Trials@uspto.gov
`571-272-7822
`
`Paper 7
`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.
`
`IPR2020-01737
`Patent 10,709,366 B1
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`KINDER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`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.
`
`IPR2020-01737
`Patent 10,709,366 B1
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`KINDER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`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 (“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) (2020) (“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.
`
`B. Related Matters
`The parties identify the following matters related to the ’366 patent:
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`(C.D. Cal.);
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`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 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 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);
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`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
`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, 3–4.
`
`Patent Owner further identifies the following pending patent
`applications, among other issued and abandoned applications, that claim
`priority to, or share a priority claim with, the ’366 patent:
`
`U.S. Patent Application No. 16/834,538;
`
`U.S. Patent Application No. 16/449,143; and
`
`U.S. Patent Application No. 16/805,605.
`
`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
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`August 25, 2008, and 61/078,228 and 61/078,207, both filed July 3, 2008.1
`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.
`
`
`1 The Office has made the prior determination that the application leading to
`the ’366 patent should be examined under the pre-AIA first to invent
`provisions. See Ex. 1002, 199 (Apr. 10, 2020 Decision Granting Request for
`Prioritized Examination, marking “No” for “AIA (FITF) Status”). We
`determine that based on this prior determination, and the lack of any
`contrary evidence before us, the Petition was not required to be filed more
`than nine months after the date of the grant of the patent. See 37 C.F.R.
`§ 42.102(a)(1). Instead, based on the record before us, 37 C.F.R.
`§ 42.102(a)(2) should apply, which allows a petition to be filed after “the
`date of the grant of the patent.”
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`Figure 1 of the ’366 patent is reproduced below.
`
`
`
`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.
`
`
`
`
`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.
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`Alternatively, 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.
`
`
`
`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, claims 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;
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`[b] a substrate having a surface;
`[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
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`information to determine physiological parameter measurement
`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 9, 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, the Declaration of Thomas W.
`Kenny, Ph.D. (Ex. 1003).
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`F. Asserted Grounds
`Petitioner asserts that claims 1–27 are unpatentable based upon the
`following grounds (Pet. 1–2):
`Claim(s) Challenged
`35 U.S.C. §
`1–12, 14–27
`103
`
`Reference(s)/Basis
`Aizawa, Mendelson-2003,
`Ohsaki, Goldsmith
`Aizawa, Mendelson-2003,
`Ohsaki, Goldsmith, Sherman
`
`13
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`103
`
`II. DISCUSSION
`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). Petitioner submits that no claim term requires express
`construction. Pet. 3.
`Based on our analysis of the issues in dispute at this stage of the
`proceeding, we agree that no claim terms require express construction at this
`time. 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 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 non-
`obviousness. 2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
`evaluating a combination of teachings, we must also “determine whether
`there was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of 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 that
`possessed by a person having “a Bachelor of Science degree in an academic
`discipline emphasizing the design of electrical, computer, or software
`technologies, in combination with training or at least one to two years of
`
`
`2 Patent Owner does not present objective evidence of non-obviousness at
`this stage.
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`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.
`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.
`
`D. Obviousness over the Combined Teachings of
`Aizawa, Mendelson-2003, Ohsaki, and Goldsmith
`Petitioner presents undisputed contentions 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. 8–84.
`1. Overview of Aizawa (Ex. 1006)
`Aizawa is a U.S. patent application publication titled “Pulse Wave
`Sensor and Pulse Rate Detector,” and discloses a pulse wave sensor that
`detects light output from a light emitting diode and reflected from a patient’s
`artery. Ex. 1006, codes (54), (57).
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`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.
`
`
`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.
`¶ 23. 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.
`
`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.” 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
`
`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.
`
`
`Figure 1 illustrates a cross-sectional view of pulse wave sensor 1 attached on
`the back side of user’s wrist 4. Id. ¶¶ 12, 16. Pulse wave sensor 1 includes
`detecting element 2 and sensor body 3. Id. ¶ 16.
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`Figure 2 of Ohsaki, reproduced below, illustrates further detail of
`
`detecting element 2.
`
`
`Figure 2 illustrates a mechanism for detecting a pulse wave. Id. ¶ 13.
`Detecting element 2 includes package 5, light emitting element 6, light
`receiving element 7, and translucent board 8. Id. ¶ 17. Light emitting
`element 6 and light receiving element 7 are arranged on circuit board 9
`inside package 5. Id. ¶¶ 17, 19.
`“[T]ranslucent board 8 is a glass board which is transparent to light,
`and attached to the opening of the package 5. A convex surface is formed
`on the top of the translucent board 8.” Id. ¶ 17. “[T]he convex surface of
`the translucent board 8 is in intimate contact with the surface of the user’s
`skin,” preventing detecting element 2 from slipping off the detecting
`position of the user’s wrist 4. 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.
`
`19
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`Sensor body 3 is connected to detecting element 2 by signal line 13.
`
`Id. ¶ 20. Signal line 13 connects detecting element 2 to drive circuit 11,
`microcomputer 12, and a monitor display (not shown). Id. Drive circuit 11
`drives light emitting element 6 to emit light toward wrist 4. Id. Detecting
`element 2 receives reflected light which is used by microcomputer 12 to
`calculate pulse rate. Id. “The monitor display shows the calculated pulse
`rate.” Id.
`
`4. 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, code (57).
`Goldsmith’s Figure 9A is reproduced below.
`
`
`Figure 9A is a front view of a combined watch and controller device. Id.
`¶ 30. As shown in Figure 9A, watch controller 900 includes housing 905,
`
`20
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`transparent member 950, display 910, rear-side cover 960, input
`devices 925a–c, 930, and wrist band 940. Id. ¶¶ 85–86, Fig. 9B.
`Goldsmith discloses that 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. Additionally, the watch controller may
`communicate with a remote station, e.g., a computer, to allow data
`downloading. Id. ¶ 89 (including wireless).
`
`5. Independent Claim 1
`Petitioner presents undisputed contentions that claim 1 would have
`been obvious over the combined teachings of Aizawa, Mendelson-2003,
`Ohsaki, and Goldsmith. Pet. 38–53. Petitioner’s showing includes
`persuasive reasoning, on the current record, for combining the references in
`the manners proposed. Pet. 18–38.
`
`i.“A noninvasive physiological parameter measurement
`device adapted to be worn by a wearer, the noninvasive
`physiological parameter measurement device
`comprising”
`On this record, 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
`
`21
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`controller device that includes, e.g., a display. 4 Pet. 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. 31–34;
`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
`the 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.
`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).
`At this stage of the proceeding, 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.
`
`
`4 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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`ii.“[a] one or more light emitters”
`and
`“[b] a substrate having a surface”
`On this record, the cited evidence supports Petitioner’s undisputed
`contention that Aizawa discloses that its sensor includes 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 sufficiently shows on this record that a person of ordinary
`skill in the art would have understood that Aizawa’s surface would include a
`substrate on which the detectors are arranged. Pet. 41. Petitioner relies on
`annotated Figure 1(b) of Aizawa, reproduced below.
`
`
`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.
`
`
`23
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`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,”
`On this record, the cited evidence supports Petitioner’s undisputed
`contentions regarding this limitation. Pet. 18–25, 38–50. Specifically,
`Petitioner contends that Aizawa discloses a first set of four photodiodes that
`are circularly arranged around a central emitter. Id. at 18–19; see, e.g.,
`Ex. 1006 ¶ 23 (“four phototransistors 22”), Figs. 1(a)–1(b) (depicting
`detectors 22 surrounding LED 21). Petitioner contends that Aizawa teaches
`that eight or more detectors may be used to improve detection efficiency, but
`does not expressly teach a “second set of photodiodes,” as claimed. Pet. 20–
`21; see, e.g., Ex. 1006 ¶ 32 (“the number of the photodetectors 22 may be
`increased”), Fig. 4(a).
`According to Petitioner, Mendelson-2003 teaches two rings of
`photodiodes, which improve light collection efficiency, permit use of lower
`brightness LEDs, and reduce power consumption. Pet. 21–22; see, e.g.,
`Ex. 1024, 3017 (“[S]ix PDs [(photodetectors)] were positioned in a close
`inner-ring configuration . . . The second set of six PDs [were] spaced equally
`along an outer-ring.”), 3019 (explaining that “considerabl[y] stronger
`[photoplethysmographic signals] could be obtained by widening the active
`area of the PD which helps to collect a bigger proportion of backscattered
`light intensity”).
`In view of these teachings, Petitioner contends, with reference to the
`mod
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