Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 29
`Entered: May 5, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`COCKS, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 29
`Entered: May 5, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`COCKS, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–6, 8, 9, 11–19, and 21–30 of U.S. Patent No. 10,470,695
`B2 (Ex. 1001, “the ’695 patent”). Paper 2 (“Pet.”). We instituted the
`petitioned review. Paper 8 (“Institution Decision” or “Inst. Dec.”).
`Masimo Corporation (“Patent Owner”) filed a Patent Owner Response
`(Paper 13, “PO Resp.”) to oppose the Petition. Petitioner filed a Reply
`(Paper 18, “Pet. Reply”) to the Patent Owner Response. Patent Owner filed
`a Sur-reply (Paper 19, “PO Sur-reply”) to the Reply. We conducted an oral
`hearing on February 9, 2022. A transcript has been entered in the record
`(Paper 28, “Tr.”).1
`We have jurisdiction under 35 U.S.C. § 6(b)(4) and § 318(a). This
`Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R.
`§ 42.73 as to the patentability of claims 6, 14, and 21 of the ’695 patent. We
`determine Petitioner has shown by a preponderance of the evidence that
`those claims are unpatentable.
`
`
`1 In the Patent Owner Response, Patent Owner indicates that claims 1–5, 8,
`9, 11–13, 15–19, and 22–30 “have been statutorily disclaimed under 35
`U.S.C. § 253(a),” and are “no longer at issue in this proceeding.” PO
`Resp. 15 (citing Ex. 2004). At oral argument, Patent Owner again
`acknowledged that claims 1–5, 8, 9, 11–13, 15–19, and 22–30 have been
`disclaimed. Tr. 13. In its Reply, Petitioner also notes that those claims have
`been disclaimed “leaving claims 6, 14, and 21 as the only remaining
`challenged claims.” Pet. Reply 1 n.1 (citing Ex. 2004). Exhibit 2004 is
`titled “Disclaimer in Patent Under 37 CFR 1.321(a)” and indicates that
`claims 1–5, 8, 9, 11–13, 15–19, and 22–30 have been disclaimed. Ex. 2004,
`1. Accordingly, we regard claims 6, 14, and 21 as the only remaining
`challenged claims in this proceeding.
`
`2
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`B. Related Matters
`Patent Owner identifies the following matters related to the
`’695 patent:
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`(C.D. Cal.) (filed Jan. 9, 2020);
`Apple Inc. v. Masimo Corporation, IPR2020-01520 (PTAB
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,258,265 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01521 (PTAB
`Sept. 2, 2020) (challenging claims of U.S. Patent No. 10,292,628 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01523 (PTAB
`Aug. 31, 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 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, IPR2020-01713 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,624,564 B1);
`
`3
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`Apple Inc. v. Masimo Corporation, IPR2020-01714 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1 patent);
`Apple Inc. v. Masimo Corporation, IPR2020-01715 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1 patent);
`Apple Inc. v. Masimo Corporation, IPR2020-01716 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,702,194 patent);
`Apple Inc. v. Masimo Corporation, IPR2020-01723 (PTAB Oct. 2,
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);2
`Apple Inc. v. Masimo Corporation, IPR2020-01733 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,702,195 B1); and
`Apple Inc. v. Masimo Corporation, IPR2020-01737 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,709,366 B1).
`Paper 4, 2–3.
`Patent Owner also identifies the following pending patent applications
`that claim priority to, or share a priority claim with, the ’695 patent:
`
`U.S. Patent Application No. 15/195,199;
`
`U.S. Patent Application No. 16/532,061;
`U.S. Patent Application No. 16/532,065;
`U.S. Patent Application No. 16/791,955;
`U.S. Patent Application No. 16/791,963;
`U.S. Patent Application No. 16/835,712;
`
`
`
`
`
`
`2 Pursuant to the Board’s November 2019, Consolidated Trial Practice
`Guide, available at https://www.uspto.gov/TrialPracticeGuideConsolidated,
`Petitioner filed a Notice ranking its two petitions that challenge the
`’695 patent, ranking first the instant proceeding and ranking second
`IPR2020-01723. Paper 3, 2. We exercised our discretion to deny institution
`of inter partes review in IPR2020-01723. See IPR2020-01723, Paper 8.
`
`4
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`U.S. Patent Application No. 16/835,772; and
`U.S. Patent Application No. 16/871,874.
`
`
`Id. at 1–2.
`
`C. The ’695 Patent
`The ’695 patent is titled “Advanced Pulse Oximetry Sensor,” and
`issued on November 12, 2019, from U.S. Patent Application No.
`16/226,249, filed December 19, 2018. Ex. 1001, codes (21), (22), (45), (54).
`The ’695 patent summarizes its disclosure as follows:
`This disclosure describes embodiments of non-invasive
`methods, devices, and systems for measuring blood constituents,
`analytes, and/or substances such as, by way of non-limiting
`example, oxygen, carboxyhemoglobin, methemoglobin, total
`hemoglobin, glucose, proteins, lipids, a percentage therefor
`(e.g., saturation), pulse rate, perfusion index, oxygen content,
`total hemoglobin, Oxygen Reserve IndexTM (ORITM) or for
`measuring many other physiologically
`relevant patient
`characteristics. These characteristics can relate to, for example,
`pulse rate, hydration, trending information and analysis, and the
`like.
`Id. at 2:36–46.
`
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`Figures 7A and 7B of the ’695 patent are reproduced below:
`
`
`
`
`
`
`Figures 7A and 7B above depict side and top views, respectively, of a three-
`dimensional pulse oximetry sensor according to an embodiment of the
`’695 patent. Id. at 5:28–33. Sensor 700 includes emitter 702, light
`diffuser 704, light block (or blocker) 706, light concentrator 708, and
`detector 710. Id. at 10:49–51. The sensor functions to irradiate tissue
`measurement site 102, e.g., a patient’s wrist, and detects emitted light that is
`reflected by the tissue measurement site. Id. at 10:43–49. “[L]ight
`blocker 706 includes an annular ring having cover portion 707 sized and
`shaped to form a light isolation chamber for the light concentrator 708 and
`the detector 710.” Id. at 11:10–12. “[L]ight blocker 706 and cover 70[7]
`ensures that the only light detected by the detector 710 is light that is
`reflected from the tissue measurement site.” Id. at 11:16–20.
`
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`Figure 8 of the ’695 patent is reproduced below:
`
`
`
`Figure 8 above illustrates “a block diagram of an example pulse oximetry
`system capable of noninvasively measuring one or more blood analytes in a
`monitored patient.” Id. at 5:34–36. Pulse oximetry system 800 includes
`sensor 801 (or multiple sensors) coupled to physiological monitor 809. Id.
`at 12:21–23. Monitor 809 includes “signal processor 810 that includes
`processing logic that determines measurements for desired analytes based on
`the signals received from the detector 806” that is a part of sensor 801. Id. at
`13:37–40. Monitor 809 also includes user interface 812 that provides “an
`output, e.g., on a display, for presentation to a user of pulse oximetry system
`800.” Id. at 13:64–66.
`
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`D. Illustrative Claim
`Claim 6 is illustrative and is reproduced below.3
`1. A wrist-worn physiological monitoring device configured for
`placement on a user at a tissue measurement site, the device
`comprising:
`
`a light emission source comprising a plurality of emitters
`configured to irradiate the tissue measurement site by emitting
`light
`towards
`the
`tissue measurement site,
`the
`tissue
`measurement site being located on a wrist of the user,
`the plurality of emitters configured to emit one or more
`wavelengths;
`a plurality of detectors configured to detect the light
`emitted by the plurality of emitters after attenuation by a circular
`portion of the tissue measurement site,
`the plurality of detectors further configured to output at
`least one signal responsive to the detected light;
`a processor configured to receive the at least one signal
`responsive to the output and determine a physiological parameter
`of the user; and
`a light block forming an enclosing wall between the light
`emission source and the plurality of detectors,
`the light block defining the circular portion of the tissue
`measurement site, the light emission source arranged proximate
`a first side of the enclosing wall and the plurality of detectors
`arranged proximate a second side of the enclosing wall, the first
`side being difference than the second side,
`wherein the enclosing wall prevents at least a portion of
`light emitted from the light emission source from being detected
`by the plurality of detectors without attenuation by the tissue, and
`wherein the plurality of detectors are arranged in an array having
`a spatial configuration corresponding to the circular portion of
`the tissue measurement site.
`Ex. 1001, 15:32–63.
`
`
`3 Because claim 6 depends from independent claim 1, we also reproduce
`disclaimed claim 1 for completeness.
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`6. The physiological monitoring device of claim 1, further
`comprising a diffuser which receives, spreads, and emits the
`spread light, wherein the emitted spread light is directed at the
`tissue measurement site.
`Id. at 16:16–19.4
`
`E. Evidence Relied Upon
`Petitioner relies on the following references:
`Reference
`Publication/Patent Number
`Sarantos
`U.S. Patent No. 9,392,946 B1 issued July 19,
`2016
`Mendelson et al., Skin Reflectance Pulse
`Oximetry: In Vivo Measurements from the
`Forearm and Calf, Journal of Clinical
`Monitoring Vol. 7 No. 1, pp. 7–12 (January
`1991)
`U.S. Patent No. 6,343,223 B1 issued Jan. 29,
`2002
`WO 2011/051888 A2 published May 5, 2011
`
`Mendelson-
`1991
`
`Chin
`
`Exhibit
`1014
`
`1015
`
`1006
`
`1016
`
`Ackermans
`
`
`Pet. 3–4. Petitioner also relies on the Declaration of Brian W. Anthony,
`Ph.D. (Ex. 1003). Patent Owner relies on the Declaration of Vijay K.
`Madisetti, Ph.D. (Ex. 2001).
`
`
`
`4 Claim 14 (which depends from independent claim 9) and claim 21 (which
`depends from independent claim 19) add a similar “diffuser” limitation as is
`set forth in claim 6.
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`F. Asserted Grounds
`Petitioner asserts that claims 6, 14, and 21 are unpatentable based
`upon the following grounds (Pet. 3):5
`Claims Challenged
`35 U.S.C. §
`6, 14, 21
`103
`6, 14, 21
`103
`
`References/Basis
`Sarantos, Mendelson-1991,
`Chin
`Ackermans, Chin
`
`II. ANALYSIS
`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) (2019). Both parties submit that no claim term requires express
`construction. Pet. 5; PO Resp. 14. Based on our analysis of the issues, we
`conclude that no claim terms require express construction. Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017).
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`
`5 As noted by both parties, because of Patent Owner’s statutory disclaimer,
`these are the only claims and grounds that remain at issue in this proceeding.
`See PO Resp. 16; see generally Pet. Reply, PO Sur-reply.
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`(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 non-
`obviousness.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
`evaluating a combination of teachings, we must also “determine whether
`there was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior art
`elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`In an inter partes review, the petitioner must show with particularity
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`Petitioner identifies the appropriate level of skill in the art as follows:
`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
`technologies.
`.
`.
`.
`
`
`6 Patent Owner does not present objective evidence of non-obviousness.
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`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.
`Pet. 4–5 (citing Ex. 1003 ¶¶ 17–19).
`Patent Owner does not offer its own assessment of the level of
`ordinary skill. Patent Owner, however, does level a measure of criticism of
`Petitioner’s assessment of the level of skill in the art as not accounting for
`experience in optics or physiology, and focusing on “data processing and not
`sensor design.” PO Resp. 13. Nevertheless, Patent Owner expresses that it
`“applies [Petitioner’s] asserted level of skill.” Id. (citing Ex. 2001 ¶¶ 34–
`36). We determine that the Petitioner’s expressed level of ordinary skill in
`the art is consistent with the ’695 patent and the prior art of record.
`Accordingly, we adopt it in this Decision.
`
`D. Obviousness Over Sarantos, Mendelson-1991, and Chin
`Petitioner contends that claims 6, 14, and 21 would have been obvious
`based on the teachings of Sarantos, Mendelson-1991, and Chin. Pet. 61–63.
`Patent Owner disagrees and presents several arguments in opposition. PO
`Resp. 16–42; PO Sur-reply 2–13.
`
`1. Overview of Sarantos
`Sarantos is titled “Heart Rate Sensor With High-Aspect-Ratio
`Photodetector Element.” Ex. 1014, code (54). Sarantos describes
`“[photoplethysmographic (PPG)] sensors designed for use with wearable
`biometric monitoring devices” and which measure “physiological
`parameters” of a wearer such as “heart rate” and “blood oxygenation levels.”
`Id. at 6:66–7:3, 13:39–47.
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`Sarantos’s Figure 2 is reproduced on
`the right. Figure 2 illustrates “a wristband-
`type wearable fitness monitor that
`incorporates a PPG sensor[.]” Id. at 5:55–56.
`Fitness monitor 200 includes housing 104,
`back face 128 and light sources 108. Id. at
`7:12–23. “PPG sensors operate by shining
`light into a person’s skin. This light diffuses
`through the person’s flesh and a portion of
`this light is then emitted back out of the
`person’s skin in close proximity to where the
`light was introduced into the flesh.” Id. at
`7:24–28.
`
`Sarantos’s Figure 18 is reproduced below.
`
`
`Figure 18 above illustrates an example of a PPG sensor photodetector layout
`with multiple light-emitting devices. Id. at 6:39–42. Photodetector
`elements 1812 are characterized as being in a “circular array” centered on
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`light source 1808, which includes two light-emitting devices 1810. Id. at
`14:60–62; 15:24–43. Sarantos describes that the PPG sensor
`may also include control logic, which may be communicatively
`connected with the light source and each photodetector element
`and configured to cause the light source to emit light, obtain one
`or more measured light intensity measurements from the one or
`more photodetector elements, and determine a heart rate
`measurement based, at least in part, on the one or more light
`intensity measurements.
`Id. at 2:5–12.
`Sarantos’s Figure 22 is reproduced below:
`
`Figure 22 above depicts another example configuration of a PPG sensor
`according to Sarantos’s invention. Id. at 6:52–54. Substrate 2272 supports
`two high-aspect-ratio (HAR) photodetector elements 2212 positioned on
`either side of light source 2208. Id. at 17:1–3. Window 2278 is offset from
`substrate 2272. Id. at 17:3–4. Sarantos explains the following:
`
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`The window 2278 may be held against a person’s skin e.g., by
`being held in place with a strap, when heart rate measurements
`are obtained to allow light from the light source 2208 to shine
`through its associated window region 2226 and into the person’s
`skin, where the light then diffuses into the surrounding flesh and
`is then emitted back out of the person’s skin and into the HAR
`photodetector elements 2212 through the respective window
`regions 2226 associated with the HAR photodetector elements
`2212.
`Id. at 17:16–25.
`
`Sarantos additionally explains the following:
`In order to reduce the chance that light from the light
`source 2208 will reach either of the HAR photodetector elements
`2212 without first being diffused through the person’s skin, the
`light source 2208 may be separated from the HAR photodetector
`elements 2212 within the PPG sensor by walls 2274, which may
`extend to the window 2278 or may stop short of the window
`2278.
`Id. at 17:26–32.
`
`2. Overview of Mendelson-1991
`Mendelson-1991 is an article from the Journal of Clinical Monitoring
`titled “Skin Reflectance Pulse Oximetry: In Vivo Measurements from the
`Forearm and Calf.” Ex. 1015, 1. The article “describe[s] preliminary in
`vivo evaluation of a new optical reflectance sensor for noninvasive
`monitoring of SaO2 with a modified commercial transmittance pulse
`oximeter.” Id. at 2.
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`Mendelson-1991’s Figures 1A and 1B are reproduced below:
`
`
`The figures above illustrate “(A) Frontal and (B) side views of the heated
`skin reflectance pulse oximeter sensor.” Id. The figures show a pulse
`oximeter sensor that includes, among other things, multiple “photodiodes,”
`“light-emitting diodes (LEDs),” and an “optical shield.” Id.
`
`3. Overview of Chin
`Chin is titled “Oximeter Sensor with Offset Emitters and Detector and
`Heating Device.” Ex. 1006, code (54). Chin’s Figures 7A and 7B are
`reproduced below:
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`Figures 7A and 7B “are side and top views of a nostril sensor according to
`the invention.” Id. at 3:64–65. Chin describes that pads 172 and 174
`include emitter 176 and detector 178, respectively. Id. at 8:20–25. Chin
`also explains that the sensor may include “optical diffuser 180 for diffusing
`the light from emitter 176, which causes a further spreading or mixing of
`light and may enhance the amount of tissue penetrated in some instances.”
`Id. at 8:25–28. Chin additionally explains generally that a diffusing optic
`causes light emitted from an emitter “to pass through more tissue, and thus
`more blood.” Id. at 2:4–7.
`Chin further describes that “[t]he sensor could be any type of sensor,
`such as a durable sensor or a disposable sensor” and “could attach to any
`body part, such as the earlobe, finger, etc.” Id. at 5:54–56. Chin
`additionally describes that its sensor “could be a reflectance or a
`transmittance sensor.” Id. at 5:56–57.
`
`4. Discussion
`Petitioner provides a detailed assessment as to where all of the
`limitations required by claims 6, 14, and 21 are found in Sarantos,
`Mendelson-1991, and Chin. Pet. 7–25, 63. Specifically, Petitioner
`expresses that all features of claims 6, 14, and 21, with the exception of a
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`diffuser, are found in Sarantos and Mendelson-1991. Petitioner points to
`Chin as disclosing a diffuser. Petitioner also explains that a person of
`ordinary skill in the art would have had adequate reason to combine the
`teachings of Sarantos, Mendelson-1991, and Chin. Id. at 36–38, 63.
`Patent Owner does not dispute that all the features of claims 6, 14, and
`21 are found in the cited prior art references, but Patent Owner does disagree
`that Petitioner has established adequate reasoning to combine those
`references’ teachings. PO Resp. 16–33; PO Sur-reply 8–13. A core basis of
`that disagreement is said to arise from purported differences between “thick
`tissue” and “thin tissue” of a user’s skin, and that such differences preclude
`combination of sensors that are intended to be applied to those different
`tissue types. See, e.g., PO Resp. 16–20; PO Sur-reply 9–10.7 As a result of
`that alleged tissue thickness dichotomy, according to Patent Owner, a person
`of ordinary skill in the art would not have combined aspects of a sensor, e.g.,
`a diffuser, used for “thin tissue” as in Chin, with sensors intended for use on
`a wrist, e.g., the sensors of Sarantos and Mendelson-1991. PO Resp. 21–33;
`PO Sur-reply 7–13. We have considered all of Patent Owner’s arguments,
`but for the following reasons find them unavailing.
`At the outset, we observe that Patent Owner’s attempt to establish a
`distinction between sensors or devices applied to alleged “thin” tissue as
`opposed to “thick” tissue draws little, if any, support from the prior art
`evidence of this proceeding. Patent Owner attempts to discount Chin’s
`
`
`7 We understand that, in Patent Owner’s view, “thin tissue” is present at such
`sites as a user’s nostrils and earlobes, whereas “thick tissue” is present, for
`instance, at a user’s wrist. See, e.g., PO Sur-reply 2 (“thin tissue
`measurement sites (e.g., ear lobe or nostril)”); id. at 10 (“thicker tissue sites
`like the wrist”).
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`teachings as being limited to “sensors worn at thin tissue measurement
`sites.” PO Resp. 17 (citing Ex. 1006, 1:14–21, 8:21–29). Yet, we do not
`discern that Patent Owner points to any disclosure in Chin that limits its
`teachings to any particular tissue sites, let alone only sites regarded as
`“thin.” Indeed, Chin does not describe any tissue site to which its sensor is
`applied as being “thin.” Furthermore, the portions of Chin on which Patent
`Owner relies simply describe a general background of oximeter sensors (Ex.
`1006, 1:41–21) and the sensor configuration of one particular embodiment
`(id. at 8:21–29). While Chin characterizes that particular embodiment as
`directed to a “nostril sensor” (id. at 8:20–21), there is no disclosure
`purporting to restrict Chin’s teachings to use with only a user’s nostril.
`We share Petitioner’s view that Patent Owner provides inadequate
`evidentiary support to make out a case that there is a dichotomy as between
`“thin tissue” and “thick tissue” pulse oximeters such that they represent
`distinct classes of sensors whose various aspects and features are
`uncombinable. Pet. Reply 3–4. We agree with Petitioner that Patent
`Owner’s reliance only on the uncorroborated testimony of Dr. Madisetti is
`inadequate to establish the proposed dichotomy. Id. at 4 (citing PO Resp.
`16–20; Ex. 2001 ¶¶ 52–56). Dr. Madisetti points to no adequate evidence or
`basis to support his conclusions on the matter. We also take note, as does
`Petitioner (Pet. Reply 5 n.4), that neither Patent Owner nor Dr. Madisetti
`provides adequate explanation as to how “thick” or “thin” tissues sites are
`even defined.
`Moreover, in our view, Patent Owner neglects to consider the full
`extent of Chin’s teachings. Although Chin associates its embodiment shown
`in Figures 7A and 7B with a “nostril sensor,” Chin’s teachings are not
`
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`limited strictly to a nostril sensor as the reference unambiguously provides
`that its sensor can attach “to any body part,” and lists, by way of examples,
`“the earlobe, finger, etc.” Ex. 1006, 5:55–56. Although, Patent Owner
`attempts to discount that disclosure as somehow being limited only to the
`specific “wiring arrangement” shown in Chin’s Figure 2 (see, e.g., PO Sur-
`reply 4–5), that attempt is ill explained and is not consistent with Chin’s
`plain disclosure that its sensor “could be any type of sensor” and is
`“attach[ed] to any body part.” Ex. 1006, 5:55–56. Patent Owner also
`admonishes Petitioner for offering “no context” for that disclosure (PO Sur-
`reply 1), but Chin, itself, provides the context in setting forth that its sensor
`is not limited to use with any particular body part. There can be no credible
`argument that a skilled artisan would not readily regard Chin’s teachings as
`extending beyond simply a sensor that is used for a nostril.
`We also find unavailing Patent Owner’s arguments that one of
`ordinary skill in the art would somehow regard Chin’s teaching of a diffuser
`as being limited either solely to use with a nostril sensor (see, e.g.,
`Tr. 23:13–17),8 or only such measurement sites as an “earlobe or nostril”
`(see PO Sur-reply 2). Chin explains generally that use of a diffuser is
`understood to be beneficial in causing light “to pass through more tissue, and
`thus more blood.” Ex. 1006, 2:4–7. Chin describes that benefit more
`particularly in the context of the nostril sensor shown in the embodiment of
`
`
`8 “[JUDGE]: Yes. Okay. So I’ve heard what you said but I have a couple of
`clarifying questions. So are you suggesting that Chin’s teachings are limited
`to applying a diffuser to a nostril sensor? It sounds like you have been and I
`just wanted to verify.
`[COUNSEL]: I definitely am, yes.”
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`Figures 7A and 7B (id. at 8:25–29),9 but there is nothing that suggests that
`Chin limits the benefits of a diffuser to one particular tissue type (e.g.,
`nostril tissue). We find persuasive Petitioner’s view, and the supporting
`testimony of Dr. Anthony, that a skilled artisan would have recognized from
`Chin’s disclosure that the light spreading benefits of a diffuser provide for a
`“stronger reflected signal” that facilitates determining measured
`physiological parameters. Pet. 63 (citing Ex. 1006, 2:4–7, 8:25–29, 9:64–
`10:7; Ex. 1003 ¶ 99). Patent Owner simply provides no cogent basis to
`conclude that Chin’s diffuser would not function predictably as is disclosed,
`i.e., spreading light so that it passes through more tissue and blood, when
`used in conjunction with other types of sensor devices, such as those of
`Santos and Mendelson-1991. See KSR, 550 U.S. 398 at 416 (“The
`combination of familiar elements according to known methods is likely to be
`obvious when it does no more than yield predictable results.”)
`We additionally find unavailing Patent Owner’s general argument that
`a skilled artisan would not have had a reasonable expectation of success in
`applying a diffuser used in one type of oximeter sensor, such as that in Chin,
`to other types of oximeter sensors, such as those of Sarantos and Mendelson-
`1991. See, e.g., PO Resp. 24–25. We do not agree that “Chin fails to
`disclose any specific way of implement[ing]” its diffuser into a sensor. See
`id. at 24. It clearly does. Chin shows, at least in Figure 7B, a diffuser
`associated with a nostril sensor. Chin also does not limit its teachings as to a
`diffuser to any one particular type of sensor, e.g., a nostril sensor. We are
`
`
`9 “Also shown is an optional optical diffuser 180 for diffusing the light from
`emitter 176, which causes a further spreading or mixing of light and may
`enhance the amount of tissue penetrated in some instances.” Ex. 1006,
`8:25–29.
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`not satisfied by Patent Owner’s arguments that some structural and
`operational differences between the sensors of Sarantos and Mendelson-
`1991 as compared with that of Chin means that a skilled artisan would not
`have expected success in combining those teachings. See id. at 24; see also
`id. at 25–29 (discussing differences between wrist-worn sensors and nostril
`sensors). A person of ordinary skill in the art is a person of ordinary
`creativity. See KSR, 550 U.S. at 421. It follows readily that a person of
`ordinary skill and creativity reasonably would have understood how to
`implement such diffusers in other types of heart rate or pulse oximeter
`sensors, such as those of Sarantos and Mendelson-1991, in structural
`configurations necessary to harness the recognized benefits of such
`diffusers. We credit Dr. Anthony’s testimony to that effect. See, e.g.,
`Ex. 1003 ¶¶ 96–101.
`Patent Owner’s and Dr. Madisetti’s opposing views are rooted only in
`speculation that a skilled artisan would not have appreciated the benefits of a
`diffuser in other sensors beyond Chin’s nostril sensor, which are intended
`for application to different body parts. See, e.g., PO Resp. 25–29; Ex. 2001
`¶¶ 69–71. Patent Owner and Dr. Madisetti also seemingly attempt to draw
`distinctions between a wrist-worn “reflectance-type sensor” and a
`“transmittance-type sensor” for a nostril in connection with use of a diffuser.
`See PO Resp. 25–29; Ex. 2001 ¶¶ 69–71. Yet, those views overly focus on
`the specific configurations of single embodiments of each of the pertinent
`references and do not reflect an appropriate obviousness analysis that takes
`into account the inferences and creatives steps that a skilled artisan would
`employ. See KSR, 550 U.S. at 421 (“[T]he [obviousness] analysis need not
`seek out precise teachings directed to the specific subject matter of the
`
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`challenged claim, for a court can take account of the inferences and creative
`steps that a person of ordinary skill in the art would employ.”). Specifically,
`those views do not account adequately for Chin’s plain disclosure
`recognizing the general benefits of a diffuser and that its sensor may be
`attached “to any body part” in the form of either a “reflectance or a
`transmittance sensor.” See Ex. 1003, 2:4–7, 5:54–57. From at least that
`disclosure, a person of ordinary skill and creativity reasonably would have
`recognized that Chin contemplates various sensor types and that th
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