Filed: October 1, 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’S SUR-REPLY TO REPLY
`
`
`
`
`
`
`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’S SUR-REPLY TO REPLY
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION .................................................................................... 1
`
`II. ARGUMENT ............................................................................................ 2
`
`A. Grounds 1A-1E ............................................................................... 2
`
`1.
`
`Petitioner’s New Evidence And Arguments Address
`An Argument Masimo Never Made .................................... 2
`
`a)
`
`b)
`
`The Principle Of Reversibility Is Irrelevant To
`Petitioner’s Proposed Combination ........................... 7
`
`Petitioner’s Other New Theories Are Similarly
`Misplaced ................................................................. 10
`
`2.
`
`3.
`
`Petitioner Does Not Establish A Motivation To
`Modify Aizawa’s Sensor To Include Both Multiple
`Detectors And Multiple LEDs ........................................... 15
`
`Ground 1B: Ohsaki Would Not Have Motivated A
`POSITA To Add A Convex Protrusion To Aizawa’s
`Sensor ................................................................................. 17
`
`B. Grounds 2A-2C ............................................................................ 21
`
`1.
`
`2.
`
`3.
`
`A POSITA Would Not Have Added A Convex
`Surface To Mendelson-1988’s Sensor ............................... 21
`
`Petitioner’s Proposed Combination Does Not Include
`A “Cover” .......................................................................... 21
`
`Petitioner’s Proposed Combination Does Not Include
`The Claimed “Circular Wall” That “Creates A Gap
`Between The Surface And The Light Permeable
`Cover” ................................................................................ 24
`
`-i-
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`4.
`
`5.
`
`Petitioner Still Identifies No Motivation To Change
`The Shape Of Mendelson-1988’s Packaging..................... 24
`
`Petitioner Uses Nishikawa As Far More Than A
`“Supporting Reference” ..................................................... 25
`
`III. CONCLUSION ....................................................................................... 26
`
`
`
`
`
`-ii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F. 3d 1314 (Fed. Cir. 2009)....................................................................................... 20
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ....................................................................... 22
`
`
`
`
`
`-iii-
`
`
`
`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`Declaration of Jeremiah S. Helm in Support of Pro Hac Vice
`Motion
`
`Declaration of William R. Zimmerman in Support of Pro Hac
`Vice Motion
`
`Reserved
`
`Declaration of Dr. Vijay K. Madisetti
`
`Curriculum Vitae of Dr. Vijay K. Madisetti
`
`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
`
`Webster, Design of Pulse Oximeters (1997)
`
`Reserved
`
`Exhibit List, Page 1
`
`
`
`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`
`Exhibit No.
`
`Description
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01520, IPR2020-01536, IPR2020-
`01537, IPR2020-01538, IPR2020-01539 (September 18, 2021)
`
`Exhibit List, Page 2
`
`
`
`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`I.
`INTRODUCTION
`Rather than substantively rebut Masimo’s arguments, Petitioner concocts
`
`arguments Masimo never made and then spends many pages of briefing attempting
`
`to disprove those arguments. Petitioner asserts numerous new optics theories in an
`
`attempt to show a convex surface does not direct “all” light to a single point in the
`
`“center.” Reply 19.1 Masimo never made such an argument.
`
`Rather, Masimo argued that a convex surface condenses relatively more light
`
`towards a more central location as compared to a flat surface. There should be no
`
`dispute on this issue. Petitioner and its declarant repeatedly admitted that a convex
`
`surface would direct light away from the periphery and towards a more central
`
`position. Yet, Petitioner proposed adding a convex surface above peripherally
`
`located detectors, arguing a POSITA would make the addition to improve optical
`
`signal strength. Masimo explained that, consistent with Petitioner’s admissions, a
`
`POSITA would not have been motivated to direct light away from peripherally
`
`located detectors. None of Petitioner’s new arguments persuasively rebut this. The
`
`Board should affirm the patentability of all challenged claims.
`
`
`1 All emphasis is added unless otherwise noted
`
`-1-
`
`
`
`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`II. ARGUMENT
`
`A. Grounds 1A-1E
`1.
`
`Petitioner’s New Evidence And Arguments Address An Argument
`Masimo Never Made
`Petitioner mischaracterizes Masimo’s position as contending Inokawa’s lens
`
`would direct “all” light “only at a single point at the center….” Reply 3. However,
`
`Petitioner never quotes any such Masimo argument because none exists. Masimo
`
`clearly and repeatedly argued “that a POSITA would have understood that
`
`Inokawa’s convex shape would direct incoming light towards the center of the
`
`sensor.” Patent Owner Response (“POR”) 18; see also id. 2, 14-17, 23, 24, 27.
`
`Masimo’s declarant, Dr. Madisetti, likewise repeatedly testified that Inokawa’s lens
`
`directs light “to a more central location as a result of passing through the convex
`
`surface.” Ex. 2004 ¶54; see also id., e.g. ¶¶34, 43, 49, 51, 52, 55.2 Masimo and Dr.
`
`Madisetti explained that a convex surface condenses relatively more light towards a
`
`more central location as compared to a flat surface. See, e.g., Ex. 2004 ¶67 (“Taken
`
`as a whole, a POSITA would have understood that a convex surface results in an
`
`overall redirection of incoming light towards the center of the underlying sensor and
`
`
`2 Indeed, when asked, Dr. Kenny could identify no testimony from Dr.
`
`Madisetti stating that all light was directed to center. See, e.g., Ex. 2027 63:7-64:6,
`
`94:20-96:1, 96:18-97:7.
`
`-2-
`
`
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`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`away from the periphery of the underlying sensor.”); POR 15 (“There can be no
`
`legitimate dispute that Petitioner’s proposed convex lens would direct light toward
`
`the center.”).
`
`Petitioner nonetheless strenuously argues that Inokawa’s “lens cannot focus
`
`all incoming light at a single point,” Reply 7, a position Masimo never took. Indeed,
`
`Petitioner spends thirteen pages attacking this argument with illustrations attempting
`
`to show that not all light would be directed to a center point.3 See, e.g., Reply 7-19.
`
`Petitioner’s arguments entirely miss the point. The issue is not whether a convex
`
`surface will direct all light toward a center point. The issue is whether a convex
`
`surface (as compared to a flat surface) will direct more light to Aizawa’s peripherally
`
`located detectors—the entire basis of Petitioner’s proposed motivation to combine
`
`the cited references. Pet. 13-15.
`
`
`3 While Petitioner suggests its new technical illustrations clarify its original
`
`positions (Reply 14), Petitioner’s arguments are instead new positions found
`
`nowhere in the petition. Indeed, despite Dr. Kenny testifying that his figures were
`
`not meant to be precision drawings or convey any particular shape (Ex. 2006 51:14-
`
`52:16), Dr. Kenny’s “clarif[ication]” now finds notable precision in his figures and
`
`adds orthogonal lines to allegedly evidence additional light capture. Ex. 1047 ¶21.
`
`-3-
`
`
`
`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`There can be no legitimate dispute that a convex surface directs light centrally
`
`(and away from the periphery). This is a straightforward optics principle. Indeed,
`
`Petitioner repeatedly admitted that a convex surface would direct light away from
`
`the periphery and towards a more central position. POR 15-18. Dr. Kenny clearly
`
`explained: “the incoming light is ‘condensed’ toward the center.” Ex. 1003 ¶119;
`
`see also id. ¶200. Petitioner and Dr. Kenny even illustrated that a POSITA would
`
`have understood that a convex surface redirects light to a more central location
`
`compared to a flat surface.
`
`
`Petitioner’s Illustration Of Change In Light Direction Due To Convex Surface
`(Purple) Compared To Flat Surface (Green) (Pet. 39, citing Ex. 1003 ¶119)
`
`
`On reply, Petitioner claims its illustrations were “merely simplified diagrams” and
`
`“illustrate…one example scenario (based on just one ray and one corpuscle).” Reply
`
`18-19. But the petition made no such distinction. Instead, Petitioner’s illustrations
`
`addressed a claim limitation regarding the “mean path length of light traveling to
`
`the…detectors,”—not any individual ray. Pet. 39; Ex. 1001 Claim 12. Dr. Kenny
`
`clearly stated Inokawa’s convex surface (1) “provides a condensing function by
`
`-4-
`
`
`
`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`refracting the light passing through it,” (2) that “such refraction of the incoming
`
`reflected light can shorten the path of the light,” (3) “because the incoming light is
`
`‘condensed’ toward the center.” Ex. 1003 ¶119. A POSITA would have believed
`
`that condensing light towards the center reduces the optical signal strength at
`
`peripheral detectors.
`
`After recognizing the fundamental error in its proposed combination,
`
`Petitioner now attempts to rewrite its petition and argue “a POSITA would
`
`understand that Inokawa’s lens improves ‘light concentration at pretty much all of
`
`the locations under the curvature of the lens’….” Reply 3 (quoting Ex. 2006 164:8-
`
`16). As supposed support, Petitioner quotes a single sentence of Dr. Kenny’s
`
`deposition testimony. Ex. 2006 164:8-16. Dr. Kenny admitted, however, that this
`
`cited opinion was not in his declaration. Id. 170:22-171:5. Instead, Dr. Kenny’s
`
`declaration opined that “the modified cover will allow more light to be gathered and
`
`refracted toward the light receiving cavities of Aizawa….” Ex. 1003 ¶97; see also
`
`Ex. 2006 166:10-17. But as Masimo explained, Aizawa’s light-receiving cavities
`
`are peripherally located and a convex surface would direct light away from them.
`
`Petitioner’s entire motivation to combine was based on the fundamental error
`
`that a convex surface would increase optical signal strength by focusing incoming
`
`light at peripherally located detectors. Pet. 13-15. Dr. Kenny shifted to arguing
`
`“light concentration” would somehow increase at “all of the locations” only upon
`
`-5-
`
`
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`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`realizing Petitioner’s proposed combination would otherwise make no sense.
`
`During his deposition, in an attempt to avoid Petitioner’s error, Dr. Kenny would not
`
`even agree Inokawa’s lens provides a condensing function by refracting light that
`
`passes through it. See Ex. 2027 181:9-182:5. In doing so, Dr. Kenny rejected the
`
`fundamental optics principle that supported Petitioner’s original arguments. See,
`
`e.g., Pet. 38 (“the lens/protrusion of Inokawa…serves a condensing function and
`
`thus, as with any other lens, refracts light passing through it”).
`
`Petitioner similarly asserts that “Inokawa generally discloses a ‘lens [that]
`
`makes it possible to increase the light-gathering ability’ of a reflectance-type pulse
`
`sensor.” Reply 2 (quoting Ex. 1008 ¶[0015]) (brackets in original). Based on this
`
`assertion, Petitioner argues that Inokawa would improve light-gathering at all
`
`locations, regardless of the location of the LEDs and detectors. Reply 3-4. But
`
`Petitioner contradicts its own declarant’s deposition testimony. Dr. Kenny testified
`
`Inokawa’s benefit would not be clear if Inokawa’s LEDs and detectors were moved:
`
`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.
`
`
`
`-6-
`
`
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`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`Ex. 2006 86:19-87:6. Dr. Kenny also confirmed that a convex surface would direct
`
`light toward the center of the underlying sensor. See, e.g., Ex. 2006 202:11-204:20.
`
`Petitioner does not even attempt to explain this testimony.
`
`a)
`
`The Principle Of Reversibility Is Irrelevant To Petitioner’s
`Proposed Combination
`Petitioner next asserts yet another new theory. Specifically, Petitioner points
`
`to the principle of reversibility. Reply 4. Petitioner claims that “[f]ar from being a
`
`new theory, this core concept forms the basis of all Aizawa-based combinations.”
`
`Id. 6. As support, Petitioner quotes a declaration from a different IPR proceeding
`
`that used the word “reversibility” when providing a background discussion of
`
`Aizawa. Id. 6 (quoting Ex. 1048 ¶79). Nowhere did Dr. Kenny previously analyze
`
`or espouse the principle of reversibility now asserted by Petitioner. Indeed,
`
`Petitioner’s cited sentence does not even discuss optics. Petitioner’s new theory is
`
`improper, denying Masimo of the opportunity to respond with expert testimony, and
`
`should be rejected.
`
`Petitioner’s new theory is also irrelevant. Petitioner employs the theory to
`
`argue the path of a reflected light ray would trace an identical route forward and
`
`backwards. Reply 4. This argument assumes ideal conditions that are not present
`
`when tissue scatters and absorbs light. Even Petitioner admits that tissue randomly
`
`scatters and absorbs light rays, which would cause forward and reverse light paths
`
`to be unpredictable and very likely different. See id. 7 (stating a POSITA would
`
`-7-
`
`
`
`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`have understood reflectance-type sensors measure “random” light that was
`
`“reflected, transmitted, absorbed, and scattered by the skin and other tissues and the
`
`blood before it reaches the detector”); Ex. 2027 29:11-30:7, 31:8-32:3, 38:17-42:6.
`
`Petitioner never explains how the principle of reversibility could apply to such
`
`“random” light.
`
`Indeed, Dr. Kenny testified that “light backscattered from the tissue can go in
`
`a large number of possible directions, not any single precise direction.” Ex. 2027
`
`17:12-18; see also id. 17:19-19:2 (reiterating random path and absorbance), 38:17-
`
`40:13, 40:14-42:6 (“Every photon tracing that particular path…would have a
`
`potentially different interaction with the tissue and it would be scattered, potentially,
`
`in a different direction than the photon arriving before and after it.”). In contrast,
`
`the principle of reversibility provides that “a ray going from P to S [in one direction]
`
`will trace the same route as one going from S to P [the opposite direction]” assuming
`
`there is no absorption or scattering. Ex. 1040 at 51 (illustrating diffuse reflection),
`
`53 (defining principle of reversibility), 207 (principle of reversibility requires no
`
`absorption). Indeed, Dr. Kenny testified that the principle of reversibly applies to a
`
`light ray between two points and admitted it does not apply to randomly scattered
`
`light in bulk. Ex 2027 207:9-208:22. In that circumstance, Dr. Kenny merely
`
`testified that light “can go” or “could go” along the same path. Id. 207:17-209:21,
`
`-8-
`
`
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`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`210:8-211:6. That hardly supports Petitioner’s argument that light will necessarily
`
`travel the same paths regardless of whether the LEDs and detectors are reversed.
`
`Petitioner accordingly misapplies the principle of reversibility to the proposed
`
`combination. Indeed, the principle of reversibility does not even address the relevant
`
`comparison: whether a convex surface—as compared with a flat surface—would
`
`collect and focus additional light on Aizawa’s peripherally located detectors. See
`
`Ex. 2027 212:3-14. Petitioner attempts to use the theory of reversibility to argue
`
`that one could simply reverse the LEDs and detectors in Inokawa’s sensor and obtain
`
`the same benefit of Inokawa’s convex lens. Reply 5-7. However, the principle of
`
`reversibility does not indicate that one could reverse sensor components and still
`
`obtain the same benefit from a lens as opposed to a flat surface. As discussed, Dr.
`
`Kenny specifically testified that the benefit of Inokawa’s lens would not be
`
`“obvious” if one moves the “LEDs and detectors around….” Ex. 2006 86:19-87:6.4
`
`
`4 Contrary to Petitioner’s argument, Reply 6, Dr. Madisetti did not “express
`
`ignorance” of Fermat’s principle: his testimony referred to “a stationary OPL,” an
`
`undefined term in the passage about which he was asked. Ex. 1041 89:12-19.
`
`Indeed, Dr. Madisetti’s earlier testimony cited “Fermat’s law.” Id. 33:17-34:13.
`
`-9-
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`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`b)
`Petitioner’s Other New Theories Are Similarly Misplaced
`Petitioner next asserts a number of other new theories found nowhere in the
`
`petition. First, Petitioner asserts that “Inokawa’s lens provides at best a slight
`
`refracting effect, such that light rays that otherwise would have missed the detection
`
`area are instead directed toward that area as they pass through the interface provided
`
`by the lens.” Reply 13. But that directly undermines Petitioner’s provided
`
`motivation to combine. The petition argued that a “POSITA would have looked to
`
`Inokawa 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. Petitioner’s assertion that “Inokawa’s lens provides at best a slight refracting
`
`effect” trivializes Petitioner’s proposed motivation and undermines its petition.
`
`Second, Petitioner argues that “due to its protruded shape, Inokawa’s lens
`
`‘provides an opportunity to capture some light that would otherwise not be
`
`captured.’” Reply 14 (quoting Ex. 2006 204:21-205:12). But Dr. Kenny confirmed
`
`this new theory is not in his declaration. Ex. 2006 207:11-208:1. Dr. Kenny also
`
`admitted that the convex shape in Petitioner’s proposed combination is a new
`
`creation found nowhere in any of the cited references. Ex. 2027 223:6-224:1;
`
`compare Ex. 1047 ¶¶20-22 with Ex. 1007 Fig. 2.
`
`Dr. Kenny was unable to support this new theory with any evidence. Ex. 2007
`
`294:17-298:10. Dr. Kenny testified, “I’m sure there are journal articles that describe
`
`-10-
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`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`the effect,” but he could not identify any when asked (Ex. 2007 295:5-11) and
`
`Petitioner cites none in the reply.
`
`Third, Petitioner attempts to distinguish Figure 14B in Masimo’s patent as
`
`showing the impact of a convex surface on collimated light, as opposed to diffuse
`
`backscattered light. Reply 16. But Masimo’s patent makes no such distinction. See
`
`POR 15-17. Moreover, Dr. Kenny admitted “one of ordinary skill in the art would
`
`expect a diffuse light source encountering a convex lens of the sort that we’re
`
`contemplating today, would lead to convergence of the light on the opposite side of
`
`the lens, in general” and that there would be “a convergence of most of the light
`
`rays.” Ex. 2007 423:7-424:18.
`
`Fourth, Petitioner cites yet another new figure to argue that “even for
`
`collimated light, focusing of light at the center only occurs if the light beam happens
`
`to be perfectly aligned with the axis of symmetry of the lens.” Reply 18-19. Again,
`
`Masimo never argued that all incoming light would be focused to a center point in
`
`the sensor. Moreover, Petitioner maintains the backscattered light at issue would
`
`not be “collimated” and would instead be diffuse light that enters the lens from many
`
`directions. Reply 4, 16; Ex. 2027 37:21-38:16. Light entering the lens from all
`
`angles would, on average, result in more light directed towards the center and less
`
`light at the periphery—as compared to a flat cover or no cover. See, e.g., Ex. 2004
`
`¶¶66, 68.
`
`-11-
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`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`Moreover, Petitioner ignores the structure of Petitioner’s combination.
`
`Petitioner’s figure (below, left) attempts to show that the green rays will converge at
`
`a focal point away from the center of the lens.
`
`
`
`Petitioner’s “focal” figure (left, Reply 18)
`Petitioner’s “focal” figure (center, Reply 18) (annotated by Masimo)
`Petitioner’s proposed combination (right, Pet. 15)
`
`Unlike Petitioner’s figure, however, Petitioner’s proposed combination (above,
`
`center) places detectors near the cover. As shown (above, center), examining the
`
`light paths at points near the cover (as shown by the dotted line) reveals that the left
`
`green ray diverges to the right and closer to the center of the lens. The right green
`
`ray diverges to the left and closer to the center of the lens. Thus, Petitioner’s own
`
`figure explains how a convex surface directs light toward the center in Petitioner’s
`
`combination.
`
`-12-
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`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`Fifth, Petitioner embraces Dr. Kenny’s new deposition theory that a convex
`
`lens would “allow the detector to capture light that otherwise would have been
`
`missed by the detectors.” Reply 20. Petitioner suggests that a convex surface would
`
`direct some light from the far left and far right edge of the sensor to the peripheral
`
`detectors. Id. 20. Petitioner illustrates its theory as follows:
`
`
`
`Id. Even if that theory had merit, it would be unavailing because it fails to consider
`
`the greater decrease in light at the detectors due to light redirection to a more central
`
`location. See Ex. 2027 19:16-21:8. As Mendelson-1988 explained, and Dr. Kenny
`
`confirmed, the circle of backscattered light’s intensity “decreases in direct
`
`proportion to the square of the distance between the photodetector and the LEDs.”
`
`Ex. 1015 at 2; Ex. 2027 49:17-50:13, 57:10-22. Thus, any purported signal obtained
`
`from light redirected from the sensor’s edge would be relatively weak and fail to
`
`make up for the much greater loss of signal strength when light is redirected away
`
`from the detectors and towards a more central position. See id. Thus, Petitioner’s
`
`new theory fails to show a POSITA would have been motivated to arrive at
`
`Petitioner’s combination.
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`-13-
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`Apple Inc. v. Masimo Corporation
`Indeed, while Petitioner asserts numerous new and complex optical theories,
`
`Petitioner never explains why or how a POSITA would have known or considered
`
`those theories, much less arrived at Masimo’s claims. Petitioner never disputes that
`
`its 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. POR 3-4.5
`
`Rather than consider Petitioner’s various complex theories, a POSITA would have
`
`understood and applied the straightforward understanding that a convex surface
`
`condenses light toward the center, precisely as Petitioner advocated in its petition.
`
`In fact, if anything, Petitioner’s new arguments emphasizing the complexity
`
`of optics undermine Petitioner’s obviousness arguments. Id. 27-30. As Dr. Kenny
`
`explained, light rays only “reach the [peripherally located] detectors [in Aizawa] if
`
`they somehow find those tapered openings, but not if they pass-through any part of
`
`this holder [surrounding the detectors].” Ex. 2006 257:11-18; Ex. 2027 73:13-74:14,
`
`76:13-21. Petitioner fails to show its various new and complex theories would have
`
`motivated a POSITA to arrive at Petitioner’s flawed combination.
`
`
`5 Despite testifying there are “thousands of textbooks” describing lens design,
`
`Dr. Kenny cited none in his declarations. Ex. 2027 109:4-110:12, 112:16-113:5.
`
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`Apple Inc. v. Masimo Corporation
`2.
`Petitioner Does Not Establish A Motivation To Modify Aizawa’s
`Sensor To Include Both Multiple Detectors And Multiple LEDs
`Petitioner next argues a POSITA would have added a second LED to
`
`Aizawa’s sensor. Reply 21. As a preliminary matter, even if a POSITA added a
`
`second LED, Petitioner’s proposed combination of Aizawa and Inokawa would still
`
`not meet all claim limitations. POR 34. As Masimo explained, Petitioner’s resulting
`
`sensor would—consistent with both references—include only a single centrally
`
`located detector. Id. 34-36. In contrast, the claims at issue require both multiple
`
`emitters and multiple detectors in the same sensor device. See, e.g., Ex. 1001 Claims
`
`1, 26. Petitioner’s reply does not acknowledge or address this failing.
`
`Regardless, Petitioner’s asserted motivations for adding additional emitters
`
`are unpersuasive. Petitioner’s first purported motivation is “[t]he added ability to
`
`measure body movement.” Pet. 18. As Petitioner now concedes, however, Aizawa’s
`
`sensor already monitors body motion, so the extra emitter adds no functionality.
`
`Reply 21; POR 36. Thus, adding another LED would unnecessarily increase
`
`complexity while adding no new functionality. Petitioner criticizes Aizawa’s
`
`disclosure for not explaining how it uses the computed motion signal. Reply 21.
`
`But Inokawa likewise provides no details regarding how it uses the motion signal.
`
`See, e.g., Ex. 1008 ¶[0059]. Petitioner claims Inokawa’s approach is “more reliable”
`
`than Aizawa’s. Reply 21 (citing Pet. 17, Ex. 1003 ¶77). But Petitioner cites nothing
`
`-15-
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`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`in Inokawa that suggests Inokawa’s approach is superior to Aizawa’s. There would
`
`have been no reason for a POSITA to replace Aizawa’s approach with Inokawa’s.
`
`Petitioner’s second purported motivation for adding more LEDs is to provide
`
`LED-based data transmission. Pet. 20-21. But Inokawa transmits pulse rate data
`
`only “when the pulse sensor ... is mounted onto” a cumbersome “base device.” See,
`
`e.g., Ex. 1008 Abstract; POR 37-38. Petitioner’s proposed modification requires
`
`that a user (1) stop data collection, (2) remove the sensor, and (3) attach the sensor
`
`to a “base device.” POR 37-38. In contrast, Aizawa’s sensor already includes a
`
`transmitter
`
`that allows real-time collection and display of physiological
`
`measurements—a key goal of Aizawa’s system. Ex. 2007 402:6-11; Ex. 1003 ¶101;
`
`Ex. 1006 ¶¶[0004], [0015]. While Petitioner suggests its proposed modification
`
`might “improve accuracy,” Petitioner provides no evidence that Aizawa’s existing
`
`approach suffered from accuracy problems. Reply 22-23. Petitioner’s combination
`
`thus eliminates Aizawa’s real-time data display functionality while adding no
`
`credible additional benefit. POR 37-38.
`
`Petitioner next relies on a non-ground reference, Nanba (Ex. 1010), to assert
`
`that additional LEDs would provide more reliable measurements. See Pet. 18; Ex.
`
`1003 ¶77 (citing Ex. 1010 8:45-50); Reply 21 (citing Ex. 1003 ¶77). But Nanba’s
`
`pulse wave sensor only uses a single LED emitter—not two different LEDs at two
`
`different wavelengths, as Dr. Kenny erroneously asserts. Ex. 1010 8:45-50; Ex.
`
`-16-
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`Apple Inc. v. Masimo Corporation
`1003 ¶77. Thus, Nanba’s sensor—like Aizawa’s—would use a single emitter to
`
`monitor motion. See, e.g., Ex. 1010 1:65-2:12 (apparatus for “detecting vital
`
`functions such as a cough or yawn” and monitoring “a motion artifact” during “a
`
`pulse wave”). Nanba would not motivate a POSITA to add an additional emitter.
`
`Moreover, Petitioner does not dispute its proposed modifications would cause
`
`additional problems, including additional costs, energy use, and thermal problems.
`
`Petitioner asserts a POSITA “is fully capable of employing inferences and creative
`
`steps.” Reply 23. But Petitioner provides no evidence of what those inferences are
`
`or what those creative steps might be, much less why they would lead to Masimo’s
`
`claimed invention. As previously explained, a POSITA would have expected that
`
`placing LEDs in close proximity—as in Petitioner’s proposed combination—could
`
`cause detrimental results. POR 39. A POSITA would not have been motivated to
`
`make Petitioner’s proposed modifications.
`
`3. Ground 1B: Ohsaki Would Not Have Motivated A POSITA To
`Add A Convex Protrusion To Aizawa’s Sensor
`Ground 1B argues that Ohsaki would have further motivated a POSITA to add
`
`a convex surface to “prevent slippage of Aizawa’s device.” Pet. 51. But Ohsaki
`
`does not address or correct the fundamental problem with Petitioner’s proposed
`
`combination discussed above: Like Inokawa, Ohsaki’s cover would direct light
`
`away from Aizawa’s peripherally located detectors. Ex. 2004 ¶92. A mere desire
`
`to prevent “slipp[age]” would not motivate a POSITA to create a flawed sensor.
`
`-17-
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`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`Moreover, a POSITA would not have believed Ohsaki’s longitudinal cover
`
`would benefit Aizawa’s circular sensor. Ex. 2004 ¶95. Ohsaki indicates that its
`
`sensor—including its longitudinal cover with a convex surface—must have an
`
`elongated shape oriented with the longitudinal direction of the user’s arm. Ex. 1014
`
`¶[0019]; Ex. 1004 ¶93. In contrast, Aizawa’s sensor uses a circular arrangement
`
`of detectors disposed around a central emitter. Ex. 1006 ¶¶[0009], [0027], [0036];
`
`Ex. 2004 ¶94. Aizawa specifically distinguishes its sensor from linear sensors such
`
`as Ohsaki’s, stating, “the photodetectors…should not be disposed linearly.” See,
`
`e.g., Ex. 1006 ¶[0027].
`
`A POSITA would not have been motivated to add Ohsaki’s longitudinal cover
`
`to Aizawa’s circular sensor to “prevent slippage,” as Petitioner asserts. Pet. 51.
`
`Ohsaki teaches that its longitudinal cover must be oriented with the longitudinal
`
`direction of the user’s arm to prevent slippage. Ex. 1014 ¶[0019]; Ex. 1004 ¶93.
`
`Petitioner apparently makes Ohsaki’s longitudinal cover circular so that it fits over
`
`Aizawa’s circular sensor. Pet. 50-51; POR 40-43. That removes the very shape and
`
`functionality Oshaki teaches is important to prevent slippage. Ex. 1004 ¶¶93-95.
`
`Indeed, Ohsaki teaches that its longitudinal cover must be oriented with the
`
`longitudinal direction of the user’s arm. Ex. 1014 ¶[0019]; Ex. 1004 ¶93. Dr.
`
`Kenny admitted that a circular structure has no longitudinal directionality. Ex. 2008
`
`165:20-166:5.
`
`-18-
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`IPR2020-01520
`Apple Inc. v. Masimo Corporation
`Ohsaki also indicates that its convex surface prevents slipping only on the
`
`backhand side (i.e., watch-side) of the user’s wrist. Id. ¶[0024]. Ohsaki’s sensor
`
`has “a tendency to slip off” if positioned on
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