Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: June 3, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2021-00208
`Patent 10,258,266 B1
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`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Apple Inc. (“Petitioner”) filed a Petition requesting 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”). Paper 2 (“Pet.”). Masimo
`
`Corporation (“Patent Owner”) waived filing a preliminary response. Paper 5
`
`(“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 ’266 patent:
`
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`
`(C.D. Cal.);
`
`2
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`

`

`IPR2021-00208
`Patent 10,258,266 B1
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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);
`
`3
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`IPR2021-00208
`Patent 10,258,266 B1
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`
`
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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);
`
`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, at 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, at 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,
`
`
`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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`IPR2021-00208
`Patent 10,258,266 B1
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`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
`
`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.
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`Patent 10,258,266 B1
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`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
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`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.
`
`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.
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`Monitor 109 includes signal processor 110 and user interface 112. Id.
`
`at 15:6–8. “[S]ignal processor 110 includes processing logic that determines
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`measurements for desired analytes . . . based on the signals received from
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`the detectors 106.” Id. at 15:12–15. User interface 112 presents the
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`measurements to a user on a display, e.g., a touch-screen display. Id. at
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`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.
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`
`
`
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`Figure 14D illustrates a detector submount and Figure 14F illustrates
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`portions of a detector shell. Id. at 6:34–37. As shown in Figure 14D,
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`multiple detectors 1410c are located within housing 1430 and under
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`transparent cover 1432, on which protrusion 605b is disposed. Id. at 36:17–
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`24. Figure 14F illustrates detector shell 306f including detectors 1410c on
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`substrate 1400c. Id. at 36:63–64. In some embodiments, the detector shell
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`includes walls to separate individual photodiode arrays and to “prevent or
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`reduce mixing of light signals.” Id. at 22:28–31. Substrate 1400c is
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`enclosed by shielding enclosure 1490 and noise shield 1403, which include
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`window 1492a and window 1492b, respectively, placed above
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`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.
`
`
`
`Figures 4A and 4B illustrate arrangements of protrusion 405 including
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`measurement site contact area 470. Id. at 23:8–14. “[M]easurement site
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`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
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`measurement site.” Id. at 23:31–33. The measurement site contact area
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`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:
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`[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
`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
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`“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”);
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`
`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. Petitioner also submits, inter alia, the Declaration of Thomas W.
`
`Kenny, Ph.D. (Ex. 1003).
`
`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
`
`103
`
`Aizawa, Inokawa
`
`
`2 Petitioner relies on a certified English translation of Inokawa (Ex. 1008).
`Ex. 1008, 24. In this Decision, we also refer to the translation.
`
` 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. Because Petitioner has not
`produced Mendelson-2006 and Beyer as evidence in this proceeding, and
`because Petitioner has not argued this ground in the Petition, we understand
`this identification in the table of grounds on pages 1–2 to be inadvertent
`error, and we do not consider this ground challenging claims 17, 18, and 29
`based on Mendelson-1988, Inokawa, Mendelson-2006 and Beyer as part of
`the Petition. Notably, claims 17 and 29 are not addressed anywhere in the
`Petition, and thus will not be addressed in the final written decision. See
`also Pet. 1 (identifying the challenged claims as only “claims 1–6, 8–16, 18,
`and 19,” and omitting claims 17 and 29).
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`IPR2021-00208
`Patent 10,258,266 B1
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`Claims Challenged
`
`35 U.S.C. §
`
`References/Basis
`
`1–6, 8–16, 18, and 19
`
`1–6, 8–16, 18, and 19
`
`103
`
`103
`
`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.
`
`§ 42.100(b) (2019). Petitioner submits that no claim term requires express
`
`construction. Pet. 4.
`
`Based on our analysis of the issues in dispute at this stage of the
`
`proceeding, we conclude that no further claim terms require express
`
`construction at this time. Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`Motor Co. 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
`
`(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-
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`obviousness.4 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
`
`related work experience with capture and processing of data or information.”
`
`Pet. 4 (citing Ex. 1003 ¶¶ 21–22). Petitioner also notes that a person of
`
`ordinary skill in the art (“POSITA”) “could have also had a Master of
`
`
`4 Patent Owner does not present objective evidence of non-obviousness at
`this stage.
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`Science degree in a relevant academic discipline with less than a year of
`
`related work experience in the same discipline.” Id.
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`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 and Inokawa
`
`Petitioner presents undisputed contentions 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).
`
`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
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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.
`
`
`
`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.
`
`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 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
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`photodetectors 22 are set back from the above detection face 23a.” Id.
`
`Aizawa further discloses that “a subject carries the above pulse rate detector
`
`1 on the inner side of his/her wrist 10 with a belt in such a manner that the
`
`light emitting 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.
`
`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.
`
`
`
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`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.
`
`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.” 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
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`LED 23 to photodetector 45 of base device 17. Id. ¶¶ 67, 70, 76–77. 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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`3. Independent Claim 1 (Aizawa and Inokawa)
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`Petitioner presents undisputed contentions that claim 1 would have
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`been obvious over the combined teachings of Aizawa and Inokawa. Pet. 23–
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`30.
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`i.“A noninvasive optical physiological sensor comprising:”
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`On this record, the cited evidence supports Petitioner’s undisputed
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`contentions that Aizawa discloses this limitation. Pet. 23.
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`Figure 2 of Aizawa shows a user wearing a pulse wave sensor on the
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`inner side of his/her wrist. Ex. 1006 ¶ 26. Accordingly, Petitioner’s reliance
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`on Figure 2 of Aizawa and the corresponding disclosure sufficiently disclose
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`the subject matter of the preamble.5 See Pet. 23.
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`At this stage of the proceeding, Petitioner’s stated reasoning is
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`sufficiently supported.
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`ii.“[a] a plurality of emitters configured to emit light into
`tissue of a user”
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`On this record, the cited evidence supports Petitioner’s undisputed
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`contentions regarding this limitation. Pet. 17–24.
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`Petitioner contends, “[w]hile Aizawa contemplates the use of multiple
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`emitters, Aizawa never specifically identifies the use of multiple emitters
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`operating at different wavelengths in conjunction with multiple detectors.”
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`Pet. 17 (citing Ex. 1006 ¶ 33; Ex. 1003 ¶¶ 69–80). We note that the claim
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`language does not require multiple emitters operating at different
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`5 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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`wavelengths. Thus, our patentability analysis is limited to what the claims
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`actually recite.
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`Petitioner contends that a person of ordinary skill in the art would
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`have found it obvious to incorporate the two LEDs of Inokawa into Aizawa.
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`Pet. 24. Petitioner relies on Figure 1(b) of Aizawa, which shows pulse wave
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`sensor 2 comprising a single LED 21 “for emitting light having a
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`wavelength of near infrared range.” Ex. 1006 ¶ 23. Inokawa teaches a pulse
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`sensor comprising two LEDs–a sensor-side green LED for sensing “the
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`pulse from the light reflected off of the body,” and a sensor-side infrared
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`LED for sensing “body motion from the change in this reflected light.”
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`Ex. 1008 ¶ 59; see also id. ¶ 14, Fig. 2. Petitioner’s annotated Figure 2 of
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`Inokawa is reproduced below.
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`Annotated Figure 2 depicts pulse sensor 1 comprising sensor-side
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`photodiode 25 (shown in red) that receives reflected light from sensor-side
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`green LED 21 (shown in green) and a sensor-side infrared LED 23 (shown
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`
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`in purple). Pet. 11; see also Ex. 1008 ¶ 58.
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`Petitioner contends that the teaching of Inokawa would motivate a
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`person of ordinary skill in the art to modify the pulse wave sensor in
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`Figure 1(b) of Aizawa to include “two different emitters operating at
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`different wavelengths.” Pet. 17. Specifically, Petitioner contends, “while
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`Aizawa only expressly mentions using ‘light having a wavelength of an
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`infrared range’ to detect the pulse rate, Inokawa discloses dividing the role
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`of a single LED into two different LEDs, specifically ‘with an infrared LED
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`used to detect vital signs . . . and a green LED used to detect pulse.’”
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`Pet. 17–18. Petitioner presents annotated and modified Figure 1(b) of
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`Aizawa to illustrate the resulting pulse wave sensor of Aizawa when
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`modified according to the teaching of Inokawa. Pet. 19. Petitioner’s
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`annotated and modified Figure 1(b) of Aizawa is reproduced below.
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`
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`Annotated Figure 1(b) (left) depicts pulse wave sensor 2 comprising a single
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`LED 21 (shown in green) emitting light to nearby photodetectors 22 (shown
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`in red). Annotated and modified Figure 1(b) (right) depicts pulse wave
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`sensor 2 configured with two LEDs (shown in green and purple and labeled
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`as “Emitter 1” and “Emitter 2”) emitting light to photodetectors 22 (shown
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`in red). Id.
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`Petitioner reasons “[a] POSITA would have recognized, in view of
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`Inokawa, that providing an additional emitter to Aizawa would allow
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`Aizawa’s device to use it existing infrared LED to detect body motion while
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`using the added green LED to detect pulse,” and “[t]he added ability to
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`measure body movement can allow for more reliable pulse measurement that
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`takes into account and corrects for inaccurate readings stemming from body
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`movement.” Pet. 18 (citing Ex. 1003 ¶ 72).6 According to Dr. Kenny,
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`“[w]hile it’s possible that adding more emitters to Aizawa may lead to
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`increased power consumption, a POSITA seeking to improve detection
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`performance would have nevertheless looked to Inokawa’s multiple-emitter
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`setup to achieve enhanced performance benefits.” Ex. 1003 ¶ 72.
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`At this stage of the proceeding, Petitioner’s stated reasoning for
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`modifying Aizawa to include two LEDs is sufficiently supported, including
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`by the unrebutted testimony of Dr. Kenny.
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`Petitioner provides an additional rationale “for improving Aizawa by
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`adding a second/LED emitter.” Pet. 20. Specifically, Petitioner references
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`the embodiment depicted in Figure 19 of Inokawa disclosing a base device
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`configured to transmit data from a sensor using a green LED and an infrared
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`LED. Pet. 21–23; see also Ex. 1008 ¶¶ 109–111 (describing sensor-side
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`green LED 165 and sensor-side infrared LED 163 for transmitting data to
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`base-side photodetectors 155, 157); Fig. 3 (depicting a base device
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`comprising multiple sensor-side LEDs). As we explain supra, the record
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`before us sufficiently supports Petitioner’s contentions regarding modifying
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`6 Petitioner provides additional reasoning “for improving Aizawa by adding
`a second/LED emitter.” Pet. 20. Specifically, Petitioner references the
`embodiment depicted in Figure 19 of Inokawa disclosing a base device
`configured to transmit data from a sensor using a green LED and an infrared
`LED. Pet. 21–23. Based on the record before us, we need not consider that
`additional reasoning at this stage of the proceeding.
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`Figure 1(b) of Aizawa to include the green and infrared LEDs depicted in
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`Figure 2 of Inokawa. Thus, further analysis of Petitioner’s proposal to
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`modify Figure 1(b) of Aizawa based on the teachings of Figure 19 of
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`Inokawa is unnecessary.
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`iii.“[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”
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`
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`On this record, the cited evidence supports Petitioner’s undisputed
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`contention that Figure 1(a) of Aizawa discloses four “photodetectors 22 . . .
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`[that] detect light ‘reflected by a red corpuscle running through the artery 11
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`of the wrist 10.’” Pet. 25 (quoting Ex. 1006 ¶ 27); see, e.g., Ex. 1006,
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`Fig. 1(a) (depicting four photodetectors 22); id. ¶ 27 (“[F]our photodetectors
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`22 are disposed around the light emitting diode 21.”).
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`At this stage of the proceeding, Petitioner’s stated reasoning is
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`sufficiently supported.
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`iv. “[c] a housing configured to house at least the plurality
`of detectors; and”
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`On this record, the cited evidence supports Petitioner’s undisputed
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`contentions regarding this limitation. Pet. 25–26.
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`Petitioner contends “the holder of Aizawa provides a housing that
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`houses the plurality of detectors.” Pet. 26. In support of this contention,
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`Petitioner provides annotated Figures 1(a) and 1(b) of Aizawa, reproduced
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`below.
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`Annotated Figure 1(a) (top) is a plan view of pulse wave sensor 2, and
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`depicts holder 23 (highlighted in green) surrounding photodetectors 22
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`(shown in red). Pet. 26; see also Ex. 1006 ¶ 23; Ex. 1003 ¶ 84. Annotated
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`Figure 1(b) (bottom) is a sectional view of pulse wave sensor 2, and depicts
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`holder 23 (labeled in green text as “Housing”) surrounding
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`photodetectors 22 (shown in red). Pet. 26.
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`At this stage of the proceeding, Petitioner’s stated reasoning is
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`sufficiently supported.
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`v. “[d] a lens configured to be located between the tissue of
`the user and the plurality of detectors when the
`noninvasive 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.”
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`On this record, the cited evidence supports Petitioner’s undisputed
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`contentions regarding this limitation. Pet. 13–17, 26–30.
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`Figure 1(b) of Aizawa teaches a pulse wave sensor comprising an
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`acrylic transparent plate 6. Ex. 1006 ¶ 30 “Since the acrylic transparent
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`plate 6 is provided on the detection face 23a of the holder 23, adhesion
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`between the pulse rate detector 1 and the wrist 10 can be improved.” Id. As
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`shown in Figure 1(b), the acrylic transparent plate is notably flat in shape
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`and is arranged between photodetectors 22 and a person’s wrist 10.
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`Similarly, Figure 2 of Inokawa teaches a pulse wave sensor comprising lens
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`27 that appears to protrude toward a person’s body, and is arranged between
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`photodetector 25 and the person’s body. Petitioner contends “the ‘lens
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`makes it possible to increase the light-gathering ability of the LED’” (Pet.
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`14–15 (citing Ex. 1008 ¶ 15)), and that the lens achieves increased light
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`collection efficiency by “refracting/concentrating the