (Ex. 1013, “Sherman”);
`Ali et al., U.S. Patent No. 6,584,336 B1, filed March 1, 2000,
`issued June 24, 2003 (Ex. 1019, “Ali”);
`Rantala et al., U.S. Patent No. 6,912,413 B2, filed September
`12, 2003, issued June 28, 2005 (Ex. 1022, “Rantala”);
`Ohsaki et al., U.S. Patent Application Publication No.
`2001/0056243 A1, filed May 11, 2001, published December 27, 2001
`(Ex. 1009, “Ohsaki”);
`Aizawa, U.S. Patent Application Publication No. 2002/0188210
`A1, filed May 23, 2002, published December 12, 2002 (Ex. 1006,
`“Aizawa”); and
`Goldsmith et al., U.S. Patent Application Publication No.
`2007/0093786 A1, filed July 31, 2006, published April 26, 2007
`(Ex. 1011, “Goldsmith”).
`Pet. 10.
`Petitioner also submits, inter alia, a Declaration of Dr. Thomas W.
`Kenny, Ph.D. (Ex. 1003) and a Second Declaration of Dr. Kenny (Ex. 1050).
`Patent Owner submits, inter alia, the Declaration of Dr. Vijay K. Madisetti
`(Ex. 2004). The parties also provide deposition testimony from Dr. Kenny
`and Dr. Madisetti, including from this proceeding and others. Exs. 1053–
`1056, 2006–2009, 2027.
`
`F. Asserted Grounds of Unpatentability
`We instituted an inter partes review based on the following grounds.
`Inst. Dec. 10–11, 42.
`Claim(s) Challenged
`1–10, 13–30
`11
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`References/Basis
`Aizawa, Ohsaki, Goldsmith
`Aizawa, Ohsaki, Goldsmith,
`Sherman
`
`35 U.S.C. §
`103
`103
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`Claim(s) Challenged
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`1–10, 13–30
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`35 U.S.C. §
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`103
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`References/Basis
`Aizawa, Ohsaki, Goldsmith,
`Rantala
`Aizawa, Ohsaki, Goldsmith,
`Ali
`Aizawa, Ohsaki, Goldsmith,
`Ali, Sherman
`Aizawa, Ohsaki, Goldsmith,
`Ali, Rantala
`II. DISCUSSION
`
`103
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`103
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`103
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`A. Claim Construction
`For petitions filed on or after November 13, 2018, a claim “shall be
`construed using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R.
`§ 42.100(b) (2020). Accordingly, we construe the claims according to the
`standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
`Based on our analysis of Petitioner’s challenges presented, we find that one
`claim term requires express construction.
`
`Petitioner raises the issue of the proper scope of the claim term
`“processor” from claim 1 to a person of ordinary skill in the art. Pet. 51.
`Petitioner submits “[t]he ’564 patent does not define ‘processor,’” but argues
`that a person of ordinary skill in the art would understand the term to mean
`“part of a computer system that operates on data,” consistent with the
`definition provided in Merriam-Webster’s Collegiate Dictionary.1 Id.;
`Ex. 1012, 5.
`
`
`1 Petitioner adds page numbers 1–6 to Exhibit 1012. We refer to the added
`page numbers when citing to Exhibit 1012 in this Decision.
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`In our Institution Decision, we observed that the claim language
`provides an understanding of the functions of the claimed one or more
`processers, which are “configured to:” “receive one or more signals” and
`“process the one or more signals to determine measurements of the
`physiological parameter.” Inst. Dec. 11–12 (quoting Ex. 1001, 45:6–12).
`We noted that “[t]he Specification describes several distinct processors, but
`it also describes a ‘signal processor’ as the device used for processing
`signals.” Id. at 12; see, e.g., Ex. 1001, 9:50–55, 14:36–42, 15:27–56, 33:36–
`47.
`
`Patent Owner does not object to our initial claim construction, and
`submits that claim terms should be given their ordinary and customary
`meaning, consistent with the Specification. PO Resp. 7.
`Based on the final record, we maintain our initial interpretation of the
`term “processor” as meaning “part of a computer system that operates on
`data.” See Ex. 1012, 5. This definition is consistent with the general
`operation of the signal processor in the ’564 patent, where the signal
`processor is described to include “processing logic that determines
`measurements . . . based on the signals received from the detectors.”
`Ex. 1001, 15:31–35; 15:35–39 (“signal processor 110 can be implemented
`using one or more microprocessors or subprocessors . . . digital signal
`processors, application specific integrated circuits (ASICs), field
`programmable gate arrays (FPGAs), combinations of the same”).
`Based on our analysis of the issues in dispute, we conclude that no
`further claim terms require express construction. Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir.
`2017).
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`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of
`nonobviousness.2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`When evaluating a combination of teachings, we must also “determine
`whether there was an apparent reason to combine the known elements in the
`fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of
`elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`In an inter partes review, the petitioner must show with particularity
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To
`prevail, Petitioner must support its challenge by a preponderance of the
`evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`
`2 The parties have not presented objective evidence of non-obviousness.
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`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`Petitioner identifies the appropriate level of skill in the art as that
`possessed by a person having “a Bachelor of Science degree in an academic
`discipline emphasizing the design of electrical, computer, or software
`technologies, in combination with training or at least one to two years of
`related work experience with capture and processing of data or information.”
`Pet. 8 (citing Ex. 1003 ¶¶ 21–22). “Additional education in a relevant field
`or industry experience may compensate for one of the other aspects of
`the . . . characteristics stated above.” Id.
`Patent Owner makes several observations regarding Petitioner’s
`identified level of skill in the art but, “[f]or this proceeding, [Patent Owner]
`nonetheless applies Petitioner’s asserted level of skill.” PO Resp. 7–8.
`We adopt Petitioner’s assessment as set forth above, which appears
`consistent with the level of skill reflected in the Specification and prior art.
`
`D. Obviousness over the Combined Teachings of
`Aizawa, Ohsaki, and Goldsmith
`Petitioner contends that claims 1–10 and 13–30 of the ’564 patent
`would have been obvious over the combined teachings of Aizawa, Ohsaki,
`and Goldsmith. Pet. 10–91; see also Pet. Reply 7–37. Patent Owner
`disagrees. PO Resp. 9–51; see also Sur-reply 1–27.
`Based on our review of the parties’ arguments and the cited evidence
`of record, we determine that Petitioner has met its burden of showing by a
`preponderance of the evidence that claims 1–10 and 13–30 are unpatentable.
`
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`1. Overview of Aizawa (Ex. 1006)
`Aizawa is a U.S. patent application publication titled “Pulse Wave
`Sensor and Pulse Rate Detector,” and discloses a pulse wave sensor that
`detects light output from a light emitting diode and reflected from a patient’s
`artery. Ex. 1006, codes (54), (57).
`Figure 1(a) of Aizawa is reproduced below.
`
`
`Figure 1(a) is a plan view of a pulse wave sensor. Id. ¶ 23. As shown in
`Figure 1(a), pulse wave sensor 2 includes light emitting diode (“LED”) 21,
`four photodetectors 22 symmetrically disposed around LED 21, and
`holder 23 for storing LED 21 and photodetectors 22. Id. Aizawa discloses
`that, “to further improve detection efficiency, . . . the number of the
`photodetectors 22 may be increased.” Id. ¶ 32, Fig. 4(a). “The same effect
`can be obtained when the number of photodetectors 22 is 1 and a plurality of
`light emitting diodes 21 are disposed around the photodetector 22.” Id. ¶ 33.
`
`Figure 1(b) of Aizawa is reproduced below.
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`Figure 1(b) is a sectional view of the pulse wave sensor. Id. ¶ 23. As shown
`in Figure 1(b), pulse wave sensor 2 includes drive detection circuit 24 for
`detecting a pulse wave by amplifying the outputs of photodetectors 22. Id.
`Arithmetic circuit 3 computes a pulse rate from the detected pulse wave and
`transmitter 4 transmits the pulse rate data to an “unshown display.” Id. The
`pulse rate detector further includes outer casing 5 for storing pulse wave
`sensor 2, acrylic transparent plate 6 mounted to detection face 23a of
`holder 23, and attachment belt 7. Id.
`Aizawa discloses that LED 21 and photodetectors 22 “are stored in
`cavities 23b and 23c formed in the detection face 23a” of the pulse wave
`sensor. Id. ¶ 24. Detection face 23a “is a contact side between the holder 23
`and a wrist 10, respectively, at positions where the light emitting face 21s of
`the light emitting diode 21 and the light receiving faces 22s of the
`photodetectors 22 are set back from the above detection face 23a.” Id.
`Aizawa discloses that “a subject carries the above pulse rate detector 1 on
`the inner side of his/her wrist 10 . . . in such a manner that the light emitting
`face 21s of the light emitting diode 21 faces down (on the wrist 10 side).”
`Id. ¶ 26. Furthermore, “the above belt 7 is fastened such that the acrylic
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`transparent plate 6 becomes close to the artery 11 of the wrist 10. Thereby,
`adhesion between the wrist 10 and the pulse rate detector 1 is improved.”
`Id. ¶¶ 26, 34.
`
`2. Overview of Ohsaki (Ex. 1009)
`Ohsaki is a U.S. patent application publication titled “Wristwatch-type
`Human Pulse Wave Sensor Attached on Back Side of User’s Wrist,” and
`discloses “an optical sensor for detecting [a] pulse wave of a human body.”
`Ex. 1009, code (54), ¶ 3. Figure 1 of Ohsaki is reproduced below.
`
`
`Figure 1 illustrates a cross-sectional view of pulse wave sensor 1 attached on
`the back side of user’s wrist 4. Id. ¶¶ 12, 16. Pulse wave sensor 1 includes
`detecting element 2 and sensor body 3. Id. ¶ 16.
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`Figure 2 of Ohsaki, reproduced below, illustrates further detail of
`
`detecting element 2.
`
`
`Figure 2 illustrates a mechanism for detecting a pulse wave. Id. ¶ 13.
`Detecting element 2 includes package 5, light emitting element 6, light
`receiving element 7, and translucent board 8. Id. ¶ 17. Light emitting
`element 6 and light receiving element 7 are arranged on circuit board 9
`inside package 5. Id. ¶¶ 17, 19.
`“[T]ranslucent board 8 is a glass board which is transparent to light,
`and attached to the opening of the package 5. A convex surface is formed
`on the top of the translucent board 8.” Id. ¶ 17. “[T]he convex surface of
`the translucent board 8 is in intimate contact with the surface of the user’s
`skin,” preventing detecting element 2 from slipping off the detecting
`position of the user’s wrist. Id. ¶ 25. By preventing the detecting element
`from moving, the convex surface suppresses “variation of the amount of the
`reflected light which is emitted from the light emitting element 6 and
`reaches the light receiving element 7 by being reflected by the surface of the
`user’s skin.” Id. Additionally, the convex surface prevents penetration by
`“noise such as disturbance light from the outside.” Id.
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`Sensor body 3 is connected to detecting element 2 by signal line 13.
`
`Id. ¶ 20. Signal line 13 connects detecting element 2 to drive circuit 11,
`microcomputer 12, and a monitor display (not shown). Id. Drive circuit 11
`drives light emitting element 6 to emit light toward wrist 4. Id. Detecting
`element 2 receives reflected light which is used by microcomputer 12 to
`calculate pulse rate. Id. “The monitor display shows the calculated pulse
`rate.” Id.
`
`3. Overview of Goldsmith (Ex. 1011)
`Goldsmith is a U.S. patent application publication titled “Watch
`Controller for a Medical Device,” and discloses a watch controller device
`that communicates with an infusion device to “provid[e] convenient
`monitoring and control of the infusion pump device.” Ex. 1011, codes (54),
`(57).
`
`Goldsmith’s Figure 9A and 9B are reproduced below.
`
`
`Figure 9A and Figure 9B are respective front and rear views of a combined
`watch and controller device. Id. ¶¶ 30–31. As shown in Figure 9A, watch
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`controller 900 includes housing 905, transparent member 950, display 910,
`input devices 925a–c, scroll wheel 930, and wrist band 940. Id. ¶¶ 85–86.
`Figure 9B shows rear-side cover 960, and a rear view of housing 905, scroll
`wheel 930, and wrist band 940. Id.
`Goldsmith discloses the watch controller may interact with one or
`more devices, such as infusion pumps or analyte monitors. Id. ¶ 85; see also
`id. ¶ 88 (“The analyte sensing device 1060 may be adapted to receive data
`from a sensor, such as a transcutaneous sensor.”). Display 910 “may display
`at least a portion of whatever information and/or graph is being displayed on
`the infusion device display or on the analyte monitor display,” such as, e.g.,
`levels of glucose. Id. ¶ 86. The display is customizable in a variety of
`configurations including user-customizable backgrounds, languages, sounds,
`font (including font size), and wall papers. Id. ¶¶ 102, 104. Additionally,
`the watch controller may communicate with a remote station, e.g., a
`computer, to allow data downloading. Id. ¶ 89 (including wireless). The
`remote station may also include a cellular telephone to be “used as a conduit
`for remote monitoring and programming.” Id.
`
`4. Independent Claim 1
`Petitioner contends that claim 1 would have been obvious over the
`combined teachings of Aizawa, Ohsaki, and Goldsmith. Pet. 10–63. Below,
`we set forth how the combination of prior art references teaches or suggests
`the claim limitations that are not disputed by the parties. For those
`limitations and reasons for combining the references that are disputed, we
`examine each of the parties’ contentions and then provide our analysis.
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`i. “[pre] A user-worn physiological measurement device
`
` comprising”
`
`The cited evidence supports Petitioner’s undisputed contention that
`Aizawa satisfies the subject matter of the preamble.3 Pet. 41–42; see, e.g.,
`Ex. 1006 ¶ 26, code (57) (“a subject carries the above pulse rate detector 1
`on the inner side of his/her wrist”), Fig. 2 (depicting a user wearing a pulse
`wave sensor on the inner side of his/her wrist); see also Ex. 1003 ¶ 98.4
`
`
`
`
`ii. “[a] one or more emitters configured to emit light into
`
` tissue of a user”
`
`The cited evidence supports Petitioner’s undisputed contention that
`Aizawa discloses an emitter, LED 21, that emits light into a user’s tissue.
`Pet. 42–43; see, e.g., Ex. 1006 ¶ 23 (“LED 21 . . . for emitting light having a
`wavelength of a near infrared range”), ¶ 27 (explaining that light is emitted
`toward the wrist), Fig. 1(b) (depicting LED 21 facing user wrist 10), Fig. 2
`(depicting a pulse wave sensor worn on a user’s wrist).
`
`iii. “[b] at least four detectors arranged on a substrate;”
`
`The cited evidence supports Petitioner’s undisputed contention that
`Aizawa discloses at least four detectors. Pet. 23–25, 44–46; see, e.g.,
`
`
`3 Whether the preamble is limiting need not be resolved because Petitioner
`shows sufficiently that the preamble’s subject matter is satisfied by the art.
`4 Petitioner further contends that the subject matter of the preamble is taught
`by the combination of Aizawa, Ohsaki, and Goldsmith. Pet. 41–42 (arguing
`that it would have been obvious to incorporate the pulse wave sensor of
`Aizawa (as modified by Ohsaki) into the wrist-worn watch controller device
`in Figures 9A and 9B of Goldsmith, to realize a user-worn physiological
`measurement device). Because Figure 2 of Aizawa teaches a user-worn
`physiological measurement device, further analysis of the combination of
`Aizawa, Ohsaki, and Goldsmith is not necessary for the preamble.
`20
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`Ex. 1006 ¶¶ 9, 23 (“four phototransistors 22”), Figs. 1(a)–1(b); Ex. 1003
`¶¶ 43–45, 64–67. Petitioner contends that pulse wave sensor depicted in
`Figure 1(a) of Aizawa, reproduced below, discloses four photodetectors 22.
`Pet. 44; see, e.g., Ex. 1006 ¶ 27 (“[F]our photodetectors 22 are disposed
`around the light emitting diode 21.”).
`
`
`Petitioner’s Annotated Figure 1(a) of Aizawa depicts four photodetectors 22,
`identified by blue arrows and blue shading.
`Relying on a cross-section view of Figure 1(b) of the pulse wave
`detector of Aizawa, Petitioner further contends photodetectors 22 are
`secured on a substrate illustrated in Petitioner’s annotated Figure 1(b).
`Pet. 24, 45. Petitioner’s annotated Figure 1(b) of Aizawa is reproduced
`below.
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`Annotated Figure 1(b) depicts a structure, identified by Petitioner with
`brown highlight and the added label “Substrate,” arranged in proximity to
`photodetectors 22. Pet. 45. Petitioner concedes that Aizawa “does not label
`or describe” a substrate, but contends a person of ordinary skill in the art
`(“POSITA”) would have understood that “Aizawa’s photodetectors are
`secured to the [physiological measure device] . . . through such a substrate”
`depicted in annotated Figure 1(b). Pet. 24. Dr. Thomas W. Kenny testifies
`that “[a] POSITA would have understood that the substrate provides
`physical support and electrical connectivity and is connected to the holder
`23.” Ex. 1003 ¶ 71; see also Pet. 24 (citing to testimony of Dr. Kenny). On
`the current record, Petitioner has sufficiently shown that the structure
`identified in annotated Figure 1(b) of Aizawa is a substrate, and that
`photodetectors 22 are arranged on the substrate.
`Petitioner further contends that if Aizawa is found not to disclose a
`substrate, then Ohsaki teaches this feature. Pet. 25. Similar to the device of
`Aizawa, Ohsaki teaches a pulse wave sensor comprising a light emitting
`22
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`element 6 (e.g., a LED) and a light receiving element (e.g., a photodetector).
`Ex. 1009 ¶ 17. “The light emitting element 6 and light receiving element 7
`are . . . arranged on the circuit board 9.” Id. Relying on the testimony of
`Dr. Kenny, Petitioner contends a POSITA would have modified the pulse
`wave sensor of Aizawa to include a substrate, such as circuit board 9 of
`Ohsaki, to secure the photodetectors of Aizawa and enable the detectors to
`send signals to other elements in the device. Pet. 25 (citing Ex. 1003 ¶¶ 72–
`73; Ex. 1006 ¶¶ 2–5, 8–16, 23, 27–29, 32–33, Figs. 1, 2, 3, 4(a); Ex. 1009
`¶ 17, Fig. 2).
`The cited evidence, including the unrebutted testimony of Dr. Kenny,
`sufficiently supports Petitioner’s stated reasoning.
`
`iv. “[c] a cover comprising a protruding convex surface,
`
`
` wherein the protruding convex surface extends over all of
`
`
` the at least four detectors arranged on the substrate,
`
`
` wherein at least a portion of the protruding convex surface
`
`
` is rigid”
`
`Petitioner’s Undisputed Contentions
`
`Petitioner contends that Aizawa discloses a cover, i.e., a “transparent
`plate positioned between the photodetectors and the wrist.” Pet. 12 (citing
`Ex. 1006 ¶ 34). Patent Owner does not dispute this contention, and we agree
`with Petitioner. Aizawa discloses that “acrylic transparent plate 6 is
`provided on the detection face 23a of the holder 23 to improve adhesion to
`the wrist 10.” Ex. 1006 ¶ 34, Fig. 1(b) (depicting transparent plate 6
`between sensor 2 and wrist 10).
`Petitioner also contends that Ohsaki teaches a wrist-worn sensor that
`includes a “translucent board” having a convex surface that contacts the
`user’s skin. Pet. 15, 21. Patent Owner does not dispute this contention, and
`
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`we agree with Petitioner. Ohsaki discloses that sensor 1 includes detecting
`element 2 and sensor body 3, and is “worn on the back side of the user’s
`wrist.” Ex. 1009 ¶ 16. Ohsaki discloses that detecting element 2 includes
`package 5 and “translucent board 8[,which] is a glass board which is
`transparent to light, and [is] attached to the opening of the package 5. A
`convex surface is formed on the top of the translucent board 8.” Id. ¶ 17.
`As seen in Ohsaki’s Figure 2, translucent board 8 has a single protruding
`convex surface, which is placed between a user’s tissue and a light receiving
`element (e.g., photodetector) 7 when t
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