throbber
Filed: May 28, 2021
`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`William R. Zimmerman (admitted pro hac vice)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1520-265@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01520
`U.S. Patent 10,258,265
`
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION .................................................................................... 1
`
`II. MASIMO’S PIONEERING TECHNOLOGY ......................................... 4
`
`A.
`
`The ’265 Patent .............................................................................. 4
`
`B.
`
`C.
`
`Introduction To Independent Claims ............................................. 6
`
`The ’265 Patent Prosecution .......................................................... 8
`
`III. THE PETITION’S PROPOSED COMBINATIONS ............................... 8
`
`IV. CLAIM CONSTRUCTION ..................................................................... 9
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 9
`
`VI. LEGAL STANDARD ............................................................................ 10
`
`VII. GROUNDS 1A-1E DO NOT ESTABLISH OBVIOUSNESS .............. 11
`
`A.
`
`Introduction To Ground 1A .......................................................... 11
`
`1.
`
`2.
`
`3.
`
`Aizawa Uses Peripheral Detectors Around A Single
`Centrally Located LED ...................................................... 11
`
`Inokawa Uses Peripheral LEDs Around A Single
`Centrally Located Detector ................................................ 13
`
`Petitioner’s Proposed Combination Of Aizawa And
`Inokawa .............................................................................. 13
`
`B.
`
`Ground 1A Does Not Establish Obviousness .............................. 15
`
`1.
`
`A POSITA Would Not Have Been Motivated To
`Combine Inokawa’s Lens With Aizawa’s Sensor ............. 15
`
`a)
`
`Petitioner Admits Inokawa’s Lens Directs
`Light To The Center Of The Sensor ........................ 15
`
`-i-
`
`

`

`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`b)
`
`c)
`
`d)
`
`A POSITA Would Not Have Been Motivated
`To Direct Light Away From Aizawa’s
`Detectors And Would Have No Reasonable
`Expectation Of Success When Doing So ................ 18
`
`Dr. Kenny’s New Opinions Are Improper,
`Contradict His Declaration And Undermine
`Petitioner’s Obviousness Challenge ........................ 22
`
`Petitioner’s Obviousness Challenge Also
`Improperly Relies On References Not
`Identified As Part Of Ground 1A Without An
`Articulated Motivation To Combine Or
`Expectation Of Success ........................................... 31
`
`2.
`
`Petitioner Identifies No Credible Basis To Add A
`Second LED To Aizawa .................................................... 34
`
`C.
`
`The Remaining Challenged Dependent Claims Are
`Nonobvious Over Ground 1A ...................................................... 40
`
`D. Ground 1B Fails For The Same Reason As Ground 1A And
`For Additional Reasons ................................................................ 40
`
`1.
`
`2.
`
`Ohsaki Does Not Fix The Problems With Petitioner’s
`Proposed Combination ....................................................... 41
`
`A POSITA Would Have Understood That Ohsaki
`Would Not Prevent Slippage With Aizawa’s Device ........ 42
`
`E.
`
`The Challenged Dependent Claims Are Nonobvious Over
`Ground 1B .................................................................................... 44
`
`F.
`
`Grounds 1C-1E Fail For The Same Reasons As Ground 1A ....... 44
`
`VIII. GROUNDS 2A-2C DO NOT ESTABLISH OBVIOUSNESS .............. 44
`
`-ii-
`
`

`

`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`A.
`
`Introduction To Ground 2A .......................................................... 44
`
`1. Mendelson-1988 Uses Detectors Around Centrally
`Located LEDs .................................................................... 45
`
`2.
`
`Petitioner’s Proposed Combination Of Mendelson-
`1988 And Inokawa ............................................................. 46
`
`B.
`
`Ground 2A Does Not Establish Obviousness .............................. 47
`
`1.
`
`2.
`
`3.
`
`There Would Have Been No Motivation To Combine
`And No Reasonable Expectation Of Success .................... 47
`
`Petitioner’s Proposed Ground 2A Combination Does
`Not Include The Claimed Cover ........................................ 50
`
`The Combination Of Mendelson-1988 And Inokawa
`Does Not Have The Claimed “Circular Wall” That
`“Creates A Gap Between The Surface And The Light
`Permeable Cover” (Claim 3) .............................................. 53
`
`4. Mendelson-1999 And Inokawa Do Not Have A
`“Circular” Wall (Claim 3) Or “Circular Housing
`With A Raised Edge” (Claim 26) ...................................... 56
`
`5.
`
`The Petition Improperly Relies On References Not
`Identified As Part Of Ground 2A With No Analysis
`Of Any Motivation To Combine........................................ 58
`
`C.
`
`The Challenged Dependent Claims Are Nonobvious Over
`Ground 2A .................................................................................... 60
`
`D. Grounds 2B-2C Fail For The Same Reason As Ground 2A ........ 60
`
`IX. RESERVATION OF RIGHTS ............................................................... 61
`
`X.
`
`CONCLUSION ....................................................................................... 61
`
`-iii-
`
`

`

`TABLE OF AUTHORITIES
`
`Page No(s).
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns
`694 F.3d 1312 (Fed. Cir. 2012) ................................................................... 10
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ................................................................... 10
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ....................................................... 40, 44, 60
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ..................................................................... 11
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ................................................................... 32
`
`InTouch Techs., Inc. v. VGo Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ................................................................... 57
`
`K/S HIMPP v. Hear-Wear Technologies, LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ................................................................... 59
`
`Kennametal, Inc. v. Ingersoll Cutting Tool Co.,
`780 F.3d 1376 (Fed. Cir. 2015) ................................................................... 44
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ................................................................... 10
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ................................................................... 11
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ................................................................... 11
`
`Personal Web Technologies, LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ......................................................... 26, 27, 28
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..................................................... 9
`
`-iv-
`
`

`

`TABLE OF AUTHORITIES
`(Cont’d)
`
`Page No(s).
`
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ................................................................... 11
`
`In re Stepan Co.
`868 F.3d 1342 (Fed. Cir. 2017) ................................................................... 30
`
`U.S. v. Arthrex, Inc.,
`No. 19-1434, 141 S. Ct. 549 (Oct. 13, 2020) ............................................... 61
`
`Whitserve, LLC v. Computer Packages, Inc.,
`694 F.3d 10 (Fed. Cir. 2012) ....................................................................... 36
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 312 ................................................................................................. 41
`
`37 C.F.R. § 42.6 ................................................................................................ 63
`
`37 C.F.R. § 42.8 ................................................................................................ 62
`
`37 C.F.R. § 42.24 .............................................................................................. 62
`
`37 C.F.R. § 42.100 .............................................................................................. 9
`
`37 C.F.R. § 42.104 ............................................................................................ 41
`
`
`
`
`
`-v-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`Declaration of Jeremiah S. Helm in Support of Pro Hac Vice
`Motion
`
`Declaration of William R. Zimmerman in Support of Pro Hac
`Vice Motion
`
`2003
`
`Reserved
`
`2004
`
`Declaration of Dr. Vijay K. Madisetti
`
`2005
`
`Curriculum Vitae of Dr. Vijay K. Madisetti
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01520, IPR2020-01537, IPR2020-01539
`(April 22, 2021)
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01520, IPR2020-01537, IPR2020-01539
`(April 23, 2021)
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01536, IPR2020-01538 (April 24, 2021)
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01536, IPR2020-01538 (April 25, 2021)
`
`Frank H. Netter, M.D., Section VI Upper Limb, Atlas of Human
`Anatomy (2003), Third Edition (“Netter”)
`
`Declaration of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01536
`
`2012
`
`Webster, Design of Pulse Oximeters (1997)
`
`
`
`Exhibit List, Page 1
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`I.
`
`INTRODUCTION
`
`Petitioner’s combinations all suffer from the same fundamental flaw.
`
`Petitioner seeks to add a convex lens taught by Inokawa to sensor configurations
`
`taught by either Aizawa or Mendeslson-1988 to improve “light collection
`
`efficiency.” But Inokawa increases light collection efficiency by using a convex
`
`lens to condense light to a centrally located detector:
`
`Emitter
`
`Detector
`
`Emitter
`
`Lens
`
`
`
`Inokawa Fig. 2 (color added)
`
`In contrast, both Aizawa and Mendelson-1988 have peripherally located detectors:
`
`Emitter
`
`
`
`Plate
`
`Detector
`
`Detector
`
`Detector
`
`Emitters
`
`Detector
`
`
`
`
`
`
`
`
` Aizawa Fig. 1B
` (color added)
`
`
`
`
`
`
`
`
`
`
` Mendelson-1988 Fig. 2B
` (color added)
`
`Adding Inokawa’s convex lens to Aizawa and Mendelson-1988 as proposed by
`
`Petitioner would direct light away from the detectors. That would decrease light
`
`-1-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`collection efficiency and seriously undermine the operation of Aizawa and
`
`Mendelson-1988’s sensors. A person of ordinary skill in the art (POSITA) would
`
`not be motivated to make Petitioner’s erroneous combinations:
`
`
`
` Ground One Combination Ground Two Combination
`
`
`
`
`
`Petitioner completely overlooks this fundamental deficiency. Nowhere does
`
`Petitioner explain why a POSITA would diminish the performance of the Aizawa
`
`and Mendelson-1988 sensors by directing light away from their detectors.
`
`Petitioner’s declarant, Dr. Kenny, confirmed at his deposition that Inokawa’s
`
`convex lens would indeed direct light toward the center of the underlying structure.
`
`See, e.g., Ex. 2006 202:11-204:20. Confronted with this critical flaw, Dr. Kenny
`
`resorted to contradicting his previous opinions and improperly asserting new
`
`opinions. For example, Dr. Kenny attempted to downplay the importance of light
`
`collection, identifying it as merely one consideration. Ex. 2006 108:21-109:14. Dr.
`
`Kenny even argued a POSITA might want to decrease light collection. Id. But that
`
`contradicts Dr. Kenny’s declaration and the Petition’s only stated motivation to
`
`combine. Id; Ex. 1003 ¶ 97. Dr. Kenny also jettisoned his own illustration of the
`
`proposed combinations, claiming he had not intended to illustrate a particular
`
`-2-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`structure in any detail. Ex. 2006 51:14-52:16. Dr. Kenny instead argued the optics
`
`of a sensor are complicated and that a POSITA would arrive at a particular design
`
`through “trial and error by trying out different shapes, different detector positions,
`
`different spaces, and so on.”1 Ex. 2006 189:11-190:13.
`
`None of Dr. Kenny’s new and improper opinions can fix the fundamental flaw
`
`in Petitioner’s combinations. Indeed, if anything, Dr. Kenny’s new arguments
`
`underscore the complexity of combining different physiological sensor designs.
`
`Such complexity alone undermines Petitioner’s obviousness arguments. In fact, Dr.
`
`Kenny testified Inokawa’s purported benefit would not be clear when used with a
`
`different configuration of emitters and detectors:
`
`I think one of ordinary skill in the art would understand
`that in Inokawa, the objective is to concentrate light at the
`detector, which is in the center axis of the drawing and
`that the lens is capable of providing that benefit. If we're
`going to move the lenses and the LEDs and detectors
`around and ask different questions, it isn’t so obvious that
`Inokawa is specifically considering those scenarios. It’s a
`little more hypothetical.
`
`
`Ex. 2006 86:19-87:6. Dr. Kenny is correct. “[I]t isn’t so obvious” that Inokawa’s
`
`convex lens would improve “light collection efficiency” of the peripheral detector
`
`arrangement of Aizawa or Mendelson-1988. To the contrary, a POSITA would have
`
`
`1 Emphasis supplied unless otherwise noted.
`
`-3-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`believed that Inokawa’s convex lens would direct light away from such peripherally
`
`located detectors.
`
`Petitioner’s obviousness challenge also suffers from many additional flaws,
`
`as explained in detail below. The Board should affirm the patentability of all the
`
`challenged claims.
`
`II. MASIMO’S PIONEERING TECHNOLOGY
`
`Masimo is a global medical device technology company that develops and
`
`manufactures innovative patient monitoring technologies, medical devices, and a
`
`wide array of sensors. Inventor Joe Kiani founded Masimo in 1989 as a garage start-
`
`up that revolutionized noninvasive monitoring. Today, Masimo is publicly traded
`
`and employs over 6,300 people worldwide, with annual revenues of over $1.1
`
`billion. A host of manufacturers use Masimo’s technology in their devices,
`
`including Philips, Atom, Mindray North America, GE Medical, Spacelabs, and Zoll.
`
`A. The ’265 Patent
`
`Masimo’s U.S. Patent No. 10,258,265 (the “’265 Patent”) discloses and
`
`claims an optical physiological measurement device that uses a novel design to
`
`improve detection efficiency. Masimo’s claimed physiological measurement device
`
`uses multiple detectors, multiple emitters, and a cover with a protrusion that works
`
`with a wall surrounding the detectors to dramatically enhance the device’s
`
`effectiveness. For example, the protrusion thins out the measurement site, resulting
`
`-4-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`in less light attenuation by the measured tissue. Ex. 1001 7:58-61. The protrusion
`
`further increases the area from which attenuated light can be measured. Ex. 1001
`
`7:61-63. The wall provides a gap between the cover and detectors which maximizes
`
`the amount of tissue-attenuated light that impinges on the detectors. Ex. 1001 36:38-
`
`49. The multiple detectors allow for an averaging of measurements that can reduce
`
`errors due to variations in the path of light passing through the tissue. Ex. 1001 9:28-
`
`33; see also id. 3:23-33, 4:25-35. The inventors discovered that these different
`
`components work together to provide greater noise cancellation and an order of
`
`magnitude increase in signal strength. Ex. 1001 9:28-33, 20:25-42; see also id. 3:23-
`
`33, 4:25-35.
`
`The Examiner agreed during prosecution that the claimed combination of
`
`features—including multiple detectors in conjunction with a cover comprising a
`
`protrusion—provided a patentable advance unique in the field. Ex. 1002 at 280-284.
`
`Petitioner’s references do not differ significantly from the prior art the Examiner
`
`already considered and found does not teach or suggest the claimed invention. None
`
`of Petitioner’s references disclose a cover with a protrusion positioned over multiple
`
`detectors (let alone combined with the other claimed features).
`
`-5-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`B.
`
`Introduction To Independent Claims
`
`The ’265 Patent has two independent claims: claims 1 and 26.2 Each claims
`
`an optical physiological measurement device that includes, among other things, (1)
`
`a plurality of emitters of different wavelengths, (2) at least four detectors arranged
`
`on a surface, (3) a wall protruding from the surface or raised edge, and (4) a cover
`
`that comprises a protrusion arranged to cover the at least four detectors.
`
`Claim 1 reads:
`
`1. A noninvasive optical physiological measurement device
`
`adapted to be worn by a wearer, the noninvasive optical physiological
`
`measurement device providing an indication of a physiological
`
`parameter of the wearer comprising:
`
`a plurality of emitters of different wavelengths;
`
`a housing having a surface and a circular wall protruding from
`
`the surface;
`
`at least four detectors arranged on the surface and spaced apart
`
`from each other, the at least four detectors configured to output one or
`
`more signals responsive to light from the one or more light emitters
`
`
`2 Appendix A reproduces the challenged claims with bracketed labels for
`
`convenience.
`
`-6-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`attenuated by body tissue, the one or more signals indicative of a
`
`physiological parameter of the wearer; and
`
`a light permeable cover arranged above at least a portion of the
`
`housing, the light permeable cover comprising a protrusion arranged
`
`to cover the at least four detectors.
`
`Claim 26 requires a cover that comprises a lens portion with a protrusion in
`
`optical communication with the at least four detectors. Claim 26 reads:
`
`26. A noninvasive optical physiological measurement device
`
`adapted to be worn by a wearer providing an indication of a
`
`physiological parameter of the wearer comprising:
`
`a plurality of emitters of different wavelengths;
`
`a circular housing comprising a surface with a raised edge;
`
`at least four detectors arranged on the surface, wherein a first
`
`detector is arranged spaced apart from a second detector, and a third
`
`detector arranged spaced apart from a fourth detector; and
`
`a cover of the circular housing comprising a lens portion, the
`
`lens portion comprising a protrusion in optical communication with
`
`the at least four detectors,
`
`wherein the at least four detectors are configured to output one
`
`or more signals responsive to light from the one or more light emitters
`
`-7-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`attenuated by body tissue, the one or more signals indicative of a
`
`physiological parameter of the wearer.
`
`C. The ’265 Patent Prosecution
`
`During prosecution, the Examiner agreed that the claimed combination of
`
`features—including multiple detectors in conjunction with a cover comprising a
`
`protrusion—provided a patentable advance unique in the field. Ex. 1002 at 280-284.
`
`The Examiner understood that the prior art included physiological sensors with
`
`multiple emitters and detectors. Id. at 282-283. The Examiner also understood that
`
`the prior art included physiological sensors with a single emitter-detector pair under
`
`a protrusion. Id. However, the Examiner concluded that the prior art did not suggest
`
`creating a physiological sensor using multiple detectors positioned under a cover
`
`with a protrusion in combination with the other claimed elements. Id. The
`
`Examiner recognized the technological advance of the claimed invention and
`
`correctly allowed the claims.
`
`III. THE PETITION’S PROPOSED COMBINATIONS
`
`Petitioner presents eight grounds. Grounds 1A-1E (the “Aizawa grounds”)
`
`combine at least Aizawa (Ex. 1006) and Inokawa (Ex. 1007, translation at Ex. 1008).
`
`Pet. 1-2. Grounds 2A-2C (the “Mendelson grounds”) combine at least Mendelson-
`
`1988 (Ex. 1015) and the same Inokawa reference. Pet. 2.
`
`-8-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`Aizawa and Mendelson-1988 share the same general arrangement of
`
`peripheral detectors positioned around a central light source. Ex. 1006 Fig. 1; Ex.
`
`1015 Figs. 2A-B. In contrast, Inokawa arranges two LEDs on the periphery of its
`
`sensor and one detector in the center. Ex. 1008 Fig. 2. Petitioner nevertheless asserts
`
`a POSITA would have incorporated Inokawa’s lens into Aizawa and Mendelson-
`
`1988’s sensor, which both have periphery-located detectors, to “increase the light-
`
`gathering ability.” Pet. 15, 69.
`
`IV. CLAIM CONSTRUCTION
`
`Petitioner identified no terms for construction. The Board should give the
`
`claim terms their ordinary and customary meaning, consistent with the specification,
`
`as a POSITA understands them. 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415
`
`F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner asserts that a POSITA “would have been a person with a working
`
`knowledge of physiological monitoring technologies. The person would have had a
`
`Bachelor of Science degree in an academic discipline emphasizing the design of
`
`electrical, computer, or software technologies, in combination with training or at
`
`least one to two years of related work experience with capture and processing of data
`
`or information, including but not limited to physiological monitoring technologies.”
`
`Pet. 3-4. Alternatively, Petitioner asserts a POSITA could have “a Master of Science
`
`-9-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`degree in a relevant academic discipline with less than a year of related work
`
`experience in the same discipline.” Id. 4.
`
`Masimo notes that Petitioner’s level of skill (1) requires no coursework,
`
`training or experience with optics or optical physiological monitors; (2) requires no
`
`coursework, training or experience in physiology; and (3) focuses on data processing
`
`and not sensor design. Id. 3-4. For this proceeding, Masimo nonetheless applies
`
`Petitioner’s level of skill. Ex. 2004 ¶¶35-38.
`
`VI. LEGAL STANDARD
`
`A petition based on “obviousness requires a suggestion of all limitations in a
`
`claim.” CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
`
`(citing In re Royka, 490 F.2d 981, 985 (C.C.P.A. 1974)). A patent claim is not
`
`obvious unless “a skilled artisan would have been motivated to combine the
`
`teachings of the prior art references to achieve the claimed invention, and that the
`
`skilled artisan would have had a reasonable expectation of success in doing so.”
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed.
`
`Cir. 2012). To prevail on any obviousness ground, a petitioner may not simply
`
`identify individual claim components—it must show why a “skilled artisan, with no
`
`knowledge of the claimed invention, would have selected these components for
`
`combination in the manner claimed.” In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir.
`
`-10-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`2000). The petitioner must support even simple modifications with some motivation
`
`to make the change. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
`
`An appropriate obviousness inquiry cannot involve even a “hint of hindsight.”
`
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir. 2011).
`
`A petitioner may not “simply retrace[] the path of the inventor with hindsight,
`
`discount[] the number and complexity of the alternatives, and conclude[] that the
`
`invention ... was obvious.” Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520
`
`F.3d 1358, 1364 (Fed. Cir. 2008). Likewise, “[c]are must be taken to avoid hindsight
`
`reconstruction by using the patent in suit as a guide through the maze of prior art
`
`references, combining the right references in the right way so as to achieve the result
`
`of the claims in suit.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (internal
`
`quotations omitted).
`
`VII. GROUNDS 1A-1E DO NOT ESTABLISH OBVIOUSNESS
`
`A.
`
`Introduction To Ground 1A
`
`Ground 1A combines two references: Aizawa and Inokawa.
`
`1.
`
`Aizawa Uses Peripheral Detectors Around A Single Centrally
`Located LED
`
`Aizawa discloses a sensor with four periphery-located photodetectors (22)
`
`around a single centrally located LED (21). Ex. 1006 Abstract, Fig. 1B.
`
`-11-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`DETECTOR
`
`LED
`
`DETECTOR
`
`Aizawa Fig. 1B (cross-sectional view, color added)
`
`
`
`Aizawa’s Features
`• Green: central emitter
`(21)
`• Red: peripheral
`detectors (22)
`
`
`
`
`
`Aizawa Fig. 1A (top-down view, color added)
`
`Aizawa uses this specific configuration of multiple detectors arrayed around a single
`
`LED to ensure at least one detector is near the measurement site, improving
`
`measurement consistency. Id. ¶[0027]. Aizawa detects signals on the inner side of
`
`the wrist and explains that as long as “one of the photodetectors 22 is located near
`
`the artery 11,” it is “possible to detect a pulse wave accurately.” Id. ¶¶[0026]-[0027],
`
`Fig. 2. Aizawa includes a flat transparent plate (6) that improves adhesion between
`
`-12-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`the detector and the wrist, which purportedly improves the detection efficiency. Id.
`
`[0030]. Aizawa’s sensor does not use a lens. Ex. 2004 ¶¶40-41.
`
`2.
`
`Inokawa Uses Peripheral LEDs Around A Single Centrally
`Located Detector
`
`In contrast to Aizawa, Inokawa uses a convex lens (27) to focus light from
`
`LEDs (21, 23) on the periphery of a sensor to a single detector (25) in the center.
`
`Ex. 1008 ¶[0058], Fig. 2.
`
`Inokawa’s Features
`• Green: peripheral emitters
`(21, 23)
`• Red: central detector (25)
`• Blue: convex lens (27)
`• Arrows showing direction of
`light in original, highlighted
`in yellow added
`
`
`
`
`
`Inokawa Fig. 2 (color added)
`
`As illustrated above, light reflects off the body and passes through the lens, which
`
`directs incoming light to the centrally located detector. Ex. 1008 ¶[0058]. Thus,
`
`Inokawa’s convex lens focuses incoming light away from the periphery and towards
`
`the sensor’s center, where the detector is located. Ex. 2004 ¶¶42-43.
`
`3.
`
`Petitioner’s Proposed Combination Of Aizawa And Inokawa
`
`Claim 1 of the ’265 Patent requires “a light permeable cover arranged above
`
`at least a portion of the housing, the light permeable cover comprising a protrusion
`
`-13-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`arranged to cover the at least four detectors.” Ex. 1001 Claim 1. Claim 26 requires
`
`“a cover of the circular housing comprising a lens portion, the lens portion
`
`comprising a protrusion in optical communication with the at least four detectors.”
`
`Id. Claim 26.
`
`Petitioner admits Aizawa does not disclose a cover with a protrusion as the
`
`claims require. Pet. 13. Petitioner thus argues a POSITA would have replaced
`
`Aizawa’s flat plate for adhesion with Inokawa’s convex lens “to enhance light
`
`collection efficiency, specifically by modifying the light permeable cover of Aizawa
`
`to include a convex protrusion that acts as a lens.” Pet. 14. Thus, Petitioner’s
`
`motivation for this alteration is increasing the amount of light reaching the detectors.
`
`Petitioner illustrates its proposed combination as follows:
`
`
`Petitioner’s Proposed Combination (Pet. 15)
`
`
`
`But neither Petitioner nor Dr. Kenny explains why a POSITA would have believed
`
`that Inokawa’s convex lens, which concentrates light to a central detector, would
`
`enhance light collection in Aizawa’s sensor (and the illustrated combination) with
`
`peripheral detectors. Id. (citing Ex. 1003 ¶¶96-97); Ex. 2004 ¶¶44-47.
`
`-14-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`B. Ground 1A Does Not Establish Obviousness
`
`1.
`
`A POSITA Would Not Have Been Motivated To Combine
`Inokawa’s Lens With Aizawa’s Sensor
`
`a)
`
`Petitioner Admits Inokawa’s Lens Directs Light To
`The Center Of The Sensor
`
`There can be no legitimate dispute that Petitioner’s proposed convex lens
`
`would direct light toward the center. Petitioner admits that “the lens/protrusion of
`
`Inokawa ... serves a condensing function and thus, as with any other lens, refracts
`
`light passing through it.” Pet. 38. Petitioner illustrates this condensing function
`
`using “the drawing below which compares the length of non-refracted light ...
`
`bouncing off an artery with that of refracted light.” Pet. 38-39. Petitioner’s figure
`
`(below) illustrates a POSITA’s understanding that Inokawa’s convex lens, as
`
`implemented in Aizawa’s sensor, would direct light toward the center of the sensor.
`
`Id.
`
`Petitioner’s Illustration of Inokawa’s Light-Redirection (Pet. 39)
`
`
`
`Dr. Kenny similarly included the above illustration and explained in his declaration
`
`that, when using a convex surface such as Inokawa’s lens, “the incoming light is
`
`-15-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`‘condensed’ toward the center.” Ex. 1003 ¶119; see generally Ex. 1003 ¶¶118-120,
`
`¶¶199-201 (discussing mean path length of light); Ex. 2004 ¶¶48-50. Dr. Kenny
`
`confirmed at his deposition that the convex surface in his proposed combination
`
`would result in “more light in the center than at the outer edge in this example.” Ex.
`
`2006 204:1-13. Dr. Kenny agreed “that’s because light’s being directed towards the
`
`center and away from the edge….” Ex. 2006 204:14-20.
`
`Petitioner’s and Dr. Kenny’s admissions are consistent with Inokawa’s
`
`disclosure. Ex. 2004 ¶51. As shown in Figure 2 (below), Inokawa illustrates that
`
`the convex surface condenses light towards the central detector 25. Ex. 1008
`
`¶[0058], Fig. 2. The convex surface in Inokawa works with the particular
`
`configuration of emitters and detectors: Inokawa increases light collection by
`
`increasing the amount of light that reaches the centrally located detector. Id.; Ex.
`
`2004 ¶52.
`
`Inokawa’s Features
`• Green: peripheral emitters
`(21, 23)
`• Red: central detector (25)
`• Blue: convex lens (27)
`• Arrows showing direction of
`light in original, highlighted
`in yellow
`
`
`
`
`
`Inokawa Fig. 2 (color added)
`
`-16-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`Dr. Kenny agreed that Inokawa “provides this benefit by concentrating light towards
`
`the detector in the center….” Ex. 2006 83:15-84:2. Dr. Kenny explained that “one
`
`of ordinary skill in the art would understand that in Inokawa, the objective is to
`
`concentrate light at the detector, which is in the center axis of the drawing and that
`
`the lens is capable of providing that benefit.” Ex. 2006 86:19-87:1.
`
`The ’265 Patent further confirms that a POSITA would have this
`
`understanding. Figure 14B (below) “illustrates how light from emitters (not shown)
`
`can be focused by the protrusion 605 onto detectors.” Ex. 1001 36:11-14.
`
`’265 Patent (Ex. 1001) Fig 14B (highlighting added to show direction of light)
`
`
`
`The ’265 Patent explains that “[w]hen the light rays 1420 enter the protrusion 605,
`
`the protrusion 605 acts as a lens to refract the rays into rays 1422.” Id. 36:21-23.
`
`As shown in the ’265 Patent’s exemplary structure, the convex shape directs light
`
`from the sides toward the center. Id. Fig. 14B; see Ex. 2004 ¶¶53-54.
`
`-17-
`
`

`

`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`
`
`Accordingly, Petitioner, Dr. Kenny, and the ’265 Patent all agree that a
`
`POSITA would have understood that Inokawa’s convex shape would direct
`
`inc

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket