UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`Case IPR2020-01523
`U.S. Patent 8,457,703
`
`DECLARATION OF VIJAY K. MADISETTI, PH.D.
`
`MASIMO 2001
`Masimo v. Apple
`IPR2020-01523
`
`

`

`
`
`
`I. 
`
`II. 
`
`TABLE OF CONTENTS
`
`QUALIFICATIONS ........................................................................................ 1 
`
`TOPICS OF OPINIONS .................................................................................. 8 
`
`III.  MATERIALS CONSIDERED ........................................................................ 8 
`
`IV.  UNDERSTANDING OF PATENT LAW .................................................... 10 
`
`A. 
`
`B. 
`
`C. 
`
`Level Of Ordinary Skill In The Art ..................................................... 10 
`
`Claim Construction ............................................................................. 10 
`
`Obviousness ......................................................................................... 11 
`
`V. 
`
`INTRODUCTION TO THE ’703 PATENT ................................................. 13 
`
`A. 
`
`B. 
`
`The ’703 Patent ................................................................................... 13 
`
`Introduction To The Independent Claims Of The ’703
`Patent ................................................................................................... 14 
`
`C. 
`
`Prosecution Of The ’703 Patent .......................................................... 16 
`
`VI.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 16 
`
`VII.  THE PROPOSED CITED ART COMBINATIONS .................................... 17 
`
`VIII.  CLAIM CONSTRUCTION .......................................................................... 18 
`
`A. 
`
`“Reducing/Reduce Activation Of An Attached
`Sensor” ................................................................................................ 18 
`
`B. 
`
`“Processing Characteristics” ............................................................... 22 
`
`IX.  THE COMBINATION OF DIAB AND AMANO DOES
`NOT RENDER THE CLAIMS OBVIOUS .................................................. 25 
`
`A.  Overview Of Diab ............................................................................... 26 
`
`B. 
`
`Overview Of Amano ........................................................................... 33 
`
`-i-
`
`

`

`
`
`C. 
`
`The Proposed Combination of Diab and Amano Does
`Not Disclose Or Suggest Operating At A “Lower
`Power Consumption Level” And “Higher Power
`Consumption Level”............................................................................ 38 
`
`1. 
`
`2. 
`
`3. 
`
`Diab’s Motion Artifact Suppression Module Is
`Not Suspended And A POSITA Would Not
`Have Been Motivated To Suspend It ........................................ 38 
`
`Amano Would Not Have Motivated A POSITA
`To Suspend Diab’s Motion Artifact
`Suppression Module .................................................................. 41 
`
`Dr. Anthony Does Not Show That Suspension
`Of Diab’s Motion Artifact Suppression Module
`Would Result In A “Lower Power
`Consumption Level” ................................................................. 43 
`
`D. 
`
`E. 
`
`The Combination Of Diab And Amano Does Not
`Disclose Or Suggest Comparing “Processing
`Characteristics To A Predetermined Threshold” ................................ 45 
`
`The Combination Of Diab And Amano Does Not
`Disclose Or Suggest “Reducing/Reduce An Amount
`Of Processing By A Signal Processor” ............................................... 47 
`
`X. 
`
`THE COMBINATION OF DIAB, AMANO, AND EDGAR
`DOES NOT RENDER THE CLAIMS OBVIOUS ....................................... 50 
`
`XI.  THE COMBINATION OF DIAB, AMANO, AND
`TURCOTT DO NOT RENDER THE CLAIMS OBVIOUS ........................ 52 
`
`A.  Overview Of Turcott ........................................................................... 53 
`
`B. 
`
`Dr. Anthony Does Not Show That The Combination
`Of Diab, Amano, And Turcott Discloses Or Suggests
`“Reducing/Reduce Activation Of An Attached
`Sensor” ................................................................................................ 55 
`
`
`-ii-
`
`

`

`
`
`C. 
`
`A POSITA Would Not Have Been Motivated To
`Combine Diab, Amano, And Turcott To Arrive At
`The Claimed Inventions ...................................................................... 57 
`
`XII.  THE COMBINATION OF DIAB AND THE GENERAL
`KNOWLEDGE OF POSITA AND FURTHER IN VIEW
`OF EDGAR OR TURCOTT DOES NOT RENDER THE
`CLAIMS OBVIOUS ..................................................................................... 62 
`
`XIII.  AMANO OR AMANO COMBINED WITH TURCOTT
`DOES NOT RENDER THE CLAIMS OBVIOUS ....................................... 64 
`
`A.  Dr. Anthony Fails To Show That The Cited Portions
`Of Amano Disclose “Determine Measurement Values
`For One Or More Physiological Parameters” ..................................... 65 
`
`1. 
`
`2. 
`
`Dr. Anthony Does Not Fully Address This
`Limitation .................................................................................. 65 
`
`Amano Does Not Determine Measurement
`Values ........................................................................................ 65 
`
`B. 
`
`C. 
`
`Dr. Anthony Admits That Amano Does Not Compare
`“Processing Characteristics To A Predetermined
`Threshold” Under The Correct Construction ...................................... 67 
`
`Dr. Anthony Does Not Show That The Combination
`Of Amano And Turcott Discloses Or Suggests
`“Reducing/Reduce Activation Of An Attached
`Sensor” ................................................................................................ 68 
`
`XIV.  OATH ............................................................................................................ 74 
`
`
`
`
`-iii-
`
`

`

`
`
`I, Vijay K. Madisetti, Ph.D., declare as follows:
`
`1.
`
`I have been retained by counsel for Patent Owner Masimo
`
`Corporation (“Masimo”) as an independent expert witness in this proceeding. I
`
`have been asked to provide my opinions regarding Petitioner Apple Inc.’s (“Apple”
`
`or “Petitioner”) Petition for Inter Partes Review of United States Patent No.
`
`8,457,703 (“the ’703 patent”) in this action and the supporting declaration of Brian
`
`W. Anthony, Ph.D. (Ex. 1003). I understand the Petition challenges the
`
`patentability of claims 1-7, 9-18, and 20-24 of the ’703 patent. I am being
`
`compensated at my usual and customary rate for the time I spend working on this
`
`proceeding, and my compensation is not affected by its outcome.
`
`I.
`QUALIFICATIONS
`2. My qualifications are set forth in my curriculum vitae, a copy of
`
`which is included as Exhibit 2002. A summary of my qualifications follows.
`
`3.
`
`I am a professor in Electrical and Computer Engineering at the
`
`Georgia Institute of Technology (“Georgia Tech”). I have worked in the area of
`
`digital signal processing, wireless communications, computer engineering,
`
`integrated circuit design, and software engineering for over 25 years, and have
`
`authored, co-authored, or edited several books and numerous peer-reviewed
`
`technical papers in these area.
`
`-1-
`
`

`

`
`
`4.
`
`I obtained my Ph.D. in Electrical Engineering and Computer Science
`
`at the University of California, Berkeley, in 1989. While there, I received the
`
`Demetri Angelakos Outstanding Graduate Student Award and the IEEE/ACM Ira
`
`M. Kay Memorial Paper Prize.
`
`5.
`
`I joined Georgia Tech in the Fall of 1989 and am now a tenured full
`
`professor in Electrical and Computer Engineering. Among other things, I have
`
`been active in the areas of digital signal processing, wireless communications,
`
`integrated circuit design (analog & digital), system-level design methodologies and
`
`tools, and software engineering. I have been the principal investigator (“PI”) or
`
`co-PI in several active research programs in these areas, including DARPA’s
`
`Rapid Prototyping of Application Specific Signal Processors, the State of
`
`Georgia’s Yamacraw Initiative, the United States Army’s Federated Sensors
`
`Laboratory Program, and
`
`the United States Air Force Electronics Parts
`
`Obsolescence Initiative. I have received an IBM Faculty Award and NSF’s
`
`Research Initiation Award. I have been awarded the 2006 Frederick Emmons
`
`Terman Medal by
`
`the American Society of Engineering Education for
`
`contributions to Electrical Engineering, including authoring a widely used textbook
`
`in the design of VLSI digital signal processors.
`
`6.
`
`During the past 20 years at Georgia Tech, I have created and taught
`
`undergraduate and graduate courses in hardware and software design for signal
`
`-2-
`
`

`

`
`
`processing, computer engineering (software and hardware systems), computer
`
`engineering and wireless communication circuits.
`
`7.
`
`I have been involved in research and technology in the area of digital
`
`signal processing since the late 1980s, and I am the Editor-in-Chief of the CRC
`
`Press’s 3-volume Digital Signal Processing Handbook (1998, 2010).
`
`8.
`
`I have founded three companies in the areas of signal processing,
`
`embedded software, military chipsets involving imaging technology, and software
`
`for computing and communications systems. I have supervised Ph.D. dissertations
`
`of over twenty engineers in the areas of computer engineering, signal processing,
`
`communications, rapid prototyping, and system-level design methodology.
`
`9.
`
`I have designed several specialized computer and communication
`
`systems over the past two decades at Georgia Tech for tasks such as wireless audio
`
`and video processing and protocol processing for portable platforms, such as cell
`
`phones and PDAs. I have designed systems that are efficient in view of
`
`performance, size, weight, area, and thermal considerations. I have developed
`
`courses and classes for industry on these topics, and many of my lectures in
`
`advanced computer system design, developed under the sponsorship of the United
`
`States Department of Defense in the late 1990s, are available for educational use at
`
`http://www.eda.org/rassp and have been used by several U.S. and international
`
`universities as part of their course work. Some of my recent publications in the
`
`-3-
`
`

`

`
`
`area of design of computer engineering and wireless communications systems and
`
`associated protocols are listed in Exhibit 2002.
`
`10.
`
`In the mid 2006-2007 timeframe, I collaborated with Professor John
`
`Scharf and his colleagues at Emory Healthcare system in developing FFT-based
`
`pulse oximetry system prototypes on FPGAs, which extended technologies
`
`developed by Prof. Scharf and his colleagues from the 1996 time frame (See T.
`
`Rusch, R. Sankar, J. Scharf, “Signal Processing Methods for Pulse Oximetry”,
`
`Comput. Bio. Med, Vol. 26, No. 2, 1996). Some of my more recent publications in
`
`the area of biological signal processing and bioinformatics are listed in my CV
`
`(Ex. 2002) and include, A. Bahga, V. Madisetti, “Healthcare Data Integration and
`
`Informatics in the Cloud”, IEEE Computer, Vol. 48, Issue 2, 2015, and “Cloud-
`
`Based
`
`Information
`
`Integration
`
`Informatics Framework
`
`for Healthcare
`
`Applications”, IEEE Computer, Issue 99, 2013. In addition to my signal
`
`processing experience specific to pulse oximetry, I also have experience in
`
`developing systems for other physiological signals. Beginning in the early 1990s, I
`
`worked, in particular, with ECG/EKG signals, and, in general, with biomedical
`
`signals and systems.
`
`11.
`
`In addition to my signal processing experience specific to pulse
`
`oximetry, I also have experience in developing algorithms and systems for other
`
`physiological signals. I worked with ECG/EKG signals in particular, and
`
`-4-
`
`

`

`
`
`biomedical signals and systems in general, beginning in the early 1990s. In
`
`particular, I worked with graduate student Dr. Shahram Famorzadeh, in 1990 and
`
`1991, to analyze and apply pattern recognition (a category of signal processing
`
`algorithms that is based on correlation with a set of templates) to ECG/EKG
`
`waveforms to identify physiological conditions.
`
`12.
`
`I have experience with biomedical signals and devices in the field of
`
`speech and image processing since the late 1980s. I worked on deconvolution
`
`algorithms to recover the state of the system based on observed measurements of
`
`the physiological signals in the 1993-1998 time-frame. These signal processing
`
`techniques can be applied to pulse oximetry signals, and I have been working with
`
`these techniques since the mid-1980s.
`
`13.
`
`I have studied, researched and published in the area of adaptive filter
`
`signal processing for noise reduction and signal prediction, using correlation-based
`
`approaches since the mid-1980s, both in the time-domain and frequency domain,
`
`and also to ray-tracing applications, such as Seismic Migration for oil and shale
`
`gas exploration. See for instance, V. Madisetti & D. Messerschmitt, Dynamically
`
`Reduced Complexity Implementation of Echo Cancellers, IEEE International
`
`Conference on Speech, Acoustics and Signal Processing, ICASSP 1986, Tokyo,
`
`Japan, and M. Romdhane and V. Madisetti, “All-Digital Oversampled Front-End
`
`Sensors” IEEE Signal Processing Letters, Vol 3, Issue 2, 1996, and “LMSGEN: A
`
`-5-
`
`

`

`
`
`Prototyping Environment for Programmable Adaptive Digital Filters in VLSI”,
`
`VLSI Signal processing, pp. 33-42, 1994.
`
`14. Deconvolution of symmetric (seismic) and asymmetric (pulse
`
`oximetry) signals has gained much importance in the past two decades, and some
`
`of my early work on “Homomorphic Deconvolution of Bandpass Signals” in IEEE
`
`Transactions on Signal Processing, October 1997, established several new methods
`
`for deconvolution of such signals that had several advantages of robustness,
`
`increased accuracy, and simplicity.
`
`15.
`
`In the past decade I have authored several peer-reviewed papers in the
`
`area of computer systems, instruments, and software design, and these include:
`
`
`
`
`
`
`
`
`
`V. Madisetti, et al., “The Georgia Tech Digital Signal Multiprocessor,
`
`IEEE Transactions on Signal Processing, Vol. 41, No. 7, July 1993.
`
`V. Madisetti et al., “Rapid Prototyping on the Georgia Tech Digital
`
`Signal Multiprocessor”, IEEE Transactions on Signal Processing, Vol.
`
`42, March 1994.
`
`V. Madisetti, “Reengineering legacy embedded systems”, IEEE
`
`Design & Test of Computers, Vol. 16, Vol. 2, 1999.
`
`V. Madisetti
`
`et
`
`al.,
`
`“Virtual Prototyping of Embedded
`
`Microcontroller-based DSP Systems”, IEEE Micro, Vol. 15, Issue 5,
`
`1995.
`
`-6-
`
`

`

`
`
`
`
`V. Madisetti, et al., “Incorporating Cost Modeling in Embedded-
`
`System Design”, IEEE Design & Test of Computers, Vol. 14, Issue 3,
`
`1997.
`
`
`
`V. Madisetti, et al., “Conceptual Prototyping of Scalable Embedded
`
`DSP Systems”, IEEE Design & Test of Computers, Vol. 13, Issue 3,
`
`1996.
`
`
`
`
`
`V. Madisetti, Electronic System, Platform & Package Codesign,”
`
`IEEE Design & Test of Computers, Vol. 23, Issue 3, June 2006.
`
`V. Madisetti, et al., “A Dynamic Resource Management and
`
`Scheduling Environment
`
`for Embedded Multimedia
`
`and
`
`Communications Platforms”, IEEE Embedded Systems Letters, Vol.
`
`3, Issue 1, 2011.
`
`16.
`
`I have been active in the areas of signal processing systems and
`
`mobile device communication systems for several years, and some of my
`
`publications in this area include “Frequency Dependent Space-Interleaving of
`
`MIMO OFDM Systems” Proc. of IEEE Radio and Wireless Conference
`
`(RAWCON ’03), 2003, “Embedded Alamouti Space Time Codes for High Rate
`
`and Low Decoding Complexity”, Proc. IEEE Asilomar Conf. on Signals, Systems,
`
`and Computers, 2008; and “Asymmetric Golden Codes for Fast Decoding in Time
`
`Varying Channels”, Wireless Personal Communications (2011).
`
`-7-
`
`

`

`
`
`II. TOPICS OF OPINIONS
`I offer opinions in this declaration on the following general topics:
`
`The subject matter disclosed and claimed in the ’703 patent;
`
`The level of ordinary skill in the art pertaining to the ’703 patent;
`
`The disclosures and teachings of the cited art; and
`
`17.
`
`
`
`
`
`
`
` Whether the claims of the ’703 patent would have been obvious to a
`
`person of ordinary skill in the art (“POSITA”) at the time of the
`
`alleged invention, in view of the cited art.
`
`18.
`
`I also provide background information on patient monitoring devices,
`
`including pulse oximeters, and signal processing methods and devices.
`
`III. MATERIALS CONSIDERED
`19. Below is a listing of documents and materials that I considered and
`
`reviewed in connection with providing this declaration. In forming my opinions, I
`
`considered those materials as well as anything cited or discussed in this
`
`declaration.
`
`Exhibit
`
`Description
`
`1001
`1002
`1003
`1004
`1005
`
`U.S. Patent No. 8,457,703 (“’703 Patent”)
`File History for the ’703 Patent
`Declaration of Brian W. Anthony, Ph.D.
`U.S. Patent No. 6,293,915 to Amano et al. (“Amano”)
`U.S. Patent No. 6,393,311 to Edgar et al. (“Edgar”)
`
`-8-
`
`

`

`
`
`
`
`Exhibit
`
`Description
`
`1006
`1007
`1008
`1009
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`
`2003
`
`2004
`2005
`Paper 2
`Paper 7
`
`U.S. Patent No. 6,527,729 to Turcott (“Turcott”)
`U.S. Patent No. 5,632,272 to Diab et al. (“Diab”)
`U.S. Patent No. 6,178,343 to Bindszus et al.
`U.S. Patent No. 5,924,979 to Swedlow et al.
`Tremper, Pulse Oximetry, Anesthesiology, The Journal of the
`American Society of Anesthesiologists, Inc., Vol. 70, No. 1
`(January 1989)
`Mendelson, Skin Reflectance Pulse Oximetry:
`In Vivo
`Measurements from the Forearm and Calf, Journal of Clinical
`Monitoring, Vol. 7, No. 1 (January 1991)
`Excerpts
`from Bronzino, The Biomedical Engineering
`Handbook, CRC Press, Inc. (1995)
`Konig, Reflectance Pulse Oximetry – Principles and Obstetric
`the Zurich System, Journal of Clinical
`Application
`in
`Monitoring, Vol. 14, No. 6 (August 1998)
`U.S. Patent No. 5,490,505 to Diab et al.
`U.S. Patent No. 5,027,410 to Williamson et al.
`U.S. Patent App. Publ. No. 2003/0004428 to Pless et al.
`U.S. Patent App. Publ. No. 2002/0032386 to Sackner et al.
`U.S. Patent App. Publ. No. 2003/0163287 to Vock et al.
`U.S. Patent No. 6,163,721 to Thompson
`U.S. Patent No. 5,058,203 to Inagami
`U.S. Patent No. 6,711,691 to Howard et al.
`Deposition Transcript of Dr. Brian W. Anthony in Apple Inc. v.
`Masimo Corp., IPR2020-01523 (July 7, 2021)
`U.S. Patent No. 5,827,969 to Lee et al.
`U.S. Patent No. 6,402,690 to Rhee et al.
`Petition for Inter Partes Review IPR2020-01539
`Decision Granting Institution of Inter Partes Review IPR2020-
`01523
`
`-9-
`
`

`

`
`
`20.
`
`In addition to the above-listed materials, I have relied on my
`
`education, training, and experience, and my knowledge of pertinent literature in the
`
`field of the ’703 patent.
`
`IV. UNDERSTANDING OF PATENT LAW
`I am not an attorney and will not be offering legal conclusions.
`
`21.
`
`However, I have been informed of several principles concerning the legal issues
`
`relevant to analyzing the challenges to the claims of the ’703 patent, and I used
`
`these principles in arriving at my conclusions.
`
`A. Level Of Ordinary Skill In The Art
`22.
`I understand that certain issues in an IPR, such as claim construction
`
`and whether a claim is invalid as obvious, are assessed from the view of a
`
`hypothetical person of ordinary skill in the relevant art at the time of the invention.
`
`I understand there are multiple factors relevant to determining the level of ordinary
`
`skill in the art, including (1) the level of education and experience of persons
`
`working in the field at the time of the invention; (2) the sophistication of the
`
`technology; (3) the types of problems encountered in the field; and (4) the prior art
`
`solutions to those problems. I understand that this hypothetical person of ordinary
`
`skill is presumed to have had knowledge from the teachings of the prior art.
`
`B. Claim Construction
`23.
`I understand that claim construction in an IPR is a legal question for
`
`the Board to decide. I also understand, however, that in construing claim terms, the
`
`-10-
`
`

`

`
`
`Board asks what the terms would mean to a person of ordinary skill in the relevant
`
`art in view of the disclosures in the patent and the prosecution history of the patent.
`
`I understand that the Board may also consider external evidence, such as
`
`dictionaries. In general, however, I understand that claim terms are given the
`
`ordinary and customary meaning one of ordinary skill in the relevant art would
`
`apply to them in the context of the patent at the time the patent was filed. For the
`
`purposes of my analysis and opinions, and to the extent necessary, I have construed
`
`each claim term in accordance with its ordinary and customary meaning under the
`
`required standard.
`
`C. Obviousness
`24.
`I understand that a patent claim is invalid under the patent law, 35
`
`U.S.C. § 103, if, at the time the claimed invention was made, the differences
`
`between the prior art and the claimed invention as a whole would have been
`
`obvious to a person of ordinary skill in the art. I understand that the following facts
`
`are considered in determining whether a claimed invention is invalid as obvious in
`
`view of the prior art: (1) the scope and content of the prior art; (2) the level of
`
`ordinary skill in the art; and (3) the differences, if any, between the claimed
`
`invention and the prior art.
`
`25.
`
`I also understand there are additional considerations that may be used
`
`in evaluating whether a claimed invention is obvious. These include whether the
`
`-11-
`
`

`

`
`
`claimed invention was the result of (a) a teaching, suggestion, or motivation in the
`
`prior art that would have led one of ordinary skill to modify the prior art to arrive at
`
`the claimed invention; (b) a combination of prior art elements combined according
`
`to known methods to yield predictable results; (c) a simple substitution of one
`
`known element for another to obtain a predicable result; (d) the use of a known
`
`technique to improve similar things in the same way; (e) applying a known
`
`technique to a known thing ready for improvement to yield predictable results; (f)
`
`choosing from a finite number of identified, predictable solutions, with a reasonable
`
`expectation of success; (g) known work in one field of endeavor prompting
`
`variations of it for use in either the same filed or a different one based on design
`
`incentives or other market forces if the variations are predictable to one of ordinary
`
`skill in the art.
`
`26.
`
`I also understand that the obviousness analysis must be performed
`
`from the perspective of a person of ordinary skill in the art at the time of the
`
`invention. This is to avoid using impermissible hindsight in the analysis. The claims
`
`of the patent must not be used to provide a road map for obviousness; instead, the
`
`claims would have been obvious if a person of ordinary skill in the art would have
`
`been motivated to combine the teachings of the prior art to arrive at the claimed
`
`invention and had a reasonable expectation of success in doing so. I understand that
`
`Dr. Anthony carried out his analysis of patentability using July 2, 2001 as the time
`
`-12-
`
`

`

`
`
`of the invention. Ex. 1003 (Anthony Declaration), ¶12. I likewise carry out my
`
`analysis of patentability as of July 2, 2001. I do not offer any opinions regarding
`
`priority in this declaration. I have conducted my analysis herein according to the
`
`above principles.
`
`V.
`INTRODUCTION TO THE ’703 PATENT
`A. The ’703 Patent
`27.
`The ’703 patent describes novel approaches for reducing the power
`
`consumption of patient monitors, such as pulse oximeters. The disclosed patient
`
`monitors modify power consumption by effectively increasing or decreasing the
`
`number of input samples received and processed by the monitor. Ex. 1001 (’703
`
`patent) at 6:9-24. By adjusting the samples received and processed, the monitor can
`
`“regulate[] power consumption to satisfy a predetermined power target, to minimize
`
`power consumption, or to simply reduce power consumption.” Id. at 6:15-19.
`
`28.
`
`In one embodiment, the patient monitor increases or decreases the
`
`input samples by changing the duty cycle of the current supplied by the monitor’s
`
`drivers to the LEDs. Id. at 6:56-7:14. The ’703 patent also discloses that the
`
`patient monitor may have a “data off” period where the LEDs are turned off for
`
`longer than one drive cycle. Id. at 7:8-12. A “data off” state differs from the
`
`conventional sleep mode because, for example, the processors are not powered
`
`down in the “data off” state. See e.g., id., 2:1-16, 7:8-14 (describing sleep mode
`
`-13-
`
`

`

`
`
`and data off). The ’703 patent discloses that the “data off” state may be used in
`
`addition to high and low duty cycles to manage the power consumption of the
`
`monitor. Id. at 8:4-46, Fig. 8.
`
`29.
`
`In another embodiment, the patient monitor increases or decreases the
`
`input samples processed by the monitor by varying the number of data blocks
`
`processed by the processor. Id. at 6:5-8. For example, the monitor decreases the
`
`overlap between adjacent data blocks processed by the processor to decrease power
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`consumption. Id. at 7:51-8:3.
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`30.
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`In operation of the patient monitors described in the ’703 patent, a
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`patient event, such as poor oxygen saturation, may trigger the monitor to increase
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`the samples received and processed, such as by moving from a low duty cycle or
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`data off state to a high duty cycle. Id. at 8:47-61, Fig. 9. Conversely, if the monitor
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`is in a high duty cycle state and neither an event nor low signal quality occurs, the
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`monitor may decrease the samples received and processed, such as by transitioning
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`to a low duty cycle to conserve power. Id. at 9:6-18. Thus, patient monitors
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`described in the ’703 patent can adapt during adverse patient events or upon signal
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`quality issues.
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`B.
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`Introduction To The Independent Claims Of The ’703 Patent
`31.
`The ’703 patent has six independent claims. Claims 1, 9, and 12
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`describe methods of managing power consumption by (a) reducing activation of an
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`attached sensor, (b) reducing an amount of processing by a signal processor, or (c)
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`including an override condition, respectively. Claims 15, 20, and 22 describe patient
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`monitors configured to manage power consumption using similar techniques as the
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`method claims. Claim 1 (below) is illustrative (but not representative) of some
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`relevant features claimed in the ’703 patent. I am aware that Petitioner adopted a
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`numbering system for the claim limitations in the Petition. See e.g., Petition at 40-
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`43. I have used the same numbering system in this declaration. Claim 1 states:
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`[1p] A method of managing power consumption during continuous patient
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`monitoring by adjusting behavior of a patient monitor, the method comprising:
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`[1a] driving one or more light sources configured to emit light into tissue of
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`a monitored patient;
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`[1b] receiving one or more signals from one or more detectors configured to
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`detect said light after attenuation by said tissue;
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`[1c] continuously operating a patient monitor at a lower power consumption
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`level to determine measurement values for one or more physiological
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`parameters of a patient;
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`[1d] comparing processing characteristics to a predetermined threshold; and,
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`[1e] when said processing characteristics pass said threshold, transitioning to
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`continuously operating said patient monitor at a higher power
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`consumption level,
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`[1f] wherein said continuously operating at said lower power consumption
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`level comprises a reducing activation of an attached sensor,
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`[1g] said sensor positioning said light sources and said detectors proximate
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`said tissue.
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`C.
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`Prosecution Of The ’703 Patent
`32. During prosecution, the Examiner found that the prior art did “not
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`specifically teach the reducing activation/duty cycle/on-off stages of the energy
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`source(s) during operating the sensor.” Ex. 1002 (’703 prosecution history) at 117-
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`118. The Examiner also stated that the “prior art does not teach or suggest ‘said
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`continuously operating at said lower power consumption level comprises reducing
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`activation of an attached sensor’, ‘said continuously operating at said lower power
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`consumption level comprises reducing an amount of processing by a signal
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`processor’, or ‘said processing characteristics pass said threshold, transitioning to
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`continuously operating said patient monitor at a higher power consumption level,
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`wherein said processing characteristics
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`include an override condition’,
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`in
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`combination with the other elements/steps.” Id. at 118.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
`I understand that Petitioner and Dr. Anthony have proposed the
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`33.
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`following definition for the level of ordinary skill in the art:
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`[A] person of ordinary skill in the art relating to, and at the Critical
`Date of, the invention of the ’703 patent (POSITA) would have been
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`someone 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. Alternatively, the person
`could have also had a Master of Science degree in a relevant academic
`discipline with less than a year of related work experience in the same
`discipline.
`
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`Ex. 1003 (Anthony Declaration), ¶33. For purposes of this proceeding, I have been
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`asked to apply this definition and have done so. However, my opinions would not
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`change if the level of ordinary skill in the art were slightly different or significantly
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`higher.
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`34.
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`I qualified as a person of ordinary skill in the art in 2001 under the
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`above definition. I have also taught and supervised students that qualify as persons
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`of ordinary skill in the art, and did so in 2001, so I am very familiar with their
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`technical abilities and knowledge base.
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`VII. THE PROPOSED CITED ART COMBINATIONS
`I understand that Petitioner and Dr. Anthony present eight grounds,
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`35.
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`identified in the below table, which was copied from page 3 of the Petition:
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`36. As shown above, the unpatentability grounds rely on four references:
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`Diab (Ex. 1007), Amano (Ex. 1004), Edgar (Ex. 1005), and Turcott (Ex. 1006). I
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`understand that the Examiner considered Diab during prosecution. Ex. 1001 (’703
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`patent) at page 2.
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`A.
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`VIII. CLAIM CONSTRUCTION
`“Reducing/Reduce Activation Of An Attached Sensor”
`37.
`The term “reducing/reduce activation of an attached sensor” appears
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`in independent claims 1 and 15.
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`38.
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`In my opinion, the correct construction of “reducing/reduce activation
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`of an attached sensor” includes “reducing the duty cycle of an emitter driver output
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`to the sensor.” For example, claim 2, which depends from claim 1, confirms that
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`“reducing activation comprises reducing a duty cycle of said sensor.” I see that Dr.
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`Anthony agrees that “reducing/reduce activation of an attached sensor” includes
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`“reducing the duty cycle of an emitter driver output to the sensor.” Ex. 1003 at ¶36.
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`39. Dr. Anthony also construes “reducing/reduce activation of an attached
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`sensor” to include “entering a data off state for a time period in which the emitter
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`drivers are turned off.” Id. However, Dr. Anthony does not appear to apply this
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`portion of his construction to any of the cited art. Specifically, I do not see that Dr.
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`Anthony argues that a cited art reference satisfies “reducing/reduce activation of an
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`attached sensor” because it “enter[s] a data off state for a time period in which the
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`emitter drivers are turned off.” Consequently, I have not provided an opinion
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`regarding this portion of Dr. Anthony’s construction.
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`40.
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`I also see that Dr. Anthony argues that the combination of Diab and
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`Turcott satisfy “reducing/reduce activation of an attached sensor” under a another
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`construction that is not identified in Dr. Anthony’s “Claim Construction” section.
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`Ex. 1003 at ¶¶35-36, 86. Dr. Anthony argues that “under a broader construction of
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`‘reducing activation,’ a reduced drive current means that the amount of current used
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`to activate the LEDs is reduced, leading to reduced activation of the LEDs.” Id.,
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`¶86. I do not see that Dr. Anthony cites any evidence to support this “broader
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`cons