Filed: December 3, 2021
`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Benjamin A. Katzenellenbogen (Reg. No. 53,102)
`Shannon H. Lam (Reg. No. 65,614)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1526-994@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01526
`U.S. Patent 6,771,994
`
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO REPLY
`
`
`
`
`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Benjamin A. Katzenellenbogen (Reg. No. 53,102)
`Shannon H. Lam (Reg. No. 65,614)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1526-994@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01526
`U.S. Patent 6,771,994
`
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO REPLY
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`II.
`
`INTRODUCTION .................................................................................... 1
`CLAIM CONSTRUCTION ..................................................................... 3
`A. Apple’s Does Not Dispute Plain and Ordinary Meaning ............... 3
`III. GROUNDS ............................................................................................... 4
`A. Ground 1: Diab + Benjamin + Melby ............................................ 4
`1.
`Apple Does Not Dispute The Majority of Masimo’s
`Assertions ............................................................................. 4
`Apple Incorrectly Recasts Masimo’s Argument
`Regarding Scattering and Collimating ................................. 5
`Apple’s Argument That Much Of The Light
`Reduction Would Be Ambient Light Is Unsupported ......... 7
`Apple Ignores The Drawbacks Of Implementing Its
`Proposed Modification ....................................................... 10
`B. Ground 2: Webster + Melby......................................................... 12
`1.
`Apple Does Not Dispute Masimo’s Assertions ................. 12
`2.
`Apple’s Characterization of Webster Is Not
`Supported ........................................................................... 13
`C. Ground 3: Fine .............................................................................. 15
`1.
`A POSITA Would Not Have Considered Fine .................. 15
`2.
`Optical Fibers Are Not Louvers ......................................... 17
`D. Ground 4: Fine + Benjamin + Melby ........................................... 20
`1.
`Apple Still Provides No Motivation to Incorporate a
`Light Control Film Into Fine.............................................. 20
`
`2.
`
`3.
`
`4.
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`2. Masimo Addressed Apple’s Proposed Modification ......... 21
`IV. CONCLUSION ....................................................................................... 24
`
`
`
`-ii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Arctic Cat Inc. v. Bombardier Rec. Prods.,
`876 F.3d 1350 (Fed. Cir. 2017) ................................................................... 10
`General Electric Company V. United Technologies Corporation,
`IPR2017-00428, Paper No. 38 (P.T.A.B. June 22, 2018) ........................... 10
`Henny Penny Corp. v. Frymaster LLC,
`938 F.3d 1324 (Fed. Cir. 2019) ............................................................... 7, 10
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-00582, Paper 34 (P.T.A.B. Aug. 5, 2019) .................................... 10
`Intelligent Bio-Sys. Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ..................................................................... 7
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ..................................................................... 5
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) ................................................................... 16
`Winner Int’l Royalty Corp. v. Wang,
`202 F.3d 1340 (Fed. Cir. 2000) ................................................................... 10
`OTHER AUTHORITIES
`35 U.S.C. § 316 ........................................................................................... 1, 2, 3
`37 C.F.R. § 42.6 ................................................................................................ 26
`37 C.F.R. § 42.8 ................................................................................................ 25
`37 C.F.R. § 42.24 .............................................................................................. 25
`
`
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`-iii-
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
`
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`Declaration of Vijay K. Madisetti, Ph.D.
`
`Curriculum Vitae of Vijay K. Madisetti, Ph.D.
`
`Transcript of Deposition of Dr. Brian Anthony in connection with
`IPR2020-01526
`
`“COVID-19 Clinical management”, apps.who.int (January 25,
`2021), available at
`https://apps.who.int/iris/bitstream/handle/10665/338882/WHO-
`2019-nCoV-clinical-2021.1-eng.pdf?sequence=1&isAllowed=y
`
`“Pulse Oximeters - Premarket Notification Submissions [510(k)s]:
`Guidance for Industry and Food and Drug Administration Staff”,
`fda.gov (March 2013), available at
`https://www.fda.gov/regulatory-information/search-fda-guidance-
`documents/pulse-oximeters-premarket-notification-submissions-
`510ks-guidance-industry-and-food-and-drug
`
`2006
`
`Tamura et al., “Wearable Photoplethysmographic Sensors—Past
`and Present,” Electronics 3:282-302 (2014)
`
`2007
`
`U.S. Patent No. 4,700,708
`
`2008
`
`2009
`
`2010
`
`2011
`
`Verploegh, “Light Control Systems for Automotive
`Instrumentation,” SAE Technical Paper Series (February 24-28,
`1986)
`
`U.S. Patent No. 3,922,440
`
`U.S. Patent No. 4,938,218
`
`U.S. Patent No. 5,024,226
`
`Exhibit List, Page 1
`
`
`
`IPR2020-01526
`Apple Inc. v. Masimo Corporation
`
`Exhibit No.
`
`Description
`
`2012
`
`Cohen et al., “A plan to save coronavirus patients from dying at
`home,” cnn.com (April 12, 2020), available at
`https://www.cnn.com/2020/04/11/health/monitoring-covid19-at-
`home/index.html
`
`2013
`
`U.S. Patent No. 5,099,842
`
`2014
`
`Hecht, Understanding Fiber Optics, Laser Light Press (5th ed.
`2015)
`
`2015
`
`Definition of “louver,” lexico.com (powered by Oxford)
`
`
`
`
`
`
`
`Exhibit List, Page 2
`
`
`
`IPR2020-01526
`Apple Inc. v. Masimo Corporation
`
`
`I.
`INTRODUCTION
`In its reply, Apple chose obfuscation and misdirection over any clear
`
`rebuttal of Masimo’s Patent Owner Response. Apple carries the burden of proving
`
`any unpatentability of Claim 15. 35 U.S.C. § 316(e). Apple’s game plan of
`
`mischaracterizing Masimo’s arguments, and
`
`then disputing only
`
`those
`
`mischaracterizations, does not meet its burden.
`
`For Ground 1, Masimo explained that a POSITA would not have redesigned
`
`Diab’s sensor with Benjamin’s and/or Melby’s light control film because
`
`Benjamin’s and/or Melby’s light control film causes the opposite optical effect
`
`from that of Diab’s innovative light scattering medium. Apple does not rebut this
`
`or several other arguments in Masimo’s Response. Instead, Apple recasts
`
`Masimo’s Response as an argument about the position of Diab’s scattering
`
`medium and cites Diab’s disclosure of other positions for its scattering medium.
`
`Whether Diab discloses one or many positions for its scattering medium is
`
`irrelevant to whether a POSITA would replace a scattering medium with a light
`
`control film that results in the opposite optical effect. Masimo provided bases and
`
`evidence for why the POSITA would not make such replacement and Apple in its
`
`reply failed to dispute or rebut those bases.
`
`In Ground 2, Masimo argued that a POSITA would not replace Webster’s
`
`optical filter, designed to remove unwanted wavelengths of light, with Melby’s
`
`-1-
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
`
`film that controls the direction of light. As Masimo explained, Melby’s film would
`
`not remove selected wavelengths of light and therefore cannot perform the desired
`
`optical function of Webster’s filter. Apple again does not rebut Masimo’s
`
`argument. Instead, Apple’s Reply mischaracterizes Webster’s optical filter as
`
`minimizing ambient light. Even a cursory review of Webster, however, clarifies
`
`that Webster’s discussion of ambient light involves light barriers, not light
`
`wavelength filters.
`
`In Ground 3, Masimo explained that the Petition nonsensically equated a
`
`fiber with a louver. A POSITA, however, would have understood the structure of a
`
`fiber is nothing like a louver. POR (Paper 12) at 47-48. Masimo also explained that
`
`fibers operate under different principles than louvers. Id. Apple’s Reply suggested
`
`that Masimo did not respond to Apple’s argument that each of Fine’s separate
`
`fibers act as a louver. But, as Masimo explained, given the distinct structures of
`
`fibers and louvers, Fine would not have led a POSITA to the claimed invention.
`
`In Ground 4, Masimo explained that Apple’s Petition lacked any description
`
`of a precise modification. Nevertheless, Masimo, through its expert Dr. Madisetti,
`
`addressed all technical possibilities, including placing the light control film at the
`
`contact surface. A POSITA would have understood that such a modification would
`
`prevent Fine’s sensor from working in an operative manner because the light
`
`control film would obstruct Fine’s fibers or at least a portion of the light within the
`
`-2-
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
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`acceptance cone of the fiber. EX2001 ¶¶ 120-121. Apple’s conclusory assertion
`
`that Masimo did not address the Fine-Benjamin-Melby combination is wrong.
`
`Apple failed to demonstrate obviousness. Accordingly, the Board should
`
`affirm the patentability of Claim 15 of the ’994 Patent.
`
`II. CLAIM CONSTRUCTION
`A. Apple’s Does Not Dispute Plain and Ordinary Meaning
`Apple in its Petition argued a properly construed claim “require[s] the light
`
`sensitive detector . . . be positioned opposite the . . . light emission device.” Pet.
`
`(Paper 2) at 8-10. The Board in its Institution disagreed with Apple. Institution
`
`Decision (Paper 7) at 8-9.
`
`Masimo’s Response explained why Apple’s attempt to import limitations
`
`into the claim language is wrong for at least six reasons. POR at 21-26. Masimo
`
`further argued the Board should construe all elements of Claim 15 according to the
`
`plain and ordinary meaning thereof. Id.
`
`The Board directed that “Petitioner should clarify in its reply which grounds
`
`are dependent on which claim interpretation, and further explain which
`
`interpretation it contends is proper, after considering Patent Owner’s response.”
`
`Paper 7 at 9 n.1. Apple’s Reply did not address claim construction, and thus
`
`concedes Masimo’s position that no construction is necessary. Accordingly, the
`
`Board should adopt the plain and ordinary meaning of all the terms of Claim 15.
`
`-3-
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
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`
`III. GROUNDS
`A. Ground 1: Diab + Benjamin + Melby
`1.
`Apple Does Not Dispute The Majority of Masimo’s Assertions
`Apple in its Petition argued a POSITA would replace Diab’s scattering
`
`medium with Benjamin’s light control film. Pet. at 21. The Board in its Institution
`
`agreed with Apple stating the POSITA would make the replacement “to provide . .
`
`. [a] sensor that reduces variations in the amount of light detected . . . to collimate
`
`the light emitted from the light source . . . and reflected back to the [detector].”
`
`Institution Decision at 18. Masimo in its Response explained that Diab’s desire to
`
`scatter (or randomize) light is the opposite of Benjamin’s collimation (or
`
`organization) of light. POR at 28, 30-31. Masimo cited to Apple’s expert who
`
`agreed scattering is not collimating. Id. at 30 (citing EX2003 at 153:22–154:8,
`
`155:10-18). Masimo explained that replacing Diab’s scattering medium with the
`
`opposite—Benjamin/Melby’s light control film—would change the principle of
`
`operation of Diab’s sensor and render Diab’s scattering unsuitable of its intended
`
`purpose. Id. at 32-33. On reply, Apple did not dispute any of the foregoing
`
`explanations or assertions. Based on these undisputed argument alone, the Diab-
`
`Benjamin-Melby ground fails because a POSITA would not have been motivated
`
`to make the proposed modifications.
`
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
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`
`Masimo also argued that such a combination would perform worse, block
`
`light, compress flesh and would likely ruin Benjamin’s and Melby’s film. Id. at 36-
`
`37. Apple in its Reply disputes only whether the combination blocks light, which is
`
`discussed in more detail below. See infra § III.A.3. All of Masimo’s other
`
`assertions remain undisputed.
`
`Further, Masimo argued that Apple provided no evidence or basis for
`
`suggesting that the proposed combination:
`
` leads to more consistent and accurate measurements (Pet. at 22);
`
` reduces an amount of light reaches the detector without going through
`
`tissue (id. at 22-23); and
`
` reduces false readings based on sensor misalignment (id. at 23).
`
`Apple’s own expert, Dr. Anthony, agreed that other Diab elements already
`
`provided some of these benefits. POR at 39-41. On reply, Apple still does not
`
`identify or provide any evidence to support its arguments and thus does not satisfy
`
`its burden of proving obviousness. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`
`1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving obviousness, a
`
`petitioner cannot employ mere conclusory statements.”).
`
`2.
`
`Apple Incorrectly Recasts Masimo’s Argument Regarding
`Scattering and Collimating
`Masimo explained that one of Diab’s critical teachings is to scatter light and
`
`that Apple’s proposed modifications eliminate this core feature. Instead, the
`
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`IPR2020-01526
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`proposed modifications cause the light to be uniform in direction. POR at 30-31.
`
`Apple mischaracterized Masimo’s argument as reliant on the positioning of Diab’s
`
`scattering medium interposed between the tissue and photodetector. Reply at 1
`
`(citing POR at 29-31). Apple then addressed its mischaracterization arguing that
`
`“Diab explicitly discloses examples in which the scattering medium is ‘interposed’
`
`only ‘between the light source and the’ the [sic] user tissue.” Reply at 1-2 (citing
`
`EX1006 at 4:6-12). But Apple never explained the significance of this statement or
`
`how it would have motivated a person of skill to make the proposed combination.
`
`Relying on its mischaracterization, Apple sidesteps whether a POSITA
`
`would have replaced a scattering medium with a light control film. Apple does not
`
`dispute that Diab employs optical scattering techniques to improve optical signal
`
`quality. See POR at 28. Apple does not dispute that Diab’s intended purpose is to
`
`scatter optical radiation or that Diab’s principle of operation incorporates a
`
`scattering medium that helps to minimize the effects of local artifacts and
`
`perturbations within the material. See id. at 32-33. Apple also does not dispute that
`
`collimating light as taught by Benjamin or increasing the directionality of light as
`
`taught by Melby is the opposite of Diab’s scattering. See id. at 30-31. Thus, a
`
`POSITA would not have been motivated to replace Diab’s scattering medium with
`
`a light control film, as suggested in the Petition. See id. at 32-33; EX2001 ¶¶ 74-
`
`77.
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`-6-
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
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`Additionally, Apple’s reliance on the scattering medium being interposed
`
`between the light source and the finger is not part of the combination proposed in
`
`the Petition. See Pet. at 19. Nowhere did Apple previously identify the scattering
`
`medium’s juxtaposition with the light source and user tissue as part of its theory
`
`for unpatentability. Apple’s new theory denies Masimo the opportunity to respond
`
`with expert testimony. Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324,
`
`1330-31 (Fed. Cir. 2019) (Petitioner may not raise in reply “‘an entirely new
`
`rationale’ for why a claim would have been obvious.”) (citing Intelligent Bio-Sys.
`
`Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1370 (Fed. Cir. 2016)).
`
`Even if a scattering medium was only interposed between the light source
`
`and the tissue, Apple still has not provided a motivation to use a collimating film
`
`between the tissue and the detector. To the contrary, a collimating film is
`
`antithetical to the entire disclosure of Diab.
`
`3.
`
`Apple’s Argument That Much Of The Light Reduction Would Be
`Ambient Light Is Unsupported
`Masimo argued that “the combination of Diab’s absorbing chamber wall and
`
`Melby’s light control film would reduce the total light received by the
`
`photodetector” and “make the signal more difficult to interpret.” POR at 35. Apple
`
`argued in its Reply that “even if the ‘total light received by the photodetector 426’
`
`were reduced by the introduction of the light control film, much of the light
`
`constituting the reduction would be ambient light . . . . .” Reply at 2.
`
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
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`
`First, Masimo’s expert, Dr. Madisetti, provided annotated Fig. 1 of Melby,
`
`reproduced below. It shows some light (right-side yellow arrow) from a desired
`
`direction, not ambient light, passes through Melby’s film, and some light (left-side
`
`yellow arrow) also from the desired direction, and also not ambient light, is
`
`absorbed/blocked by opaque louvers 20. EX2001 ¶ 80.
`
`
`EX1008 at FIG. 1 (as annotated at EX2001 ¶ 80.). Melby itself recognizes that its
`
`automotive control panel film reduces on-axis transmissions. See EX1008 at 2:65-
`
`68, 4:42-47. In contrast to the actual teachings of Melby, Apple provides no
`
`objective evidence that “much of the light” reduced by the light control film would
`
`be ambient light compared to the reduction in on-axis transmission described
`
`above. Thus, Melby absorbs/blocks at least some of the desired light, not mostly
`
`ambient light.
`
`And as Dr. Madisetti explained, even small changes in received light can be
`
`catastrophic. EX2001 ¶ 31. Specifically, Dr. Madisetti explained calibration curves
`
`for correlating measured and processed ratiometric data received from a pulse
`
`oximetry sensor with empirically determined oxygen saturation levels “are highly
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
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`sensitive to even small changes to any particular optical system as such changes
`
`affect the incoming values of the ratiometric data.” Id. Thus, Melby’s reduction of
`
`desired light would degrade the accuracy of the output measurement.
`
`Second, Apple failed to address in its Reply why a POSITA, having Diab’s
`
`chamber that already absorbs incident light, would add Melby’s film to absorb
`
`incident light. As discussed and shown below, Diab discloses its detector recessed
`
`within its chamber such that “some of the light is caused to be incident on the
`
`opaque walls 123 of the chamber 122 and is absorbed.” POR at 35 (citing EX1006
`
`at 7:45-50).
`
`
`EX1006 at FIG. 4 (as annotated in POR at 12). Dr. Anthony also explained that
`
`Diab’s recess “absorbs oblique rays used as a light block front things coming at an
`
`off angle.” See POR at 39; EX2003 at 59:1-13, 130:12-16. Apple does not address
`
`why a POSITA having Diab’s chamber, which already absorbs incident light,
`
`would include the additional complexity of Benjamin and/or Melby’s light control
`
`film to block incident light. See POR at 35; EX2001 ¶ 79.
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`IPR2020-01526
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`4.
`
`Apple Ignores The Drawbacks Of Implementing Its Proposed
`Modification
`Apple argued that “Masimo cites no case law or other authority standing for
`
`its proposition that the possibility of burdensome or expensive regulatory process
`
`can dissuade a POSITA from arriving at a claimed invention.” Reply at 3.
`
`Determining whether a claimed combination would have been obvious to a skilled
`
`artisan must account for “reasons not to combine.” Arctic Cat Inc. v. Bombardier
`
`Rec. Prods., 876 F.3d 1350, 1363 (Fed. Cir. 2017) (“Evidence suggesting reasons
`
`to combine cannot be viewed in a vacuum apart from evidence suggesting reasons
`
`not to combine.”); Henny Penny Corp. 938 F.3d at 1332 (affirming the Board’s
`
`finding of no motivation to combine where “tradeoffs [] yield an unappetizing
`
`combination” especially because the primary references already teaches a
`
`solution); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349-50 (Fed. Cir.
`
`2000) (no clear error in the district court's finding that a person of skill in the art,
`
`on balance, would not have made the claimed invention). Without a compelling
`
`motivation to combine, cost can certainly dissuade a POSITA from making a
`
`modification. See Hulu, LLC v. Sound View Innovations, LLC, IPR2018-00582,
`
`Paper 34 (P.T.A.B. Aug. 5, 2019) (finding reasons to combine inadequate when
`
`proposed modification would not have improved the primary reference and the
`
`proposed modification was costly); General Electric Company V. United
`
`Technologies Corporation, IPR2017-00428, Paper No. 38 (P.T.A.B. June 22,
`
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`2018) (finding that modification of a one-stage turbine engine to a two-stage
`
`turbine engine was not obvious in light of various tradeoffs that exist such as
`
`reduced weight and cost of a one-turbine engine).
`
`Additionally, the FDA Guidance cited by Masimo was not intended to be a
`
`prior art teaching. Rather, the FDA Guidance simply confirms that calibration
`
`curves are sufficiently critical to accuracy that regulatory bodies have promulgated
`
`rules to ensure changes are not treated lightly. This sensitivity was known at the
`
`critical date. For example, Webster discloses that calibration curves are critical to
`
`the accuracy of the oxygen saturation level and are empirically determined using
`
`data obtained in clinical studies. See EX1010 at 54, 159; see also EX1001 at 1:50-
`
`54. Dr. Madisetti explained that “[c]alibration curves are highly sensitive to even
`
`small changes to any particular optical system as such changes affect the incoming
`
`values of the ratiometric data.” EX2001 ¶ 31. Thus, a POSITA at the time of the
`
`critical date would have recognized, and Apple does not dispute, that changes to
`
`the optical system could require an updated calibration curve, which even before
`
`overt FDA regulation was costly and time-consuming. A POSITA would not
`
`undertake this costly and time-consuming effort of updating the calibration curve,
`
`particularly with the other drawbacks discussed above. Id. ¶¶ 84-87; see supra
`
`§ III.A.2, III.A.3.
`
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
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`Based on at least the foregoing, a POSITA would not have been motivated
`
`to combine the teachings of Diab, Benjamin, and Melby. Instead, Apple’s
`
`combination relies on classic hindsight construction to arrive at Claim 15 of the
`
`’994 Patent.
`
`B. Ground 2: Webster + Melby
`1.
`Apple Does Not Dispute Masimo’s Assertions
`Apple does not dispute that light filters that filter specific wavelengths of
`
`light are not the same as Melby’s light control film that controls the directionality
`
`of light. See POR at 44-45. Apple also does not dispute that light impervious
`
`barriers that block light are not the same as Melby’s light control film that controls
`
`the directionality of light. See id. at 45. Therefore, Apple’s reliance on operation in
`
`the “same way” to make the proposed modifications cannot support the
`
`combination of Webster and Melby.
`
`Apple also does not dispute that Webster already discloses the solution of
`
`light impervious barriers to limit the light reaching the photodiode. See POR at 45-
`
`46. Thus, Apple’s argument in its Petition that a POSITA would have been
`
`motivated to combine Webster and Melby to minimize errors by limiting the light
`
`reaching the photodiode is unsupported. See Pet. at 42.
`
`Accordingly, Apple’s Petition failed to provide a credible motivation to
`
`combine Webster and Melby.
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`-12-
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
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`
`2.
`Apple’s Characterization of Webster Is Not Supported
`Apple in its Petition argued that a POSITA “would have recognized that
`
`Melby’s film could be used in the Webster device as the ‘light filter’ to control
`
`light . . . .” Pet. at 42. Masimo in its Response argued Apple wrongly conflates
`
`Webster’s wavelength filter, which is a component over the detector, with the
`
`optical effect of a different component, Webster’s light impervious barriers. Id.
`
`The problem for Apple is that Webster’s light impervious barriers are not
`
`positioned over the detector and Claim 15 requires louvers to be over the detector.
`
`Apple ignores Webster's clear context and cherry picks quotes as follows:
`
`Webster states that ‘it is important to minimize the effects from light
`other than the optical signals of interest.’ ‘One way to minimize
`unwanted light incident upon the detector is to place some type of
`light filter over the detector.’ Webster describes that one type of
`‘unwanted light’ that should be minimized is ‘ambient light’-which is
`the type of light the light control film of Melby is designed to
`minimize.
`Reply at 4 (internal citations omitted). Unpacking Apple’s argument, Apple first
`
`cites to Webster’s teaching of placing a light filter (a component) over the detector
`
`(its position). Then with sleight of hand, Apple switches from light filters (the
`
`component) to the function of minimizing ambient light, which is decidedly not the
`
`function Webster associates with light filters. See POR at 16, 42-43; EX2001
`
`¶¶ 95-96. Rather, Webster’s discussion of ambient light is in a different section
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
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`from its discussion of filters, refers to a different problem than wavelength
`
`filtering, and explains the optical properties of light barriers, not light filters. See
`
`POR at 16-17, 42-44; EX2001 ¶¶ 95, 97-99.
`
`Webster explains that placing some type of light filter over the detector
`
`“allows light of wavelengths of interest to pass through the filter but does not
`
`allow light of other wavelengths to pass through the filter.” EX1010 at 79
`
`(emphasis added); see also EX2003 at 235:6-14 (Anthony confirming some type of
`
`light filter is “referring to the optical filtering [described] in Section 6.3.1”).
`
`During Dr. Madisetti’s deposition, even Apple’s counsel “believe[d] they call it the
`
`spectral filter in Webster” (EX1038 at 78:13-15), and thereafter, referred to the
`
`filter as Webster’s “wavelength filter.” See id. at 79:7-12, 80:7-9, 81:17-19, 82:3-5,
`
`82:8-10. When asked whether “Webster describe[s] other types of filters that can
`
`be placed over a photodetector,” Dr. Madisetti explained “none that would be
`
`applicable and none that Dr. Anthony or the petitioner has relied upon.” Id. at
`
`78:22–79:6.
`
`Accordingly, a POSITA would have had no motivation to incorporate
`
`Melby’s light control film based on the teachings of Webster’s wavelength filter.
`
`Filtering specific wavelengths of light is not the same as limiting the direction of
`
`accepted light. EX2001 ¶¶ 96, 103-104.
`
`-14-
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
`
`
`In a separate section, Webster describes barriers “limit the light reaching the
`
`photodiode to that which has traveled through tissue containing arterial blood.”
`
`EX1010 at 79. Instead of filters, Webster describes the use of light impervious
`
`barriers to minimize ambient light. See EX1010 at 79.
`
`Apple wholly ignores Masimo’s arguments and Webster’s discussion of
`
`light impervious barriers. See POR at 42-46. Webster describes that “[l]ight
`
`impervious barriers should be placed between LEDs and the photodiode in all
`
`areas where the emitted light could reach the photodiode without passing through
`
`tissue.” EX1010 at 79. Webster’s light impervious barriers are not over the
`
`detector, putting the barriers over the detector would block all light from reaching
`
`the detector rendering the sensor inoperative. EX2001 ¶¶ 97-99. Apple does not
`
`identify any other structure in Webster that could minimize ambient light, much
`
`less be positioned over the detector and minimize ambient light. Thus, a POSITA
`
`would have had no motivation to position Melby’s light film over the detector
`
`based on the teachings of Webster’s barriers.
`
`C. Ground 3: Fine
`1.
`A POSITA Would Not Have Considered Fine
`Apple argued that “Petitioner is not aware of, any authority for disqualifying
`
`a prior art reference from an obviousness analysis due to its complexity or the cost
`
`to implement the invention it describes.” Reply at 5-6. The Federal Circuit has
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`-15-
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
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`cautioned against relying on hindsight bias in selecting a lead prior art reference.
`
`See, e.g., WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1337 (Fed. Cir. 2016) (“The
`
`real question is whether that skilled artisan would have plucked one reference out
`
`of the sea of prior art. . .”). Apple failed to demonstrate why a POSITA would have
`
`selected Fine’s complex sensor from the “sea of prior art” to design a pulse
`
`oximetry sensor as described in the Claim 15 of the ’994 Patent.
`
`Fine discloses a fetal oximetry sensor. EX1009 at 1:8–3:6, 6:28-32.
`
`Dr. Madisetti explained that “[f]etal oximetry addresses an entirely different
`
`problem from the ’994 Patent because fetal oximetry is attempting to measure the
`
`oxygen saturation of a fetus during passage through the birth canal.” EX2001
`
`¶ 108. Because of challenges with measuring oxygen saturation in the birth canal,
`
`Fine’s sensor design includes complex and expensive optical fibers to transport
`
`light from a laser light source, likely placed outside the patient’s body. POR at 18,
`
`47; EX2001 ¶ 108; EX1009 at 7:9-14. Fine itself distinguishes its laser diodes from
`
`conventional, non-invasive oximetry apparatuses, for example on the finger or ear,
`
`that use LEDs. EX1009 at 7:15-17, 2:17-29. Apple’s attempts to characterize
`
`Fine’s optical fibers as louvers are further evidence of improper hindsight
`
`reconstruction. See infra § III.C.2.
`
`-16-
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
`
`
`2. Optical Fibers Are Not Louvers
`Apple incorrectly argued in its Reply that “[n]one of Masimo’s arguments
`
`address the Petition’s specific analysis of how a ‘POSITA would have recognized
`
`that each of the separate fibers within the fiber optic bundle 57 acts as a louver
`
`positioned over a light detector of Fine’s probe.’” Reply at 7-8. According to
`
`Apple, “a POSITA would have understood fibers 70 and 80 to teach separate
`
`louvers because the walls of the fibers serve to direct light and control the scope of
`
`vision of the fibers.” Pet. at 57.
`
`EX1009 at FIG. 5 (as annotated at Pet. at 56).
`
`
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`-17-
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
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`
`First, the structure of a fiber is nothing like a louver. POR at 47-48. FIG. 5
`
`of Fine is a cross-section and does not show the annular profile of the fiber 70.
`
`Fine’s optical fibers are flexible strands that take a tortuous path from the contact
`
`surface to the detectors. POR at 48-49.
`
`
`EX1009 at FIG. 4 (as annotated at POR at 49). This is different from the structure
`
`of any of the louver examples of record. Both experts agree that window shutters
`
`are an example of louvers. EX2003 at 178:14–179:2; EX1038 at 67:22–69:2.
`
`Masimo also provided other examples of how a POSITA would understand the
`
`term louver. See EX2015 (defining “louver” as “[e]ach of a set of angled slats or
`
`flat strips fixed or hung at regular intervals in a door, shutter, or screen to allow air
`
`or light to pass through”); EX2008 at 110 (explaining that the louver’s orientation
`
`and length determine the direction of light that is blocked or absorbed).
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`-18-
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`IPR2020-01526
`Apple Inc. v. Masimo Corporation
`
`
`Second, fibers operate under different principles than louvers. POR at 47-48.
`
`Dr. Madisetti provided the figures below showing the difference between light that
`
`will be eventually transmitted through a fiber and light that passes through louvers.
`
`EX2001 ¶ 113.
`
`
`Id. The “scope of vision” of Fine’s fibers is a three-dimensional cone. Id. The
`
`fibers “direct light” by transmitting light from one location to another location,
`
`including directional changes, through internal reflection. Id. ¶¶ 112-113. In
`
`contrast, louvers have a wider field of view and allow certain planes of light to
`
`pass through the open space between individual louvers. Id.
`
`Thus, Apple has not shown that Fine’s optical fibers are louvers, and
`
`therefore Ground 3 fails.
`
`
`
`
`
`
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