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`Paper 33
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`Entered: May 4, 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.
`
`IPR2020-01737
`Patent 10,709,366 B1
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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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`IPR2020-01737
`Patent 10,709,366 B1
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`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–27 (“challenged claims”) of U.S. Patent No. 10,709,366
`B1 (Ex. 1001, “the ’366 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 1–27 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 15, “PO
`Resp.”) to the Petition, Petitioner filed a Reply (Paper 19, “Pet. Reply”), and
`Patent Owner filed a Sur-reply (Paper 22, “Sur-reply”). An oral hearing was
`held on February 9, 2022, and a transcript of the hearing is included in the
`record. Paper 32 (“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 1–27 of the ’366 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, IPR2020-01713 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,624,564 B1);
`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); and
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`Apple Inc. v. Masimo Corporation, IPR2020-01733 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,702,195 B1).
`Pet. 94–95; 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 ’366 patent. Paper 3, 1–2.
`
`C. The ’366 Patent
`The ’366 patent is titled “Multi-Stream Data Collection System for
`Noninvasive Measurement of Blood Constituents,” and issued on July 14,
`2020, from U.S. Patent Application No. 16/829,510, filed March 25, 2020.
`Ex. 1001, codes (21), (22), (45), (54). The ’366 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,
`61/086,057, each filed August 4, 2008, as well as 61/091,732, filed
`August 25, 2008, and 61/078,228 and 61/078,207, both filed July 3, 2008.
`Id. at codes (60), (63).
`The ’366 patent discloses a two-part data collection system including
`a noninvasive sensor that communicates with a patient monitor. Id. at 2:38–
`40. 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 2:29–37, 2:62–3:12. The patient monitor includes
`a display and a network interface for communicating with a handheld
`computing device. Id. at 2:42–48.
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`Figure 1 of the ’366 patent is reproduced below.
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`
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`Figure 1 illustrates a block diagram of data collection system 100 including
`sensor 101 and monitor 109. Id. at 11:51–61. Sensor 101 includes optical
`emitter 104 and detectors 106. Id. Emitters 104 emit light that is attenuated
`or reflected by the patient’s tissue at measurement site 102. Id. at 11:61–63;
`14:4–7. Detectors 106 capture and measure the light attenuated or reflected
`from the tissue. Id. at 14:3–10. In response to the measured light, detectors
`106 output detector signals 107 to monitor 109 through front-end interface
`108. Id. at 14:7–10, 28–33. 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 10:61–11:13.
`Monitor 109 includes signal processor 110 and user interface 112. Id.
`at 15:16–18. “[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 15:20–24. User interface 112
`presents the measurements to a user on a display, e.g., a touch-screen
`display. Id. at 15:46–50. The monitor may be connected to storage device
`114 and network interface 116. Id. at 15:60–67.
`The ’366 patent describes various examples of sensor devices.
`Figures 14D and 14F, reproduced below, illustrate sensor devices.
`
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`
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`Figure 14D (left) illustrates portions of a detector submount and Figure 14F
`(right) illustrates portions of a detector shell. Id. at 6:44–47. As shown in
`Figure 14D, multiple detectors 1410c are located within housing 1430 and
`under transparent cover 1432, on which protrusion 605b (or partially
`cylindrical protrusion 605) is disposed. Id. at 35:39–43, 36:30–41. Figure
`14F illustrates a detector shell 306f including detectors 1410c on substrate
`1400c. Id. at 37:9–17. 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. Alternatively,
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`cylindrical housing 1430 may be disposed under noise shield 1403 and may
`enclose detectors 1410c. Id. at 37:47–49.
`Figures 4A and 4B, reproduced below, illustrate an alternative
`example of a tissue contact area of a sensor device.
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`Figures 4A and 4B illustrate arrangements of protrusion 405 including
`measurement contact area 470. Id. at 23:18–24. “[M]easurement site
`contact area 470 can include a surface that molds body tissue of a
`measurement site.” Id. “For example, . . . measurement site contact
`area 470 can be generally curved and/or convex with respect to the
`measurement site.” Id. at 23:41–43. The measurement site contact area may
`include windows 420–423 that “mimic or approximately mimic a
`configuration of, or even house, a plurality of detectors.” Id. at 23:49–63.
`
`D. Illustrative Claim
`Of the challenged claims, claim 1, 14, and 27 are independent. Claim
`1 is illustrative and is reproduced below.
`1. A noninvasive physiological parameter measurement
`device adapted to be worn by a wearer, the noninvasive
`physiological parameter measurement device comprising:
`[a] one or more light emitters;
`[b] a substrate having a surface;
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`[c] a first set of photodiodes arranged on the surface and
`spaced apart from each other, wherein:
`[d] the first set of photodiodes comprises at least
`four photodiodes, and
`[e] the photodiodes of the first set of photodiodes
`are connected to one another in parallel to provide a first
`signal stream responsive to light from at least one of the
`one or more light emitters attenuated by body tissue;
`[f] a second set of photodiodes arranged on the surface and
`spaced apart from each other, wherein:
`[g] the second set of photodiodes comprises at least
`four photodiodes,
`[h] the photodiodes of the second set of photodiodes
`are connected to one another in parallel to provide a
`second signal stream responsive to light from at least one
`of the one or more light emitters attenuated by body tissue,
`and
`
`[i] at least one of the first signal stream or the second
`signal stream includes information usable to determine a
`physiological parameter of a wearer of the noninvasive
`physiological parameter measurement device;
`[j] a wall extending from the surface and configured to
`surround at least the first and second sets of photodiodes; and
`[k] a cover arranged to cover at least a portion of the
`surface of the substrate, wherein the cover comprises a protrusion
`that extends over all of the photodiodes of the first and second
`sets of photodiodes arranged on the surface, and wherein the
`cover is further configured to cover the wall.
`Ex. 1001, 44:57–45:27 (bracketed identifiers [a]–[k] added). Independent
`claim 14 includes limitations substantially similar to limitations [a], [c]–[h],
`[j], and [k] and includes additional limitations drawn to “one or more
`processors configured to: receive information . . . ; [and], process the
`information to determine physiological parameter measurement
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`information.” Id. at 46:33–56. Independent Claim 27 contains numerous
`limitations, which are integrated from claim 1 (limitations [a]–[k]) as well
`as limitations from numerous dependent claims. Id. at 48:1–49:10;
`Pet. 81–84.
`
`E. Applied References
`Petitioner relies upon the following references:
`Sherman et al., U.S. Patent No. 4,941,236, filed July 6, 1989,
`issued July 17, 1990 (Ex. 1047, “Sherman”);
`Ohsaki et al., U.S. Patent Application Publication No.
`2001/0056243 A1, filed May 11, 2001, published December 27, 2001
`(Ex. 1014, “Ohsaki”);
`Aizawa, U.S. Patent Application Publication No. 2002/0188210
`A1, filed May 23, 2002, published December 12, 2002 (Ex. 1006,
`“Aizawa”);
`Goldsmith et al., U.S. Patent Application Publication
`No. 2007/0093786 A1, filed July 31, 2006, published April 26, 2007
`(Ex. 1027, “Goldsmith); and
`Y. Mendelson, et al., “Measurement Site and Photodetector
`Size Considerations in Optimizing Power Consumption of a Wearable
`Reflectance Pulse Oximeter,” Proceedings of the 25th IEEE EMBS
`Annual International Conference, 3016-3019 (2003) (Ex. 1024,
`“Mendelson-2003”).
`Pet. 1–2.
`Petitioner also submits, inter alia, a Declaration of Thomas W.
`Kenny, Ph.D. (Ex. 1003) and a Second Declaration of Dr. Kenny (Ex. 1060).
`Patent Owner submits, inter alia, a Declaration of Vijay K. Madisetti, Ph.D
`(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, 2026–2027.
`
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`F. Asserted Grounds of Unpatentability
`We instituted an inter partes review based on the following grounds.
`Inst. Dec. 11, 33.
`Claim(s) Challenged
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`35 U.S.C. §
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`1–12 and 14–27
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`References/Basis
`Aizawa, Mendelson-2003,
`Ohsaki, Goldsmith
`Aizawa, Mendelson-2003,
`Ohsaki, Goldsmith, Sherman
`II. DISCUSSION
`
`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).
`Petitioner submits that no claim term requires express construction. Pet. 3.
`Patent Owner asserts that the claims should be given their ordinary and
`customary meaning, consistent with the specification. PO Resp. 9.
`Based on our analysis of the issues in dispute, we conclude that no
`claim terms require express construction. Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`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
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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
`nonobviousness.1 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).
`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
`
`
`1 The parties have not presented objective evidence of non-obviousness.
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`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. 3 (citing Ex. 1003 ¶¶ 21–22). “Alternatively, the person could have also
`had a Master of Science degree in a relevant academic discipline with less
`than a year of related work experience in the same discipline.” Id.
`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. 9.
`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, Mendelson-2003, Ohsaki, and Goldsmith
`Petitioner contends that claims 1–12 and 14–27 of the ’366 patent
`would have been obvious over the combined teachings of Aizawa,
`Mendelson-2003, Ohsaki, and Goldsmith. Pet. 10–91; see also Pet. Reply
`8–37.2 Patent Owner disagrees. PO Resp. 8–66; see also Sur-reply 1–29.
`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 1–12 and 14–27 are unpatentable.
`
`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
`
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`2 Petitioner’s Reply includes a Table of Contents and an Exhibits list that
`spans pages ii–vii, and the substance of the Reply then begins on page 8.
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`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.
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`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).”
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`Id. ¶ 26. Furthermore, “the above belt 7 is fastened such that the acrylic
`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.
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`2. Overview of Mendelson-2003 (Ex. 1024)
`Mendelson-2003 is a journal article titled “Measurement Site and
`Photodetector Size Considerations in Optimizing Power Consumption of a
`Wearable Reflectance Pulse Oximeter,” which discusses a pulse oximeter
`sensor in which “battery longevity could be extended considerably by
`employing a wide annularly shaped photodetector ring configuration and
`performing SpO2 measurements from the forehead region.” Ex. 1024, 3016.3
`Mendelson-2003 explains that pulse oximetry uses sensors to monitor
`oxygen saturation (SpO2), where the sensor typically includes light emitting
`diodes (LED) and a silicon photodetector (PD). Id. According to
`Mendelson-2003, when designing a pulse oximeter, it is important to offer
`“low power management without compromising signal quality.” Id. at 3017.
`“However, high brightness LEDs commonly used in pulse oximeters
`require[] relatively high current pulses, typically in the range between 100–
`200mA. Thus, minimizing the drive currents supplied to the LEDs would
`contribute considerably toward the overall power saving in the design of a
`more efficient pulse oximeter.” Id. To achieve this goal, Mendelson-2003
`discusses previous studies in which
`the driving currents supplied to the LEDs . . . could be lowered
`significantly without compromising
`the quality of
`the
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`3 We adopt Petitioner’s citation format by referring to the original page
`numbering and not Petitioner’s added page numbering at the bottom.
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`[photoplethysmographic or PPG signals] by increasing the
`overall size of the PD . . . . Hence, by maximizing the light
`collected by the sensor, a very low power-consuming sensor
`could be developed, thereby extending the overall battery life of
`a pulse oximeter intended for telemedicine applications.
`
`Id.
`
`Mendelson-2003 discloses the prototype of such a sensor in Figure 1,
`which is reproduced below, and served as the basis for the studies evaluated
`in Mendelson-2003.
`
`
`Figure 1 of Mendelson-2003 depicts a sensor configuration showing the
`relative positions of its PDs and LEDs. Id. As shown in Figure l, “six PDs
`were positioned in a close inner-ring configuration at a radial distance of
`6.0mm from the LEDs. The second set of six PDs spaced equally along an
`outer-ring, separated from the LEDs by a radius of 10.0mm.” Id.
`Mendelson-2003 also explains that “[e]ach cluster of six PDs were wired in
`parallel and connected through a central hub to the common summing input
`of a current-to-voltage converter.” Id.
`Mendelson-2003 reports the results of the studies as follows:
`Despite the noticeable differences between the PPG
`signals measured from the wrist and forehead, the data plotted in
`Fig. 3 also revealed that considerable stronger PPGs could be
`obtained by widening the active area of the PD which helps to
`collect a bigger proportion of backscattered light intensity. The
`additional increase, however, depends on the area and relative
`position of the PD with respect to the LEDs. For example,
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`utilizing the outer-ring configuration, the overall increase in the
`average amplitudes of the R and IR PPGs measured from the
`forehead region was 23% and 40%, respectively. Similarly, the
`same increase in PD area produced an increase in the PPG signals
`measured from the wrist, but with a proportional higher increase
`of 42% and 73%.
`Id. at 3019.
`
`3. Overview of Ohsaki (Ex. 1014)
`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. 1014, code (54), ¶ 3. Figure 1 of Ohsaki is reproduced below.
`
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`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
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`detecting element 2.
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`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.
`“Translucent 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.
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`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.
`
`4. Overview of Goldsmith (Ex. 1027)
`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. 1027, codes (54),
`(57).
`
`Goldsmith’s Figure 9A and 9B are reproduced below.
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`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.
`
`5. Independent Claim 1
`Petitioner contends that claim 1 would have been obvious over the
`combined teachings of Aizawa, Mendelson-2003, Ohsaki, and Goldsmith.
`Pet. 38–53. 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. “A noninvasive physiological parameter measurement
`device adapted to be worn by a wearer, the noninvasive
`physiological parameter measurement device comprising”
`The cited evidence supports Petitioner’s undisputed contention that
`“Aizawa discloses a pulse sensor that is designed to ‘detect[] the pulse wave
`of a subject from light reflected from a red corpuscle in the artery of a wrist
`of the subject by irradiating the artery of the wrist,’” and that Goldsmith
`teaches an analyte sensor that is part of a user-worn controller device that
`includes, e.g., a display.4 Pet. 33, 39 (quoting Ex. 1006 ¶ 2); see also
`Ex. 1006 ¶ 27 (discussing optical path), Fig. 2 (depicting physiological
`parameter measurement device worn by a user); Ex. 1027 ¶¶ 85 (“a watch”),
`88 (“analyte sensing device 1060”), Fig. 9A; Ex. 1003 ¶ 94.
`Petitioner further contends that a person of ordinary skill in the art
`would have found it obvious to incorporate Aizawa’s sensor “into
`Goldsmith’s integrated wrist-worn watch controller device that includes,
`among other features, a touch screen, network interface, and storage device”
`in order to receive and display data sensed by Aizawa’s sensor. Pet. 31–38;
`see, e.g., Ex. 1003 ¶¶ 88–89 (“would have enhanced the sensor’s utility and
`improved the user’s experience”). According to Petitioner, this would have
`“enable[d] a user to view and interact with heart rate data during exercise via
`Goldsmith’s touch-screen display, and to enable heart rate data to be
`monitored by the user and/or others through any of the devices with which
`Goldsmith’s device can communicate.” Pet. 34; see, e.g., Ex. 1003 ¶ 89.
`
`
`4 Whether the preamble is limiting need not be resolved because Petitioner
`shows sufficiently based on the final record that the recitation in the
`preamble is satisfied by the prior art.
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`Petitioner asserts this would have been use of a known technique to improve
`similar devices in the same way. Pet. 35; see, e.g., Ex. 1003 ¶ 90; see also
`Pet. 35–38 (also discussing physical incorporation); see, e.g., Ex. 1003
`¶¶ 90–93 (same).
`Petitioner’s stated reasoning for the proposed modification is
`sufficiently supported, including by the unrebutted testimony of Dr. Kenny.
`See, e.g., Ex. 1003 ¶¶ 88–94.
`ii. “[a] one or more light emitters”
` and
`“[b] a substrate having a surface”
`The cited evidence supports Petitioner’s undisputed contention that
`Aizawa discloses an emitter, LED 21, that emits light that is picked up by
`photodetectors. Pet. 40; 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 emitter 21 facing user
`tissue 10), Fig. 2 (depicting sensor worn on user’s wrist).
`Petitioner persuasively demonstrates that a person of ordinary skill in
`the art would have understood that Aizawa’s surface would include a
`substrate on which the emitter and detectors are arranged. Pet. 41.
`Petitioner relies on annotated Figure 1(b) of Aizawa, reproduced below.
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`Petitioner’s annotated Figure 1(b) shows detectors highlighted in red and a
`substrate surface unnumbered but highlighted in brown. Pet. 41. Dr. Kenny
`likewise testifies that Aizawa teaches “a substrate having surface (shown in
`brown) on which the holder 23 is placed and on which the detectors/
`photodiodes are arranged.” Ex. 1003 ¶ 96.
`
`iii. “[c] a first set of photodiodes arranged on the surface and
`spaced apart from each other, wherein: [d] the first set of
`photodiodes comprises at least four photodiodes”
`and
`“[f] a second set of photodiodes arranged on the surface
`and spaced apart from each other, wherein: [g] the second
`set of photodiodes comprises at least four photodiodes”
`Petitioner’s Undisputed Contentions
`
`Petitioner contends that Aizawa discloses a first set of four
`photodiodes that are circularly arranged around a central emitter. Pet. 18
`(citing, e.g., Ex. 1006 ¶ 23). Petitioner also contends that, in one
`embodiment, Aizawa discloses that eight or more detectors may be used to
`improve detection efficiency, but does not expressly teach a “second set of
`photodiodes,” as claimed. Id. at 19–20 (citing, e.g., Ex. 1006, Fig. 4(a)); see
`also Ex. 1003 ¶¶ 67–68.
`Patent Owner does not dispute these contentions, and we agree with
`Petitioner. Aizawa discloses a set