Masimo Corporation

Patent Trials and Appeals Board

Nov 23, 2021

IPR2020-00912 (P.T.A.B. Nov. 23, 2021)

Trials@uspto.gov Paper 43
571-272-7822 Date: November 23, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SOTERA WIRELESS, INC.,
Petitioner,

v.

MASIMO CORPORATION,
Patent Owner.
____________

IPR2020-00912
Patent 10,213,108 B2
____________

Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
ROBERT L. KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
Dismissing Petitioner’s Motion to Exclude
37 C.F.R. §§ 42.155(c), 42.64
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I. INTRODUCTION
A. Background and Summary
Sotera Wireless, Inc. (“Petitioner”)1 filed a Petition requesting inter
partes review of U.S. Patent No. 10,213,108 B2 (“the ’108 patent,”
Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the patentability of
claims 1–22 of the ’108 patent. Masimo Corporation (“Patent Owner” or
“Masimo”) filed a Preliminary Response to the Petition. Paper 8.
On November 25, 2020, we instituted trial. Paper 15 (“Inst. Dec.” or
“Decision to Institute”). Patent Owner filed a Response. Paper 22 (“PO
Resp.”). Petitioner filed a Reply. Paper 26 (“Pet. Reply”). Patent Owner
filed a Sur-Reply. Paper 31 (“Sur-Reply”). An oral argument was held on
August 26, 2021, and a transcript was entered into the record. Paper 42
(“Tr.”).
We have jurisdiction to conduct this inter partes review under
35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we
determine that Petitioner has shown, by a preponderance of the evidence,
that all challenged claims (claims 1–22) of the ’108 patent are unpatentable.
B. Related Proceedings
Petitioner identifies Masimo Corp. v. Sotera Wireless, Inc., Case No.
3:19-cv-01100-BAS-NLS (S.D. Cal.), served on June 13, 2019, as a related
proceeding involving the ’108 patent. Pet. 2; Ex. 1009; Ex. 1010. Petitioner

1 Petitioner identifies Hon Hai Precision Industry Co., Ltd. as a real party-in-
interest “because Hon Hai agrees to be bound by the estoppel provisions of
35 U.S.C. § 315(e).” Pet. 1.
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filed IPR2020-00954 on May 18, 2020, challenging claims of U.S. Patent
No. 9,788,735, which is a continuation of the ’108 patent. See IPR2020-
00954, Ex. 1001, code (63).
C. The ’108 Patent
The ̓ 108 patent is directed to an “Arm Mountable Portable Patient
Monitor.” Ex. 1001, code (54). The ’108 patent claims priority through a
series of continuation applications to Provisional Application No.
60/367,428, filed on March 25, 2002. Id. at codes (63), (60). The invention
relates to “[a]n arm mountable portable patient monitoring device configured
to receive physiological information from a plurality of sensors attached to a
patient via wired connections for on-patient monitoring of parameter
measurements and wireless transmission of parameter measurements to
separate monitoring devices.” Id. at code (57). Structurally, the “device
includes a housing, a strap, a display, [and] a first sensor port positioned on a
first side of the housing configured to face toward a hand of the patient.” Id.
The device also includes “second and third sensor ports configured to
receive signals from additional sensor arrangements via . . . wired
connections and one or more signal processing arrangements configured to
cause to be displayed measurements of oxygen saturation and pulse rate.”
Id.
The Specification describes a drawback to “[c]onventional
physiological measurement systems,” as being that they require a “patient
cable connection between sensor and monitor.” Id. at 2:19–21. The
Specification also describes the problems related to “disconnection of
monitoring equipment and a corresponding loss of measurements,” when
needing to move patients. Id. at 2:19–25. A goal of the ’108 patent was to
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allow wireless bedside pulse oximetry monitoring. Ex. 1001, 2:19–35;
compare id. at Fig 1, with id. at Fig. 3.
As depicted in Figure 4A below, sensor module 400 is plug-
compatible with conventional sensor 310. Id. at 3:55–58. Wrist-mounted
module 410 has module connector 414 with auxiliary cable 420 running
therefrom to mate with sensor connector 318. Id. at Fig. 4A, 5:26–37.

Figure 4A of the Specification illustrates an embodiment of the
“communications adapter sensor modules.” Id. at 4:3–4. Wrist-mounted
module 410 may have display 415 that shows sensor measurements, module
status, and other visual indicators, such as monitor status. Id. at 5:37–40.
The Specification explains that in certain embodiments wrist-mounted
module 410 may have other input or output ports that download software,
configure the module, or provide a wired connection to other measurement
instruments or computing devices. Id. at 5:54–59. In such embodiments,
the wearable device can communicate with multiple sensors, and a multiple
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parameter sensor module with sensor interfaces and signal processors may
be used as depicted in Figure 13, below. Id. at 11:52–66.

Figure 13 depicts a functional block diagram of a sensor module configured
for multiple sensors. Id. at 4:21–22.
D. Illustrative Claim
Claim 1, reproduced below in chart form with Petitioner’s added
designations to identify each limitation, is illustrative of the claims at issue:
Designation Claim Language
Claim1
(Preamble)
1(a)
An arm mountable portable patient monitoring
device configured to receive physiological
information from a plurality of sensors attached to
a patient at at least two different measurement sites
via wired connections for on-patient monitoring of
parameter measurements and wireless transmission
of parameter measurements to separate monitoring
devices, the portable patient monitoring device
comprising:
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Designation Claim Language
Limitation
1(b)
a housing configured to be secured to an arm of a
patient under measurement;
1(c) a strap mountable to a back side of the housing and
configured to secure the housing to the arm of the
patient;
1(d) a display positioned on a front side of the housing,
the display configured to show at least one status
indicator of the portable patient monitoring device
and one or more parameter measurements;
1(e) a first sensor port positioned on a first side of the
housing, the first side of the housing configured to
face toward a hand of the arm of the patient when
the housing is secured to the arm of the patient,
1(f) the first sensor port configured to electrically
receive a signal from a pulse oximetry sensor via a
wired connection from the pulse oximetry sensor
to the first sensor port,
1(g) the wired connection configured to extend from
the first sensor port along a path substantially
perpendicular to the first side of the housing;
1(h) a second sensor port positioned on the housing and
configured to receive a signal from a second
sensor arrangement via a wired connection;
1(i) a third sensor port positioned on the housing
configured to receive a signal from a third sensor
arrangement via a wired connection;
1(j) one or more signal processing arrangements
configured to:
1(k) receive the signal from the pulse oximetry sensor;
and
1(l) cause to be displayed, on the display, at least
measurements of oxygen saturation and pulse rate
derived from the signal; and
1(m) a transmitter configured to:
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Designation Claim Language
1(n) wirelessly transmit information indicative of the
measurements of oxygen saturation and pulse rate
to a separate monitoring device configured to
receive the information indicative of the
measurements of oxygen saturation and pulse rate.
Ex. 1001, 13:10–54; Pet. xii (Listing of Claims).
Claim 17 (also challenged) requires the “portable mounting device
according to claim 1” but also claims “[a] method of portable patient
monitoring,” involving steps of attaching the device to a patient, attaching
wired connections, activating the device, and then wirelessly transmitting to
the monitoring device. Ex. 1001, 14:53–15:5.
Claim 19, although similar in scope to claim 1, has unique limitations
not found in claim 1, such as a requirement for the first sensor port to
electrically receive a signal from a pulse oximetry sensor including analog
information. Id. at 15:23–16:24. Claim 19 also requires the housing to
receive a signal from the second sensor arrangement including digital
information. Id. Claim 19 does not require that the wired connection from
the first sensor be along a substantially perpendicular path. Id. Claim 21 is
“[a] method of portable patient monitoring” first reciting “a portable patient
monitoring device according to claim 19.” Id. at 16:31–49.

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E. Evidence
Petitioner relies on the following references:
Petitioner also relies on the Declaration of George E. Yanulis, D.Eng.
(Ex. 1003) in support of its arguments as well as the Reply Declaration of
Bryan Bergeron, M.D. (Ex. 1040). Patent Owner relies on the Declaration
of Alan L. Oslan (Ex. 2010) in support of its arguments. The parties rely on
additional evidence and exhibits as further discussed below.
F. Asserted Grounds of Unpatentability
Petitioner asserts that the challenged claims of the ’108 patent are
unpatentable based on the following grounds (Pet. 5–6):
Claims Challenged 35 U.S.C. § Reference(s)/Basis
1–5, 9–18 103(a) Goldberg, Kiani
1–5, 9–18 103(a) Akai, Kiani
6–8 103(a) Goldberg, Kiani, Fujisaki
6–8 103(a) Akai, Kiani, Fujisaki
19–22 103(a) Goldberg, Kiani, Money
19–22 103(a) Akai, Kiani, Money
Reference Exhibit
U.S. Patent No. 6,840,904, filed on Oct. 11, 2001 and issued Jan.
11, 2005 (“Goldberg”)
1005
PCT Publication No. WO 00/42911, published on July 27, 2000
(“Kiani”)
1006
EP0880936A2, filed on Oct.30, 1997 and published on Dec. 2,
1998 (“Akai”)
1007
U.S. Patent No. 5,919,141, filed on Sept. 13, 1996 and issued on
July 6, 1999 (“Money”)
1008
U.S. Patent No. 4,425,921, filed on Sept. 11, 1981 and issued on
Jan. 17, 1984 (“Fujisaki”)
1016
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II. ANALYSIS
Petitioner bears the burden of establishing the unpatentability of any
claim by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R.
§ 42.1(d). This burden of persuasion never shifts to the patent owner.
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
(Fed. Cir. 2015).
A. Principles of Law
1. Obviousness
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. See 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 ordinary skill in the art; and (4) objective evidence of
nonobviousness.2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In
that regard, an obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007).

2 The parties have not directed our attention to any objective evidence of
non-obviousness in the final record before us.
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2. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art “would
have been a person with at least a B.S. degree in electrical or biomedical
engineering or a related field with at least two years’ experience designing
patient monitoring systems.” Pet. 13 (citing Ex. 1003 ¶¶ 27–32). Patent
Owner does not offer any rebuttal on the final record.
Based on the final record, we adopt Petitioner’s proposed description
of the person of ordinary skill in the art.
B. Claim Construction
In an inter partes review for a petition 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). In applying this claim
construction standard, we are guided by the principle that the words of a
claim “are generally given their ordinary and customary meaning,” as
understood by a person of ordinary skill in the art in question at the time of
the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
2005) (en banc) (citation omitted). “In determining the meaning of the
disputed claim limitation, we look principally to the intrinsic evidence of
record, examining the claim language itself, the written description, and the
prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
415 F.3d at 1312–17). Of course, “[t]here is a heavy presumption that claim
terms are to be given their ordinary and customary meaning.” Aylus
Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1358 (Fed. Cir. 2017).
“Properly viewed, the ‘ordinary meaning’ of a claim term is its meaning to
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the ordinary artisan after reading the entire patent.” Id. (quoting Phillips,
415 F.3d at 1321).
Petitioner contends that the claim terms are to be given their plain and
ordinary meaning, as understood by one of ordinary skill in the art, in view
of the ’108 patent’s specification. Pet. 13. Petitioner further states that “the
Board need not construe any claim terms to find the claims invalid.” Pet. 13
n.1.
In our Decision to Institute, we gave the claim terms their plain and
ordinary meaning and determined that it was unnecessary to further construe
any claim term. We did note, however, that the claims require a first,
second, and third “sensor port” (Ex. 1001, claim 1), and we asked the parties
to “clearly identify what they contend the scope of a ‘sensor port’
encompasses,” if the term has “any special meaning or otherwise should be
construed.” Inst. Dec. 22.
In its Response, Patent Owner contends that we “should construe
‘sensor port,’ according to its plain and ordinary meaning of a ‘connector
that mates with a compatible connector from a sensor.’” PO Resp. 17.
Patent Owner cites to various portions of the Specification describing how
sensor ports connect to modules through use of a cable and also how a
sensor connector mates with an auxiliary cable providing a wired link
between a conventional sensor and a wrist-mounted module. Id. at 17–18
(citing Ex. 1001, 4:65–5:2, 5:33–36, Fig. 4A). Patent Owner also cites to
contemporaneous dictionaries to confirm that a port is a connector that mates
with a compatible connector from a sensor. Id. at 18–19 (citing Exs. 2020,
2021, 2019).
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Patent Owner argues that the Specification “distinguishes the ‘port’
type connection illustrated in Figure 4A from a hardwired or direct
connection between the sensor 310 and the sensor module 400.” PO
Resp. 19. Thus, Patent Owner contends that “a PHOSITA [person having
ordinary skill in the art] would understand that the term ‘sensor port’ to
involve a removable connection, and does not include hardwired
connections.” Id. (citing Ex. 2010 ¶ 39). Patent Owner states that “[a]ll
other terms in the ’108 Patent should also be given their plain and ordinary
meanings.” Id. at 20.
Petitioner, in Reply, argues that “[t]he construction of ‘sensor port’ is
not an issue that the Board must resolve to find the ’108 Patent invalid,” and
“Masimo makes no contention that the prior art ports are not ports under its
construction.” Pet. Reply 1–2. Petitioner additionally argues that
“Masimo’s expert freely admitted that ports were known,” and “[a]s such,
construction of this term is not case dispositive.” Id. at 2 (citing Ex. 1042,
23:3–5). See also Tr. 35:16–23 (“[T]hey cite the dictionary definitions
technically a port does not have to be removed. I think in the more normal
sense of a port it’s removable but even if you look at slide 15 of their deck,
the dictionary definitions don’t require removable. It does not matter.
We’ve got prior art all over the place.”). We agree with Petitioner that it is
not necessary to further define a sensor port.
Because we determine that Kiani in combination with Goldberg
teaches the claimed sensor ports under any reasonable definition, including
those offered by Patent Owner, we need not further elaborate on the scope of
a “sensor port” or “sensor ports.” See Tr. 34:23–35:23, 36:14–24, 40:20–
41:16. That is to say that even if agree with Patent Owner that the term
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“sensor port” involves a removable connection, and does not include
hardwired connections (PO Resp. 19), such a determination is not
dispositive because Kiani clearly teaches a removable connection as further
explained below.3 Only those terms that are in controversy need be
construed, and only to the extent necessary to resolve the controversy (e.g.,
whether the claim reads on a prior art reference). See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
We do not see the need to further construe any additional claim term.
C. The Asserted Prior Art
1. Goldberg
Goldberg is titled, “Medical Monitoring Device and System,” and it
broadly discloses a wireless, wearable patient monitoring device. Ex. 1005,
codes (54), (57). More specifically, Goldberg teaches portable device 100
that receives data from multiple sensors, displays the sensor data, and
wirelessly transmits sensor data to a remote computer. Id. at 1:29–44, 2:27–
29, 4:20–30, 4:50–56, 5:3–8, 2:37–42, 2:47–55. Goldberg discloses that
“[v]arious sensors 104 are known in the art for converting physiological
characteristics . . . into electrical signals,” and that “sensor(s) 104 can be
coupled to the controller 102 and/or memory by wire or wirelessly, and such
ways for coupling are well known in the art.” Id. at 4:23–30.

3 Indeed, we also note that Patent Owner itself describes Kiani as disclosing
a sensor port, albeit in connection with other arguments discounting Kiani as
disclosing multiple sensor ports. See PO Resp. 27 (“both experts now agree
that Kiania teaches a single sensor port, not multiple ports.”). Furthermore,
at the oral hearing, counsel for Patent Owner acknowledged that “Kiani
would have a single sensor input port under our construction.” Tr. 53:18–
19.
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Figure 2 of Goldberg is reproduced below.

Figure 2 of Goldberg depicts portable device 101a mounted in an assembly
or housing 112 that is sized to be carried by an individual and strapped to the
wrist or forearm by any conventional strap apparatus. Ex. 1005, 4:57–60. In
this embodiment, sensor 104a is a pulse oximetry sensor and blood pressure
cuff sensor 104b monitors blood pressure. Id. at 4:63–67.
In other embodiments, “the medical monitoring device may contain
one, all, or any combination of the above-mentioned sensor types,” including
also a sensor to measure electrolyte levels. Id. at 5:1–8. The Specification
states that the “invention may be comprised of any type of physiological
sensor 104 suitable [f]or use with a portable monitoring device.” Id.
2. Kiani
Kiani discloses a portable pulse oximetry sensor that communicates
with conventional bedside monitors. Ex. 1006, code (57). Kiani seeks to
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provide a transportable pulse oximeter that can stay with and continuously
monitor the patient as they are transported. Id. at 3:1–4. Kiani describes
conventional pulse oximetry sensors, including sensors with sensor ports, as
well as portable devices having both batteries and displaying status
indicators. Id. at 3:21–23, 5:21–22, 8:31–9:2, Fig. 5. Kiani notes that its
portable docking station combination is also universally compatible with
pulse oximeters from various manufacturers. Id. at code (57). Kiani
describes its portable portion as being “removably attached” and in
communication with the docking station when the portable portion is
attached to the docking station. Id. at 19:22–26.
As depicted in Figure 5, reproduced below, Kiani describes handheld
embodiment 500 of the universal/upgrading pulse oximeter that includes
external power supply input 530, oximeter output port 540 for connection to
the external pulse oximeter, and single sensor input 550 at the top edge. Id.
at Fig. 5, 8:31–9:2.

Figure 5 of Kiani depicts a handheld embodiment. As shown, Kiani’s
display 520 shows measured oxygen saturation 522, pulse rate 524,
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confidence bar 528, low battery 572, and alarm enabled 574 status indicator.
Id.
3. Money
Money is titled “Vital Sign Remote Monitoring Device.” Ex. 1008,
code (54). Money teaches a portable, multi-parameter patient monitor that
receives digital signals from some sensors and analog signals from other
sensors. Ex. 1008, 5:48–51, 5:61–6:10, 7:4–8. An RF transmitter transmits
both analog and digital vital sign data to a remote monitoring station. Id. at
code (57). The remote patient monitoring device “must provide an
electronic interface to a wide variety of vital sign transducers, and process
both analog and digital data.” Id. at 7:4–6. Overall logic control and
processing of data by the remote patient monitoring device is determined by
a processor, which has “integral analog to digital (A/D) conversion
capabilities . . . to allow direct connection of vital sign data in analog
format.” Id. at 7:32–34, 7:49–52.
4. Fujisaki
Fujisaki is titled “Apparatus for Checking Pulse and Heart Rates.”
Ex. 1016, code (54). Fujisaki is a small portable device for checking pulse
rate and it teaches that wearable devices include removable cables to
interface with sensors. Id. at code (57), 5:37–44, Figs. 2, 6.
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Figure 2 of Fujisaki is reproduced below.

Figure 2 of Fujisaki depicts a partial perspective view of connector pin 5
provided for receiving connector plug 8 to create a removable connection for
either a heart or pulse sensor. Ex. 1016, 5:37–44.
5. Akai
Akai is titled “Monitoring physical condition of a patient by
telemetry,” and it discloses a wearable monitoring device for monitoring
blood glucose levels. Ex. 1007, codes (54), (57). Akai teaches a
measurement unit that connects to three or more sensors, displays readings
from the sensors, and wirelessly transmits those readings to a central
computer. Id. at code (57). Akai’s housing has a wired connection with a
pulse oximetry sensor that extends along a path substantially perpendicular
to the side of housing 112 facing the hand. Id. at Fig. 1.
D. Asserted Obviousness in View of Goldberg and Kiani
Petitioner asserts that claims 1–5 and 9–18 would have been obvious
in view of Goldberg and Kiani. See Pet. 15–32. We discuss below the
parties’ arguments as to claim 1, as well as Petitioner’s contentions as to
claims 2–5 and 9–18, and then provide our analysis and determinations.
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1. Petitioner’s Arguments and Evidence
As described in more detail in the Petition, Petitioner relies on
Goldberg as teaching most of the features of claim 1. See Pet. 15–32.
Petitioner relies on Kiani for its teachings that “portable electronic devices
require battery power and wired connections often include ports,” which
Petitioner also contends would be features a person of ordinary skill in the
art would understand Goldberg to also implicitly disclose. Pet. 15–16.
Petitioner also argues that “combining Kiani and Goldberg represents a
combination of prior art elements according to known methods to yield
predictable results.” Pet. 16.
Claim 1
For ease of reference, we refer to each claim limitation according to
the labeling set forth above, and adopted by Petitioner. See Pet. xii.
Petitioner contends the preamble (1a) is not limiting, but even if it
were limiting, Goldberg teaches an arm mountable, portable, patient
monitoring device configured to receive physiological information from a
plurality of sensors. Pet. 16; Ex. 1005, 4:57–67. Goldberg discloses
portable device 100 strapped to a person’s wrist or forearm, which may
receive data from at least a pulse oximetry sensor, a blood pressure cuff
sensor, and a third sensor such as an electrolyte sensor. Pet. 16; Ex. 1005,
4:57–67, 5:3–8, 5:39–47.
As shown in Figure 1, Goldberg teaches that the pulse oximetry
sensor 104a is positioned on a user’s finger, and the blood pressure cuff
sensor 104b is positioned on a person’s forearm or wrist. Pet. 17; Ex. 1005,
4:57–67. According to Petitioner, Goldberg teaches that the sensors 104a,
104b are positioned at two different measurement sites (the finger and
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wrist), and that connection with the sensors occurs via a cable making a
wired connection. Pet. 17 (citing Ex. 1003 ¶¶ 56–58; Ex. 1005, 4:26–29,
Fig. 2). Further, Goldberg discloses sensor data collected by the portable
device is transmitted to a remote computer. Pet. 18 (citing Ex. 1003 ¶ 59;
Ex. 1005, 5:9–24, 5:39–47).4
As for limitation 1(b) (“a housing”), Petitioner persuasively shows
that Goldberg teaches a housing secured or strapped to the person being
measured at the person’s wrist or forearm. Pet. 18 (citing Ex. 1003 ¶ 61;
Ex. 1005, 4:19–30, 4:57–60). Goldberg’s blood pressure cuff sensor 104b
functions as both a sensor and a strap secured to the back of the housing to
fix the portable device to the patient’s wrist, thus meeting the requirements
of limitation 1(c). Pet. 18–19 (citing Ex. 1005, 4:57–60, 4:64–67; Ex. 1003
¶¶ 62–65).
Limitation 1(d) requires a display positioned on a front side of the
housing that shows at least one status indicator and one or more parameter
measurements. See supra. Petitioner explains persuasively how Goldberg
teaches a display with measurement data, statistical data, and sensor data
(e.g., blood pressure readings, oxygen saturation readings, pulse readings).
Pet. 21 (citing Ex. 1003 ¶¶ 67–68; Ex. 1005, 6:32–45, Figs. 6A–B). As for
the claimed status indicators, Goldberg’s display indicates whether it is
displaying daily or weekly averages, thereby indicating the status of whether
the device is operating in either a daily or weekly display mode. Pet. 22
(citing Ex. 1005, Figs. 6B–C). Petitioner notes that Goldberg does not use

4 The parties do not dispute that Goldberg teaches the subject matter recited
in the preamble. We agree that the preamble is satisfied by the prior art.
Accordingly, we need not decide whether the preamble is limiting.
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the word “status indicators,” but Kiani explicitly teaches displaying “status
indicators,” such as low battery. Pet. 22–23 (citing Ex. 1006, 8:33–9:2).
Petitioner reasons persuasively that “[i]t would have been obvious to display
the status indicators of Kiani on the display of Goldberg to indicate visually
to a user various status information, such as whether an alarm is enabled and
whether the portable monitor has a low battery,” or “additional status
information.” Pet. 23 (citing Ex. 1006, 8:33–9:2; Ex. 1003 ¶¶ 70–71).
Petitioner next shows how Goldberg teaches the limitations of 1(e)
related to a first sensor port positioned on a first side of the housing, facing
toward a hand of the arm of the patient when the housing is secured to the
arm of the patient. Pet. 23. Dr. Yanulis testifies that “[a] port is typically a
female connection or socket of a wired connection.” Ex. 1003 ¶ 73 (citing
Ex. 1001, 5:33–36, Fig. 4B). Dr. Yanulis testifies that a person of ordinary
skill in the art would assume that Goldberg would use a port to transmit the
signals into the housing and to the controller because “the male-female
relationship of wired connections is a preferred method of electrical
connection because it provides a more secure connection than merely
contacting two electrical conductors.” Id. Dr. Yanulis testifies that “[p]orts
are also preferable over hardwiring a sensor to a monitor because hardwiring
a sensor to a monitor provides no adaptability,” and patients benefit from the
adaptability to connect wired connects through ports, which provide an end
user the ability to disconnect and connect a variety of sensors as needed. Id.
Petitioner and Dr. Yanulis note that the types of connections Goldberg
could use would be limited to a select few, including a hardwired connection
or a port. Id.; Pet. 25–26. Petitioner next contends that Kiani provides
specific teachings and motivation for using a port in Goldberg:
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To the extent that Goldberg doesn’t explicitly recite a port,
Kiani teaches that sensor input ports 550 were well-known for
wired communication. EX1006, 3:21-27, 8:31-9:2. As such,
Kiani explicitly explains that which was implicitly known to a
PHOSITA: wired connections often communicate with electrical
devices via ports, such as the wired connection of the pulse
oximetry sensor 104a shown in Goldberg. Id.; EX1003, ¶ 74. It
would have been obvious to include the port taught by Kiani on
the portable device of Goldberg to establish easy removal and
replacement of the sensor 104a, and predictably resulting in a
secure, wired connection. EX1006, 2:34-3:4; EX1003, ¶ 74.
Pet. 26. Similarly, Dr. Yanulis testifies that “Kiani shows that sensor input
ports 540,[5] 550 were a known vehicle for wired communication,” and
including a port on Goldberg’s housing would predictably enable wired
communication with the pulse oximeter 104a while allowing easy removal
and replacement of the sensor 104a providing the adaptability required by
clinicians. Ex. 1003 ¶ 74.
Petitioner next shows how the combination of Goldberg and Kiani
teaches that the pulse oximetry sensor 104a provides electrical signals
representing oxygen saturation to the electronic controller 102 via a wired
connection and through the sensor port as required by limitation 1(f).
Pet. 27. Limitation 1(g) requires the wired connection configured to extend
from the first sensor port along a path substantially perpendicular to the first
side of the housing. Petitioner shows persuasively how Goldberg (Fig. 2)
includes a wire between the pulse oximetry sensor 104a and the housing 112

5 We are mindful that Dr. Yanulis uses the term “sensor input ports” in
reference to Kiani’s components 540 and 550. We note, however, that Kiani
uses the term “output port” to refer to oximeter output for connection to the
external pulse oximeter 540 and the term “sensor input” to refer to
component 550. See Ex. 1006, 8:31–33.
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that extends from the first sensor port along a path substantially
perpendicular to the first side (side facing the patient’s hand) of the housing.
Id. (citing Ex. 1003 ¶ 78; Ex. 1005, Fig. 2).
Limitation 1(h) next recites a second sensor port positioned on the
housing and configured to receive a signal from a second sensor
arrangement via a wired connection. Petitioner relies on Goldberg’s sensors
104a, 104b that communicate with the controller 102 via a wired connection
as teaching this second sensor arrangement. Pet. 28 (citing Ex. 1005, 4:19–
29, 5:3–8). Petitioner notes that because the connection between the
controller and the blood pressure sensor is a wired connection, Goldberg
implicitly teaches that this wired connection includes a port. Id. (citing
Ex. 1003 ¶¶ 79–80). Petitioner again relies on Kiani’s teachings
demonstrating that sensor ports were conventional for wired connections,
asserting it would have been obvious to a person of ordinary skill in the art
to include a port in Goldberg’s portable device for any wired connection
with a sensor. Pet. 29. As Dr. Yanulis explains, “it would have been
obvious to combine Goldberg and Kiani to include a second port as part of
the wired connection between the blood pressure sensor 104b and the
housing 112 of Goldberg.” Ex. 1003 ¶ 81. Dr. Yanulis reasons that “ports
generally provide removable wired connections” and adding a port for the
blood pressure sensor “would predictably enable wired communication with
the blood pressure sensor 104b while allowing removal and replacement of
the sensor 104b and providing a secure, wired connection between the blood
pressure sensor 104b and the housing 112.” Id.
Limitation 1(i) is generally directed to a system capable of
communicating with a third sensor, and Petitioner shows how Goldberg
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teaches a system capable of communicating with more than two sensors.
Pet. 29 (citing Ex. 1003 ¶ 81; Ex. 1005, 4:19–29, 5:3–8). Petitioner relies on
Goldberg’s teaching of how “the portable device 100a communicates with
three or more sensors (SpO2, blood pressure, and electrolyte),” and also
“receives signals from a third sensor (e.g., electrolyte) via a wired
connection via a third sensor port.” Id. (citing Ex. 1005, 4:19–29, 4:57–5:8;
Ex. 1003 ¶¶ 83, 84). Petitioner again relies on Kiani’s teaching of sensor
ports and also Petitioner reasons that adding a generic, third sensor port is
duplication of parts. Pet. 29–30.
Petitioner relies on Goldberg’s controller configured to process
signals from the sensors and the controller receiving signals from the pulse
oximetry sensor as teaching the limitations of 1(j) and 1(k). Pet. 30 (citing
Ex. 1003 ¶¶ 87, 88; Ex. 1005, 4:34–36, 4:19–23, 4:62–64). Similarly, for
limitation 1(l), Petitioner demonstrates persuasively how Goldberg teaches
that the controller derives and displays measurements of oxygen saturation
and pulse rate based on the signals received from the pulse oximetry sensor.
Id. (citing Ex. 1005, 4:19–23, 4:30–36, 4:50–56, Figs. 6A–C). Petitioner
also relies on Kiani, arguing that “even if Goldberg doesn’t expressly teach
that the pulse oximetry sensor detects both oxygen saturation and pulse, it
would have been obvious to modify the pulse oximetry sensor 104a to detect
both parameters in view of Kiani.” Pet. 31. Petitioner notes that “Kiani
explicitly explains that conventional pulse oximetry sensors detect pulse and
oxygen saturation simultaneously.” Id. (citing Ex. 1006, 6:7–9). Relying on
the testimony of Dr. Yanulis, Petitioner reasons that a person of ordinary
skill in the art “would have been motivated to include a sensor capable of
detecting both pulse rate and oxygen saturation to minimize the number of
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sensors attached to a patient, thereby decreasing patient discomfort.” Id.
(citing Ex. 1003 ¶ 92).
Limitations 1(m) and 1(n) require a transmitter configured to
wirelessly transmit information indicative of the measurements of oxygen
saturation and pulse rate to a separate monitoring device. See supra.
Petitioner explains persuasively how Goldberg’s “wireless communication
unit 110 configured to send and receive data” and its ability to “wirelessly
transmit[] sensor data or physiological measurements to the remote
computer 302,” meets these limitations. Pet. 31–32 (citing Ex. 1005, 4:40–
42, 5:9–24). “Goldberg teaches that the sensor data or physiological
measurements include oxygen saturation and pulse rate,” and Petitioner
explains how Goldberg’s remote computer is a separate monitoring device
configured to receive the sensor information. Pet. 32 (citing Ex. 1003
¶¶ 95–96; Ex. 1005, 4:19–23, 4:50–56, 5:15–17, Figs. 6A–C).
Remaining Claims
For each of the remaining claims examined below in this ground,
Patent Owner does not specifically contest Petitioner’s arguments and
evidence. For the reasons set forth below, we find Petitioner’s contentions
persuasive for these remaining claims.
Claim 2
Claim 2 depends from claim 1 and further requires, “the wired
connection from the pulse oximetry sensor to the first sensor port is provided
at least in part via a tail of the pulse oximetry sensor.” Ex. 1001, 13:55–58.
Petitioner contends, and Patent Owner does not contest, that “a
PHOSITA would assume that a tail is a wire,” and “Goldberg teaches a
pulse oximetry sensor 104a that includes a wire connecting the pulse
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oximetry sensor 104a to the controller 102.” Pet. 32 (citing Ex. 1003 ¶¶ 97,
98); Tr. 33:9–34:19.
Claim 3
Claim 3 depends from claim 2 and additionally requires, “the wired
connection is configured to run from the first sensor port, at least part way
down the arm of the patient, and to a digit of the patient to which the pulse
oximetry sensor is configured to be attached.” Ex. 1001, 13:59–63.
Petitioner relies on Figure 2 of Goldberg that shows that the wired
connection from the sensor 104a runs from the first sensor port on the
housing 112 partially down the arm of the person to a finger where the
sensor is attached. Pet 33 (citing Ex. 1005, 4:19–29, 4:60–62, Fig. 2).
Claim 4
Claim 4 depends from claim 3 and additionally requires that “the digit
is a thumb of the patient.” Ex. 1001, 13:64–65.
Petitioner contends that Goldberg teaches that the sensor 104a can be
positioned on any finger. Pet. 34 (citing Ex. 1005, 4:60–62). Dr. Yanulis
testifies that it would have been obvious to position the pulse oximetry
sensor on the person’s thumb because there is nothing different about
detecting oxygen saturation via a thumb than any other finger. Ex. 1003
¶ 100.
Claim 5
Claim 5 depends from claim 1 and additionally requires, “a cable
providing the wired connection from the pulse oximetry sensor to the first
sensor port.” Ex. 1001, 13:66–14:2.
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Petitioner persuasively shows that Goldberg teaches that the wired
connection between pulse oximetry sensor 104a and controller 102 is a wire
(i.e., cable). Pet. 34 (citing Ex. 1005, 4:26–29; Ex. 1003 ¶ 102).
Claim 9
Claim 9 depends from claim 1 and additionally requires, “a battery
configured to provide power to at least the display and the first sensor port.”
Ex. 1001, 14:14–17.
Petitioner contends that “Goldberg teaches a portable electronic
device 100a,” and “[w]ithout a battery, the portable, electronic device either
wouldn’t be portable or wouldn’t be functional.” Pet. 35 (citing Ex. 1005,
code (57); Ex. 1003 ¶ 103) (emphasis omitted). Petitioner alternatively
argues that Kiani teaches that portable devices are battery powered, and
Kiani teaches that all electrical components of the handheld device 500 are
powered by the battery. Id. (citing Ex. 1006, 5:21–22, 9:11–13). Further,
based on these teachings, “[i]t would have been obvious to include a battery
in the portable device of Goldberg so that the portable device operates
without being tethered to a wall outlet.” Id. (citing Ex. 1003 ¶ 104).
Claim 10
Claim 10 depends from claim 1 and additionally requires, “wherein
the front side of the housing comprises a single user interface.” Ex. 1001,
14:18–20.
Petitioner persuasively shows that Goldberg teaches a single display
108 for displaying data and a display is a user interface. Pet. 35 (citing
Ex. 1005, 4:30–34, 6:32–46; Ex. 1001, 14:21–22; Ex. 1003 ¶ 105).
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Claim 11
Claim 11 depends from claim 10 and additionally requires, “wherein
the single user interface comprises the display.” Ex. 1001, 14:21–22.
Petitioner additionally shows that Goldberg teaches a display 108 for
displaying data. Pet. 35 (citing Ex. 1005, 4:30–34, 6:32–46; Ex. 1003
¶ 106).
Claim 12
Claim 12 depends from claim 11 and additionally requires, “wherein
the display is positioned centrally on the front side of the housing.”
Ex. 1001, 14:23–25.
Relying on Figure 2 of Goldberg, Petitioner contends that the display
108 is centrally positioned on the housing 112. Pet. 36 (citing Ex. 1003
¶ 107; Ex. 1005, Fig. 2).
Claim 13
Claim 13 depends from claim 12 and additionally requires, “wherein
the display positioned on the front side of the housing is sized such that the
display covers most of a length of a shortest dimension of the front side of
the housing.” Ex. 1001, 14:26–29.
Petitioner contends that “Goldberg illustrates the display 108 on the
front side of the housing 112 as covering most of the length of the shortest
dimension (latitudinal) of the front side of the housing.” Pet. 36–37 (citing
Ex. 1003 ¶ 108; Ex. 1001, Fig. 2).
Claim 14
Claim 14 depends from claim 1 and generally requires, “the one or
more signal processing arrangements are further configured to: receive
signals from the second and third sensor arrangements; and cause to be
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displayed, on the display, at least measurements of one or more additional
physiological parameters.” Ex. 1001, 14:30–38.
Petitioner contends that “Goldberg teaches a controller 102 that
receives signals from a pulse oximetry sensor 104a, a blood pressure sensor
104b, and an electrolyte sensor.” Pet. 37 (citing Ex. 1003 ¶ 109; Ex. 1005,
4:19–29, 4:57–5:8). Further, “Goldberg teaches that measurements from the
three sensors are displayed based on signals received from the connected
sensors.” Pet. 38 (citing Ex. 1003 ¶ 109; Ex. 1005, 4:19–29, 5:3–8, 5:36–53,
6:32–46, Figs. 6a-c).
Claim 15
Claim 15 depends from claim 14 and additionally requires, “the one or
more signal processing arrangements are further configured to: receive
signals from the second and third sensor arrangements; and cause to be
displayed, on the display, measurements of all of the oxygen saturation,
pulse rate, and the one or more additional physiological parameters.”
Ex. 1001, 14:39–46.
Petitioner relies on Goldberg’s teaching that display device 108
displays measurements of oxygen saturation (labeled SpO2 in Fig. 6b), pulse
rate (labeled HR for “heart rate” in Fig. 6b), and an additional physiological
parameter, namely blood pressure (labeled “BP” in Fig. 6b) based on signals
received from sensors, as well as a glucose sensor. Pet. 38 (citing Ex. 1005,
4:19–29, 4:57–5:8, 5:3-6; Ex. 1003 ¶¶ 110–111).
Claim 16
Claim 16 depends from claim 15 and additionally requires, “the
transmitter is further configured to: wirelessly transmit information
indicative of the measurements of oxygen saturation, pulse rate, and the one
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or more additional physiological parameters to the separate monitoring
device.” Ex. 1001, 14:47–52.
Petitioner contends that “Goldberg teaches that the communication
unit 110 wirelessly transmits sensor data and measurements to a remote
computer 302 (i.e., separate monitoring device),” and “the sensor
measurements include blood pressure (additional physiological parameter),
oxygen saturation, and pulse rate.” Pet. 39 (citing Ex. 1005, 5:9–21, 4:50–
56).
Claim 17
Claim 17 is a method claim providing a portable patient monitoring
device according to claim 1. Claim 17 requires the additional steps of:
17(c) attaching the strap to the arm of the patient;
17(d) mounting the housing to the strap such that the first
sensor port positioned on a first side of the housing faces toward
the hand of the arm of the patient;
17(e) wrapping the pulse oximetry sensor around a digit of
the hand of the patient;
17(f) attaching the wired connection from the pulse
oximetry sensor to the first sensor port positioned on the first side
of the housing; and
17(g) activating the portable patient monitoring device
such that measurements of oxygen saturation and pulse rate are
both: displayed on the display of the portable patient monitoring
device on the patient; and
17(h) wirelessly transmitted to the separate monitoring
device configured to receive the measurements of oxygen
saturation and pulse rate.
Ex. 1001, 14:53–15:5 (limitation designations added).
Petitioner contends “Goldberg teaches a method for portable patient
monitoring,” including “that the portable device 100a is strapped to a
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patient’s arm,” and “housing 112 mounts to the strap 104b such that the
sensor port to the pulse oximetry sensor 104a faces towards the hand of the
arm of the patient.” Pet. 39–40 (citing Ex. 1003 ¶¶ 113, 116; Ex. 1005, 1:6–
18, 4:57–60, 4:64–67, Fig. 2).
Petitioner relies on the above analysis related to attaching the wired
connection from the pulse oximetry sensor to the first sensor port, arguing
“Goldberg’s housing includes a sensor port, or it would have been obvious
to include a sensor port in view of Kiani.” Pet. 41.
Petitioner points out that Figure 2 of Goldberg shows the claim 17(e)
limitation of “wrapping the pulse oximetry sensor around a digit of the hand
of the patient,” and also “illustrates the pulse oximetry sensor 104a
connecting to the portable device 100a via a wire positioned on the first side
(side facing the patient’s hand) of the housing,” required by 17(f). Id.
As for the 17(g) requirement for the measurements of oxygen
saturation and pulse rate to be displayed, Goldberg (Figures 6a–c for
example) teaches and illustrates that oxygen saturation and pulse rate are
both displayed on display 108 of portable device 100a, according to
Petitioner. Pet. 42. As for the 17(h) transmissions limitation, Petitioner
shows how Goldberg teaches that oxygen saturation and pulse rate are both
wirelessly transmitted to a remote computer 302. Id. (citing Ex. 1005, 5:9–
21).
Claim 18
Claim 18 depends from claim 17 and additionally requires:
18(a) attaching the second sensor arrangement to a second
measurement site on the patient different from the hand of the
patient;
18(b) attaching the wired connection from the second
sensor arrangement to the second sensor port;
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18(c) attaching the third sensor arrangement to a third
measurement site on the patient different from both the hand of
the patient and the second measurement site; and
18(d) attaching the wired connection from the third sensor
arrangement to the third sensor port,
18(e) wherein the portable patient monitoring device is
further activated such that measurements of one or more
additional physiological parameters are both: displayed on the
display of the portable patient monitoring device on the patient;
and wirelessly transmitted to the separate monitoring device.
Ex. 1001, 15:6–23 (limitation designations added).
Petitioner first notes that “Goldberg teaches that a blood pressure
sensor is also attached to the patient via a blood pressure cuff wrapped
around a forearm or wrist,” and that “[t]he forearm or wrist is a second
measurement location that is not the patient’s hand.” Pet. 42–43 (citing
Ex. 1003 ¶ 122; Ex. 1005, 4:64–67, Fig. 2). For the second sensor port,
Petitioner relies on its analysis above of claim 1, and further argues that
“Goldberg teaches that the blood pressure cuff 104b communicates signals
via a wired connection.” Pet. 43 (citing Ex. 1005, 4:26–29, 4:64–67, Fig. 2).
As for the claim 18(c) requirement of “attaching the third sensor
arrangement to a third measurement site,” Petitioner relies on Goldberg
“attaching a non-invasive electrolyte sensor (third sensor) to the patient to
sense NA+1 and K+1 ions,” and “that the third (or fourth) sensor is
temperature, glucose, electrocardiogram, or others.” Id. (citing Ex. 1005,
5:1–3, 1:28–44). Relying on the testimony of Dr. Yanulis, Petitioner argues
that “[a]ny of these sensors would be positioned in a different location from
the pulse oximetry sensor and the blood pressure sensor because these
exemplary sensors need exposure to the patient’s skin to detect physiological
parameters.” Id. (citing Ex. 1003 ¶ 124). “Thus, Goldberg teaches attaching
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a third sensor arrangement to a third measurement site.” Id. (citing Ex. 1003
¶¶ 124–125). Petitioner also explains how “Goldberg teaches that the
housing connects to all sensors, including the electrolyte sensor, through a
wired connection,” and “Goldberg’s housing 112 would include a third
sensor port, or it would have been obvious to include a third sensor port in
view of Kiani,” as explained above for claim 1. Pet. 43–44 (citing Ex. 1003
¶ 126; Ex. 1005, 4:26–29).
2. Patent Owner’s Arguments and Evidence
Patent Owner argues that claims 1–5 and 9–18 are not obvious over
the combination of Goldberg and Kiani. PO Resp. 23–44. Patent Owner
first contends that “the proposed combination lacks all of the claim
elements,” and “Goldberg does not disclose any claimed sensor ports and
Kiani discloses one only sensor port.” Id. at 23–24. Second, Patent Owner
contends that “there is no credible motivation for the asserted combination
and modifications,” the combination is based on “hindsight,” and “Petitioner
fails to present a motivation to modify Goldberg to add sensor ports as
required by independent Claims 1 and 17.” Id. at 24.
Patent Owner argues that “the disclosure of Goldberg does not include
any sensor ports under the proper construction.” Id. Patent Owner relies on
the testimony of Mr. Oslan and argues that Goldberg’s wire extending into
the housing is a wire directly connected to a circuit board, and thus Figure 2
shows a hardwired connection between sensor 104a and the housing 112,
which cannot be readily replaced with another sensor. Id. at 25 (citing
Ex. 2010 ¶¶ 63–64). Thus, Patent Owner contends that “Figure 2 does not
illustrate or teach any connector on the housing that mates with a compatible
connector from the sensor 104a.” Id. Patent Owner notes that a port would
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typically require a female connection or socket of a wired connection, but
“[n]owhere does Goldberg describe a female connection, a socket, a
receptacle, or anything else that could potentially be construed as a port.”
Id. at 26 (citing Ex. 2010 ¶ 64; Ex. 2013, 102:5–108:12, 121:14–20).
Patent Owner takes issue with Petitioner’s contention that a POSITA
would assume the wire shown in Figure 2 teaches a port because ports are a
common and typical electrical connection for a housing. PO Resp. 26.
Patent Owner alleges “[t]hat assumption is unsupported and legally
improper.” Id. Patent Owner argues that “[b]ecause Goldberg does not
meet either Yanulis’ explanation of a port or Patent Owner’s proposed
construction, Petitioner’s arguments for the second and third sensor port
limitations also fall short.” Id. Patent Owner alleges that Dr. “Yanulis
admitted that Goldberg does not show a second sensor port and that it was
only ‘a conceivable arrangement,’” and thus, “Goldberg does not show a
third sensor, much less a third sensor port, in Figure 2.” Id. at 27 (citing
Ex. 2013, 121:14–122:7, 122:17–123:10; Ex. 2010 ¶¶ 63, 98).
Patent Owner contends that Petitioner fails to explain why a POSITA
would have modified Goldberg with Kiani to have three sensor ports. Id.
Patent Owner argues that Kiani only discloses a single sensor port (550) and
the Board should disregard not only Yanulis’ original opinion that element
540 is a sensor input port, but also his reliance upon that opinion to conclude
that Kiani discloses multiple sensor ports. Id. at 28.
Patent Owner argues that Petitioner’s reasons for combining
references are generic and conclusory. Id. at 29. Patent Owner asserts that
the reasons for a POSITA to add a sensor port between Goldberg’s SpO2
(pulse oximetry) sensor and the housing are only conclusory testimony and
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nothing in the record supports the conclusion that “in a medical context,
hardwired sensors are undesirable.” Id. Patent Owner alleges that ports
have disadvantages that “Yanulis failed to consider.” Id. at 30. Patent
Owner relies on Mr. Oslan’s testimony that “port connections can be
accidentally detached, may introduce contact noise caused by unstable
electrical connections which could cause a measurement gap or error,
require more space and hardware to accommodate than a hardwired cable,
and introduce additional parts, expense, and points of failure to a device.”
Id. (citing Ex. 2010 ¶¶ 66–68; Ex. 2013, 117:18–118:19 (discussing
possibility of a port connection becoming detached)). In short, Patent
Owner contends “Petitioner and Yanulis fail to consider whether any
disadvantages of adding a port would dissuade a PHOSITA from making the
alleged combination.” Id. at 31.
Patent Owner further contends that Dr. Yanulis provides no reason to
modify Goldberg’s hardwired sensor to include a port, nor does he explain
how a general need to conform and adapt patient monitors would motivate
the specific addition of the claimed sensor ports, where the reference itself
elected a different approach. PO Resp. 32. Patent Owner contends that “to
the extent that clinicians did ‘demand and expect patient monitors that
conform and adapt as needed,’ there were already devices that fulfilled that
demand and expectation—conventional, full-sized patient monitors.” Id.
(citing Ex. 2010 ¶ 70). Patent Owner also contends that “[a] PHOSITA
would not expect a clinician to swap out the sensors in Goldberg’s device
because Goldberg’s device is intended for personal use directly by the
monitored person, rather than for a clinician in a critical care setting.” Id. at
33 (citing Ex. 2010 ¶¶ 70–72).
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Patent Owner argues that “Petitioner and Yanulis fail to explain how
combining Goldberg and Kiani to add sensor ports would enable the
Goldberg device to connect with different types of sensors other than the
SpO2 sensor 104a.” Id. at 34. According to Patent Owner, “[a] PHOSITA
as of 2002 would not have expected such interoperability or adaptability
between different types of sensors.” Id. (citing Ex. 2010 ¶¶ 75–76, 104–
105). Patent Owner contends that “Kiani’s invention was driven because of
the need for the ability to use his revolutionary technology with older
monitors that did not provide interchangeability with the newer technology.
Id. at 35 (citing Ex. 1006, 2:24–3:12). Based on this premise, Patent Owner
alleges that “a PHOSITA reading Goldberg and Kiani would not be
motivated to simply add a sensor port to allow Goldberg’s device to work
with other sensors because such interchangeability was not expected and
would not have been a predictable result.” Id. (citing Ex. 2010 ¶¶ 75–76,
104–105).
Patent Owner next contends that a person of ordinary skill in the art
would not be motivated to add a second sensor port between Goldberg’s
blood pressure cuff and housing because “a wrist-worn blood pressure cuff
needs to inflate in order to measure blood pressure,” and “a pressure sensor
would be located within a housing in order to measure the cuff pressure.”
PO Resp. 35–36 (citing Ex. 2010 ¶ 84). “Thus,” according to Patent Owner,
“if Goldberg’s blood pressure cuff were to be removable from the housing, a
PHOSITA would know that there would also need to be an air-tight
pneumatic connection between the housing and the blood pressure cuff.” Id.
at 36. Patent Owner argues that Petitioner failed to “identify any type of
port that could be implemented between the housing and the blood pressure
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cuff. Instead, they merely rely on the same generic disclosure of a ‘sensor
input port 550’ in Kiani . . . . But Kiani’s sensor input port 550 was for the
SpO2 sensor, not a blood pressure cuff.” Id. at 37 (citing Ex. 1006, 8:31–
9:2, Fig. 5; Ex. 2013, 120:12–133:19 (Dr. Yanulis cross-examination
regarding how this combination could be achieved)). Patent Owner argues
that “a PHOSITA reading Goldberg would not assume that Goldberg’s
blood pressure cuff is removable or is connected via a sensor port.” Id.
(citing Ex. 2010 ¶¶ 80–83). Further, Patent Owner contends “[a]dding a
sensor to the cuff is typically undesirable because a PHOSITA would not
want to place a rigid electronic device within a flexible inflatable air bladder,
and add an additional point of failure.” Id. at 38 (citing Ex. 2010 ¶¶ 93,
113). Similarly, Patent Owner argues “that adding a sensor port between the
housing and the blood pressure cuff would not be desirable or feasible given
the size limitations for a wrist-worn device and the need for an air-tight seal
between the blood pressure cuff and the housing.” Id. (citing Ex. 2010
¶¶ 84, 88).
Patent Owner points out additional difficulties in making the blood
pressure cuff removable or adding a sensor port for it and concludes that “[a]
PHOSITA would have recognized these difficulties and would not have
been motivated to add a sensor port to Goldberg’s blood pressure cuff when
the more reasonable approach would have been to integrate the blood
pressure cuff directly into Goldberg’s housing.” PO Resp. 39–40 (citing
Ex. 2010 ¶¶ 86, 93). Patent Owner disagrees with the premise that the
ability to replace a faulty blood pressure sensor would motivate the addition
of a sensor port because a POSITA would understand that adding a sensor
port would increase the likelihood of a failure. Id. at 40 (citing Ex. 2010
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¶¶ 83, 86, 87). Patent Owner also alleges that “[a] broken sensor port or
loose connection, caused by wear and tear, would prevent an air-tight seal
for the cuff or an unreliable electrical connection.” Id. Because of the
increased likelihood of failure, Patent Owner argues that a POSITA would
not be motivated to add a sensor port between Goldberg’s housing and cuff.
Id.
As for the claimed third sensor port, Patent Owner makes similar
arguments as to why a POSITA would not be motivated to add a third sensor
port to Goldberg. PO Resp. 41. Looking back to the time of the invention,
2002, Patent Owner further contends that simultaneous monitoring at the
time was accomplished with a multiparameter monitor, rather than a wrist-
worn monitor and the use of wrist-worn devices would entail significant
trade-offs for size and battery life such that a POSITA would not have
expected a wrist-worn monitor to provide the same level of multiple,
simultaneous parameter monitoring that a multiparameter monitor could
provide. Id. at 42. Patent Owner also notes that adding a third sensor port
contradicts Dr. Yanulis’ opinion that “the best way to improve patient
comfort would be to minimize the size of the wearable device and the
number of sensors attached to the patient.” Id. (quoting Ex. 1003 ¶ 29).
For the remaining claims, Patent Owner relies on the arguments made
for claim 1. PO Resp. 44 (“Thus, for the same reasons as discussed with
respect to Claim 1, Petitioner has not demonstrated the obviousness of Claim
17. Additionally, because Petitioner has not demonstrated the obviousness
of independent Claims 1 and 17, Petitioner also has not demonstrated the
obviousness of dependent Claims 2-5, 9-16, and 18.”).
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3. Discussion
Based on the final record, Petitioner has shown by a preponderance of
the evidence that claim 1 would have been obvious over Goldberg and
Kiani. Patent Owner attacks each of the references without fully considering
the proposed combination and teachings as a whole. Patent Owner alleges
that Goldberg does not teach a port because it must have been a hardwired
connection (see, e.g., Sur-Reply 3–7), yet Patent Owner does not dispute that
removable port connections were known,6 and the record provides ample
evidence of their recognized benefits (see, e.g., Ex. 1003 ¶¶ 73, 74
(Dr. Yanulis explaining the desirability of sensors using ports as opposed to
basic hard wiring.)). Patent Owner attacks Kiani as only teaching a single
port connection (see, e.g., PO Resp. 27, 28, 41), yet Goldberg teaches the
advantages of having multiple sensors and thus multiple connections.
Goldberg explains that multiple physiological sensors, either wired or
wireless, may be used in “any combination.” See Ex. 1005, 4:50–5:8.
Petitioner’s evidence and supporting testimony show that there were
only a few options for the wired sensor connections disclosed in Goldberg
and, in light of the teachings of Kiani, using a sensor port would have
predictably allowed for adaptability and flexibility in patient care that would
have been desirable to a person of ordinary skill. See Ex. 1003 ¶¶ 73, 74.
Petitioner demonstrates that using Kiani’s sensor port in Goldberg is
adopting a well-known and preferred method of electrical connection that

6 Patent Owner construes a sensor port to be a structure that is removable
(PO Resp. 18), and acknowledges that Kiani discloses a sensor port. See id.
at 26–27; Tr. 53:18–19 (“Kiani would have a single sensor input port under
our construction.”).
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provides a more adaptable, yet secure, connection than merely contacting
two electrical conductors. Id. ¶ 73. Based on the final record, and as
discussed more below, we find Petitioner’s contentions persuasive.
Whether Goldberg itself only teaches hardwired connections7 is not
dispositive because Kiani explicitly teaches the benefits of using removable
sensor ports. Ex. 1006, 3:21–27, 8:31–9:2, 19:24–26, Fig. 5; Ex. 1003 ¶ 74
(“Kiani demonstrates the ubiquity of ports,” and “that sensor input ports . . .
were a known vehicle for wired communication,” such that “it would have
been obvious to combine Goldberg and Kiani to include a port on the
housing as part of the wired connection between the pulse oximetry sensor
104a and the housing 112 of Goldberg”). Petitioner cited Kiani as evidence
that ports were a known means for forming wired connections with medical
sensors and we agree with this assessment. Pet. 26; Pet. Reply 10; Ex. 1003
¶ 74. In view of Kiani, a POSITA would have been motivated to make each
respective wired connection to a sensor port because Kiani demonstrates
ports were a known and improved method for forming wired connections.
Ex. 1003 ¶¶ 81, 86. We also find Dr. Bergeron’s testimony persuasive as to
these contentions, specifically, “it is plausible and reasonable to assume that
Goldberg has ports,” but more importantly, “[a] POSITA having knowledge

7 We determine it unlikely for Goldberg’s device to be hardwired because
Goldberg teaches a device that communicates with “one, all, or any
combination of” blood pressure, pulse, oxygen-hemoglobin saturation,
glucose, body temperature, respiration, and electrolyte sensors. Ex. 1005,
4:13–16, 4:50–56, 5:3–8 (emphasis added). Accordingly, it is most logical
for Goldberg’s ports to not be hardwired. Ex. 1040 ¶ 68 (“no POSITA
would ever design Goldberg’s device to be hardwired” and “[a] hardwired
system provides no adaptability whatsoever”).
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of Kiani would know how to create a ported connection for each respective
wired connection to a sensor that was taught by Goldberg.” Ex. 1040 ¶¶ 62,
72 (citing Ex. 1005, 4:50–56; Ex. 1006, 3:21–22).
Further, Kiani’s number of “sensor ports” is also not dispositive
because Goldberg teaches multiple wired connections to sensors, and a
POSITA would have been motivated to make each wired connection
disclosed in Goldberg ported in view of Kiani. Ex. 1040 ¶ 72. Goldberg is
explicit that its device “may contain one, all, or any combination of the
above-mentioned sensor types, as well as other sensors,” and “may be
comprised of any type of physiological sensor 104 suitable or [sic] use with
a portable monitoring device.” Ex. 1005, 5:3–8 (emphasis added). We
disagree with Patent Owner that these are mere “aspirational statements”
that do not disclose or imply using multiple sensors in the same device. PO
Resp. 41; Sur-Reply 13. We rely upon Goldberg’s explicit teachings of the
advantages of using all, or any combination, of the sensor types combined
with Kiani’s teaching of the benefits of having a removable ported
connection. See Ex. 1040 ¶ 72.
We find Petitioner has provided several persuasive rationales for the
proposed combination of Kiani’s sensor port into Goldberg and for
employing a second and third sensor with sensor ports in Goldberg. See,
e.g., Ex. 1003 ¶¶ 72–86, 85 (“including a third port on Goldberg’s housing
would have predictably enabled wired communication with the third sensor
while allowing easy removal and replacement of the third sensor and
providing a secure, wired connection between the blood pressure sensor
104b and the housing 112”), 86 (“inclusion of a generic third port would
have been obvious as a mere duplication of parts”).
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Patent Owner makes several arguments related to the sizing of the
portable device and how adding up to three sensor ports would be
undesirable to minimizing size. See PO Resp. 42. These arguments are
countered by Kiani, which shows three connectors (regardless of type) while
still remaining handheld in size. Ex. 1006, Fig. 5, 8:31; Ex.1042, 116:15–
117:7.8 We have seen no persuasive evidence that including multiple ports
would somehow cause Goldberg’s device to be too big for wrist attachment.
To the contrary, the final record before us establishes that even if Goldberg’s
device increased in size to accommodate a third port, such increase would be
minor and still allow the monitor to be arm mountable as set forth in the
’108 patent. See Ex. 1040 ¶ 76 (“A POSITA would know that the
electronics necessary to form wired connections are relatively simple and do
not take up much space.”).
Patent Owner also challenges Petitioner’s motivation to combine the
teachings of Goldberg and Kiani by arguing that clinicians are not the end-
user for Goldberg’s device. Sur-Reply 13–15. Whether the end-user is a
clinician, or a patient acting at the direction of a clinician, we see no
dispositive difference as to how a person of ordinary skill in the art would
perceive the combinability of these prior art references and the reasons for
that combination. Dr. Bergeron persuasively explains that “the motivation
to combine arguments in the Petition apply equally to both at-home use and
clinical use.” Ex. 1040 ¶ 81. For example, the advantages of
interchangeability and adaptability discussed below would be desired by the
clinician, but appreciated by both the clinician and the patient in use. See id.

8 Exhibit 1042 is the deposition of Patent Owner’s declarant, Alan Oslan,
taken April 28–29, 2021.
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(“a POSITA would be motivated to use a port to allow a user or a clinician
to remove and replace a sensor”), ¶ 71 (“I am a clinician, and I agree with
Dr. Yanulis. A POSITA designing a multi-parameter monitor would design
it to have ports and adaptability via ports. If given the choice between a
static, hardwired monitor and a monitor that offered flexibility, a POSITA
would choose the monitor that offered adaptability for patients.”).
Patent Owner criticizes Petitioner for not weighing potential
disadvantages with ports, such as: accidental disconnection, ports being
complicated, faulty connections, require more space, additional parts, and
other potential drawbacks. PO Resp. 30 (“Yanulis failed to consider
whether ports have any disadvantages compared to hardwired
connections.”), 31 (“fail to consider whether any disadvantages of adding a
port would dissuade a PHOSITA from making the alleged combination”);
Ex. 2010 ¶¶ 66–74, 68 (“adding a connector increases cost . . . adds an
additional point of failure . . . may introduce contact noise due to poor or
unstable electrical connections”). Petitioner cites evidence and testimony
calling into question these perceived disadvantages with ports, noting that in
2002 ports often included locks or tabs to securely connect cables to ports,
shields and error checking prevented noise, and there is nothing complicated
about plugging a wire into a slot. Pet. Reply 15; Ex. 1040 ¶ 78. Dr.
Bergeron addresses each of the alleged disadvantages and concludes that
ports are not complications, but benefits. Ex. 1040 ¶ 78. Further, Patent
Owner’s own prior art technology, Kiani, teaches ports and the benefits of
using ported connections despite these perceived disadvantages. See
Ex. 1006, codes (71), (57).
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Examining the potential advantages versus disadvantages of the
proposed combination, Petitioner has persuasively shown that the downsides
are not outweighed by the distinct advantages of having a port, which
enables removal of a faulty sensor without replacing the entire unit. As
explained by Dr. Bergeron, “[s]ensors can fail. Ease of replacing a failed
port is the primary advantage of using a removable port over a hardwired,
non-removable connection.” Ex. 1040 ¶ 78; see also Ex. 1003 ¶ 81 (“ports
generally provide removable wired connections, so a medical worker would
replace the blood pressure 104b with a new blood pressure sensor if the
blood pressure sensor was faulty”). The proposed combination would also
achieve the significant advantages of interchangeability and adaptability.
Ex. 1003 ¶ 74 (“including a port on Goldberg’s housing . . . would . . .
allow[] easy removal and replacement of the sensor 104a while providing a
secure, wired connection between the pulse oximetry sensor 104a and the
housing 112, thereby providing the adaptability required by clinicians”). We
agree with Dr. Bergeron that “[p]orts had clear advantages over hardwired
connections, such as the ability to replace a faulty sensor without
replacement of the entire system,” and “ports would allow for connections to
‘one, all or any combination of’ any known physiological sensor.” Ex. 1040
¶ 70 (quoting Ex. 1005, 4:50–56, 5:3–8). Further, “[i]f Goldberg were
hardwired, Goldberg would not be capable of communicating with ‘any type
of physiological sensor’ because it could only communicate with one
combination of sensors physically soldered to the device.” Id. Thus,
Petitioner establishes that a POSITA would have been motivated to choose
ported connections, especially for a flexible system like the one Goldberg
taught.
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We have considered Patent Owner’s arguments, and Mr. Oslan’s
testimony, related to potential disadvantages but determine that in the
aggregate Petitioner presents stronger evidence as to advantages of the
proposed combination that a person of ordinary skill in the art would have
considered in 2002. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.”). We address Patent Owner’s arguments against modifying
Goldberg to include a sensor port for its blood pressure cuff, and the alleged
disadvantages with that arrangement more below.
Patent Owner argues that a POSITA would not have added a port for
Goldberg’s blood pressure sensor because if Goldberg’s blood pressure
sensor is positioned between the housing and blood pressure cuff it would
create several issues and potentially not work as intended. PO Resp. 38;
Sur-Reply 8–12.
We first note that Goldberg teaches that all sensors, including pulse
oximetry sensor 104a and blood pressure sensor 104b, may communicate
with the controller 102 via a wired connection, thus, the connection between
controller 102 and the blood pressure sensor 104b may be a wired
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connection. Ex. 1003 ¶ 79 (citing Ex. 1005, 4:19–29, 5:3–8).9 Further,
Goldberg teaches blood pressure cuff sensor 104b, not just the blood
pressure cuff, and Goldberg teaches and illustrates the blood pressure cuff
sensor as outside of the housing as illustrated below. Ex. 1040 ¶ 83
(“Goldberg teaches that the blood pressure cuff sensor 104b is outside of the
housing and that the communications with the sensor is wired. . . . This
wired connection and the sensor’s location outside the housing would
necessarily include a port.”) (citing Ex. 1005, 4:26–29, 4:64–67, Fig. 2)).
Goldberg explains that sensors may be coupled to the controller by wire and
the blood pressure cuff sensor may be used to sense the monitored person’s
blood pressure and the strap also functions to secure the mountable device to
a person’s forearm or wrist. Ex. 1005, 4:26–29, 4:64–67. Relying on Dr.
Bergeron’s testimony, Petitioner persuasively shows that a POSITA would
have understood the electrical sensor is outside the portable device, and the
sensor provides the signal to the controller 102 via a wire, as illustrated in
the annotated Figure 2, reproduced below. Pet. Reply 17–18 (citing
Ex. 1005, 4:26–29; Ex. 1040 ¶ 83).

9 To the extent that any of Patent Owner’s arguments suggest that Goldberg
does not teach that a wired connection is an available option for all of
Goldberg’s sensors, we disagree. Goldberg clearly contemplates that
sensors may be connected either wirelessly or via wired connection.
Ex. 1005, 4:27–29. That is not disclosure that conveys restriction as to
either one of those connection styles.
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Petitioner’s annotated Figure 2 of Goldberg depicts portable device 101a
mounted in an assembly or housing 112 with an added annotation stating
“Blood pressure cuff sensor 104b pointing outside of housing.” Id. at 18.
Based on the final record before us, we discern no requirement that the
blood pressure sensor be mounted directly between the cuff and the housing
as Patent Owner alleges. See Sur-Reply 8–9.
Patent Owner’s arguments related to mounting a second sensor port
on Goldberg would be stronger if Petitioner relied solely on Goldberg. As
explained above, however, Petitioner relies on the teachings of Kiani for
showing the benefits of adding sensor ports into Goldberg’s multiple wired
connections. As Dr. Yanulis explains, Kiani shows that sensor input ports
were known electrical structures for wired communication and “it would
have been obvious to combine Goldberg and Kiani to include a second port
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as part of the wired connection between the blood pressure sensor 104b and
the housing 112 of Goldberg.” Ex. 1003 ¶ 81. We find persuasive Dr.
Yanulis’ explanation that “including a port on Goldberg’s housing (if it
wasn’t already there) would predictably enable wired communication with
the blood pressure sensor 104b while allowing removal and replacement of
the sensor 104b and providing a secure, wired connection between the blood
pressure sensor 104b and the housing 112.” Id. (“ports generally provide
removable wired connections, so a medical worker would replace the blood
pressure 104b with a new blood pressure sensor if the blood pressure sensor
was faulty”).
Thus, we disagree with Patent Owner’s contention that Petitioner
“relies on inherency to argue that a second sensor port exists between
Goldberg’s cuff and housing.” Sur-Reply 9. As explained above, Goldberg
provides the express disclosure of using any combination of sensor types as
well as any type of physiological sensor for use with a portable monitoring
device. In view of Kiani, the blood pressure cuff sensor is connectable to
the portable monitoring device through a second sensor port. The combined
teachings of Goldberg and Kiani are express and the motivations for making
the combined modifications are well supported.
Based on the final record, Petitioner has shown persuasively that the
combination of Goldberg and Kiani teaches all the limitations of claim 1 and
has articulated several reasoned rationales for combining the teachings of the
references, with a reasonable expectation of success in making the
combination. Accordingly, for the reasons discussed above, we are
persuaded that Petitioner has demonstrated by a preponderance of the
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evidence that claim 1 of the ’108 patent would have been obvious in view of
Goldberg and Kiani.
We have reviewed Petitioner’s contentions and supporting evidence
regarding claims 2–5 and 9–18, and determine Petitioner has demonstrated
by a preponderance of the evidence how each of these claims would have
been obvious over Goldberg and Kiani. See Pet. 32–44. As noted above,
Patent Owner does not separately address Petitioner’s contentions for these
claims.
E. Asserted Obviousness in view of Goldberg, Kiani, and Fujisaki
Petitioner contends that claims 6–8 are unpatentable under 35 U.S.C.
§ 103 as obvious in view of Goldberg, Kiani, and Fujisaki. Pet. 5, 73–74.
Relying on the testimony of Dr. Yanulis, Petitioner contends that the
combined references teach or suggest the subject matter of the challenged
claims and that a person having ordinary skill in the art would have
combined the teachings of the references in the manner asserted. Id.;
Ex. 1003 ¶¶ 201–207. Petitioner adds Fujisaki for its teaching of wearable
devices with removable cables as required by claim 6, and Petitioner
contends it would have been obvious to make Goldberg’s cable removable
from the first sensor port in view of Fujisaki. Pet. 73; Ex. 1016, 5:37–44,
Figs. 2, 6.
Claim 6 depends from claim 5 and further requires “the cable is
configured to be removably coupled to the housing via the first sensor port.”
Ex. 1001, 14:3–5. Claim 7 adds a limitation onto claim 6 that the cable is
configured to run from the first sensor port down the arm of the patient to a
digit of the patient. See id. at 14:6–11. Claim 8 further limits claim 7 by
requiring that the digit be a thumb of the patient. See id. at 14:12–13.
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Petitioner establishes that Fujisaki shows a wearable device having a
cable removably connected with a connector plug (i.e., port), and it would
have been obvious to make the Goldberg’s cable removable from the first
sensor port in light of Fujisaki in order to be able to change out sensors
efficiently. Pet. 73 (citing Ex. 1003 ¶¶ 73, 203; Ex. 1016, 5:37–44, Figs. 2,
6). Fujisaki also allows for a port to communicate with a variety of different
sensors, and as such, Petitioner argues persuasively that a POSITA would
have combined the teachings of Goldberg and Fujisaki to build a set of
medical sensors appropriate for a patient’s condition. Pet. 74.
As for claim 7, Petitioner relies on Figure 2 of Goldberg that shows
that the wired connection from the sensor 104a runs from the first sensor
port on the housing 112 partially down the arm of the person to a finger
where the sensor is attached. Pet 33 (citing Ex. 1005, 4:19–29, 4:60–62,
Fig. 2). Addressing claim 8’s limitations, Petitioner contends that Goldberg
teaches that the sensor 104a can be positioned on any finger. Pet. 34 (citing
Ex. 1005, 4:60–62). Dr. Yanulis testifies that it would have been obvious to
position the pulse oximetry sensor on the person’s thumb because there is
nothing different about detecting oxygen saturation via a thumb than any
other finger. Ex. 1003 ¶ 100.
For this ground, Patent Owner argues that “[b]ecause Petitioner has
not demonstrated obviousness of Claim 1, and because the arguments in
Ground 3 do not address the deficiencies in Ground 1, Petitioner also has not
shown a reasonable likelihood of success on Ground 3.” PO Resp. 45.
Based on the final record, Petitioner has established by a
preponderance of the evidence that claims 6–8 would have been obvious
over Goldberg, Kiani, and Fujisaki.
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F. Asserted Obviousness in view of Goldberg, Kiani, and Money
Petitioner contends that claims 19–22 are unpatentable under
35 U.S.C. § 103 as obvious in view of Goldberg, Kiani, and Money. Pet. 6,
76–84. Relying on the testimony of Dr. Yanulis, Petitioner contends that the
combined references teach or suggest the subject matter of the challenged
claims and that a person having ordinary skill in the art would have
combined the teachings of the references in the manner asserted. Id.;
Ex. 1003 ¶¶ 215–248. As noted above, claim 19 has several distinct
limitations as compared to claim 1. Claim 19 requires the first sensor port to
electrically receive a signal from a pulse oximetry sensor including analog
information and the housing to receive a signal from the second sensor
arrangement including digital information. Ex. 1001, 15:23–16:24.
1. Petitioner’s Arguments and Evidence
Petitioner presents argument and evidence showing how each
limitation of claim 19 is taught by the combination Goldberg, Kiani, and
Money. Pet. 76–81. Except for limitations 19(f) and (g), discussed in detail
below, Patent Owner does not challenge the remaining limitations of claim
19.
Adopting Petitioner’s listing of claim limitations (Pet. xvi), claim
limitation 19(f) requires “the signal from the pulse oximetry sensor
including analog information.” Petitioner argues “it would have been
obvious to receive an analog pulse oximetry sensor in view of Kiani,” and
further, “it would have been obvious to receive both analog and digital
information from different sensors in view of Money.” Pet. 78–79.
Notably, Petitioner relies on Kiani’s teaching of a sensor interface with an
amplifier and a filter that receives an analog signal from a pulse oximetry
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sensor as teaching this “analog information” limitation and not the pulse
oximetry sensor of Money. Pet. 78 (citing Ex. 1006, 1:26–28).
As for limitation 19(g) requiring the second sensor port to receive “a
signal from a second sensor arrangement . . . including digital information,”
Petitioner reasons that Money teaches a portable, multi-parameter patient
monitor that receives digital signals from some sensors and analog signals
from other sensors. Pet. xvii, 78–79; Ex. 1008, 5:48–51, 5:61–6:10, 7:4–8.
According to Petitioner, Money explains its system seeks to connect to a
wide variety of devices, transmitting both analog and digital information,
including the power requirements and requisite circuitry to communicate
with both signal types. Pet. 79 (citing Ex. 1008, 7:4–8). Petitioner contends
that modifying the combination of Goldberg and Kiani with Money would
have predictably resulted in a system that receives both analog and digital
information from various sensors, and a person of ordinary skill in the art
would have been motivated to modify Goldberg with Money to expand the
number of devices with which the portable device of Goldberg can
communicate. Id. (citing Ex. 1003 ¶¶ 227–228).
Claim limitation 19(l) requires determining digital transmit
information based at least in part on: the analog information included in the
signal from the pulse oximetry sensor, and the digital information from the
second sensor. See Pet. xvii. Petitioner explains how Goldberg discloses
packet based wireless transmissions that transmit digital data and controller
102 determining packets for transmission to remote computer 302. Pet. 97.
The remaining limitations of claim 19 are similar to those already
addressed for claim 1, or other dependent claims. See Pet. 91–98.
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Claim 20 requires that the display is positioned centrally on the front
side of the housing as well as sized to comprise most of the length of the
shortest dimension. See Ex. 1001, 16:25–30. Petitioner contends that
Goldberg in view of Kiani teaches this limitation for the reasons set forth for
claim 13. Pet. 82.
Claim 21 requires the process of physically attaching the housing to a
patient and them attaching all the components to one another, and attaching
the sensors to a patient, such that the portable patient monitoring device can
be activated to take measurements of oxygen saturation and pulse rate to
display. See Ex. 1001, 16:31–49. Petitioner relies on Goldberg’s method
for portable patient monitoring having the portable device strapped to the
patient’s forearm or wrist and the housing mounting to the strap such that the
sensor port to the pulse oximetry sensor faces towards the patient’s hand.
Pet. 82 (citing Ex. 1003 ¶ 242; Ex. 1005, 4:57–60, 4:64–67). Goldberg also
teaches methods for attaching a pulse oximetry sensor and a blood pressure
(second) sensor to the patient such that each communicate with signals via a
wired connection to display measurements from all sensors on a display
screen. Pet. 83–84.
Claim 22 requires causing the digital transmit information to be
wirelessly transmitted to the separate monitoring device (see Ex. 1001,
16:50–54), and Petitioner shows how Goldberg teaches that all sensor
measurements are wirelessly transmitted to a remote computer. Pet. 84
(citing Ex. 1003 ¶ 248; Ex. 1005, 5:9–21).
2. Patent Owner’s Arguments and Evidence
Patent Owner first notes that claim 19 differs from claim 1 by further
requiring “the signal from the second sensor arrangement including digital
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information.” PO Resp. 45. Patent Owner contends that Petitioner’s
proposed combination of Goldberg, Kiani, and Money fails to disclose this
limitation. Id. (citing Ex. 2010 ¶¶ 108–118). Patent Owner points out that
the only sensor disclosed in Money that includes digital information is a
pulse oximeter sensor, which cannot serve as the second sensor arrangement
according to the claim. Id. at 46. Patent Owner contends Petitioner ignores
the specific arrangement of analog and digital inputs required by claim 19,
namely that the signal from the pulse oximetry sensor includes analog
information and that the signal from the second sensor arrangement includes
digital information. Id. Patent Owner argues that Money’s sensor
configuration is the opposite of the configuration recited in claim 19 because
Money receives digital data from a pulse oximeter sensor (labelled as SpO2)
and analog data from all other sensors as shown in the annotated Figure 1 of
Money below.

Patent Owner’s annotated Figure 1 of Money showing all sensor data other
than SpO2 being sent through an A/D converter. PO Resp. 47.
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According to Patent Owner, because Money does not teach receiving
digital data from any sensors other than a pulse oximeter sensor,
incorporating the teachings of Money into the Goldberg/Kiani combination
would result in a device that receives analog information from a pulse
oximetry sensor (as allegedly taught by Goldberg/Kiani) and analog
information from additional sensors (as taught by Money). Id. Patent
Owner argues, however, that is not the signal arrangement recited in claim
19, and Petitioner provides no contemporaneous evidence that the analog
versus digital presentation of Money is somehow interchangeable or a mere
design choice. Id.
Patent Owner further argues that a POSITA would not have been
motivated to add a second sensor port that receives digital information from
Goldberg’s blood pressure cuff. PO Resp. 48. Patent Owner contends that
Petitioner relies on Money’s disclosure of multiple sensors that
communicate with both analog and digital information, yet, Petitioner fails
to explain how or why a POSITA would have been motivated to modify
Goldberg’s blood pressure cuff to send digital signals. Id. Patent Owner
contends that the reasons for making the combination are illogical because
expanding the number of devices (i.e., the ability to swap the blood pressure
cuff with a different type of sensor altogether) would entail the removal of
the very strap used to secure Goldberg’s device to a wrist. Id. at 49
(Ex. 2010 ¶ 79). Patent Owner further contends that there is no port in
Money that could receive both analog and digital signals from different
sensors. Id.
Patent Owner further argues that modifying Goldberg’s blood
pressure cuff to send digital signals to the second sensor port would have
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been an undesirable design decision because if a sensor port receives digital
information from the blood pressure cuff, the blood pressure cuff would
contain both a pressure sensor and an analog-to-digital converter (“ADC”).
Id. at 50 (citing Ex. 2010 ¶¶ 112–113). Patent Owner contends that because
a pressure sensor and an ADC are both rigid, Petitioner should have
explained where a sensor or an ADC could be placed inside a blood pressure
cuff or why a POSITA would put one in the cuff. Id. Patent Owner also
argues that a POSITA would not have had a reasonable expectation of
success in making the proposed combination because Petitioner identifies no
elements in Money that could be combined with Goldberg and Kiani to
result in a device that meets the claim limitation. Id. at 51.
3. Discussion
Based on the final record, Petitioner has shown by a preponderance of
the evidence that claims 19–22 would have been obvious over Goldberg,
Kiani, and Money.
Patent Owner’s main argument is that Money teaches the opposite
data signal configuration from the one claimed. See PO Resp. 47. Patent
Owner’s arguments ignore the teachings of the combination as a whole.
Petitioner’s proposed combination for the obviousness contention considers
that analog and digital signals are obvious signal variants that each transmit
data. See Ex. 1003 ¶ 223. We find persuasive Dr. Yanulis’ testimony that
“signals are either analog or digital. There are only two options, so it would
have been obvious to transmit signals as either digital or analog signals,” and
“Goldberg provides the motivation to adopt the teachings of Money to be
able to communicate with any conventional sensors (both analog and
digital).” Ex. 1003 ¶¶ 223, 227 (citing Ex. 1005, 4:50–56). Thus,
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Petitioner’s case is based on selecting one of a finite number (two) of known
options based on the teachings of Money and Kiani.
We made an initial determination that Goldberg teaches a system that
can communicate with any sensor, which would include analog and digital
sensors, and nothing in the final record persuasively undermines that
determination. See Ex. 1003 ¶ 227 (“Goldberg teaches that it wishes to
communicate with any conventional sensor.”). On the final record, we find
persuasive Dr. Yanulis’ testimony that Money teaches a system that receives
analog signals from some sensors and digital signals from others and further
explains the circuitry and power requirements that are necessary to
communicate with both analog and digital sensors. Id. ¶ 226 (citing
Ex. 1008, 5:48–51, 5:61–6:10, 7:4–8). Similarly, Dr. Yanulis also relies on
Kiani and testifies that “[t]ypically, pulse oximetry sensors operate in the
analog domain and transmit analog signals,” and “Kiani expressly explains
this well-known fact.” Id. ¶ 220 (citing Ex. 1006, 1:26–28). Further, Money
teaches the benefits of adopting a portable, wearable patient monitoring
device that receives analog data from one sensor and digital data from
another sensor. Id.
Money teaches the ability to operate any sensor in the analog domain
such that any of Goldberg’s sensor signals, including the one from its pulse
oximeter sensor, could include analog information as required by claim 19.
See id. ¶ 227 (“Goldberg provides the motivation to adopt the teachings of
Money to be able to communicate with any conventional sensors (both
analog and digital).” (citing Ex. 1005, 4:50–56)). Because one
representative example of a pulse oximeter sensor in Money is operating in
the digital domain (see Ex. 1008, Fig. 1), does not negate Money’s
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comprehensive teachings that sensor data may be reported in “two modes,”
either digitized or in analog waveform and the device must “process both
analog and digital data,” or Kiani’s teaching of a pulse oximetry sensor
operating in the analog domain. Ex. 1008, 5:61–6:10, 7:4–7; Ex. 1003 ¶ 220
(“it would have been obvious for [Goldberg’s] pulse oximeter 104a to
transmit analog information in view of Kiani”).
Patent Owner makes arguments as to the disadvantages of the physical
combinability of the proposed combination such as questioning whether and
where a “rigid” pressure sensor and ADC could be placed inside a blood
pressure cuff. We find persuasive Dr. Yanulis’ testimony that “[t]he
circuitry described by Money provides exactly the necessary electrical
infrastructure to allow for this compatibility with both analog and digital
sensors,” in “a portable, wearable patient monitoring device.” Ex. 1003
¶¶ 226, 228 (citing Ex. 1008, 5:48–51, 5:61–6:10, 7:4–8). Further, we find
reasonable Dr. Bergeron’s testimony that a POSITA would understand
Goldberg’s controller that communicates with all sensors via wires may
have a controller connected to a blood pressure sensor that is not also
functioning as a strap that secures the device to a person’s wrist. Ex. 1040
¶ 84. Instead, Goldberg envisioned communication with a blood pressure
sensor having a microphone positioned outside the housing and against the
person’s skin within the blood pressure cuff. Id. ¶ 85. Additionally, even if
both a sensor and ADC were positioned inside a blood pressure cuff as
Patent Owner argues, Petitioner has produced convincing rebuttal evidence
showing how similar sensors were placed within a blood pressure cuff. See
id.
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58
G. Asserted Obviousness Grounds Based on Akai
Because each of claims 1–22 have been found to be unpatentable
based on the grounds with Goldberg and Kiani as the primary references, we
determine it unnecessary to reach the remaining grounds based on Akai. See
Boston Scientific SCIMED v. Cook Group, 809 Fed. Appx. 984, 990 (April
30, 2020) (nonprecedential) (“We agree that the Board need not address
issues that are not necessary to the resolution of the proceeding.”); see also
SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding that a
petitioner “is entitled to a final written decision addressing all of the claims
it has challenged”).
H. Petitioner’s Motion to Exclude
Petitioner filed a Motion to Exclude (Paper 36, “Pet. Mot.”), to which
Patent Owner filed an Opposition (Paper 37), and Petitioner filed a Reply
(Paper 38).
Petitioner seeks to exclude Exhibits 2016, 2027, 2028, paragraphs
90–92, 94, and 96 of Exhibit 2010 (the Declaration of Mr. Oslan) on the
grounds of relevancy to this proceeding. Pet. Mot. 2–7. Petitioner seeks to
exclude Exhibits 2024, 2025, and paragraphs 72, 74, 105, and 131 of Exhibit
2010 on the grounds of inadmissible hearsay. Pet. Mot. 8–10.
The exhibits and testimony identified by Petitioner as a part of its
Motion to Exclude have either not been relied upon as a part of this Final
Written Decision, or have not been considered in a manner that is adverse to
Petitioner. Accordingly, we determine that Petitioner’s Motion to Exclude is
moot, and we dismiss it as such.
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59
III. CONCLUSION
For the foregoing reasons, we determine Petitioner has established by
a preponderance of the evidence the unpatentability of claims 1–22 of the
’108 patent.10 In summary:
Claims
35
U.S.C.
§
Reference(s)/Basis
Claim(s)
Shown
Unpatentable

Claim(s) Not
Shown
Unpatentable

1–5, 9–18 103(a) Goldberg, Kiani 1–5, 9–18
1–5, 9–18 103(a) Akai, Kiani11
6–8 103(a) Goldberg, Kiani,
Fujisaki
6–8
6–8 103(a) Akai, Kiani,
Fujisaki11

19–22 103(a) Goldberg, Kiani,
Money
19–22
19–22 103(a) Akai, Kiani,
Money11

Overall
Outcome
1–22

10 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
11 As explained above, we do not reach this ground of unpatentability. See
supra.
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60
IV. ORDER
Accordingly, it is
ORDERED that claims 1–22 of U.S. Patent No. 10,213,108 B2 are
unpatentable;
ORDERED that Petitioner’s Motion to Exclude is dismissed as moot;
and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this Final Written Decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.
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Patent 10,213,108 B2

61
PETITIONER:
Rudolph A. Telscher, Jr.
Nathan P. Sportel
Daisy Manning
Jennifer Hoekel
HUSCH BLACKWELL LLP
PTAB-RTelscher@huschblackwell.com
Nathan.Sportel@huschblackwell.com
PTAB-DManning@huschblackwell.com
ptab-jhoekel@huschblackwell.com

PATENT OWNER:
Sheila Swaroop
Irfan A. Lateef
Benjamin Everton
Brian C. Claassen
KNOBBE, MARTENS, OLSON, & BEAR, LLP
2sns@knobbe.com
2ial@knobbe.com
2bje@knobbe.com
2bcc@knobbe.com