Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 8
`Entered: May 12, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 8
`Entered: May 12, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2020-01722
`Patent 10,470,695 B2
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`
`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 (“challenged claims”) of U.S.
`Patent No. 10,470,695 B2 (Ex. 1001, “the ’695 patent”). Paper 2 (“Pet.”).
`Masimo Corporation (“Patent Owner”) waived filing a preliminary response.
`Paper 7 (“PO waiver”).
`We have authority to determine whether to institute an inter partes
`review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review
`may not be instituted unless it is determined that “the information presented
`in the petition filed under section 311 and any response filed under section
`313 shows that there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes
`the trial on behalf of the Director.”).
`For the reasons provided below and based on the record before us, we
`determine that Petitioner has demonstrated a reasonable likelihood that
`Petitioner would prevail in showing the unpatentability of at least one of the
`challenged claims. Accordingly, we institute an inter partes review on all
`grounds set forth in the Petition.
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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);
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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);1
`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;
`
`
`
`
`
`
`1 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 exercise our discretion to deny institution
`of inter partes review in IPR2020-01723. See IPR2020-01723, Paper 8.
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`U.S. Patent Application No. 16/835,772;
`U.S. Patent Application No. 16/791,955; 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. “Light
`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 measurement 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
`Of the challenged claims, claims 1, 9, and 19 are independent.
`Claim 1 is illustrative and is reproduced below.
`1. A wrist-worn physiological monitoring device configured for
`placement on a user at a tissue measurement site, the device
`comprising:
`
`[a] 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,
`[b] the plurality of emitters configured to emit one or more
`wavelengths;
`[c] 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,
`[d] the plurality of detectors further configured to output
`at least one signal responsive to the detected light;
`[e] a processor configured to receive the at least one signal
`responsive to the output and determine a physiological parameter
`of the user; and
`[f] a light block forming an enclosing wall between the
`light emission source and the plurality of detectors,
`[g] 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,
`[h] 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, 11:32–63 (bracketed identifiers a–h added).
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`Mendelson-
`1991
`
`Chin
`
`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)
`Venkatraman U.S. Patent No. 8,998,815 B2 issued Apr. 7,
`2015
`U.S. Patent No. 6,343,223 B1 issued Jan. 29,
`2002
`WO 2011/051888 A2 published May 5, 2011
`
`Exhibit
`1014
`
`1015
`
`1005
`
`1006
`
`1016
`
`Ackermans
`
`
`Pet. 3. Petitioner also relies on the Declaration of Brian W. Anthony, Ph.D.
`(Ex. 1003).
`
`F. Asserted Grounds
`Petitioner asserts that claims 1–6, 8, 9, 11–19, and 21–30 are
`unpatentable based upon the following grounds (Pet. 3):
`Claims Challenged
`35 U.S.C. §
`References/Basis
`1, 4, 5, 8, 9, 13, 15–
`103
`Sarantos
`19, 24–30
`1, 2, 4, 5, 8, 9, 11, 13,
`15–19, 22, 24–30
`3, 12, 23
`
`103
`
`103
`
`Sarantos, Mendelson-1991
`Sarantos, Mendelson-1991,
`Venkatraman
`Sarantos, Mendelson-1991,
`Chin
`Ackermans
`
`Ackermans, Venkatraman
`
`6, 14, 21
`1, 4, 5, 8, 9, 13, 15–
`17, 1924–26, 28, 29
`2, 3, 11, 12, 18, 22,
`23, 27, 30
`
`103
`
`103
`
`103
`
`9
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`Claims Challenged
`6, 14, 21
`
`References/Basis
`35 U.S.C. §
`Ackermans, Chin
`103
`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). Petitioner submits that no claim term requires express
`construction. Pet. 5. Based on our analysis of the issues in dispute at this
`stage of the proceeding, we conclude that no further claim terms require
`express construction at this time. 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
`(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.2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
`
`
`2 Patent Owner does not present objective evidence of non-obviousness at
`this stage.
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`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. 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).
`For purposes of this Decision, we generally adopt Petitioner’s
`assessment as set forth above, which appears consistent with the level of
`skill reflected in the Specification and prior art.
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`D. Obviousness Over Sarantos
`Petitioner presents undisputed contention that claims 1, 4, 5, 8, 9, 13,
`15–19, and 24–30 would have been obvious based on Sarantos’s teachings.
`Pet. 6–35.
`
`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.
`Santos’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.
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`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
`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 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.
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`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 6:53–55. 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:
`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 226 associated with the HAR photodetector elements
`2212.
`Id. at 17:16–25.
`
`Santos 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
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`extend to the window 2278 or may stop short of the window
`2278.
`Id. at 17:26–32.
`2. Independent claim 1
`
`i.
`
` A wrist-worn physiological monitoring device configured
`for placement on a user at a tissue measurement site, the
`device comprising:
`As noted above, Sarantos discloses a “wrist-band type fitness
`monitor” with a PPG sensor that measures light emitted from a person’s
`skin. See, e.g., Ex. 1014, 5:55–56; 7:12–28; Fig. 2. On this record, the cited
`evidence supports Petitioner’s undisputed contention that Sarantos discloses
`a wrist-worn physiological monitoring device that is configured for
`placement on a user at a tissue measurement site.3 Pet. 7–8.
`
`ii.
`
`[a] a light emissions source comprising a plurality of
`emitters configured to irradiate the tissue measurement site
`by emitting light towards the tissue measurement site,
`Sarantos discloses multiple examples of light sources that are intended
`to emit light towards a person’s skin. See, e.g., Ex. 1014, elements 108,
`1812, 2208. On this record, the cited evidence supports Petitioner’s
`undisputed contentions that limitation 1[a] is disclosed by Sarantos. Pet. 8–
`10.
`
`
`3 Whether the preamble is limiting need not be resolved at this stage of the
`proceeding because Petitioner shows sufficiently for purposes of institution
`that the recitation in the preamble is satisfied by the prior art.
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`iii.
`
`[b] the plurality of emitters configured to emit one or more
`wavelengths;
`Sarantos describes that its light sources can be formed as “separate
`light-emitting devices that are each able to emit different wavelengths of
`light” and that “each light emitting device may be used to supply light for a
`different type of photoplethysmographic measurement.” Ex. 1014, 13:50–
`53. At this time, the cited evidence supports Petitioner’s undisputed
`contentions that limitation 1[b] is disclosed by Sarantos. Pet. 10–11.
`
`iv.
`
`[c] 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;
`Sarantos discloses that its PPG sensor includes multiple detectors,
`e.g., detectors 1812, configured in a “circular array.” Ex. 1014, 14:60–62;
`15:24–43; Fig. 18. Pointing to the combined teachings of multiple
`embodiments of Sarantos, e.g., Figs. 18, 22–24, Petitioner contends that a
`“[person of ordinary skill in the art] would have understood or at least found
`it obvious that the light blocking walls 2274, 2374, 2474 are configured in a
`circular manner around the light source 2208, 2308, 2408.” Pet. 14–15.
`
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`Petitioner provides a modified and annotated version (reproduced
`below) of Sarantos’s Figure 18 that Petitioner submits is what a skilled
`artisan would glean from Sarantos’s teachings.
`
`
`
`According to Petitioner, “the modified FIG. 18 [above] shows a top view of
`how the light blocking/enclosing walls 2274, 2374, 2474 are configured
`based on Sarantos’ disclosure.” Pet. 15. Petitioner further argues that “a
`[person of ordinary skill in the art] would have understood that the
`light/blocking wall 2274, 2374, 2474 guides the light emitted by light source
`2208, 2308, 2408 to the tissue measurement site” and that the measurement
`site is “circular.” Id. at 15–16. On this record, we are satisfied that the cited
`evidence supports Petitioner’s undisputed contentions that limitation 1[c] is
`present in Sarantos. Pet. 11–18
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`v.
`
`[d] the plurality of detectors further configured to output at
`least one signal responsive to the detected light;
`Sarantos discloses that “light emanating from the person’s skin is then
`measured by a photodetector element; this measured light intensity is
`depicted as data trace 348. The date trace 348 may be split into a DC
`component 346, which does not fluctuate with time, and an AC component
`344, which does fluctuate with time.” Ex. 1014, 8:3–18. Petitioner contends
`that “[a person of ordinary skill in the art] would have understood that this
`data trace would be generated based on signals from Sarantos’ elements
`representative of the intensity of the detect light.” Pet. 19 (citing Ex., 1014,
`9:8–14; Ex. 1003 ¶ 46). On this record, the cited evidence supports
`Petitioner’s undisputed contentions that limitation 1[d] is disclosed by
`Sarantos. Pet. 18–21.
`
`vi.
`
`[e] a processor configured to receive the at least one signal
`responsive to the output and determine a physiological
`parameter of the user; and
`Petitioner points to Sarantos’s disclosure pertaining to processor 2768
`and control logic 2706 and contends that the processor “is configured to
`receive data collected by photodetectors to determine a physiological
`parameter such as the person’s heart rate.” Pet. 21 (citing Ex. 1014, 20:7–-
`23; Ex. 1003 ¶ 48). On this record, we are satisfied by Petitioner’s
`undisputed contentions that the processor feature of imitation 1[e] is met by
`Sarantos.
`
`vii.
`
`[f] light block forming an enclosing wall between the light
`emission source and the plurality of detectors,
`
`[g] the light block defining the circular portion of the tissue
`measurement site, the light emissions source arranged
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`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,
`
`[h] 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.
`As discussed above in conjunction with limitation 1[c], Petitioner
`contends that a skilled artisan would have understood from the combined
`teachings of embodiments of Sarantos’s invention appearing, for instance, in
`Figures 15, 18 and 22–24 that a light blocking wall may be arranged
`between a circular array of photodetectors. Petitioner reasons that “this
`circular array of detectors has a spatial configuration corresponding to the
`Sarantos’ light blocking/enclosing wall 2274, 2374, which protects light
`from the emitters from reaching the photodetectors directly. Pet. 24 (citing
`Ex. 1014, Figs. 15, 18, 22–24, 14:54–15:45, 17:1–18:35. Petitioner also
`contends that “the photodetectors in Sarantos are arranged in an array having
`a spatial configuration corresponding to the circular portion of the tissue
`measurement site.” Id. at 25 (citing Ex. 1003 ¶ 52).
`At this time, the cited evidence supports Petitioner’s undisputed
`contention that the light block and its arrangement as set forth in
`limitations 1[f–h] are satisfied based on Sarantos’s teachings.
`
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`Summary
`viii.
`For the foregoing reasons, we are persuaded that Petitioner’s cited
`evidence and reasoning demonstrates a reasonable likelihood that Petitioner
`would prevail in its contentions that claim 1 is unpatentable over Sarantos.
`
`3. Claims 4, 5, 8, 9, 13, 15–19, and 24–30
`Claim 9 is an independent method claim that corresponds to the
`claim 1. Independent claim 19 is similar in scope to claim 1. Claims 4, 5, 8,
`13, 15–18, and 24–30 ultimately depend from one of claims 1, 9, and 19.
`We have considered Petitioner’s assessment, and supporting record
`evidence, in accounting for claims 4, 5, 8, 9, 13, 15–19, and 24–30. See
`Pet. 25–35. On this record, we conclude that Petitioner has also shown a
`reasonable likelihood of success in its challenges to those claims based on
`Sarantos.
`
`E. Obviousness Over Sarantos and Mendelson-1991
`Petitioner also contends that claims 1, 2, 4, 5, 8, 9, 11, 13, 15–19, 22,
`24–30 are unpatentable based on the combined teachings of Sarantos and
`Mendelson-1991. Pet. 35–55.
`
`1. 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 illustrates “(A) Frontal and (B) side view 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.
`
`2. Discussion
`As discussed above, on the current record we conclude that Petitioner
`has established a reasonable likelihood of success in its challenge to
`claims 1, 4, 5, 8, 9, 13, 15–19, and 24–30 are unpatentable over Sarantos
`
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`taken alone. In urging the unpatentability of claims 1, 2, 4, 5, 8, 9, 11, 13,
`15–19, 22, 24–30 based on Sarantos and Mendelson-1991, Petitioner relies
`on Mendelson-1991’s teachings . Specifically on the teachings related to its
`optical shield to bolster the position that a skilled artisan would have
`appreciated that a light blocking wall may be configured in a circular
`arrangement between a circular array of detectors and light emitters to
`“ensure that only light that has been attenuated from the tissue measurement
`site is detected and not light directly emitted from the emitters.” See, e.g.,
`Pet. 36–37 (citing, for instance, Ex. 1015, 2 Figs. 1(A), 1(B); Ex. 1003 ¶¶
`65–66). Petitioner provides a colorized and annotated version of
`Mendelson-1991’s Figures 1(A) and 1(B), which we reproduce below:
`
`Figures 1(A) and 1(B) above highlight Mendelson-1991’s
`
`configuration of its optical shield in relation to its photodiodes. Petitioner
`argues that “Sarantos and Mendelson-1991 are related to obtaining
`physiological parameters using a reflection system in which 1) a light
`shield/block layer is located between the emitters and detectors, and
`
`
`
`22
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`2) emitters emit radiation that is reflected from the human tissue and
`detected by detectors in a reflection measurement setup.” Pet. 36. Petitioner
`takes the position with respect to the combined teachings of Sarantos and
`Mendelson-1991:
`Implementing the circular light blocking/enclosing wall 2274,
`2374, 2474 would have been obvious to do so because a circular
`arrangement of detectors surrounds the emitters, the circular light
`blocking/enclosing wall 2274, 2374, 2474 would ensure that
`only light that has been attenuated from the tissue measurement
`site is detected and not light directly emitted from the emitters,
`as described by both Sarantos and Mendelson-1991.
`Id. at 37.
`Petitioner also contends that “[a person of ordinary skill in the art]
`would have combined the teachings of Sarantos and Mendelson-1991
`because doing so would have amounted to nothing more than the use of a
`known technique to improve similar devices in the same way and combining
`prior art elements according to known methods to yield predictable results.”
`Id. at 36.
`In our view, having considered Petitioner’s assertions as to the
`teaching value of the combination of Sarantos and Mendelson-1991, we
`conclude the present record supports Petitioner’s undisputed contentions that
`claims 1, 2, 4, 5, 8, 9, 11, 13, 15–19, 22, 24–30 are unpatentable based on
`that combination.
`
`F. Additional Grounds
`Petitioner provides arguments and evidence, including the Anthony
`Declaration, in support of Petitioner’s following additional grounds:
`Claims Challenged
`35 U.S.C. §
`References/Basis
`Sarantos, Mendelson-1991,
`3, 12, 23
`103
`Venkatraman
`
`23
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`Claims Challenged
`
`6, 14, 21
`
`1, 4, 5, 8, 9, 13, 15–
`17, 1924–26, 28, 29
`2, 3, 11, 12, 18, 22,
`23, 27, 30
`6, 14, 21
`
`35 U.S.C. §
`
`103
`
`103
`
`103
`
`103
`
`References/Basis
`Sarantos, Mendelson-1991,
`Chin
`
`Ackermans
`Ackermans, Venkatraman
`
`Ackermans, Chin
`
`See Pet. 55–106. Patent Owner does not offer, at this stage, any arguments
`addressing Petitioner’s substantive showing. See generally PO Waiver. We
`have reviewed Petitioner’s arguments and the cited evidence, and we
`determine Petitioner has demonstrated a reasonable likelihood of prevailing
`as to those contentions. Pursuant to USPTO policy implementing the
`decision in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“SAS”), we
`institute as to all claims challenged in the petition and on all grounds in the
`petition. See PTAB Consolidated Trial Practice Guide (Nov. 2019)4 5–6, 64.
`
`III. CONCLUSION
`The Supreme Court held that a final written decision under 35 U.S.C.
`§ 318(a) must decide the patentability of all claims challenged in the
`petition. See SAS. After considering the evidence and arguments presented
`in the Petition, we determine that Petitioner has demonstrated a reasonable
`likelihood of success in proving that at least one claim of the ’695 patent is
`unpatentable. Accordingly, we institute an inter partes review of all claims
`and all grounds set forth in the Petition.
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
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`At this stage of the proceeding, we have not made a final
`determination as to the patentability of any challenged claim or as to the
`construction of any claim term.
`
`IV. ORDER
`In consideration of the foregoing, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–6, 8, 9, 11–19, and 21–30 of the ’695 patent is instituted
`with respect to all grounds set forth in the Petition; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4(b), inter partes review of the ’695 patent shall commence
`on the entry date of this Order, and notice is hereby given of the institution
`of a trial.
`
`
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`IPR2020-01722
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`For PETITIONER:
`
`Walter Renner
`Dan Smith
`Kenneth Hoover
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`dsmith@fr.com
`h
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