`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
` APPLE INC.,
`
`))
`
`Petitioner, ) US PATENT NO: 10,588,553
`) IPR NO. 2020-1536
`-against- )
`) US PATENT NO: 10,588,554
` MASIMO CORPORATION, ) IPR NO. 2020-1538
`)
`Patent Owner. )
`________________________)
`
`VIDEO-RECORDED DEPOSITION OF
`THOMAS WILLIAM KENNY, JR. PH.D.
`VOLUME 1
`Zoom Recorded Videoconference
`04/24/2021
`9:01 a.m. (PDT)
`
`REPORTED BY: AMANDA GORRONO, CLR
`CLR NO. 052005-01
`
`______________________________________________________
`DIGITAL EVIDENCE GROUP
`1730 M Street, NW, Suite 812
`Washington, D.C. 20036
`(202) 232-0646
`
`MASIMO 2008
`Masimo v. Apple
`IPR2020-01538
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 2
`
`04/24/2021
`9:01 a.m. (PDT)
`
`VIDEO-RECORDED DEPOSITION OF THOMAS WILLIAM
`KENNY, JR. Ph.D., VOLUME 1, held virtually via Zoom
`Videoconferencing, before Amanda Gorrono, Certified
`Live Note Reporter, and Notary Public of the State of
`New York.
`
`1
`2
`
`3 4
`
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 3
`
`A P P E A R A N C E S
`(Via Zoom Videoconferencing):
`
`ON BEHALF OF PETITIONER APPLE:
` Dan Smith, Esquire
` Fish & Richardson
` 1717 Main Street
` Suite 5000
` Dallas, Texas 75201
` PHONE: 214-292-4071
` E-MAIL: Dsmith@fr.com
` -AND-
` Andrew B. Patrick, Esquire
` Fish & Richardson
` 1000 Maine Avenue SW
` Washington, D.C. 20024
` PHONE: 202-626-7735
` E-MAIL: Patrick@fr.com
` -AND-
` Hyun Jin In, Ph.D., Esquire
` Fish & Richardson
` 1000 Maine Avenue SW
` Washington, D.C. 20024
` PHONE: 202-626-7765
` E-MAIL: In@fr.com
`
`1
`2
`
`34
`
`5
`
`6
`
`7
`8
`9
`
`10
`
`11
`
`12
`13
`
`14
`
`15
`
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 4
`
`A P P E A R A N C E S
`(Via Zoom Videoconferencing):
`
`ON BEHALF OF PATENT OWNER MASIMO:
` Stephen W. Larson, Esquire
` Knobbe Martens Olson & Bear
` 2040 Main Street
` Irvine, CA 92614
` PHONE: 949-721-5301
` E-MAIL: Stephen.larson@knobbe.com
` -AND-
` Jeremiah S. Helm, Ph.D., Esquire
` Knobbe Martens Olson & Bear
` 1717 Pennsylvania Avenue N.W.
` Washington, DC 20006
` PHONE: 202-640-6400
` E-MAIL: Jeremiah.helm@knobbe.com
` -AND-
` Jacob Peterson, Esquire
` Knobbe Martens Olson & Bear
` 925 4th Ave #2500
` Seattle, WA 98104
` PHONE: 206-405-2000
` E-MAIL: Jacob.peterson@knobbe.com
`
`ALSO PRESENT:
`Billy Fahnert, Legal Video Specialist/Trial Tech,
`Digital Evidence Group
`
`1
`2
`
`34
`
`5
`
`6
`
`7
`8
`
`9
`
`10
`
`11
`12
`13
`
`14
`
`15
`
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 5
`
` I N D E X
`
` WITNESS EXAMINATION
` THOMAS WILLIAM
` KENNY, JR. Ph.D.
` BY MR. LARSON 8
`
` E X H I B I T S
` EXHIBIT DESCRIPTION PAGE
` Exhibit 1024 Mendelson Measurement Site
` and Photodetector Size
` Considerations in Optimizing
` Power Consumption of a
` Wareable Reflectance Pulse
` Oximeter...................... 244
` Exhibit 2003 Mendelson Paper 2003 in
` IPR1536 and IPR1538........... 246
`
`1
`
`2 3
`
`4
`5
`6
`
`7 8
`
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 6
` PREVIOUSLY MARKED EXHIBITS IDENTIFIED
`
` EXHIBIT DESCRIPTION PAGE
` Exhibit 1003 Declaration of Dr. Thomas ... 12
` W. Kenny in IPR2020-1536,
` Exhibit 1003 Declaration of Dr. Thomas ... 17
` W. Kenny in IPR2020-1538
` Exhibit 1026 Nishikawa Patent ............ 75
` Application
` Exhibit 1017 Design and Evaluation of a .. 200
` New Reflectance Pulse
` Oximeter Sensor
` Exhibit 1018 Skin Reflectance Pulse ...... 201
` Oximetry In Vivo
` Measurements from the
` Forearm and Calf
`
`1
`
`2 3
`
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 7
` THE TECH: We are the record. This
`is the remote video deposition of Dr. Thomas W. Kenny
`in the matter of Apple Inc. versus Masimo
`Corporation, IPR Nos. 2020-1536 and 2020-1538 filed
`in the United States Patent and Trademark Office.
` My name is Billy Fahnert. I am the
`video technician today. The court reporter is
`Amanda Gorrono. Today's date is April 24, 2021. The
`time is 9:01 a.m. Pacific Daylight Time.
` Counsel, identify yourselves for the
`record and then the witness will be sworn in.
` MR. LARSON: This is Steve Larson of
`Knobbe Martens on behalf of Masimo. With me today
`are Jeremiah Helm and Jacob Peterson, the partners.
` MR. SMITH: Dan Smith from Fish &
`Richardson for Petitioner Apple, joined by my
`associate, Andrew Patrick.
`THOMAS WILLIAM KENNY, JR. Ph.D., called as a witness,
`having been first duly sworn by a Notary Public of
`the State of New York, was examined and testified as
`follows:
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 8
`
`EXAMINATION BY MR. LARSON:
` Q. Good morning, Dr. Kenny.
` A. Good morning.
` Q. Welcome back.
` A. Thank you.
` Q. So you were deposed the last
`two days, correct?
` A. That is correct.
` Q. Okay. So you remember the rules that
`I explained to you at the beginning of those two days
`of depositions, correct?
` A. I do.
` Q. And so you understand that you're
`under oath as though you were in a courtroom,
`correct?
` A. I do.
` Q. Is there any reason why you would be
`unable to give truthful and accurate testimony today?
` A. No.
` Q. Are you taking any medications that
`might affect your testimony today?
` A. No.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 9
` Q. Okay. Also a brief reminder, court
`reporter is here to take down the questions. Please
`give verbal responses, please wait until I've
`completed the question before answering and please
`let me know if you don't understand the question.
`You can ask for a break at any time. If there is a
`pending question, please answer before taking a
`break, okay?
` A. Okay.
` Q. You know, although I understand you
`may want to make particular points during this
`deposition today, if you could really please try to
`focus on my specific question and provide answers to
`those questions, I would really appreciate that.
` MR. SMITH: Objection. Objection;
`form.
` A. Certainly.
`BY MR. LARSON:
` Q. You submitted Declarations in
`IPR Nos. 2020-1536 and 2020-1538, correct?
` A. Correct.
` Q. And you understand your deposition
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 10
`today is directed to those two Declarations, correct?
` A. Yes.
` Q. All right. And so if for some reason
`you need to qualify or limit your answer to just one
`of those Declarations, will you please let me know?
` A. Certainly.
` Q. So we're doing this deposition
`remotely, and, you know, we'll bring up exhibits
`electronically as we go, but we also sent you hard
`copies of the exhibits so you're welcome to reference
`those as well, okay?
` A. Very good.
` Q. Before I direct you to those
`exhibits, let me just ask you about your preparation
`for this deposition. Yesterday you provided
`testimony about preparing for the depositions as a
`whole in these IPRs, correct?
` A. Yes.
` Q. And so that testimony applies equally
`here today?
` A. Sure, certainly.
` Q. Did you conduct any additional
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 11
`preparation yesterday evening or this morning with
`your attorneys?
` A. We had a discussion yesterday evening
`and another brief discussion this morning, just
`reviewing the Declarations that are the subject of
`today's proceedings.
` Q. And approximately how long did you
`spend meeting with your attorneys yesterday evening
`and this morning?
` A. Yeah, hour, hour and a half.
` Q. Did you do any additional preparation
`on your own?
` A. Yes.
` Q. And how, how long was that
`preparation?
` A. A few hours.
` Q. Can you describe to me how you
`prepared in that time?
` MR. SMITH: Objection to form.
` A. Reviewed the Declarations and some of
`the prior art examples.
`BY MR. LARSON:
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 12
` Q. All right. I'm going to ask you to
`take a look at your Declaration in IPR1536, and so
`I'll give you the, the Tab number and a moment for
`the hard copy. I believe it's going to be Tab 42.
` A. Okay.
` Q. All right. So this is -- should be
`previously marked Apple Exhibit 1003 in IPR2020-1536.
` (Whereupon, Exhibit 1003, Declaration
`of Dr. Thomas W. Kenny in IPR2020-1536, was
`identified.)
`BY MR. LARSON:
` Q. Do you have that exhibit in front of
`you?
` A. Yes.
` Q. Okay. Will you please turn to --
`okay. This Declaration is a Declaration you
`submitted regarding US Patent No. 10588553, correct?
` A. That's correct.
` Q. Do you mind if I refer to that patent
`as the '533 patent?
` A. That's fine.
` Q. Could you please turn to Paragraph 14
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 13
`
`of your Declaration?
` Do you see a table here entitled
`"Prior Art Reference"?
` A. I do.
` Q. And you reviewed these references,
`correct?
` A. That's correct.
` Q. And the first listed prior art
`reference you identified here is US Patent No.
`6,801,799 to Mendelson, correct?
` A. That's correct.
` Q. Do you mind if I refer to that as the
`Mendelson '799 patent?
` A. That's fine.
` Q. The second listed prior art is you
`analyze is US Patent Publication No. 2001/0056243,
`correct?
` A. That's correct.
` Q. And you've identified that with the
`short term Ohsaki, correct?
` A. That's correct.
` Q. Do you mind if I refer to that
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 14
`
`reference as Ohsaki?
` A. That's fine.
` Q. And there's additional references you
`listed in this table.
` Do you see those?
` A. Yes.
` Q. Do you mind if I refer to those
`references by the shorthand names you included in
`your table?
` A. So that would be Schulz, Griffin,
`Mendelson-2006, that's -- yes.
` Q. Did you give your best understanding
`of these references in the Declarations that were, in
`your Declaration?
` A. Yes.
` Q. And did you try as much as you could
`to be accurate in describing those references?
` A. I did.
` Q. And after preparing for your
`deposition, is there anything you want to change
`about your analysis of those references?
` A. Not at this time.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 15
` Q. Did you discover any errors in your
`Declaration?
` A. No.
` Q. Did you discover any errors in your
`analysis of the prior art?
` A. No.
` Q. And throughout this deposition, we
`may refer to "a person of ordinary skill in the art."
`When we use that term, we'll, we'll be referring to
`your view of a person of ordinary skill of the art as
`of what you've identified as the critical date,
`July 3, 2008; is that okay?
` A. Yes, that's my understanding.
` Q. And we may also here and there refer
`to that person as a POSITA; is that okay?
` A. That's fine.
` Q. Your table mentions Ohsaki. That was
`one of the references we discussed yesterday,
`correct?
` A. Yes.
` Q. And so your understanding of Ohsaki
`hasn't changed between your -- the last two days of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 16
`
`the deposition and today, correct?
` A. That's correct.
` Q. In the last couple of days, we also
`under -- had a lot of discussions about a person of
`skill in the art's understanding of more general
`scientific principles, correct?
` A. We did.
` Q. And your understanding of a POSITA's
`understanding of those principles hasn't changed
`between the last two days and today, has it?
` A. No, it has not.
` Q. So if I were to ask you the same
`questions about what would be known to a person of
`skill in the art as I did the last two days, would
`you give me the same answers?
` MR. SMITH: Objection; form.
` A. I will, yes, that would be my intent.
`BY MR. LARSON:
` Q. Okay. Let's take a look at your
`Declaration, the other Declaration at issue here that
`you submitted. This is going to be previously marked
`Apple Exhibit 1003 in IPR1538 and let's see. Maybe
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 17
`
`Tab No. 1- -- 1112, 1112.
` (Whereupon, Exhibit 1003, Declaration
`of Dr. Thomas W. Kenny in IPR2020-1538, was
`identified.)
` A. Yes.
` Q. So this is a Declaration you
`submitted concerning US Patent No. 10,588,554,
`correct?
` A. That's correct.
` Q. Do you mind if I refer to that patent
`as the '554 patent?
` A. That's fine.
` Q. All right. Could you please take a
`look at Paragraph 14 of that Declaration?
` A. Uh-huh.
` Q. Do you see a table here entitled
`"Prior Art Reference"?
` A. Yes.
` Q. And the first entry in that table
`references US Patent No. 6,801,799 to Mendelson,
`correct?
` A. Correct.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 18
` Q. That's 7- -- Mendelson '799 -- '799
`reference we discussed in, in the Declaration we just
`looked at in IPR1536, correct?
` A. That's correct.
` Q. So it's okay for me to refer to this
`reference also as Mendelson '799?
` A. Certainly.
` Q. Or if we simply say Mendelson, maybe
`this will be the primary reference we would need; is
`that fair?
` A. You might want to be careful.
`There's a Mendelson-2006 coming, so, you know, can
`just keep the numbers to be clear.
` Q. You know, if I say Mendelson and we
`don't specify, let's, let's try to specify then,
`okay?
` A. Okay. Same for me.
` Q. And you analyzed US Publication No.
`2001/0056243, correct?
` A. Yes.
` Q. And that's the same Ohsaki reference
`that you discussed in the IPR -- in your Declaration
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 19
`
`for IPR1536, correct?
` A. That's correct.
` Q. Is it okay for me to refer to that
`reference as Ohsaki?
` A. Certainly.
` Q. And are you okay if I refer to the
`other references in this table by the short names you
`provided?
` A. Those would be Schulz and
`Mendelson-2006, yes.
` Q. Okay. You tried to be, you tried to
`be -- you tried your best to be consistent in your
`understanding of Mendelson '799 across all of your
`Declarations, correct?
` MR. SMITH: Objection; form.
` A. Certainly, yes.
`BY MR. LARSON:
` Q. And you try to be consistent in your
`understanding of Ohsaki across all of your
`Declarations, correct?
` A. I did, yes.
` MR. SMITH: Objection; form.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 20
`
`BY MR. LARSON:
` Q. Okay. You can put aside that
`Declaration. All right. Let's go back to your
`Declaration in IPR1536. This will be previously
`marked Apple 1003 in IPR1536.
` Do you have that in front of you?
` A. I do.
` Q. And so if you look at the table of
`contents, which is on -- it's the second page of your
`Declaration but it's tabled as 1, 2 and 3.
` Do you see that?
` A. Where are you looking?
` Q. Just the table of contents in your
`Declaration.
` A. Yes.
` Q. I just wanted you to look at that.
` Do you see here, starting with
`Section 7 it says, "Ground 1." It says, "Claims 1-3,
`5, 6, 9-18, 20-24, and 29 are Rendered Obvious by
`Mendelson '799 and Ohsaki?"
` A. Yes.
` Q. So Ground 1 is an obviousness
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 21
`combination based on Mendelson '799 and Ohsaki,
`correct?
` A. That's correct.
` Q. If you go down to the next page, you
`see Ground 2. It says, "Claims 4, 18, 24 are
`Rendered Obvious by Mendelson '799 Ohsaki, and
`Schulz," correct?
` A. That's correct.
` Q. And so Ground 2 is another
`obviousness combination that's based on Mendelson
`'799 and Ohsaki and has a third reference called
`Schultz, correct?
` A. That's correct.
` Q. Ground 2 only involves three claims,
`right?
` A. Yes.
` Q. And Ground 3, you go -- look down
`your table of contents, there is another obviousness
`combination that's again based on Mendelson '799 and
`Ohsaki and it has as third called Griffin, correct?
` A. That's correct.
` Q. And Ground 3 address as a single
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 22
`
`claim, Claim 25?
` A. Yes.
` Q. And if you go down your table of
`contents to Ground 4, Ground 4 is another obviousness
`combination that's based on Mendelson '799 and Ohsaki
`and has a third reference, Mendelson-2006, correct?
` A. Correct.
` Q. Ground 4 involves two claims,
`Claims 7 and 19, correct?
` A. Correct.
` Q. Ground 5, is your last obviousness
`combination that's again based on Mendelson '799 and
`Ohsaki and adds Griffin and Mendelson, let's see,
`also based on Mendelson and Ohsaki and adds
`Mendelson-2006 and Griffin, correct?
` A. I'm -- yes, that's what I see on the
`table.
` Q. Okay. Ground 5 only involves four
`claims, correct, 26 -- actually three claims 8, 26,
`27, and 28, correct?
` A. That is correct.
` Q. So is it fair to say that Mendelson
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 23
`'799 and Ohsaki are the foundation for all of your
`obviousness combinations?
` MR. SMITH: Objection; form.
` A. I believe so.
` Q. So -- and you show the result of that
`combination in the pictures below Paragraph 88,
`correct, at least that's one place?
` A. Yes, one of many I think but, yes.
` Q. So did you create the figure below
`Paragraph 88 in your Declaration?
` A. I did.
` Q. Did you create it yourself or was it
`together with your team of attorneys?
` A. It was a collaborative process with
`my team.
` Q. Okay. Does this figure accurately
`reflect your opinion about how a POSITA would have
`combined Mendelson '799 and Ohsaki?
` A. Yes.
` Q. So why would a person of ordinary
`skill in the art reading Mendelson '799 and Ohsaki be
`led to this specific combination? I realize that's a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 24
`more difficult question. You might want to read a
`little so let me ask simpler questions first.
` Let's talk about what's in that
`figure. So I want to know the features of the device
`that you opine is a result of the combination of
`Ohsaki and Mendelson '799.
` A. Uh-huh.
` Q. So in your opinion the result of
`combining Ohsaki and Mendelson '799, it results in a
`centrally positioned light source, correct?
` MR. SMITH: Objection; form.
` A. Do you mind if I pull those
`references out of the boxes we have on my floor?
`Just -- I want to be sure.
` Q. You can have your references handy.
`To be clear, I'm asking about your combinations of
`those references, what you actually drew in your
`picture here.
` A. Yes, I understand. Do you mind if I
`pull the references just to examine?
` Q. Sure.
` A. Thank you. So I'm going pull Ohsaki
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 25
`
`and Mendelson.
` Q. Okay.
` A. Okay. Sorry about that.
` Q. No, no problem. You can have those
`handy. All right. But my question is about what you
`have in this figure here to begin with.
` So illustrated in this figure, it's
`your opinion that a person of ordinary skill in the
`art combining Ohsaki and Mendelson would put together
`a device with a centrally positioned light source,
`correct?
` A. So the drawing here actually
`indicates three light sources, in the -- maybe the
`upper view of that, but they are positioned in the
`center of this illustration. That's correct.
` Q. Okay. Yeah, you're right. Let me
`revise that.
` It's not shown in the bottom figure,
`but when you look at this top figure, you can see the
`three LEDs side by side, correct?
` A. That's correct.
` Q. All right. So -- and you illustrate
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 26
`in this figure, it's your opinion that a person of
`ordinary skill in the art combining Ohsaki would have
`put together a device with centrally positioned light
`sources, correct?
` A. Yes.
` Q. And as illustrated in this figure, in
`your opinion, a person of ordinary skill in the art
`combining Ohsaki and Mendelson would put together a
`device with a circular array of detectors positioned
`around the peripheral edge of the device, correct?
` For the record, are you reviewing
`your Declaration?
` A. Yes.
` Q. Let me know when you're ready for me
`to repeat the question.
` A. Uh-huh. Okay. If you could repeat
`the question.
` Q. Sure. As illustrated in this figure,
`a person of ordinary skill in the art, in your
`opinion, would combine Ohsaki and Mendelson and put
`together a device with a circular array of detectors
`positioned around the peripheral edge of the device;
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 27
`
`is that correct?
` MR. SMITH: Objection; form.
` Q. For the record, are you reading your
`Declaration again?
` A. That's correct. What I'm focused on
`is the requirement in your question that it be a
`circular array and I'm just wanting to be sure that's
`consistent with the descriptions in the prior art and
`in my Declarations.
` And I -- so, so Paragraph 111, one of
`ordinary skill would have understand that, although
`the ray depicted in Mendelson features two concentric
`rings that are arranged in radial asymmetric manner
`around the central lighting in the elements, they are
`all in the same substrate.
` So what we understand from all of
`this is that the combination would be at least four
`detectors, including perhaps six or 12 evenly, evenly
`spaced from one another on a substrate and I think
`arrayed radially from the center so maybe -- I'm
`sorry, I think that's a long-winded way of answering
`your question, sorry.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 28
` Maybe just to clean the record, could
`you ask the question one more time? I'll try to give
`a more compact answer.
` Q. Sure. As illustrated in this figure,
`a person of ordinary skill in the art on your team
`would combine Ohsaki, Mendelson put together a device
`with a circular array of detectors positioned around
`the peripheral edge of the device; is that correct?
` MR. SMITH: Objection; form.
` Q. And for the record, are you reviewing
`your Declaration again?
` A. That's correct.
` Q. Is there any part of my question that
`you're -- that's causing you to hesitate?
` A. Just the requirement to be circular,
`and I think I can say yes to your question.
` Q. And you used the term "radially
`arrayed," correct, a few moments ago?
` A. Uh-huh.
` Q. What is radially arrayed? Does that
`mean circular or something else?
` MR. SMITH: Objection to form.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 29
`
` A. I guess circular array is a
`reasonable description of what we have here.
` Q. Okay. And the other part of my
`question was whether -- the other part of my question
`is --
` MR. LARSON: Let me repeat my
`question again.
` Q. The main part of my question is that
`the detectors are positioned around the peripheral
`edges of the device. And so with that in mind, let
`me ask the question again.
` As illustrated in this figure a
`person of ordinary skill in the art would combine
`Ohsaki and Mendelson put together a device with a
`circular detector positioned around the peripheral
`edge of the device.
` Do you agree with all of that or is
`there some of it you dispute?
` MR. SMITH: Objection; form.
`Objection; argumentative.
` A. So "around the peripheral edge" seems
`to be unnecessarily narrow. I don't think there's
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 30
`anything in these disclosures that specifies the
`position as being necessarily around the radial edge,
`just that they need to be out board of the emitter in
`the center.
` Q. And so the combination, in the
`combination that you propose, the detectors could be
`anywhere from directly next to the LEDs all the way
`out to the edge? Or is there some additional
`limitation?
` MR. SMITH: Objection; form.
` A. So, I think the spacing between the
`emitters and the detectors is a variable that one
`would choose based on one's understanding of the
`circumstances and objectives of the sensor design.
`One of ordinary skill in the art.
` Again, these are illustrations not
`detailed specified drawings where the dimensions are
`intended as literal. They are figurative.
` Q. And can you, so, one of skill in the
`art, considering that variable n the context of this
`combination, would end up with, with what device, is
`my question. Where would the radially arrayed
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 31
`
`detectors?
` MR. SMITH: Objection; form.
` A. They would be somewhere along the
`axis between the emitter and the edge of the housing.
` Q. And can you tell me where along that
`axis they would be?
` MR. SMITH: Objection; form.
` A. Do you want an answer specifying in
`millimeters? Or in -- I guess I don't understand how
`you would like me to answer that question.
` The position would depend on the
`details of the other elements of the design.
` Q. What, what other elements of the
`design would impact the position of the detectors and
`your combination that you assert the result of Ohsaki
`and Mendelson '799?
` A. The overall size, for example.
` Q. Anything else?
` A. The height of the housing.
` Q. Anything else?
` A. The expected depth in the tissue of
`the corpuscles that would be the target that would
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`
`
`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 32
`likely be reflecting light from the emitter back
`towards the detectors.
` Q. Anything else?
` A. The size of the detector elements
`that were available to me at this time.
` Q. And rather than me continuing to say
`"anything else," could you just list for me anything
`else you can think of?
` A. I mean, you know, it's all of -- I
`mean, this is an illustration, really, some intended
`tod convey the idea but not the specific shapes and
`sizes and locations of elements. It's -- all of the
`choices will be made in the context of a specific
`design with a specific housing and sp