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)
`Joshua J. Stowell (Reg. No. 64,096)
`
`
`
`Filed: December 2, 2021
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1523-703@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01523
`U.S. Patent 8,457,703
`
`
`
`
`
`
`PATENT OWNER’S SUR REPLY TO REPLY
`
`
`
`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)
`Joshua J. Stowell (Reg. No. 64,096)
`
`
`
`Filed: December 2, 2021
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1523-703@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01523
`U.S. Patent 8,457,703
`
`
`
`
`
`
`PATENT OWNER’S SUR REPLY TO REPLY
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`II.
`
`CLAIM CONSTRUCTION OF “PROCESSING
`CHARACTERISTICS” ................................................................................... 2
`A.
`Petitioner Failed To Construe “Processing Characteristics”................. 2
`B. Masimo’s Construction Of “Processing Characteristics” Is
`Correct ................................................................................................... 4
`GROUNDS 1A-1B FAIL TO DEMONSTRATE
`OBVIOUSNESS .............................................................................................. 7
`A. A POSITA Would Not “Suspend And Not Execute”
`Diab’s Motion Artifact Suppression Module ........................................ 7
`1.
`The Motion Artifact Suppression Module Operates
`Continuously ............................................................................... 7
`Figures 20-21 Illustrate A Complete Module ........................... 11
`2.
`A POSITA Would Not Have Been Motivated To Combine
`Diab And Amano ................................................................................. 13
`Suspending and Not Executing Diab’s Motion Artifact
`Suppression Module Would Not Necessarily Result In
`Lower Power Consumption Or Reduce An Amount Of
`Processing ............................................................................................ 15
`D. Diab Does Not Disclose Comparing “Processing
`Characteristics” To A “Predetermined Threshold” ............................. 18
`III. GROUND 1C FAILS TO DEMONSTRATE OBVIOUSNESS .................. 20
`A.
`Petitioner’s References Do Not Disclose Or Suggest
`“Reducing/Reduce Activation Of An Attached Sensor” .................... 21
`A POSITA Would Not Have Been Motivated To Combine
`Diab, Amano, And Turcott .................................................................. 23
`
`B.
`
`C.
`
`B.
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`IV. GROUNDS 3A-3B FAIL TO SHOW OBVIOUSNESS .............................. 27
`A. Amano Does Not Disclose “Measurement Values For One
`Or More Physiological Parameters Of A Patient” .............................. 27
`Amano Does Not Compare Processing Characteristics To
`A Predetermined Threshold ................................................................ 29
`Amano And Turcott Do Not Disclose Or Suggest
`“Reducing/Reduce Activation Of An Attached Sensor”
`And A POSITA Would Not Have Combined The
`References ........................................................................................... 29
`CONCLUSION .............................................................................................. 31
`
`B.
`
`C.
`
`V.
`
`
`
`
`
`-ii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) ............................................................................ 4
`DSS Tech. Mgmt., Inc. v. Apple Inc.,
`885 F.3d 1367 (Fed. Cir. 2018) .......................................................................... 27
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ........................................................................ 3, 4
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 1
`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fec. Cir. 2005) ........................................................................... 19
`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG,
`600 Fed. Appx. 755 (Fed. Cir. 2015) .................................................................. 14
`Smith & Nephew, Inc. v. Rea,
`721 F.3d 1371 (Fed. Cir. 2013) .......................................................................... 25
`TQ Delta, LLC v. Cisco Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ...................................................................passim
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.23 ....................................................................................................... 3
`37 C.F.R. § 42.104 ....................................................................................... 2, 3, 4, 28
`
`
`
`
`-iii-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`Expert Declaration of Vijay K. Madisetti Ph.D.
`
`Curriculum Vitae of Vijay K. Madisetti Ph.D.
`
`Excerpts from the deposition transcript of Brian Anthony, Ph.D.
`
`U.S. Patent No. 5,827,969 to Lee et al.
`
`U.S. Patent No. 6,402,690 to Rhee et al.
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`
`Exhibit List, Page 1
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`The ’703 patent and challenged claims describe devices and methods for
`
`“managing power consumption during continuous patient monitoring by adjusting
`
`behavior of a patient monitor.” (See e.g., Ex. 1001, claim 1.) Petitioner’s cited
`
`references do not address this problem, nor do they disclose or suggest the claimed
`
`solution, including (1) “continuously operating a patient monitor at a lower power
`
`consumption level” and then “transitioning to continuously operating said patient
`
`monitor at a higher power consumption level,” (2) “comparing processing
`
`characteristics to a predetermined threshold,” (3) “reducing activation of an
`
`attached sensor,” (4) wherein “reducing activation comprises reducing a duty cycle
`
`of said sensor,” and (5) “reducing an amount of processing by a signal processor.”
`
`Moreover, Petitioner’s arguments that a POSITA would have been
`
`motivated to combine Diab, Amano, and Turcott are conclusory, unsupported by
`
`evidence, and inadequately explained. Petitioner’s reply confirms that Petitioner
`
`improperly uses hindsight to attempt to reconstruct the claimed invention from
`
`references that do not teach or suggest all claimed elements. See e.g., KSR Int’l Co.
`
`v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A factfinder should be aware, of
`
`course, of the distortion caused by hindsight bias and must be cautious of
`
`arguments reliant upon ex post reasoning.”). For these reasons, the Board should
`
`reject Petitioner’s request to find the challenged claims unpatentable.
`
`-1-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`I.
`CLAIM CONSTRUCTION OF “PROCESSING
`CHARACTERISTICS”
`Petitioner Failed To Construe “Processing Characteristics”
`In the Petition, Petitioner proposed two plausible constructions for
`
`A.
`
`“processing characteristics”: a “limiting” and “alternative non-limiting”
`
`construction. (Pet. 50-51; Ex. 1003, ¶¶97-98.) However, Petitioner and its
`
`declarant refused to adopt either construction despite cross-examination from
`
`Masimo. (Ex. 2003, 126:13-127:5, 130:12-131:4.)
`
`In the POR, Masimo agreed with Petitioner’s “limiting” construction, which
`
`requires the “‘processing characteristics’ to be obtained from a signal provided by
`
`a photodetector,” and identified supporting evidence. (Pet. 50; Ex. 1003, ¶97; POR
`
`23-27.) Now, in reply, Petitioner argues its “limiting” construction is “unjustifiably
`
`limiting.” (Reply 1.)
`
`Yet, while Petitioner attacks its own “limiting” construction, Petitioner still
`
`has not identified the correct construction of “processing characteristics.” (See
`
`POR 21-23.) As with the “limiting” construction, Petitioner’s declarant refused to
`
`adopt Petitioner’s “alternative non-limiting” construction as
`
`the correct
`
`construction and Petitioner’s Reply does not adopt that construction. (Ex. 2003,
`
`126:13-127:5, 130:12-131:4.) Thus, Petitioner failed to meet its burden to show
`
`“[h]ow the challenged claim is to be construed.” 37 C.F.R. §42.104(b)(3).
`
`-2-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`While Petitioner never identifies the correct construction, Petitioner now
`
`advocates for a broader construction than the “limiting” construction. But, it is too
`
`late for Petitioner to change or propose new claim constructions. See 37 C.F.R.
`
`§42.23(b) (“All arguments for the relief requested in a motion must be made in the
`
`motion.”). Further, it is too late for Petitioner to cite new evidence (claims 4 and 8)
`
`as allegedly supporting a broader construction than the “limiting” construction. See
`
`37 C.F.R. §42.104(b)(5) (Petition must identify “the supporting evidence relied
`
`upon to support the challenge and the relevance of the evidence to the challenge
`
`raised, including identifying specific portions of the evidence that support the
`
`challenge.”). “Unlike district court litigation—where parties have greater freedom
`
`to revise and develop their arguments over time and in response to newly
`
`discovered material—the expedited nature of IPRs bring with it an obligation for
`
`petitioners to make their case in their petition to institute.” Intelligent Bio-Systems,
`
`Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016).
`
`Here, Petitioner proposed two plausible claim constructions for “processing
`
`characteristics” and recognized that Amano would not render the claims obvious
`
`under the “limiting” construction. (Pet. 50-51; Ex. 1003, ¶¶97-98.) Yet, Petitioner
`
`decided to adopt neither construction. Having made this decision, and having
`
`stymied discovery regarding the correct construction, Petitioner is barred from
`
`arguing for a broader construction in reply based on previously unidentified
`
`-3-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`evidence. See e.g., Intelligent Bio-Systems, 821 F.3d at 1369-1370 (affirming
`
`Board decision to not consider new arguments raised in reply); Ariosa Diagnostics
`
`v. Verinata Health, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015) (rejecting
`
`previously unidentified portions of a prior-art reference). Petitioner’s decision to
`
`delay claim construction is inconsistent with its burden to state in the Petition
`
`“[h]ow the challenged claim is to be construed.” 37 C.F.R. §42.104(b)(3).
`
`B. Masimo’s Construction Of “Processing Characteristics” Is Correct
`Petitioner argues Masimo’s construction of “processing characteristics” is
`
`“unjustifiably limiting” based on claims 4 and 8. (Reply 1-3.)
`
`Claim 4 states:
`
`wherein
`
`said
`
`processing
`
`characteristics
`
`comprise
`
`signal
`
`characteristics from one or more light sensitive detectors.
`
`Petitioner argues, “If ‘processing characteristics’ were required to be ‘determined
`
`from a signal received from one or more detectors,’ claim 4 would be rendered
`
`meaningless.” (Reply 1.)
`
`Petitioner is incorrect. Petitioner assumes the limitation “from one or more
`
`light sensitive detectors” is the narrowing limitation of claim 4. However,
`
`Petitioner ignores that claim 4 is narrower than claim 1 because the “processing
`
`characteristics comprise signal characteristics.” The ’703 patent discloses that
`
`processing characteristics can include (1) physiological measurements and (2)
`
`-4-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`signal statistics, both of which are received from the one or more light sensitive
`
`detectors. (Ex. 1001, 4:11-27, Figs. 3-4.) Claim 4 is limited to signal characteristics
`
`(i.e., as opposed to physiological measurements).
`
`The clause identified by Petitioner, “from one more light sensitive
`
`detectors,” supports Masimo’s construction that the “processing characteristics”
`
`must come “from a signal received from one or more detectors configured to detect
`
`light.” (See also POR 23-27.)
`
`Claim 8 also does not support Petitioner’s argument. Claim 8 states:
`
`wherein said processing characteristics include determining an
`
`estimate of current power consumption and comparing said estimate
`
`with a target power consumption.
`
`Petitioner argues the “specification makes clear that…the ‘estimate of current
`
`power consumption’…is not ‘determined from a signal received from one or more
`
`detectors configured to detect light.’” (Reply 2.) Instead, Petitioner argues that the
`
`power consumption estimate is determined “from a signal received from control
`
`engine 440.” (Id.)
`
`Petitioner is incorrect that the “power consumption estimate…is not
`
`determined from a signal received from the detector front-end 490.” As illustrated
`
`by the red lines below, the “process status calculator 460” [orange] estimates the
`
`-5-
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`
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`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`current power consumption using a signal received from the detector front-end 490
`
`[green]:
`
`
`
`(Ex. 1001, Fig. 4, 5:28-6:55.) While the signal passes through other processing
`
`modules before reaching the power status calculator 460, the power consumption
`
`estimate is still “determined from a signal received from one or more detectors
`
`[490] configured to detect light.”
`
`This distinguishes the ’703 patent from Amano. Amano determines its
`
`alleged “processing characteristics” from a signal received exclusively from an
`
`acceleration sensor, not a “detector configured to detect light.” (Ex. 1004, 21:9-12,
`
`-6-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`35:25-27, 40:65-41:3; POR 73-75; Reply 24.) For this reason, Amano is
`
`substantially different from the ’703 patent.
`
`II. GROUNDS 1A-1B FAIL TO DEMONSTRATE OBVIOUSNESS
`A. A POSITA Would Not “Suspend And Not Execute” Diab’s Motion
`Artifact Suppression Module
`1.
`The Motion Artifact Suppression Module Operates Continuously
`A POSITA would not have been motivated to “suspend and not execute”
`
`Diab’s motion artifact suppression module because the module must continuously
`
`operate to generate a clean plethysmograph waveform. (POR 33-41; Ex. 2001,
`
`¶¶63-73; Ex. 1039, 34:9-40:12, 46:4-21, 50:9-52:3.) In reply, Petitioner argues,
`
`“Diab discloses that its system can, but does not necessarily need to, provide a
`
`clean plethysmograph waveform.” (Reply 4.) Petitioner is incorrect. The
`
`embodiment
`
`in Figures 20-21, which
`
`forms
`
`the basis
`
`for Petitioner’s
`
`unpatentability arguments, always provides a clean plethysmograph waveform.
`
`(POR 33-41.)
`
`Petitioner cites Diab’s column 35, lines 42-50 as allegedly supporting its
`
`argument. However, that section begins, “In the present embodiment, the output of
`
`the digital signal processing system 334 [red] provides clean plethysmographic
`
`waveform [yellow] of the detected signals and provides values for oxygen
`
`saturation and pulse rate to the display”:
`
`-7-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`
`
`
`(Ex. 1007, 35:43-47, Fig. 11 (emphases added).) The “present embodiment”
`
`describes Figure 11, as well as Figures 12-21, which include additional details
`
`regarding the same embodiment. (Ex. 1007, 7:56-8:22.) Thus, Diab discloses that
`
`the embodiments relied upon by Petitioner (i.e., Figures 20-21) generate a clean
`
`plethysmograph waveform.
`
`Petitioner disregards the first sentence of its cited section and focuses on the
`
`second sentence, which states, “It should be understood that in different
`
`embodiments of the present invention, one or more of the outputs may be
`
`provided.” (Id., 35:48-50 (emphasis added).) Petitioner incorrectly implies this
`
`sentence applies to Figures 20-21, and ignores the phrase “different embodiments.”
`
`Further, Petitioner identifies no “different embodiments.”
`
`-8-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`Petitioner also cites Diab’s column 49, lines 29-32 as allegedly supporting
`
`its argument. (Reply 4.) Again, Petitioner is incorrect. The cited portion states,
`
`“[t]he clean waveform at the output of the motion artifact suppression module 580
`
`is a clean plethysmograph waveform which can be forwarded to the display 336.”
`
`(Ex. 1007, 49:29-32.) The phrase “can be” indicates the clean plethysmograph
`
`waveform is able or designed to be forwarded to the display; it does not indicate
`
`that the generation of the clean plethysmograph is optional. (Ex. 1039, 47:2-49:10.)
`
`Petitioner also argues, “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.” (Reply 4.) Petitioner’s
`
`argument is conclusory and devoid of any explanation for how the string of Diab
`
`citations provides support. See e.g., TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d
`
`1352, 1359 (Fed. Cir. 2019) (“Rejections on obviousness grounds, in particular,
`
`cannot be sustained by mere conclusory statements[.]”).
`
`Moreover, Petitioner’s argument incorrectly assumes that removing motion
`
`artifacts is the only purpose of the correlation canceler. To the contrary, Diab
`
`explains the correlation canceler removes a “secondary portion” of the signal
`
`comprised of noise related to “the venous blood contribution,” “motion artifacts,”
`
`and “respiration.” (Ex. 1007, 3:40-4:50.) Consequently, the correlation canceler
`
`must operate to remove the other noise sources and generate the clean
`
`-9-
`
`
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`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`plethysmograph waveform, even if motion is not detected. (Id.) Petitioner ignores
`
`these teachings.
`
`Petitioner also argues that “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.” (Reply 5 (citing POR 34, 36; Ex. 2001,
`
`¶¶57, 75).) Petitioner argues that because “motion status” is an input to the motion
`
`artifact suppression module, the module must operate “differently” when motion is
`
`detected. (Reply 5-6.) Masimo’s contentions are not contradictory. Regardless of
`
`whether the module operates differently when motion is detected, it does not stop
`
`operating depending on motion as Petitioner alleges. (Ex. 1007, Fig. 20; see also
`
`POR 31-32, 34-35 (describing module).)
`
`
`
`Petitioner’s argument is also inconsistent with the description of Figures 20-
`
`21. As illustrated by Figure 21, the motion status input does not affect the motion
`
`artifact suppression module’s operation. (Ex. 1007, 48:34-49:32, Fig. 21.) Figure
`
`21 is consistent with Diab’s disclosure that the module “is nearly identical to the
`
`saturation transform module 406 (FIG. 18),” which also does not use the motion
`
`status. (Id., 48:34-40.) Petitioner cited no evidence that the motion status input
`
`suspends the motion artifact suppression module. Nor has Petitioner explained how
`
`Diab’s patient monitor would timely perform the complex task of waking the
`
`-10-
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`
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`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`module once it is suspended. Diab does not disclose any suspension or wakeup
`
`circuitry or modules, and Petitioner has not shown that a POSITA could easily
`
`modify Diab’s complex calculations to include such circuitry or modules. (Ex.
`
`2001, ¶¶53-59, 65-69.)
`
`
`
`For these reasons and those in the POR, a POSITA would not have found it
`
`obvious, or been motivated, to “suspend and not execute” Diab’s motion artifact
`
`suppression module based on Amano.
`
`2.
`Figures 20-21 Illustrate A Complete Module
`Petitioner argues that Diab’s Figures 20-21 are incomplete. (Reply 4-5.)
`
`Petitioner argues in the case of no motion, “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 filtering
`
`system, such as a bandpass filter.’” (Id. (emphasis added).) Petitioner argues
`
`Figures 20-21 “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.” (Reply 5.)
`
`
`
`However, Figures 20 and 21 do show the alleged “traditional filtering
`
`techniques.” The motion artifact suppression module utilizes a bandpass filter [red]
`
`and a lowpass filter [purple] to generate the clean waveform:
`
`-11-
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`
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`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`
`
`
`(Ex. 1007, 48:43-49:13, Fig. 21.) Thus, Figures 20-21 “show the generation of the
`
`plethysmograph waveform using ‘traditional filtering techniques.’” (Reply 5.)
`
`Petitioner also now argues, “Diab’s FIGS. 20 and 21 depict the modules that
`
`are executed ‘in case of motion.’” (Id.) Yet, in the Petition, Petitioner argued that
`
`Figure 20 showed the modules used “when motion is not detected” (green line) and
`
`when “motion is detected” (purple line):
`
`-12-
`
`
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`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`
`
`
`(Pet. 15-16.) Diab confirms that Figure 20 illustrates the modules used in “the case
`
`of no motion.” (Ex. 1007, 48:6-9; see also 47:55-58, 48:9-33 (further describing
`
`Figure 20’s motion-free path).
`
`
`
`For these reasons, Figures 20-21 are complete and illustrate the modules
`
`used for motion and no motion.
`
`B. A POSITA Would Not Have Been Motivated To Combine Diab And
`Amano
`A POSITA would not have been motivated to, or reasonably expected
`
`success in, applying Amano’s teachings to Diab due to unique aspects of the
`
`devices. (POR 41-45.) In Diab, the modules continuously operate and the spectrum
`
`analysis module 590 [orange] selects the output for calculating the raw heart rate:
`
`-13-
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`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`
`
`
`(Ex. 1007, 49:64-50:20, Fig. 20.) Unlike the ’703 patent, Diab does not address
`
`power consumption and, therefore, runs its modules continuously.
`
`In contrast, Amano addresses power consumption. Amano detects motion at
`
`the outset of the signal processing and uses motion to suspend certain operations.
`
`(Ex. 2001, ¶¶60-62.) Thus, while Amano uses motion to select an output path to
`
`suspend, Diab uses motion to select an input downstream. The consequence is that
`
`unlike Amano, Diab cannot “suspend and not execute” its motion artifact
`
`suppression module. (POR 41-43.) Suspending and not executing the module
`
`would fundamentally alter operation of Diab’s oximeter and make it inoperable for
`
`its intended purpose. “[C]ombinations that change the ‘basic principles under
`
`which the prior art was designed to operate’ or that render the prior art ‘inoperable
`
`for its intended purpose’, may fail to support a conclusion of obviousness.” Plas-
`
`-14-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`Pak Indus., Inc. v. Sulzer Mixpac AG, 600 Fed. Appx. 755, 758 (Fed. Cir. 2015)
`
`(quoting In re Ratti, 270 F.2d 810, 813 (CCPA 1959) and In Re Gordon, 733 F.2d
`
`900, 902 (Fed. Cir. 1984)). Diab’s oximeter generates multiple potential
`
`measurement values and then selects the best value, which was a significant
`
`departure from previous techniques that used only one measurement technique at a
`
`time.
`
`Petitioner also argues that Masimo’s arguments concerning lack of
`
`motivation “are misplaced” because “Masimo’s arguments primarily focus on
`
`whether Diab’s and Amano’s systems can be physically combined together.”
`
`(Reply 8.) Petitioner misstates Masimo’s arguments. Amano’s teachings are
`
`incompatible with Diab and a POSITA would not have been motivated to combine
`
`the references, or reasonably expected success in doing so. (Ex. 2001, ¶¶70-73.)
`
`C.
`
`Suspending and Not Executing Diab’s Motion Artifact Suppression
`Module Would Not Necessarily Result In Lower Power Consumption
`Or Reduce An Amount Of Processing
`Even if Diab’s motion artifact suppression module were suspended and not
`
`executed, Petitioner still failed to show this would result in “lower power
`
`consumption levels” or “reducing an amount of processing by a signal processor.”
`
`(POR 45-48, 52-54.) Petitioner never accounted for the output filter [pink] and
`
`spectrum analysis module [orange]:
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`IPR2020-01523
`Apple Inc. v. Masimo Corporation
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`
`
`(Id.)
`
`Diab discloses that the output filter “is slowed down” if motion is large and
`
`“can sample much faster” if there is no motion. (Ex. 1007, 50:23-27.) Petitioner
`
`now argues, “a POSITA would have understood Diab’s disclosure…to refer to the
`
`filter dampening being slowed down….” (Reply 10-11.) Petitioner’s argument is
`
`conclusory, unsupported, and unexplained. TQ Delta, 942 F.3d at 1359. The only
`
`document Petitioner cites in support is an incomplete and unauthenticated
`
`document from “The Wayback Machine.” (Reply 10-11 (citing Ex. 1038).)
`
`Petitioner fails to explain how this document reflects a POSITA’s understanding or
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`relates to Diab. (Id.)
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`-16-
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`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`Moreover, Diab does not mention “filter dampening.” Rather, Diab states the
`
`output “filter can sample much faster” or be “slowed down.” (Ex. 1007, 50:23-27.)
`
`A POSITA would have understood that a “module that samples ‘much faster’ will
`
`process more data and increase the power consumption level.” (POR 47; Ex. 2001,
`
`¶76.)
`
`Petitioner also argues that the spectrum analysis module 590 does not
`
`consume more power when no motion is detected because the module merely
`
`selects one of two values and that “Diab does not describe any difference between
`
`these two selections[.]” (Reply 12.) That is not true. The module does not simply
`
`select a value; it runs algorithms to determine which value to select. (See e.g., Ex.
`
`1039, 58:13-59:20, 63:14-65:2, 68:2-16, 69:20-72:2 (explaining how module
`
`operates).) For example, for no motion, the module selects “the first peak that has
`
`an amplitude of at least 1/20th of the largest peak in the spectrum.” (Ex. 1007,
`
`48:28-31.) Before selecting a peak, the module first determines the “largest peak”
`
`and then runs calculations to identify “the first peak.” (Id.; POR 47; Ex. 2001,
`
`¶77.) As explained by Masimo’s declarant, this process may consume more power
`
`than selecting the first harmonic in the case of motion. (Ex. 1039, 68:2-72:2.)
`
`Petitioner cited no contrary evidence.
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`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`D. Diab Does Not Disclose Comparing “Processing Characteristics” To A
`“Predetermined Threshold”
`As explained in the POR, Petitioner failed to show that Diab expressly or
`
`inherently disclosed comparing processing characteristics to a “predetermined
`
`threshold.” (POR 48-52 (emphasis added).) While Petitioner noted that Diab’s
`
`motion status module assesses whether an “average peak width value” is wide,
`
`Petitioner never explained how Diab’s oximeter met the “predetermined”
`
`requirement. (Id.) Masimo identified several ways Diab’s oximeter could evaluate
`
`peak width without using a predetermined threshold (e.g., comparing the peak
`
`width to a recent average of peak widths). (Id.) Petitioner does not dispute that
`
`Diab could use these other ways.
`
`Rather, Petitioner now contends that Diab’s “predetermined threshold” is “a
`
`width value above which the peaks are considered wide.” (Reply 13.) Petitioner
`
`argues this “width value” is predetermined because it “must be determined before
`
`the comparison is performed.” (Id., 14 (emphasis in original).)
`
`Yet, Petitioner’s broad, new construction of “predetermined” would
`
`eliminate “predetermined” from the claims. The challenged claims require,
`
`“comparing processing characteristics to a predetermined threshold.” (See e.g., Ex.
`
`1001, 11:43-44.) In any comparison, the comparators must be “determined before”
`
`the comparison. If “predetermined” merely meant “determined before,” then it is
`
`superfluous in the challenged claims because the claims already require
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`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`“comparing.” Consequently, “predetermined” must have a different meaning than
`
`“determined before.” See e.g., Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d
`
`1364, 1372 (Fec. Cir. 2005) (“A claim construction that gives meaning to all the
`
`terms of the claimed is preferred over one that does not do so.”).
`
`The ’703 patent establishes that the “predetermined threshold” is not
`
`recalculated in real time. Rather, the “predetermined threshold” is programmed
`
`into the oximeter and remains constant during patient monitoring. The ’703 patent
`
`states, “The power status calculator 460 also stores a predetermined power target
`
`and compares its power consumption estimate to this target.” (Ex. 1001, 6:49-51
`
`(emphasis added); see also 2:34-37, 3:52-56.) As shown in Figure 8, the
`
`“predetermined target power consumption level 830” [yellow] is constant and
`
`establishes a static power target:
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`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`
`
`
`(Id., 8:22-28, Fig. 4.)
`
`
`
`If “predetermined” meant “determined before,” then the “predetermined
`
`threshold” could change during operation. For example, if the “predetermined
`
`threshold” were determined from the averages of recent peak widths (see POR 51-
`
`52), the threshold would change as the average changed. Such a system would
`
`create a variable, unpredictable power target, which is inconsistent with the
`
`“predetermined power target” described in the ’703 patent.
`
`III. GROUND 1C FAILS TO DEMONSTRATE OBVIOUSNESS
`Ground 1C fails for the same reasons as Ground 1A. (POR 57.) Ground 1C
`
`also fails because Petitioner identifies no reference that discloses or suggests
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`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`“reducing/reduce activation of an attached sensor,” as required by independent
`
`claims 1 and 15, nor the additional requirement of reducing the duty cycle during
`
`operation required by dependent claims 2 and 16. Nor did Petitioner adequately
`
`explain why a POSITA would have been motivated to combine Diab, Amano, and
`
`Turcott. (Id., 60-67.)
`
`A.
`
`Petitioner’s References Do Not Disclose Or Suggest “Reducing/Reduce
`Activation Of An Attached Sensor”
`Petitioner argued Turcott teaches reducing activation of an attached sensor
`
`because it allegedly discloses “reducing the duty cycle to lower power
`
`consumption.” (Pet. 38.) Masimo demonstrated that a POSITA would not have
`
`understood Turcott to teach “reducing activation of an attached sensor” during
`
`“continuous patient monitoring,” as required by the claims. (POR 60-61.) Rather, a
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`POSITA would have understood Turcott to disclose setting its operating
`
`parameters during product design or setup. (Id.)
`
`Petitioner argues this conclusion “is unsupported conjecture” (Reply 18), but
`
`that is incorrect. Masimo’s declarant explained that a POSITA would have reached
`
`this conclusion because Turcott (1) does not disclose or enable making adjustments
`
`in real-time during continuous monitoring, (2) does not identify any conditions
`
`during patient monitoring that would trigger the adjustments, (3) does not disclose
`
`the hardware and software necessary to make adjustments in real-time, and (4)
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`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`discloses an implantable device where a constant low duty cycle would have been
`
`important to prolong the device’s life. (POR 61, 64; Ex. 2001, ¶¶103, 109-110.)
`
`
`
`Moreover, Petitioner does not dispute that Turcott is silent regarding how it
`
`would allegedly perform the complex task of adjusting the duty cycle during
`
`continuous patient monitoring. Petitioner simply argues that Turcott’s use of the
`
`words “adjusted” and “adjusting” means “that multiple values are possible for the
`
`adjustment during monitoring and not a single value selected during product design
`
`or setup.” (Reply 18 (citing Ex. 1006, 11:51-59).) However, these words do not
`
`indicate that the adjustments occur during patient monitoring. If anything,
`
`Turcott’s use of the past tense “adjusted” indicates selecting the duty cycle in the
`
`past (i.e., during setup), not during patient monitoring.
`
`
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`Petitioner also argues that Masimo’s observations concerning Turcott are
`
`“inapposite” because Masimo attacked Turcott individually and did not address the
`
`combined references. (Reply 16-17.) That is incorrect. Masimo appropriately
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`responded to Petitioner’s argument that Turcott teaches “reducing the duty cycle to
`
`lower power consumption in a pulse oximeter.” (Pet. 39; Ex. 1003, ¶80.) Masimo
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`explained in detail why a POSITA would not have been motivated to combi
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