Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 32
`Date: June 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2021-00208
`Patent 10,258,266 B1
`
`
`
`
`
`
`
`
`
`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)
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 32
`Date: June 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2021-00208
`Patent 10,258,266 B1
`
`
`
`
`
`
`
`
`
`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)
`
`
`
`
`
`
`
`IPR2021-00208
`Patent 10,258,266 B1
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) pursuant to
`
`35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1–6, 8–
`
`16, 18, and 19 (“challenged claims”) of U.S. Patent No. 10,258,266 B1
`
`(Ex. 1001, “the ’266 patent”). We instituted the petitioned review (Paper 7).
`
`Masimo Corporation (“Patent Owner”) filed a Patent Owner Response
`
`(Paper 15, “PO Resp.”) to oppose the Petition. Petitioner filed a Reply
`
`(Paper 18, “Pet. Reply”) to the Patent Owner Response. Patent Owner filed
`
`a Sur-reply (Paper 22, “Sur-reply”) to the Reply. We conducted an oral
`
`hearing on March 15, 2022. A transcript has been entered into the record
`
`(Paper 31, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(b)(4) and § 318(a). This
`
`Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R.
`
`§ 42.73 as to the patentability of claims 1–6, 8–16, 18, and 19 of the
`
`’266 patent. We determine Petitioner has shown by a preponderance of the
`
`evidence that those claims are unpatentable.
`
`B. Related Matters
`
`The parties identify the following matters related to the ’266 patent:
`
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`
`(C.D. Cal.);
`
`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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`2
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`IPR2021-00208
`Patent 10,258,266 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 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);
`
`3
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`IPR2021-00208
`Patent 10,258,266 B1
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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);
`
`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, IPR2021-00195 (PTAB Nov. 20,
`
`2020) (challenging claims of U.S. Patent No. 10,376,190 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. 1, 72–73;1 Paper 3, 1, 3–4.
`
`
`
`Patent Owner further identifies certain issued patent applications, as
`
`well as other pending and abandoned applications, that claim priority to, or
`
`share a priority claim with, the ’266 patent. Paper 3, 1–3.
`
`C. The ’266 Patent
`
`The ’266 patent is titled “Multi-Stream Data Collection System for
`
`Noninvasive Measurement of Blood Constituents,” and issued on April 16,
`
`2019, from U.S. Patent Application No. 16/212,537, filed December 6,
`
`2018. Ex. 1001, codes (21), (22), (45), (54). The ’266 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, and
`
`61/086,057, each filed on August 4, 2008, as well as 61/091,732 filed on
`
`
`1 Petitioner lists “U.S. Patent[] 10,299,708 (IPR2020-00193)” as a related
`inter partes review petition. Pet. 73. The case number associated with
`Patent No. 10,299,708 B1 is IPR2021-00193 and not “IPR2020-00193” as
`listed by Petitioner.
`
`4
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`Patent 10,258,266 B1
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`August 25, 2008, and 61/078,228 and 61/078,207, both filed July 3, 2008.
`
`Id. at codes (60), (63).
`
`The ’266 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, 55–58. The patient monitor includes a
`
`display and a network interface for communicating with a handheld
`
`computing device. Id. at 2:35–41.
`
`Figure 1 of the ’266 patent is reproduced below.
`
`Figure 1 illustrates a block diagram of data collection system 100 including
`
`sensor 101 and monitor 109. Id. at 11:36–38. Sensor 101 includes
`
`emitter 104 and detectors 106. Id. at 11:48–50. Emitter 104 emits light that
`
`is attenuated or reflected by the patient’s tissue at measurement site 102. Id.
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`
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`5
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`at 13:61–64. Detectors 106 capture and measure the light attenuated or
`
`reflected from the tissue. Id. In response to the measured light,
`
`detectors 106 output detector signal 107 to monitor 109 through front-end
`
`interface 108. Id. at 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 10:59–11:3.
`
`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 15:12–15. User interface 112 presents the
`
`measurements to a user on a display, e.g., a touch-screen display. Id. at
`
`15:38–42. In response to user input or device orientation, user interface 112
`
`can “reorient its display indicia.” Id. at 15:44–48. The monitor may include
`
`storage device 114 and network interface 116. Id. at 15:52–54. In some
`
`embodiments, the monitor, including the display, is attached to the patient
`
`by a strap. Id. at 17:64–67.
`
`
`
`The ’266 patent describes various examples of sensor devices.
`
`Figures 14D and 14F, reproduced below, illustrate sensor devices.
`
`6
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`Figure 14D illustrates a detector submount and Figure 14F illustrates
`
`portions of a detector shell. Id. at 6:34–37. As shown in Figure 14D,
`
`multiple detectors 1410c are located within housing 1430 and under
`
`transparent cover 1432, on which protrusion 605b is disposed. Id. at 36:17–
`
`24. Figure 14F illustrates detector shell 306f including detectors 1410c on
`
`substrate 1400c. Id. at 36:63–64. In some embodiments, the detector shell
`
`includes walls to separate individual photodiode arrays and to “prevent or
`
`reduce mixing of light signals.” Id. at 22:28–31. 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. at 36:65–37:8.
`
`
`
`Figures 4A and 4B, reproduced below, illustrate an alternative
`
`example of a tissue contact area of a sensor device.
`
`7
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`
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`Figures 4A and 4B illustrate arrangements of protrusion 405 including
`
`measurement site 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, the 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
`
`includes windows 420–423 that “mimic or approximately mimic a
`
`configuration of, or even house, a plurality of detectors.” Id. at 23:39–53.
`
`D. Illustrative Claim
`
`Of the challenged claims, claims 1 and 9 are independent. Claim 1 is
`
`illustrative and is reproduced below.
`
`1. A noninvasive optical physiological sensor comprising:
`
`[a] a plurality of emitters configured to emit light into
`tissue of a user;
`
`[b] a plurality of detectors configured to detect light that
`has been attenuated by tissue of the user, wherein the plurality of
`detectors comprise at least four detectors;
`
`[c] a housing configured to house at least the plurality of
`detectors; and
`
`[d] a lens configured to be located between the tissue of
`the user and the plurality of detectors when the noninvasive
`
`8
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`IPR2021-00208
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`optical physiological sensor is worn by the user, wherein the lens
`comprises a single outwardly protruding convex surface
`configured to cause tissue of the user to conform to at least a
`portion of the single outwardly protruding convex surface when
`the noninvasive optical physiological sensor worn by the user
`and during operation of the noninvasive optical physiological
`sensor.
`
`Ex. 1001, 44:36–54 (bracketed lettering [a]–[d] added). Independent claim 9
`
`includes limitations similar to limitations [a]–[d] of claim 1, and also
`
`includes additional recitations. Id. at 45:13–23 (additionally reciting “a lens
`
`forming a cover,” “a circular housing including a planar surface” and a “grid
`
`pattern”).
`
`E. Applied References
`
`Petitioner relies upon the following references:
`
`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”);
`
`Inokawa et al., Japanese Patent Application Publication
`No. 2006-296564 A, filed April 18, 2005, published November 2,
`2006 (Ex. 1007, “Inokawa”);2 and
`
`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”).
`
`Pet. 2.
`
`
`2 Petitioner relies on a certified English translation of Inokawa (Ex. 1008).
`Ex. 1008, 24. In this Decision, we also refer to the translation.
`
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`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, 2020, 2027.
`
`F. Asserted Grounds
`
`Petitioner asserts that claims 1–6, 8–16, 18, and 19 are unpatentable
`
`based upon the following grounds (Pet. 2):3
`
`Claims Challenged
`
`35 U.S.C. §
`
`References/Basis
`
`1–6, 8–16, 18, and 19
`
`1–6, 8–16, 18, and 19
`
`1–6, 8–16, 18, and 19
`
`103
`
`103
`
`103
`
`Aizawa, Inokawa
`
`Aizawa, Inokawa, Ohsaki
`
`Mendelson-1988, Inokawa
`
`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.
`
`
`3 In a section titled “Challenge,” Petitioner asserts, inter alia, that claims 17,
`18, and 29 are unpatentable over 35 U.S.C. § 103 based on the combination
`of Mendelson-1988, Inokawa, Mendelson-2006 and Beyer. Pet. 1–2.
`However, Mendelson-2006 and Beyer are not listed as exhibits in the
`Petition (see id. at ii–iii), were not produced into the record as evidence, and
`Petitioner does not present any arguments regarding the patentability of
`claims 17, 18, and 29 over these references. The alleged ground challenging
`claims 17, 18, and 29 based on Mendelson-1988, Inokawa, Mendelson-2006
`and Beyer is not part of the Petition and claims 17 and 29 are not addressed
`in this Decision.
`
`10
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`IPR2021-00208
`Patent 10,258,266 B1
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`§ 42.100(b) (2019). Although both parties contend that no claim term
`
`requires express construction (Pet. 3–4; PO Resp. 10), the substance of the
`
`parties’ briefing demonstrates that there is a dispute regarding the claim term
`
`“cover,” which appears in independent claim 9.
`
`1. “cover”
`
`Independent claim 9 requires “a lens forming a cover of the circular
`
`housing.” Ex. 1001, 45:21. Although independent claim 1 also recites “a
`
`lens,” it does not recite a “cover.” Id. at 44:37–54.
`
`Patent Owner argues that the claimed “cover” excludes “an optically
`
`clear adhesive/epoxy” and a “resin on a surface.” PO Resp. 52. According
`
`to Patent Owner, “the ’266 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. (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. at 52–53 (quoting
`
`Ex. 2009, 395:22–396:17). Patent Owner argues its understanding is
`
`consistent with the prior art cited by Petitioner. Id. at 53 (citing Ex. 1008
`
`¶ 103, Fig. 17; Ex. 1023 ¶ 35; Ex. 2004 ¶¶ 113–115).
`
`Petitioner replies that “there is nothing in the specification or the
`
`prosecution history [of the ’266 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 24 (citing Thorner v.
`
`Sony Computer Entertainment America LLC, 669 F.3d 1362, 1368 (Fed. Cir.
`
`11
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`2012)). That plain meaning, according to Petitioner, is that “a cover is
`
`merely ‘something that protects, shelters, or guards.’” Id. (quoting
`
`Ex. 1050; Ex. 1047 ¶ 48). Petitioner argues that Patent Owner’s reliance on
`
`the ’266 patent Specification takes text out of context and, when context is
`
`considered, it is clear that “the epoxy resin to which the ’266 patent
`
`compares its cover is not [an] epoxy cover . . . but rather epoxy that is
`
`applied to solder joints.” Id. at 24–25 (citing Ex. 1001, 36:50–59; Ex. 1047
`
`¶ 50).
`
`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. at 24. 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 ¶ 49). 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 ’266 patent
`
`“specifically distinguishes a ‘resin’ on a surface from a ‘cover,’” and
`
`Petitioner’s opposing reading is not persuasive. PO Sur-reply 20–21.
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`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 ’266 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).”
`
`12
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`Ex. 1001, 22:63–65. It also is consistent with the ’266 patent’s description
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`and illustration of “transparent cover 1432” in Figure 14D, which covers and
`
`protects detectors 1410c and conductors 1412c, and which “can be
`
`fabricated from glass or plastic, among other materials.” See id. at 36:30–42
`
`(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.
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`13
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`Ex. 1001, 36:37–46 (emphases added); see PO Resp. 52. 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 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 ’266 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
`
`’266 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 ’266 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.
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`14
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`Accordingly, in the context of the ’266 patent, we do not construe the
`
`claimed “cover” to exclude epoxy and resin.
`
`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.
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`Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need
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`to be construed “only to the extent necessary to resolve the controversy”
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`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
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`(Fed. Cir. 1999))).
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`B. Principles of Law
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`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
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`between the subject matter sought to be patented and the prior art are such
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`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
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`factual determinations, including (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of skill in the art; and (4) objective evidence of non-
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`obviousness.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
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`evaluating a combination of teachings, we must also “determine whether
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`there was an apparent reason to combine the known elements in the fashion
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`4 Patent Owner does not present objective evidence of non-obviousness.
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`15
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`IPR2021-00208
`Patent 10,258,266 B1
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`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
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`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior art
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`elements would have produced a predictable result weighs in the ultimate
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`determination of obviousness. Id. at 416–417.
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`In an inter partes review, the petitioner must show with particularity
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`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
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`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
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`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
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`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
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`We analyze the challenges presented in the Petition in accordance
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`with the above-stated principles.
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`C. Level of Ordinary Skill in the Art
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`Petitioner identifies the appropriate level of skill in the art as that
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`possessed by a person having “a Bachelor of Science degree in an academic
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`discipline emphasizing the design of electrical, computer, or software
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`technologies, in combination with training or at least one to two years of
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`related work experience with capture and processing of data or information.”
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`Pet. 4 (citing Ex. 1003 ¶¶ 21–22). “Alternatively, the person could have also
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`had a Master of Science degree in a relevant academic discipline with less
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`than a year of related work experience in the same discipline.” Id.
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`Patent Owner makes several observations regarding Petitioner’s
`
`identified level of skill in the art but, “[f]or this proceeding, [Patent Owner]
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`nonetheless applies Petitioner’s asserted level of skill.” PO Resp. 10–11
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`(citing Ex. 2004 ¶¶ 35–38).
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`We adopt Petitioner’s assessment as set forth above, which appears
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`consistent with the level of skill reflected in the Specification and prior art.
`
`16
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`D. Obviousness over the Combined Teachings of
`Aizawa and Inokawa
`
`Petitioner contends that claims 1–6, 8–16, 18, and 19 of the ’266
`
`patent would have been obvious over the combined teachings of Aizawa and
`
`Inokawa. Pet. 7–44.
`
`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.
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`
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`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,
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`four photodetectors 22 symmetrically disposed around LED 21, and
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`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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`17
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`
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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.
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`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
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`pulse rate detector further includes outer casing 5 for storing pulse wave
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`sensor 2, acrylic transparent plate 6 mounted to detection face 23a of
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`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
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`sensor. Id. ¶ 24. Detection face 23a “is a contact side between the holder 23
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`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
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`18
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`transparent plate 6 becomes close to the artery 11 of the wrist 10. Thereby,
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`adhesion between the wrist 10 and the pulse rate detector 1 is improved.”
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`Id. ¶¶ 26, 34.
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`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.
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`Figure 1 of Inokawa is reproduced below.
`
`
`
`Figure 1 illustrates a schematic view of a pulse sensor. Id. ¶ 56. Pulse
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`sensor 1 includes box-shaped sensor unit 3 and flexible annular wristband 5.
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`Id. ¶ 57. Sensor unit 3 includes a top surface with display 7 and control
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`switch 9, and a rear surface (sensor-side) with optical device component 11
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`for optically sensing a user’s pulse. Id.
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`19
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`Figure 2 of Inokawa is reproduced below.
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`
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`Figure 2 illustrates a schematic view of the rear surface of the pulse sensor.
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`Id. ¶ 58. The rear-side (sensor-side) of pulse sensor 1 includes a pair of
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`light-emitting elements, i.e., green LED 21 and infrared LED 23, as well as
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`photodiode 25 and lens 27. Id. In various embodiments, Inokawa discloses
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`that the sensor-side lens is convex. See id. ¶¶ 99, 107. Green LED 21
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`senses “the pulse from the light reflected off of the body (i.e.[,] change in the
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`amount of hemoglobin in the capillary artery),” and infrared LED 23 senses
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`body motion from the change in reflected light. Id. ¶ 59. The pulse sensor
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`stores this information in memory. Id. ¶ 68. To read and store information,
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`the pulse sensor includes a CPU that “performs the processing to sense
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`pulse, body motion, etc. from the signal . . . and temporarily stores the
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`analysis data in the memory.” Id. ¶ 69.
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`20
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`Figure 3 of Inokawa is reproduced below.
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`
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`Figure 3 illustrates a schematic view of a pulse sensor mounted to a base
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`device. Id. ¶ 60. Pulse sensor 1 is depicted as mounted to base device 17,
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`which “is a charger with communication functionality.” Id. When so
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`mounted, sensor optical device component 11 and base optical device
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`component 41 face each other in close proximity. Id. ¶ 66. In this position,
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`pulse sensor 1 can output information to the base device through the coupled
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`optical device components. Id. ¶ 67. Specifically, the pulse sensor CPU
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`performs the controls necessary to transmit pulse information using infrared
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`LED 23 to photodetector 45 of base device 17. Id. ¶¶ 67, 70, 76. In an
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`alternative embodiment, additional sensor LEDs and base photodetectors can
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`be used to efficiently transmit data and improve accuracy. Id. ¶ 111.
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`21
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`3. Independent Claim 1
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`Petitioner contends that claim 1 would have been obvious over the
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`combined teachings of Aizawa and Inokawa. Pet. 13–23 (combination), 23–
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`30 (claim 1).
`
`i. A noninvasive optical physiological sensor
`comprising:”
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`On this record, the cited evidence supports Petitioner’s undisputed
`
`contention that Aizawa discloses a noninvasive optical physiological sensor,
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`i.e., a pulse sensor worn on a wearer’s wrist. Pet. 23; see, e.g., Ex. 1006 ¶ 2
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`(“[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
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`irradiating the artery of the wrist with light.”).
`
`ii.
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`[a] “a plurality of emitters configured to emit light
`into tissue of a user;”
`
`Petitioner’s Undisputed Contentions
`
`Petitioner contends that Aizawa discloses one emitter—LED 21—and
`
`also states that, in certain embodiments, multiple LEDs may be employed.
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`Pet. 7–8, 17–18. Patent Owner does not dispute this contention, and we
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`agree with Petitioner. See Ex. 1006 ¶¶ 23 (“LED 21”), 32 (“The
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`arrangement of the light emitting diode 21 and the photodetectors 22 is not
`
`limited to this.”). For example, Aizawa explains that “[t]he same effect can
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`be obtained when the number of photodetectors 22 is 1 and a plurality of
`
`light emitting diodes 21 are disposed around the photodetector.” Id. ¶ 33.
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`Petitioner also contends that Inokawa teaches a sensor with two
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`LEDs–a green LED to sense pulse and an infrared LED to sense body
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`motion. Pet. 10–11. Petitioner contends that when Inokawa’s sensor is
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`22
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`mounted on a base device, the infrared LED also is used to wirelessly
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`transmit vital information to the base device. Id. at 12–13. Patent Owner
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`does not dispute these contentions, and we agree with Petitioner. Inokawa
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`teaches a pair of LEDs 21, 23, where “the basic function of the S-side green
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`LED 21 is to sense the pulse from the light reflected off of the body . . .,
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`while the S-side infrared LED 23 serves to sense body motion from the
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