Trials@uspto.gov
`571-272-7822
`
`Paper 32
`Entered: May 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2021-00195
`Patent 10,376,190 B1
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`WIEKER, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 32
`Entered: May 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2021-00195
`Patent 10,376,190 B1
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`WIEKER, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2021-00195
`Patent 10,376,190 B1
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–14 and 16–30 (“challenged claims”) of U.S. Patent
`No. 10,376,190 B1 (Ex. 1001, “the ’190 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 1–14
`and 16–30 on all 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 18, “Pet. Reply”), and
`Patent Owner filed a Sur-reply (Paper 22, “PO Sur-reply”). An oral hearing
`was held on March 15, 2022, and a transcript of the hearing is included in
`the record. Paper 31 (“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 1–14 and 16–30 of the ’190 patent are unpatentable.
`
`B. Related Matters
`The parties identify the following matters related to the ’190 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);
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`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. 2,
`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);
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`Apple Inc. v. Masimo Corporation, IPR2020-01723 (PTAB Oct. 2,
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
`Apple Inc. v. Masimo Corporation, IPR2020-01733 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,702,195 B1);
`Apple Inc. v. Masimo Corporation, IPR2020-01737 (PTAB Sept. 30,
`2020) (challenging claims of U.S. Patent No. 10,709,366 B1)
`Apple Inc. v. Masimo Corporation, IPR2021-00193 (PTAB Nov. 20,
`2020) (challenging claims of U.S. Patent No. 10,299,708 B1);
`Apple Inc. v. Masimo Corporation, IPR2021-00208 (PTAB Nov. 20,
`2020) (challenging claims of U.S. Patent No. 10,258,266 B1); and
`Apple Inc. v. Masimo Corporation, IPR2021-00209 (PTAB Nov. 20,
`2020) (challenging claims of U.S. Patent No. 10,376,191 B1).
`Pet. 100; 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 ’190 patent:
`
`U.S. Patent Application No. 16/834,538;
`
`U.S. Patent Application No. 17/031,407;
`U.S. Patent Application No. 17/031,316;
`U.S. Patent Application No. 17/031,356;
`U.S. Patent Application No. 16/449,143; and
`
`U.S. Patent Application No. 16/805,605.
`
`
`Paper 3, 1–3.
`
`C. The ’190 Patent
`The ’190 patent is titled “Multi-Stream Data Collection System for
`Noninvasive Measurement of Blood Constituents,” and issued on August 13,
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`2019, from U.S. Patent Application No. 16/409,304, filed May 10, 2019.
`Ex. 1001, codes (21), (22), (45), (54). The ’190 patent claims priority
`through a series of continuation and continuation-in-part applications to
`Provisional Application Nos. 61/078,228 and 61/078,207, both filed July 3,
`2008. Id. at codes (60), (63).
`The ’190 patent discloses a two-part data collection system including
`a noninvasive sensor that communicates with a patient monitor. Id. at 2:31–
`33. 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 2:22–28, 57–58. The patient monitor includes a
`display and a network interface for communicating with a handheld
`computing device. Id. at 2:38–40.
`Figure 1 of the ’190 patent is reproduced below.
`
`
`Figure 1 illustrates a block diagram of data collection system 100 including
`sensor 101 and monitor 109. Id. at 11:36–47. Sensor 101 includes optical
`emitter 104 and detectors 106. Id. at 11:48–52. Emitters 104 emit light that
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`is attenuated or reflected by the patient’s tissue at measurement site 102. Id.
`at 13:60–67. Detectors 106 capture and measure the light attenuated or
`reflected from the tissue. Id. In response to the measured light,
`detectors 106 output detector signals 107 to monitor 109 through front-end
`interface 108. Id. at 13:64–66, 14:16–22. 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 10:61–11:3.
`Monitor 109 includes signal processor 110 and user interface 112. Id.
`at 15:6–8. “[S]ignal processor 110 includes processing logic that determines
`measurements for desired analytes . . . based on the signals received from
`the detectors 106.” Id. at 15:10–14. User interface 112 presents the
`measurements to a user on a display, e.g., a touch-screen display. Id. at
`15:38–48. The monitor may be connected to storage device 114 and
`network interface 116. Id. at 15:52–16:3.
`
`The ’190 patent describes various examples of sensor devices.
`Figures 14D and 14F, reproduced below, illustrate detector portions of
`sensor devices.
`
`
`
`Figure 14D illustrates portions of a detector submount and Figure 14F
`illustrates portions of a detector shell. Id. at 6:34–37. As shown in
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`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 35:23–25, 36:17–24.
`Figure 14F illustrates detector shell 306f including detectors 1410c on
`substrate 1400c. Id. at 36:63–37:4. 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, cylindrical housing 1430 may be disposed under noise
`shield 1403 and may enclose detectors 1410c. Id. at 37:34–36.
`
`Figures 4A and 4B, reproduced below, illustrate an alternative
`example of a tissue contact area of a sensor device.
`
`
`
`Figures 4A and 4B illustrate arrangements of protrusion 405 including
`measurement contact area 470. Id. at 23:8–14. “[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
`23:31–33. 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 23:39–53.
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`
`D. Illustrative Claim
`Of the challenged claims, claims 1 and 26 are independent. Claim 1 is
`illustrative and is reproduced below.
`1. A noninvasive optical physiological measurement device
`adapted to be worn by a wearer, the noninvasive optical
`physiological measurement device providing an indication of a
`physiological parameter of the wearer comprising:
`[a] one or more light emitters;
`[b] a housing having a surface and a circular raised edge
`extending from the surface;
`[c] at least four detectors arranged on the surface and spaced
`apart from each other, the at least four detectors configured to
`output one or more signals responsive to light from the one or
`more light emitters attenuated by body tissue, the one or more
`signals indicative of a physiological parameter of the wearer; and
`[d] a light permeable cover arranged above at least a portion
`of the housing, the light permeable cover comprising a protrusion
`arranged to cover the at least four detectors.
`Ex. 1001, 44:37–53 (bracketed identifiers [a]–[d] added). Independent
`claim 26 includes limitations substantially similar to limitations [a]–[d] of
`claim 1. Id. at 46:22–40 (reciting a “circular housing” with a “wall”;
`reciting a “lens portion”).
`
`E. Applied References
`Petitioner relies upon the following references:
`Beyer, Jr., U.S. Patent No. 7,031,728 B2, filed Sept. 21, 2004,
`issued Apr. 18, 2006 (Ex. 1019, “Beyer”);
`Ohsaki et al., U.S. Patent Application Publication
`No. 2001/0056243 A1, filed May 11, 2001, published December 27,
`2001 (Ex. 1014, “Ohsaki”);
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`Aizawa, U.S. Patent Application Publication
`No. 2002/0188210 A1, filed May 23, 2002, published December 12,
`2002 (Ex. 1006, “Aizawa”);
`Lo et al., U.S. Patent Application Publication
`No. 2004/0138568 A1, filed Jan. 15, 2003, published July 15, 2004
`(Ex. 1028, “Lo”);
`Inokawa et al., Japanese Patent Application Publication
`No. 2006-296564 A, filed April 18, 2005, published November 2,
`2006 (Ex. 1007, “Inokawa”);1
`Goldsmith et al., U.S. Patent Application Publication
`No. 2007/0093786 A1, filed July 31, 2006, published April 26, 2007
`(Ex. 1027, “Goldsmith”);
`Al-Ali et al., U.S. Patent Application Publication
`No. 2008/0242958 A1, filed Mar. 26, 2008, published Oct. 2, 2008
`(Ex. 1030, “Al-Ali”);
`Y. Mendelson et al., “Design and Evaluation of a New
`Reflectance Pulse Oximeter Sensor,” Association for the
`Advancement of Medical Instrumentation, Vol. 22, No. 4, 167–173
`(1988) (Ex. 1015, “Mendelson-1988”); and
`Y. Mendelson et al., “A Wearable Reflectance Pulse Oximeter
`for Remote Physiological Monitoring,” Proceedings of the 28th IEEE
`EMBS Annual International Conference, 912–915 (2006) (Ex. 1016,
`“Mendelson-2006”).
`Pet. 4. Petitioner also submits, inter alia, the Declaration of Thomas W.
`Kenny, Ph.D. (Ex. 1003), and the Second Declaration of Thomas W. Kenny
`(Ex. 1047). Patent Owner submits, inter alia, the Declaration of Vijay K.
`Madisetti, Ph.D. (Ex. 2004). The parties also provide deposition testimony
`from Dr. Kenny and Dr. Madisetti, including from this and other
`proceedings. See Exs. 1034–1036, 2006–2009, 2027.
`
`
`1 Petitioner relies on a certified English translation of Inokawa (Ex. 1008).
`In this Decision, we also refer to the translation.
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`
`103
`
`103
`
`23–25
`
`25
`5
`1–14, 16–22, 26–30
`23, 24
`
`25
`
`103
`
`103
`103
`103
`103
`
`103
`
`F. Asserted Grounds
`Petitioner asserts that claims 1–14 and 16–30 are unpatentable based
`upon the following grounds (Pet. 1–2):
`Claim(s) Challenged
`35 U.S.C. §
`1–14, 16, 17, 19–23,
`103
`26–29
`1–14, 16, 17, 19–23,
`26–29
`23, 24
`
`References/Basis
`Aizawa, Inokawa
`
`Aizawa, Inokawa, Ohsaki
`Aizawa, Inokawa, Mendelson-
`2006
`Aizawa, Inokawa, Goldsmith,
`Lo
`Aizawa, Inokawa, Mendelson-
`2006, Beyer
`Aizawa, Inokawa, Al-Ali
`Mendelson-1988, Inokawa
`Mendelson-1988, Inokawa,
`Mendelson-2006
`Mendelson-1988, Inokawa,
`Mendelson-2006, Beyer
`
`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) (2019).
`Although both parties contend that no claim term requires express
`construction (Pet. 4–5; PO Resp. 10), the substance of the parties’ briefing
`demonstrates that there is a dispute regarding the claim term “cover.”
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`1. “cover”
`Each of independent claims 1 and 26 requires “a light permeable
`cover.” Ex. 1001, 44:51, 46:33.
`Patent Owner argues that the claimed “cover” excludes “an optically
`clear adhesive/epoxy” and a “resin on a surface.” PO Resp. 46–47.
`According to Patent Owner, “the ’190 Patent distinguishes a resin on a
`surface from a cover, explaining: ‘the cylindrical housing 1430 (and
`transparent cover 1432) . . . can protect the detectors 1410c and
`conductors 1412c more effectively than currently-available resin epoxies.’”
`Id. at 47 (quoting Ex. 1001, 36:37–46).
`Patent Owner alleges that Dr. Kenny also “distinguished a sealing
`resin from a cover, acknowledging a ‘layer of sealing resin’ is ‘one way to
`protect the components without using a cover.’” Id. (quoting Ex. 2009,
`395:22–396:17). Patent Owner argues its understanding is consistent with
`the prior art cited by Petitioner. Id. (citing Ex. 1008 ¶ 103, Fig. 17; Ex. 1023
`¶ 35; Ex. 1012, 5:2–6, Fig. 2B; Ex. 1013 ¶ 32, Fig. 2; Ex. 1027 ¶ 85, Fig. 9B
`Ex. 2004 ¶ 104).
`Petitioner replies that “there is nothing in the specification or the
`prosecution history [of the ’190 patent] that would lead a [person of ordinary
`skill in the art] to conclude that ‘cover’ should be interpreted based on
`anything other than its plain meaning.” Pet. Reply 20 (citing Thorner v.
`Sony Computer Entertainment America LLC, 669 F.3d 1362, 1368 (Fed. Cir.
`2012)). That plain meaning, according to Petitioner, is that “a cover is
`merely ‘something that protects, shelters, or guards.’” Id. at 20–21 (quoting
`Ex. 1050; citing Pet. 73–75; Ex. 1047 ¶ 43). Petitioner argues that Patent
`Owner’s reliance on the ’190 patent Specification takes text out of context
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`and, when context is considered, it is clear that “the epoxy resin to which the
`’190 patent compares its cover is not [an] epoxy cover . . . but rather epoxy
`that is applied to solder joints.” Id. at 21 (citing Ex. 1001, 36:37–46;
`Ex. 1047 ¶ 45).
`Petitioner also contends that Patent Owner “mischaracterizes
`Dr. Kenny’s deposition testimony to say he agreed that ‘sealing resin’ is
`somehow distinguished from a cover.” Id. Petitioner contends that
`Dr. Kenny simply “clarified that using a sealing resin is ‘a pretty common
`way to protect electronic components.’” Id. (citing Ex. 2009, 395:22–
`396:17; Ex. 1047 ¶ 44). Moreover, Petitioner contends that “such extrinsic
`evidence would not justify departure from plain meaning under Thorner.”
`Id.
`
`In its Sur-reply, Patent Owner maintains that the ’190 patent
`“specifically distinguishes a ‘resin’ on a surface from a ‘cover,’” and
`Petitioner’s opposing reading is not persuasive. PO Sur-reply 18–19.
`Upon review of the record, we disagree with Patent Owner’s limiting
`construction of “cover” to exclude epoxy and resin. The plain and ordinary
`meaning of the term does not support Patent Owner’s view. A “cover”
`ordinarily connotes “something that protects, shelters, or guards.” Ex. 1050
`(Merriam-Webster’s Collegiate Dictionary, 11th ed. (©2005)), 288. That
`plain and ordinary meaning is consistent with the ’190 patent’s description
`of “flex circuit cover 360, which can be made of plastic or another suitable
`material . . . [and] can cover and thereby protect a flex circuit (not shown).”
`Ex. 1001, 22:62–66. It is also consistent with the ’190 patent’s description
`and illustration of “transparent cover 1432” in Figure 14D, which covers and
`protects detectors 1410c and conductors 1412c, and which “can be
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`fabricated from glass or plastic, among other materials.” See id. at 36:22–36
`(emphasis added), Figs. 14D–14E.
`This is not the situation in which a special definition for a claim term
`has been set forth in the specification with reasonable clarity, deliberateness,
`and precision, so as to give notice of the inventor’s own lexicography. See
`Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir.
`2005); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Nor do we
`discern that Patent Owner “demonstrate[d] an intent to deviate from the
`ordinary and accustomed meaning of a claim term by including in the
`specification expressions of manifest exclusion or restriction, representing a
`clear disavowal of claim scope.” Teleflex, Inc. v. Ficosa North America
`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).
`Here, based upon our review of the intrinsic evidence, no such special
`definition or express disavowal of the term “cover” to exclude epoxy and
`resin exists. Patent Owner relies on the following description of Figure 14D
`in that regard:
`In certain embodiments, the cylindrical housing 1430 (and
`transparent cover 1432) forms an airtight or substantially airtight
`or hermetic seal with the submount 1400c. As a result, the
`cylindrical housing 1430 can protect the detectors 1410c and
`conductors 1412c from fluids and vapors that can cause
`corrosion.
` Advantageously, in certain embodiments, the
`cylindrical housing 1430 can protect the detectors 1410c and
`conductors 1412c more effectively than currently-available resin
`epoxies, which are sometimes applied to solder joints between
`conductors and detectors.
`Ex. 1001, 36:37–46 (emphases added). First, the sentence cited by Patent
`Owner begins with the phrase “[i]n certain embodiments,” which indicates
`the claimed invention is not limited and is open to other embodiments, so
`there is no lexicography or disavowal here. Second, we agree with
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`Petitioner’s reading of this passage as distinguishing the prior art from the
`claimed invention based on the location of the material (applied only to
`solder joints between conductors and detectors in the prior art, as opposed to
`covering the conductors and detectors in the invention) and not the type of
`material. Third, at best, the ’190 patent expresses a preference for a cover to
`be made of glass or plastic, because such materials provide “more
`effective[]” protection than resin epoxies that were known when the
`’190 patent was filed. See id. at 36:42–46. But even this reading recognizes
`that resin epoxies provide some amount of protection, albeit perhaps a lesser
`amount than glass or plastic, and are not excluded from forming the material
`of a cover.
`Dr. Kenny’s deposition testimony cited by Patent Owner also does not
`persuade us that, in the context of the ’190 patent, epoxy or resin is excluded
`from the material of a cover. Dr. Kenny testifies that “a layer of sealing
`resin” “[c]ould” be used to protect the electronic components in a sensor
`(Ex. 2009, 395:22–396:8). He was then asked “So that would be one way to
`protect the components without using a cover, correct?” to which he
`answered “[t]here are many ways to protect the elements other than using a
`cover” and maintained that the proposed combination of prior art has a
`“cover” to achieve purposes other than protecting electronic components,
`i.e., “to improve adhesion and to improve light gathering for the operation of
`the system.” Id. at 396:9–17. He did not squarely testify that sealing resin
`may never be a cover.
`Accordingly, in the context of the ’190 patent, we do not construe the
`claimed “cover” to exclude epoxy and resin.
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`2. Other Claim Terms
`Upon consideration of the entirety of the arguments and evidence
`presented, we conclude no further explicit construction of any claim term is
`needed to resolve the issues presented by the arguments and evidence of
`record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.
`Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need
`to be construed “only to the extent necessary to resolve the controversy”
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999))).
`
`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
`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
`
`
`2 Patent Owner does not present objective evidence of non-obviousness.
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`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
`related work experience with capture and processing of data or information.”
`Pet. 5 (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. 10–11
`(citing Ex. 2004 ¶¶ 35–38).
`We 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 the Combined Teachings of
`Aizawa and Inokawa
`Petitioner contends that claims 1–14, 16, 17, 19–23, and 26–29 of the
`’190 patent would have been obvious over the combined teachings of
`Aizawa and Inokawa. Pet. 8–42.
`1. Overview of Aizawa (Ex. 1006)
`Aizawa is a U.S. patent application publication titled “Pulse Wave
`Sensor and Pulse Rate Detector,” and discloses a pulse wave sensor that
`detects light output from a light emitting diode and reflected from a patient’s
`artery. Ex. 1006, codes (54), (57).
`Figure 1(a) of Aizawa is reproduced below.
`
`
`Figure 1(a) is a plan view of a pulse wave sensor. Id. ¶ 23. As shown in
`Figure 1(a), pulse wave sensor 2 includes light emitting diode (“LED”) 21,
`four photodetectors 22 symmetrically disposed around LED 21, and
`holder 23 for storing LED 21 and photodetectors 22. Id. Aizawa discloses
`that, “to further improve detection efficiency, . . . the number of the
`photodetectors 22 may be increased.” Id. ¶ 32, Fig. 4(a). “The same effect
`can be obtained when the number of photodetectors 22 is [one] and a
`
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`plurality of light emitting diodes 21 are disposed around the
`photodetector 22.” Id. ¶ 33.
`
`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. ¶ 23.
`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. ¶ 24.
`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
`
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`face 21s of the light emitting diode 21 faces down (on the wrist 10 side).”
`Id. ¶ 26. Furthermore, “the above belt 7 is fastened such that the acrylic
`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 Inokawa (Ex. 1008)
`Inokawa is a Japanese published patent application titled “Optical
`Vital Sensor, Base Device, Vital Sign Information Gathering System, and
`Sensor Communication Method,” and discloses a pulse sensor device.
`Ex. 1008 ¶ 6.
`Figure 1 of Inokawa is reproduced below.
`
`
`Figure 1 illustrates a schematic view of a pulse sensor. Id. ¶ 56. Pulse
`sensor 1 includes box-shaped sensor unit 3 and flexible annular wristband 5.
`Id. ¶ 57. Sensor unit 3 includes a top surface with display 7 and control
`switch 9, and a rear surface (sensor-side) with optical device component 11
`for optically sensing a user’s pulse. Id.
`
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`Figure 2 of Inokawa is reproduced below.
`
`
`Figure 2 illustrates a schematic view of the rear surface of the pulse sensor.
`Id. ¶ 58. The rear-side (sensor-side) of pulse sensor 1 includes a pair of
`light-emitting elements, i.e., green LED 21 and infrared LED 23, as well as
`photodiode 25 and lens 27. Id. In various embodiments, Inokawa discloses
`that the sensor-side lens is convex. See id. ¶¶ 99, 107. Green LED 21
`senses “the pulse from the light reflected off of the body (i.e.[,] change in the
`amount of hemoglobin in the capillary artery),” and infrared LED 23 senses
`body motion from the change in reflected light. Id. ¶ 59. The pulse sensor
`stores this information in memory. Id. ¶ 68. To read and store information,
`the pulse sensor includes a CPU that “performs the processing to sense
`pulse, body motion, etc. from the signal . . . and temporarily stores the
`analysis data in the memory 63.” Id. ¶ 69.
`
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`Figure 3 of Inokawa is reproduced below.
`
`
`Figure 3 illustrates a schematic view of a pulse sensor mounted to a base
`device. Id. ¶ 60. Pulse sensor 1 is depicted as mounted to base device 17,
`which “is a charger with communication functionality.” Id. When so
`mounted, sensor optical device component 11 and base optical device
`component 41 face each other in close proximity. Id. ¶ 66. In this position,
`pulse sensor 1 can output information to the base device through the coupled
`optical device components. Id. ¶ 67. Specifically, the pulse sensor CPU
`performs the controls necessary to transmit pulse information using infrared
`LED 23 to photodetector 45 of base device 17. Id. ¶¶ 67, 70, 76. In an
`alternative embodiment, additional sensor LEDs and base photodetectors can
`be used to efficiently transmit data and improve accuracy. Id. ¶ 111.
`
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`3. Independent Claim 1
`Petitioner contends that claim 1 would have been obvious over the
`combined teachings of Aizawa and Inokawa. Pet. 13–17 (combination), 17–
`23 (claim 1).
`
`i. “A noninvasive optical physiological measurement
`device adapted to be worn by a wearer, the
`noninvasive optical physiological measurement device
`providing an indication of a physiological parameter
`of the wearer comprising”
`The cited evidence supports Petitioner’s undisputed contention that
`Aizawa discloses a noninvasive optical physiological measurement device,
`i.e., a pulse sensor worn on a wearer’s wrist, that indicates a physiological
`parameter of the wearer. Pet. 17; see, e.g., Ex. 1006 ¶ 2 (“[A] pulse wave
`sensor for detecting 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 with light.”).
`
`ii. “[a] one or more light emitters”
`The cited evidence supports Petitioner’s undisputed contention that
`Aizawa discloses LED 21 that emits light. Pet. 17–18; see, e.g., Ex. 1006
`¶ 23 (“LED 21 . . . for emitting light having a wavelength of a near infrared
`range”), Figs. 1(a)–(b).
`
`iii. “[b] a housing having a surface and a circular raised
`edge extending from the surface”
`The cited evidence supports Petitioner’s undisputed contention that
`Aizawa discloses holder 23, which includes a flat surface and a circular
`raised edge extending from the surface. Pet. 18–19; see, e.g., Ex. 1006 ¶ 23
`
`22
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`(“holder 23 for storing . . . light emitting diode 21 and the
`photodetectors 22”), Figs. 1(a)–(b) (depicting holder 23 surrounding each
`detector 22); Ex. 1003 ¶¶ 75–76.
`Petitioner’s annotated versions of Aizawa’s Figures 1(a) and 1(b) are
`reproduced below.
`
`
`
`
`Pet. 18–19. The modified figures depict side and top views of Aizawa’s
`sensor with the housing identified in red shading, the circular raised edge
`identified in purple, and the surface depicted in brown. Id.
`
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`iv. “[c] at least four detectors arranged on the surface
`and spaced apart from each other, the at least four
`detectors configured to output one or more signals
`responsive to light from the one or more light emitters
`attenuated by body tissue, the one or more signals
`indicative of a physiological parameter of the
`wearer”
`The cited evidence supports Petitioner’s undisputed contention that
`Aizawa discloses at least four detectors 22 that are spaced apart on the
`surface, wherein the det
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