`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2020-01523
`Patent No. 8,457,703
`____________
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`

`

`
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`I. 
`
`II. 
`
`TABLE OF CONTENTS
`
`CLAIM CONSTRUCTION ............................................................................ 1 
`A.  “processing characteristics”........................................................................ 1 
`DIAB IN VIEW OF AMANO RENDERS CLAIMS 9-10, 12-14, 20, AND
`22-24 OBVIOUS (GROUND 1A) .................................................................. 4 
`A.  Diab in view of Amano teaches operating at “a lower power consumption
`level” and “a higher power consumption level.” ........................................ 4 
`  A POSITA would have found it obvious to suspend and not execute
`Diab’s motion artifact suppression module if motion is not detected. . 4 
`  A POSITA would have been motivated to apply Amano’s teachings to
`suspend and not execute operations of Diab’s motion artifact
`suppression module if no motion is detected to reduce calculation time
`and power consumption. ....................................................................... 8 
`  Suspending operations of the motion artifact suppression module
`would result in Diab’s device operating “at a lower power
`consumption level,” thereby “reducing an amount of processing by a
`signal processor.” .................................................................................. 9 
`B.  Diab teaches “comparing processing characteristics to a predetermined
`threshold.” ................................................................................................. 13 
`III.  A POSITA WOULD HAVE BEEN MOTIVATED TO COMBINE EDGAR
`WITH DIAB AND AMANO (GROUND 1B) .............................................. 15 
`IV.  DIAB IN VIEW OF AMANO AND TURCOTT RENDER CLAIMS 1-7
`AND 15-18 OBVIOUS (GROUND 1C) ....................................................... 16 
`A.  Diab in view of Amano and Turcott teach “reducing/reduce activation of
`an attached sensor.” .................................................................................. 16 
`B.  A POSITA would have been motivated to apply Turcott’s teachings to
`Diab’s oximeter. ....................................................................................... 19 
`V.  GROUNDS 2A-2C ESTABLISH THAT THE CHALLENGED CLAIMS
`ARE OBVIOUS ............................................................................................. 23 
`VI.  AMANO RENDERS CLAIMS 9-10, 12-14, 20, and 22-24 OBVIOUS
`(GROUND 3A) .............................................................................................. 23 
`A.  Amano teaches determining “measurement values for one or more
`physiological parameters of a patient.” .................................................... 23 
`
`
`
`i
`
`

`

`
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`B.  Amano teaches “comparing processing characteristics to a predetermined
`threshold.” ................................................................................................. 24 
`VII.  AMANO IN VIEW OF TURCOTT RENDER CLAIMS 1-3 and 15-17
`OBVIOUS (GROUND 3B) ........................................................................... 25 
`VIII.  CONCLUSION .............................................................................................. 28 
`
`
`
`
`
`
`
`ii
`
`

`

`
`
`APPLE-1001
`
`APPLE-1002
`
`APPLE-1003
`
`APPLE-1004
`
`APPLE-1005
`
`APPLE-1006
`
`APPLE-1007
`
`APPLE-1008
`
`APPLE-1009
`
`APPLE-1010
`
`
`APPLE-1011
`
`
`APPLE-1012
`
`
`APPLE-1013
`
`
`APPLE-1014
`
`APPLE-1015
`
`
`
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`EXHIBITS
`
`U.S. Patent No. 8,457,703 to Al-Ali (“the ’703 Patent”)
`
`Excerpts from the Prosecution History of 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, Jr. et al. (“Edgar”)
`
`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
`Application in the Zurich System, Journal of Clinical
`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.
`
`iii
`
`

`

`
`APPLE-1016
`
`
`APPLE-1017
`
`
`APPLE-1018
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`U.S. Patent Application Publication No. 2003/0004428 to Pless
`et al.
`
`U.S. Patent Application Publication No. 2002/0032386 to
`Sackner et al.
`
`U.S. Patent Application Publication 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.
`
`Reserved
`
`
`APPLE-1019
`
`APPLE-1020
`
`APPLE-1021
`
`APPLE-1022-1030
`
`APPLE-1031
`
`
`APPLE-1032
`
`APPLE-1033
`
`
`APPLE-1034
`
`
`APPLE-1035
`
`
`APPLE-1036
`
`
`
`
`
`Scheduling Order, Masimo v. Apple et al., Case 8:20-cv-00048,
`Paper 37 (April 17, 2020)
`
`Stipulation by Apple
`
`Telephonic Status Conference, Masimo v. Apple et al., Case
`8:20-cv-00048, Paper 78 (July 13, 2020)
`
`Joseph Guzman, “Fauci says second wave of coronavirus is
`‘inevitable’”, TheHill.com (Apr. 29, 2020), available at:
`https://thehill.com/changing-america/resilience/natural-
`disasters/495211-fauci-says-second-wave-of-coronavirus-is
`
`“Tracking the coronavirus in Los Angeles County,”
`LATimes.com (Aug. 20, 2020), available at
`https://www.latimes.com/projects/california-coronavirus-cases-
`tracking-outbreak/los-angeles-county/
`
`Order Amending Scheduling Order, Masimo et al. v. True
`Wearables et al., Case 8:18-CV-02001 (July 7, 2020)
`
`iv
`
`

`

`
`APPLE-1037
`
`
`APPLE-1038
`
`
`APPLE-1039
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`Order Regarding Motion to Stay (Redacted) in Masimo
`Corporation et al. v. Apple Inc., Case 8:20-cv-00048, October
`13, 2020
`
`Single Exponential Smoothing, Engineering Statistics
`Handbook, Internet Archive Wayback Machine capture April
`19, 2001, available at
`https://web.archive.org/web/20010419095031/http://www.itl.ni
`st.gov:80/div898/handbook/pmc/section4/pmc431.htm
`
`Transcript of Deposition of Vijay K. Madisetti, Ph.D.
`
`
`
`v
`
`

`

`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`The arguments in Masimo’s POR attempt to overcome the substantial
`
`
`
`evidence of unpatentability of the challenged claims. These arguments fail
`
`because, as explained in the Petition and further clarified below, the cited prior art
`
`references render the challenged claims of the ’703 patent unpatentable.
`
`I.
`
`CLAIM CONSTRUCTION
`A.
`“processing characteristics”
`Masimo alleges that the plain meaning of “processing characteristics” should
`
`“require that the processing characteristics are determined from a signal received
`
`from one or more detectors configured to detect light.” POR, 23-27. But the ’703
`
`claims and specification demonstrate that Masimo’s construction is unjustifiably
`
`limiting, and thus should not be adopted.
`
`With respect to the claims, claim 4, which depends from independent claim
`
`1, recites that “said processing characteristics comprise signal characteristics from
`
`one or more light sensitive detectors.” APPLE-1001, 11:59-61. If “processing
`
`characteristics” were required to be “determined from a signal received from one
`
`or more detectors,” claim 4 would be rendered meaningless. Such an interpretation
`
`is legal error and is contrary to well-established canons of claim interpretation.
`
`Bicon, Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006) (“claim language
`
`should not be treated as meaningless”).
`
`Further, claim 8 recites “said processing characteristics include determining
`
`
`
`1
`
`

`

`
`an estimate of current power consumption and comparing said estimate with a
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`target power consumption.” APPLE-1001, 12:1-4. The specification makes clear
`
`that, contrary to Masimo’s proposed construction, the “estimate of current power
`
`consumption” (which, per claim 8, is included in the “processing characteristics”)
`
`is not “determined from a signal received from one or more detectors configured to
`
`detect light.”
`
`Claim 8 corresponds to the following description in the specification:
`
`The power status calculator 460 utilizes an internal time
`base, such as a counter, timer or real-time clock, in
`conjunction with the control engine state to estimate the
`average power consumption of at least a portion of the
`pulse oximeter 300. The power status calculator 460 also
`stores a predetermined power target and compares its
`power consumption estimate to this target.
`
`APPLE-1001, 6:45-51, FIG. 4. The power status calculator 460 is highlighted in
`
`FIG. 4 below. FIG. 4 and the corresponding description in the specification show
`
`that the power consumption estimate (“processing characteristics” per claim 8) is
`
`not determined from a signal received from the detector front-end 490, but rather
`
`from a signal received from control engine 440. Id.
`
`
`
`2
`
`

`

`
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`APPLE-1001, FIG. 4 (annotated)
`
`
`
`As such, the claims and specification do not require that “processing
`
`characteristics” be determined from a signal received from detectors configured to
`
`detect light as Masimo argues. Id. In fact, the ’703 patent explicitly describes
`
`“processing characteristics” determined from a signal received from another
`
`element of a patient monitor, such as a control engine, and nothing in the intrinsic
`
`evidence precludes “processing characteristics” from being determined from a
`
`signal received from another element of a patient monitor, such as an acceleration
`
`sensor, as described in Amano.
`
`Thus, the ’703 patent demonstrates that Masimo’s proposed construction of
`
`“processing characteristics” is unjustifiably limiting and should not be adopted.
`
`
`
`3
`
`

`

`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`
`II. DIAB IN VIEW OF AMANO RENDERS CLAIMS 9-10, 12-14, 20,
`AND 22-24 OBVIOUS (GROUND 1A)
`A. Diab in view of Amano teaches operating at “a lower power
`consumption level” and “a higher power consumption level.”
`
`A POSITA would have found it obvious to suspend and not
`execute Diab’s motion artifact suppression module if motion
`is not detected.
`In its POR, Masimo contends that Diab’s motion artifact suppression
`
`module 580 “is necessary to generate the clean plethysmograph waveform, which
`
`is critical to patient monitoring.” POR, 30-41. But Masimo’s (and its declarant’s)
`
`contentions are inconsistent with Diab’s explicit disclosures.
`
`For example, Diab discloses that its system can, but does not necessarily
`
`need to, provide a clean plethysmograph waveform. APPLE-1007, 35:42-50
`
`(“may be provided”), 49:29-32 (“can be”), cf. 50:27-29 (the pulse/heart rate “is
`
`advantageously provided”). Additionally, Diab teaches that a “clean”
`
`plethysmograph waveform would only need to be generated by the correlation
`
`canceler of the motion artifact suppression module if motion is detected. APPLE-
`
`1007, 2:24-27, 3:6-9, 4:39-43, 5:3-9, 9:20-27, 13:15-20, 33:19-23, 33:47-50, 34:1-
`
`7, 47:55-56, 48:34-42, FIG. 3. If motion is not detected, the signal measured by
`
`the detector is representative of the arterial pulse, and a plethysmograph waveform
`
`can be generated from the signal using “traditional filtering techniques, such as
`
`simple subtraction, low pass, band pass, and high pass filtering” or “[a] static
`
`
`
`4
`
`

`

`
`filtering system, such as a bandpass filter.” APPLE-1007, 2:31-45, 4:20-35, 4:59-
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`64, 9:16-20, 33:45-47, 33:64-34:1, 47:52-54, 48:6-13, FIG. 1. Indeed, Dr.
`
`Anthony testified that “if motion is not present, we don’t need to remove it to
`
`generate the clean plethysmograph signal.” EX2003, 68:15-69:6. Because Diab’s
`
`purported invention is “the removal or derivation of either the primary or
`
`secondary signal portion” where “[t]he secondary portion also includes artifacts
`
`due to patient movement,” Diab’s FIGS. 20 and 21 depict the modules that are
`
`executed “[i]n the case of motion.” APPLE-1007, 1:17-22, 4:20-50, 47:30-50:29.
`
`Diab’s FIGS. 20 and 21 do not show the generation of the plethysmograph
`
`waveform using “traditional filtering techniques” because it was well known in the
`
`art, as indicated by Diab. In re Wands, 858 F.2d 731, 735 (Fed. Cir. 1988) (“need
`
`not disclose what is well known”).
`
`Masimo’s contention that Diab “requires continuous operation of the motion
`
`artifact suppression module” is contradicted by their assertion that modules
`
`“operate differently depending on whether motion is detected” by the motion status
`
`module. POR, 34, 46; EX2001, ¶¶57, 75. Masimo’s POR and Dr. Madisetti’s
`
`declaration provide annotations to Diab’s FIG. 20 (reproduced below) to show that
`
`the spectrum analysis module and the output filter “operate differently depending
`
`on whether motion is detected,” but omit highlighting that the signal generated by
`
`the motion status module 584 is also provided to the motion artifact suppression
`5
`
`
`
`

`

`
`module 580:
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`
`
`Id. If Diab required “continuous operation of the motion artifact suppression
`
`module,” as Masimo alleged, there would be no reason to provide the motion status
`
`to the motion artifact suppression module since the motion artifact suppression
`
`module would not “operate differently depending on whether motion is detected.”
`
`See id.; POR, 34, 46; EX2001, ¶¶57, 75.
`
`Based on Diab’s disclosure, a POSITA would have recognized that Diab’s
`
`motion artifact suppression module does, in fact, “operate differently depending on
`
`whether motion is detected.” APPLE-1007, 2:24-45, 3:6-9, 4:20-64, 5:3-9, 9:16-
`
`27, 13:15-20, 33:19-23, 33:45-50, 33:64-34:7, 47:52-56, 48:6-13, 48:34-42, FIGS.
`
`1, 3. The Petition provided an annotation of Diab’s FIG. 21 showing an example
`
`(reproduced below) of the additional processing performed by the motion artifact
`
`
`
`6
`
`

`

`
`suppression module when motion is detected, and showing that Diab’s motion
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`artifact suppression module does “operate differently depending on whether
`
`motion is detected” in accordance with Diab’s disclosure. Id.; Petition, 17.
`
`Additional processing for
`motion artifact suppression
`
`
`
`APPLE-1007, Detail of FIG. 21 (annotated)
`
`As shown in the example above, the clean plethysmograph waveform can be
`
`generated using “traditional filtering techniques, such as... band pass... filtering” of
`
`the infrared signal if motion is not detected, or using a correlation canceler 571 if
`
`motion is detected, consistent with Diab’s disclosure. Id.; APPLE-1007, 49:18-21.
`
`Alternatively, because Diab’s FIG. 21 DC removal module 583 and the bandpass
`
`filter module 585 are the same as the FIG. 20 DC removal and bandpass filter
`
`module 578, a POSITA would have found it obvious to suspend and not execute all
`
`the operations of the motion artifact suppression module 580 and instead provide
`
`the clean plethysmograph waveform from the FIG. 20 DC removal and bandpass
`7
`
`
`
`

`

`
`filter module 578. Id.; APPLE-1007, 48:6-11, 48:48-53, 42:27-30. In any case, a
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`POSITA would have found it obvious not to execute operations of Diab’s motion
`
`artifact suppression module 580 if no motion is detected. Id.; APPLE-1003, ¶¶52-
`
`54.
`
`
`
`A POSITA would have been motivated to apply Amano’s
`teachings to suspend and not execute operations of Diab’s
`motion artifact suppression module if no motion is detected
`to reduce calculation time and power consumption.
`Masimo alleges that “[a] POSITA also would not have been motivated to
`
`combine Diab and Amano due to the differences in the systems,” including
`
`“different processing algorithms,” “different outputs,” Amano’s “additional
`
`sensor,” and “different processing responsibilities.” POR, 41-45. Masimo’s
`
`arguments primarily focus on whether Diab’s and Amano’s systems can be
`
`physically combined together. Masimo’s arguments are misplaced as they do not
`
`focus sufficiently on the teachings of Diab and Amano. “The test for obviousness
`
`is not whether the features of a secondary reference may be bodily incorporated
`
`into the structure of the primary reference.... Rather, the test is what the combined
`
`teachings of those references would have suggested to those of ordinary skill in the
`
`art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d
`
`1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
`
`references be physically combinable to render obvious the invention under
`
`
`
`8
`
`

`

`
`review.”).
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`The Petition relies on Amano’s teachings of suspending “the operations of...
`
`body movement component eliminating section” “when no body movement is
`
`present” which reduces calculation time and power consumption, not on the
`
`physical combination of Diab and Amano. Petition, 17-18; APPLE-1004, 21:50-
`
`22:6, 35:54-64; APPLE-1007, 48:34-49:38; APPLE-1003, ¶¶54-55. As the
`
`Petition establishes, a POSITA would have found it obvious, based on Amano’s
`
`teachings, to suspend and not execute operations of Diab’s motion artifact
`
`suppression module 580 if motion is not detected to reduce calculation time and
`
`power consumption. Id. As explained above in Section II.A.1, supra, suspending
`
`and not executing operations of Diab’s motion artifact suppression module if no
`
`motion is detected is consistent with Diab’s disclosure.
`
`
`
`Suspending operations of the motion artifact suppression
`module would result in Diab’s device operating “at a lower
`power consumption level,” thereby “reducing an amount of
`processing by a signal processor.”
`Masimo alleges that “Petitioner’s assumption that suspension of Diab’s
`
`motion artifact suppression module will necessarily lower the power consumption
`
`level is incorrect.” POR, 45-48. Masimo further alleges that “Petitioner also failed
`
`to show that Diab and Amano disclose ‘continuously operating at said lower power
`
`consumption level comprises reducing an amount of processing by a signal
`
`
`
`9
`
`

`

`
`processor.’” POR, 52-54. Masimo relies on the same rationale for both
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`contentions.
`
`As a first reason, Masimo alleges that the output filter 594 “will process
`
`more data and increase the power consumption” if no motion is detected. POR,
`
`45-47, 53-54. In doing so, Masimo relies on Diab’s disclosure that “if there is little
`
`or no motion, this filter can sample much faster and still maintain a clean value,”
`
`and concludes that the filter processes more data and increases power consumption
`
`if there is no motion. POR, 47; EX2001, ¶¶76, 88; APPLE-1007, 50:23-27. This
`
`interpretation of Diab’s disclosure is incorrect.
`
`Diab discloses that “[t]he output filter 594 comprises an exponential
`
`smoothing filter similar to the exponential smoothing filter described above with
`
`respect to the clip and smooth filter 566... controlled via an output filter coefficient
`
`module.” APPLE-1007, 50:21-23. Describing the clip and smooth filter 566, Diab
`
`discloses that an exponential smoothing filter is computed using the conventional
`
`equation in the form y(n)=α*x(n)+(1-α)*y(n-1) where α is the smoothing
`
`coefficient, x(n) is the input sample, and y(n-1) is the previous smoothed value.
`
`APPLE-1007, 47:5-10; APPLE-1038, 1. As apparent from this equation and as
`
`known by a POSITA, the speed at which older values are dampened is the function
`
`of α. Id., APPLE-1038, 2. When α is close to 1, dampening is fast, and when α is
`
`close to 0, dampening is slow. Id. Accordingly, a POSITA would have
`10
`
`
`
`

`

`
`understood Diab’s disclosure that “[i]f motion is large, this filter is slowed down”
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`to refer to the filter dampening being slowed down by selecting α that is close to 0.
`
`Id.; APPLE-1007, 50:23-27. Conversely, Diab’s disclosure that “if there is little or
`
`no motion, this filter can sample much faster and still maintain a clean value”
`
`refers to the filter dampening faster by selecting α that is close to 1. Id. In either
`
`case, the filter’s equation and thus the amount of processing are the same; only the
`
`values, including smoothing coefficient α, used by the equation has changed. Id.
`
`This is illustrated in Diab’s FIG. 20, which is correctly annotated below to
`
`show that the motion status module 584 (green) provides a signal (red line) to the
`
`output filter coefficient module 596 (blue) that provides the smoothing coefficient
`
`(blue line) to the output filter 594 (pink) to control the filter’s dampening. APPLE-
`
`1007, 48:2-3, 50:23-25.
`
`
`
`11
`
`
`
`

`

`
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`APPLE-1007, Detail of FIG. 20 (annotated)
`
`Thus, Masimo’s assertions that the output filter 594 “will process more data and
`
`increase the power consumption” if no motion is detected, are contrary not only to
`
`common sense, but also to Diab’s explicit disclosure. POR, 45-47, 53-54.
`
`Accordingly, Masimo’s arguments with respect to the output filter 594 are
`
`meritless.
`
`In addition, Masimo further argues that the spectrum analysis module 590
`
`“could consume more power” when no motion is detected than when motion is
`
`detected. POR, 47-48, 54; EX2001, ¶¶77, 89. But Diab does not disclose that
`
`selecting the first harmonic “could consume more power” than selecting the peak
`
`with the highest amplitude. Diab discloses that the spectrum analysis module 590
`
`selects the first harmonic by selecting “the first peak that has an amplitude of at
`
`least 1/20 th [sic] of the largest peak,” based on the output of the spectrum
`
`estimation module 588, which performs its operations regardless of whether
`
`motion is detected. APPLE-1007, 48:21-31. Thus, in both the case of motion and
`
`no motion, the spectrum analysis module 590 is merely “selecting” a value from
`
`the output of one of the spectrum estimation modules 588 or 586. See id. Diab
`
`does not describe any difference between these two selections, and Masimo’s
`
`argument alleges no such difference. See POR, 47-48, 54; EX2001, ¶¶77, 89.
`
`Thus, Masimo’s argument that the spectrum analysis module 590 “could consume
`
`
`
`12
`
`

`

`
`more power” when no motion is detected is nothing more than naked speculation.
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`Based on Diab’s teachings as a whole, the Petition establishes that a
`
`POSITA would have found obvious that suspending operations of Diab’s motion
`
`artifact suppression module would result in operating “at a lower power
`
`consumption level” and “reducing an amount of processing by a signal processor.”
`
`Petition, 14-18, 21-22; APPLE-1003, ¶¶52-55, 61-62. Masimo’s arguments
`
`regarding the output filter 594 and the spectrum analysis module 590 fail to show
`
`otherwise.
`
`B. Diab teaches “comparing processing characteristics to a
`predetermined threshold.”
`The Petition establishes that “a predetermined threshold” corresponds to “a
`
`width value above which the peaks are considered ‘wide’,” as disclosed in Diab.
`
`Petition, 18-20. Dr. Anthony further explains that “a predetermined threshold”
`
`corresponds to “a value corresponding to ‘wider peaks indicating motion’,” as
`
`disclosed in Diab. APPLE-1003, ¶¶56-57. The Petition and Dr. Anthony further
`
`establish that Diab teaches comparing the “average peak width value” (processing
`
`characteristics) to “a width value above which the peaks are considered ‘wide’”
`
`(predetermined threshold). Id.; Petition, 18-20.
`
`Masimo argues that “[t]he Petition does not identify how Diab allegedly
`
`satisfies the ‘predetermined’ requirement,” but did not explain why “a width value
`
`
`
`13
`
`

`

`
`above which the peaks are considered ‘wide’” is not a “predetermined” threshold.
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`POR, 50. But in order for the “average peak width value” to be compared to “a
`
`width value above which the peaks are considered ‘wide’,” such “width value”
`
`must be determined before the comparison is performed. Thus, the width value
`
`represents a “predetermined threshold.”
`
`In addition, Masimo presents several examples purporting to show how
`
`“Diab’s oximeter could evaluate the peak width,” but it still remains unclear why
`
`the threshold values in those examples do not satisfy the “predetermined”
`
`requirement. POR, 51-52. In each of the examples described in the POR, the
`
`threshold value (e.g., “an average of the most recent peak widths,” “the most recent
`
`peak width,” and “recent data points”) is determined before the comparison is
`
`performed and is thus “predetermined” relative to the comparison. See id.
`
`The ’703 patent provides no further insight into the meaning of
`
`“predetermined” that would justify deviating from its plain meaning relied on by
`
`Petitioner and Dr. Anthony. The ’703 patent uses the terms “predetermined” and
`
`“predetermining” with respect to “a target power level,” “power target,” and
`
`“target power consumption level.” APPLE-1001, 2:34-37, 3:23-27, 3:52-56, 6:15-
`
`19, 6:49-51, 8:22-28. But the ’703 patent provides no definition for
`
`“predetermined” nor does it provide an explanation of how or why the “target
`
`power level,” “power target,” and “target power consumption level” are
`14
`
`
`
`

`

`
`predetermined. As such, the Petition and Dr. Anthony properly applied the plain
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`meaning of “predetermined” and established that Diab teaches “comparing
`
`processing characteristics to a predetermined threshold,” as required by the claims.
`
`Petition, 18-20; APPLE-1003, ¶¶56-57.
`
`III. A POSITA WOULD HAVE BEEN MOTIVATED TO COMBINE
`EDGAR WITH DIAB AND AMANO (GROUND 1B)
`As explained in the Petition and Dr. Anthony’s declaration, Edgar seeks to
`
`improve upon Diab’s technique for calculating blood oxygen saturation, and a
`
`POSITA would have been motivated to implement Edgar’s technique, instead of
`
`Diab’s technique, to calculate blood oxygen saturation. Petition, 30-33; APPLE-
`
`1005, 3:58-4:6, 5:1-11; APPLE-1003, ¶¶68-72. Masimo contends that “because
`
`Edgar distinguishes Diab’s approach to cancelling noise, a POSITA would not
`
`have been motivated to combine Edgar with Diab.” POR, 55-56. Masimo appears
`
`to be arguing that Edgar teaches away from its combination with Diab. But
`
`Edgar’s teachings do not establish “clear discouragement” of the combination, as
`
`required for teaching away. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir.
`
`2017); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said
`
`to teach away when a person of ordinary skill, upon reading the reference, would
`
`be discouraged from following the path set out in the reference, or would be led in
`
`a direction divergent from the path that was taken by the applicant.”).
`
`
`
`15
`
`

`

`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`In fact, as Masimo admits, Edgar suggests that its inventions provide an
`
`
`
`advantage over Diab’s approach. See POR, 55-56. A POSITA seeking to improve
`
`Diab’s device, upon reading Edgar, would have been encouraged to implement
`
`Edgar’s technique, instead of Diab’s technique, to calculate blood oxygen
`
`saturation using a relatively simple computation as compared to Diab’s, as
`
`established in the Petition. Petition, 30-33; APPLE-1003, ¶¶68-72.
`
`IV. DIAB IN VIEW OF AMANO AND TURCOTT RENDER CLAIMS 1-7
`AND 15-18 OBVIOUS (GROUND 1C)
`A. Diab in view of Amano and Turcott teach “reducing/reduce
`activation of an attached sensor.”
`The Petition establishes that a POSITA would have found it obvious to
`
`combine Diab’s (as supplemented with Amano’s) and Turcott’s teachings to
`
`implement the oximeter’s signal processor to reduce activation of the attached
`
`sensor. Petition, 37-40, 41-43; APPLE-1003, ¶¶80-86. Masimo, focusing on
`
`Turcott’s purported deficiency individually, argues that “Turcott does not disclose
`
`or suggest reducing activation of a sensor during monitoring to lower power
`
`consumption levels.” POR, 60-61. Masimo’s arguments here are inapposite as
`
`“[n]on-obviousness cannot be established by attacking references individually
`
`where the rejection is based upon the teachings of a combination of references.”
`
`Bradium Technologies v. Iancu, 923 F. 3d 1032, 1050 (Fed. Cir. 2019). Instead,
`
`each reference “must be read, not in isolation, but for what it fairly teaches in
`
`
`
`16
`
`

`

`
`combination with the prior art as a whole.” Id.
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`Further, the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550
`
`U.S. 398, 406 (2007) “does not support [the] theory that a person of ordinary skill
`
`can only perform combinations of a puzzle element A with a perfectly fitting
`
`puzzle element B. To the contrary, KSR instructs that the obviousness inquiry
`
`requires a flexible approach,” recognizing that “‘[a] person of ordinary skill is also
`
`a person of ordinary creativity, not an automaton.’” ClassCo, Inc. v. Apple, Inc.,
`
`838 F.3d 1214, 1219 (Fed. Cir. 2016). Thus, “the question under 35 [U.S.C. §]
`
`103 is not merely what the references expressly teach but what they would have
`
`suggested to one of ordinary skill in the art at the time the invention was made.”
`
`Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807–08 (Fed. Cir. 1989).
`
`The Petition establishes that a POSITA would recognize that Diab already
`
`provides control for driving the light emitters with an emitter current and adjusting
`
`the current for changes in the ambient room light or other changes during
`
`monitoring (APPLE-1007, 35:50-36:6); and that Diab and Amano teach
`
`adjusting/suspending operations depending on motion-induced noise during
`
`monitoring (APPLE-1007, 47:52-56; APPLE-1004, 21:50-22:6). Petition, 21, 37-
`
`38. Based on these teachings, as explained in the Petition, a POSITA would have
`
`found it obvious to also adjust the drive current, the frequency of the pulse train,
`
`the pulse duration, or the duty cycle of the pulse train to optimize the signal to
`17
`
`
`
`

`

`
`noise ratio and to minimize power consumption (APPLE-1006, 11:51-59).
`
`
`
`Case No. IPR2020-01523
`
`Attorney Docket: 50095-0002IP1
`
`Petition, 14-18, 37-40, 41 (analysis of element 1[c] incorporating Ground 1A’s
`
`analysis of element 9[c])), 41-43; APPLE-1003, ¶¶52-55, 80-86. Neither Masimo
`
`nor its declarant dispute the Petition’s and Dr. Anthony’s analysis in this regard,
`
`but instead improperly focus on Turcott’s purported deficiencies outside the
`
`context of the proposed combination.
`
`Masimo argues that “Turcott does not disclose or enable making these
`
`adjustments in real-time during patient monitoring,” “does not identify any
`
`conditions during patient monitoring that would trigger a reduction in the duty
`
`cycle,” and “also does not disclose the hardware and software necessary to make
`
`the real-time adjustments.” POR, 61. Consequently, Masimo concludes that “a
`
`POSITA would have understood Turcott to suggest selecting the parameters once
`
`during product design or setup.” Id. Masimo’s conclusion is unsupported
`
`conjecture, as Turcott does not disclose selecting/setting the parameters only once
`
`during product design or setup. Rather, Turcott explicitly uses the terms
`
`“adjusted” and “adjusting,” connoting that multiple values are possible for the
`
`adjustment du