throbber
Filed: June 8, 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)
`Jacob L. Peterson (Reg. No. 65,096)
`William R. Zimmerman (admitted pro hac vice)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1538-554@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01538
`U.S. Patent 10,588,554
`
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page No.
`
`INTRODUCTION .................................................................................... 1
`I.
`II. MASIMO’S PIONEERING TECHNOLOGY ......................................... 5
`A.
`The ’554 Patent Claims .................................................................. 6
`B.
`Introduction To Independent Claims ............................................. 7
`C.
`The ’554 Patent Prosecution .......................................................... 9
`III. THE PETITION’S PROPOSED COMBINATIONS ............................... 9
`IV. CLAIM CONSTRUCTION ..................................................................... 9
`V.
`LEVEL OF ORDINARY SKILL IN THE ART .................................... 10
`VI. LEGAL STANDARD ............................................................................ 10
`VII. GROUND 1 FAILS TO DEMONSTRATE OBVIOUSNESS .............. 12
`A. Ground 1’s Cited Art And Asserted Combination ....................... 12
`1.
`Petitioner’s Combination Of Ohsaki And Mendelson
`’799 .................................................................................... 12
`Dr. Kenny’s Erroneous Characterization Of Ohsaki ......... 17
`Petitioner’s Addition Of A Third Reference: Schulz ....... 19
`Petitioner’s Addition Of A Fourth Reference:
`Mendelson 2006 ................................................................. 21
`B. A POSITA Would Not Have Been Motivated To Combine
`Ohsaki’s Board With Mendelson ’799’s Sensor .......................... 22
`1.
`A POSITA Would Have Understood That Ohsaki’s
`Rectangular Board Is Incompatible With Mendelson
`’799’s Radially Symmetric Sensor Arrangement .............. 23
`
`2.
`3.
`4.
`
`-i-
`
`

`

`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`a) Modifying Ohsaki’s Rectangular Board Would
`Eliminate The Advantages Ohsaki Teaches ............ 23
`A POSITA Would Not Have Been Motivated
`To Add A Rectangular Board To Mendelson
`’799’s Circular Sensor ............................................. 29
`A POSITA Would Have Understood That Ohsaki’s
`Required Measurement Location Would Result In
`Weak Signals For Mendelson ’799’s Oxygen
`Saturation Measurements ................................................... 32
`A POSITA Would Not Have Been Motivated To
`Reduce Optical Signal By Adding A Convex Lens To
`Mendelson ’799’s Sensor ................................................... 38
`a)
`A POSITA Would Have Understood That A
`Convex Cover Directs Light To The Center Of
`The Sensor ............................................................... 38
`A POSITA Would Have Sought To Avoid The
`Air Gaps Introduced By Ohsaki’s Rectangular
`Board ........................................................................ 43
`A POSITA Would Not Have Selected A
`Convex Cover To Protect The Optical
`Elements .................................................................. 45
`C. A POSITA Would Not Have Been Motivated To Decrease
`Signal Strength From The Measurement Site With A
`Window Taught By Schulz .......................................................... 47
`Petitioner’s Fourth Reference, Mendelson 2006, Further
`Undermines Petitioner’s Combination ......................................... 52
`
`2.
`
`3.
`
`D.
`
`b)
`
`b)
`
`c)
`
`-ii-
`
`

`

`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`F.
`
`E.
`
`The Petition Provides No Evidence Of An Expectation Of
`Success ......................................................................................... 55
`The Challenged Dependent Claims Are Nonobvious Over
`Ground 1 ....................................................................................... 56
`1.
`The Challenged Dependent Claims Are Not Obvious
`For At Least The Same Reasons That The
`Independent Claims Are Not Obvious ............................... 56
`Claims 6 And 25, And Dependent Claims ......................... 57
`2.
`Claim 28 ............................................................................. 60
`3.
`VIII. CONCLUSION ....................................................................................... 63
`IX. RESERVATION OF RIGHTS ............................................................... 63
`
`
`
`
`-iii-
`
`

`

`TABLE OF AUTHORITIES
`
`Page No(s).
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ................................................................... 11
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ................................................................... 10
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ................................................................... 56
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ..................................................................... 11
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ................................................................... 42
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ................................................................... 11
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ................................................................... 12
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ................................................................... 11
`Pers. Web Techs. v. Apple, Inc.,
`848 F.3d 987,994 (Fed. Cir. 2017) ........................................................ 42, 43
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ................................................................... 10
`In re Royka,
`490 F.2d 981 (C.C.P.A. 1974) ..................................................................... 11
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ................................................................... 11
`
`-iv-
`
`

`

`TABLE OF AUTHORITIES
`(Cont’d)
`
`Page No(s).
`
`U.S. v. Arthrex, Inc.,
`141 S. Ct. 549 (2020) ................................................................................... 63
`OTHER AUTHORITIES
`35 U.S.C. § 312 ................................................................................................. 43
`37 C.F.R. § 42.6 ................................................................................................ 66
`37 C.F.R. § 42.8 ................................................................................................ 65
`37 C.F.R. § 42.24 .............................................................................................. 65
`37 C.F.R. § 42.100 ............................................................................................ 10
`
`
`
`-v-
`
`

`

`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`Declaration of Jeremiah S. Helm in Support of Pro Hac Vice
`Motion
`
`Declaration of William R. Zimmerman in Support of Pro Hac
`Vice Motion
`
`“Measurement Site and Photodetector Size Considerations in
`Optimizing Power Consumption of a Wearable Reflectance Pulse
`Oximeter,” Y. Mendelson, et al., Proceedings of the 25th IEEE
`EMBS Annual International Conference, 2003, pp. 3016-3019
`(“Mendelson 2003”)
`
`Declaration of Dr. Vijay K. Madisetti
`
`Curriculum Vitae of Dr. Vijay K. Madisetti
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01520, IPR2020-01537, IPR2020-01539
`(April 22, 2021)
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01520, IPR2020-01537, IPR2020-01539
`(April 23, 2021)
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01536, IPR2020-01538 (April 24, 2021)
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01536, IPR2020-01538 (April 25, 2021)
`
`Frank H. Netter, M.D., Section VI Upper Limb, Atlas of Human
`Anatomy (2003), Third Edition (“Netter”)
`
`Reserved
`
`Reserved
`
`Exhibit List, Page 1
`
`

`

`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`
`Exhibit No.
`
`Description
`
`2013
`
`Declaration of Carol Peterson
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`Printout of Worcester Polytechnic Institute webpage,
`https://web.wpi.edu/Pubs/E-project/Available/E-project-042413-
`160152, last accessed May 28, 2021
`
`“Reflectance-Based Pulse Oximeter For The Chest And Wrist,”
`A. Fontaine, et al., A Major Qualifying Project Report: Submitted
`to the Faculty of the Worcester Polytechnic Institute, submission
`date April 24, 2013 (“Fontaine”)
`
`“Should You Trust Apple’s New Blood Oxygen Sensor?,” Tekla
`S. Perry, IEEE Spectrum, https://spectrum.ieee.org/view-from-
`the-valley/biomedical/devices/should-you-trust-apples-new-
`blood-oxygen-sensor, published September 21, 2020, last
`accessed May 28, 2021
`
`“Measurement Site and Applied Pressure Consideration in Wrist
`Photoplethysmography,” E. Geun, et al., The 23rd International
`Technical Conference on Circuits/Systems, Computers and
`Communications (ITC-CSCC 2008), pp. 1129-1132 (“Geun”)
`
`“Reflectance Pulse Oximetry: Practical Issues And Limitations,”
`H. Lee, et al., ICT Express 2 (2016), pp. 195-198 (“Lee”)
`
`2019
`
`Petition for Inter Partes Review IPR2020-01520
`
`2020
`
`Declaration of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01520
`
`2021
`
`U.S. Pat. No. 6,157,850 (“Diab”)
`
`
`
`Exhibit List, Page 2
`
`

`

`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`I.
`INTRODUCTION
`Petitioner’s obviousness challenge fails because it attempts to combine
`
`references that are fundamentally incompatible. Petitioner’s modifications
`
`undermine the operation of the combination, resulting in a device that is inferior to
`
`the device of each of the unmodified references.
`
`Specifically, Petitioner seeks to combine Ohsaki’s rectangular-shaped
`
`convex translucent board (red, below left) as a cover over Mendelson ’799’s
`
`circular array of detectors (yellow, below right).
`
`
`Emitter
`
`
`
`Detector
`
`Rectangular
`Translucent
`Board
` Ohsaki (color added)
`
`
`
`
`
` Emitter
`
`Detectors
`
`Emitter
`
`Emitter
`
`
`
`
`
` Mendelson ’799 (color added)
`
`Petitioner is inconsistent in describing its proposed combination. Petitioner states
`
`a cover “would simply be placed over the components” in Mendelson ’799 (above
`
`right) and assumes it “would perform the same function as taught by Ohsaki.”1
`
`
`1 Emphasis supplied unless otherwise noted.
`
`-1-
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`

`

`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`
`Pet. 32. But, notwithstanding the rectangular shape of Ohsaki’s board, Petitioner
`
`illustrates a resulting combination (id. 31) with a circular cover (red below) over
`
`the optical components of Mendelson ’799’s sensor.
`
`Petitioner’s Proposed Combination (Pet. 31)
`
`
`
`Petitioner never explains why or how a POSITA would change Ohsaki’s
`
`rectangular board into a circular cover. As discussed below, changing Ohsaki’s
`
`rectangular board into a circle would eliminate the rectangular shape Ohsaki
`
`explains is required for its benefits. Likewise, as explained below, “simply
`
`placing” Ohsaki’s rectangular board onto Mendelson ’799’s circular structure
`
`would disrupt the circular shape Mendelson ’799 explains is required for its
`
`benefits.
`
`-2-
`
`

`

`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`
`Petitioner simply ignores these and other critical differences between these
`
`references. First, Ohsaki is a simple pulse wave sensor that measures pulse rate
`
`with one detector and one emitter that must be used on the backhand (i.e., watch)
`
`side of the wrist for any purported beneficial effect. In contrast, Mendelson ’799 is
`
`a pulse oximetry sensor that measures blood oxygen saturation with a dozen
`
`detectors and at least three different wavelengths of light. A POSITA seeking to
`
`improve a pulse oximetry sensor would have avoided the backhand side of the
`
`wrist—Ohsaki’s mandatory measuring location—as providing insufficient signal.
`
`Second, Mendelson ’799 uses its circular detector arrangement to reduce
`
`errors from aberrant measurements. Disturbing the symmetric environment of
`
`Mendelson ’799 would eliminate its ability to double-check similar measurements
`
`against each other and reduce errors. In contrast, Ohsaki uses a longitudinal
`
`structure in a specific orientation on the back side of the wrist to reduce motion.
`
`Eliminating Ohsaki’s longitudinal structure would eliminate Ohsaki’s benefit of
`
`reduced sensor movement. The combination of Mendelson ’799 and Ohsaki would
`
`either disrupt Mendelson ’799’s symmetry, or Ohsaki’s longitudinal directionality,
`
`or both. The references are simply incompatible.
`
`Third, Petitioner’s combination detrimentally places a convex-shaped cover
`
`over Mendelson ’799’s peripherally located detectors. A POSITA would have
`
`expected such a cover to undesirably direct light toward the center of the sensor
`
`-3-
`
`

`

`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`
`and away from the peripheral detectors, reducing light collection. A POSITA
`
`would not have been motivated to decrease signal strength, particularly given the
`
`importance Mendelson ’799 placed on strong signals for pulse oximetry.
`
`In short, Ohsaki and Mendelson ’799 employ (1) different sensor structures
`
`(rectangular versus circular), (2) for different measurements (pulse rate versus
`
`oxygen saturation), and (3) in different measurement locations (wrist backhand
`
`versus avoiding wrist backhand). A POSITA would not have been motivated to
`
`combine these fundamentally different references, much less reasonably expected
`
`such a combination to be successful.
`
`To address additional claim limitations, Petitioner is also forced to add to
`
`two more references to its already strained combination: Schulz and Mendelson
`
`2006. Petitioner argues a POSITA would have added Schulz “to guard against
`
`saturation” of the detectors. Pet. 32. But there is no evidence saturation was a
`
`problem for Ohsaki or Mendelson ’799. Indeed, the motivation for Petitioner’s
`
`combination of Ohsaki and Mendelson ’799 is to “improve[] signal strength” (id.
`
`31-32)—the opposite of Schulz’s goal of reducing light reaching the detectors.
`
`Moreover, Schulz discloses a single aperture that limits light to the detector, not
`
`multiple different windows, as required by the claims. Indeed, none of Ground 1’s
`
`four references disclose a sensor where “each of the at least four detectors has a
`
`corresponding window” (Ex. 1001 Claims 1, 20).
`
`-4-
`
`

`

`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`
`Finally, Petitioner claims Mendelson 2006 would have motivated a POSITA
`
`to wirelessly transmit information or data to a PDA’s touchscreen display. Pet. 42-
`
`43. But Petitioner ignores Mendelson 2006’s teachings as a whole. Mendelson
`
`2006 teaches the benefits of a single detector placed on the forehead. A POSITA
`
`would have understood Mendelson 2006’s forehead-sensor approach to be distinct
`
`from Ohsaki’s wrist-worn approach and Schulz’s ear-clip approach. Accordingly,
`
`a POSITA looking at Mendelson 2006’s full disclosure would have been led away
`
`from Petitioner’s combination. The Board should affirm the patentability of the
`
`’554 Patent’s challenged claims.
`
`II. MASIMO’S PIONEERING TECHNOLOGY
`Masimo is a global medical device technology company that develops and
`
`manufactures innovative patient monitoring technologies, medical devices, and a
`
`wide array of sensors. Inventor Joe Kiani founded Masimo in 1989 as a garage
`
`start-up that revolutionized noninvasive patient monitoring. Today, Masimo is
`
`publicly traded and employs over 6,300 people worldwide, with annual revenues of
`
`over $1.1 billion. A host of manufacturers use Masimo’s technology in their
`
`devices, including Philips, Atom, Mindray North America, GE Medical, Spacelabs,
`
`and Zoll.
`
`-5-
`
`

`

`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`A. The ’554 Patent Claims
`Masimo’s U.S. Patent No. 10,588,554 (“’554 Patent”) discloses and claims a
`
`physiological measurement system that uses an innovative design to improve
`
`detection efficiency. Masimo’s claimed sensor and measurement device use
`
`multiple detectors, multiple emitters, and a cover with a protrusion that works with
`
`a wall surrounding the detectors, enhancing sensor and device effectiveness. The
`
`protrusion thins out the measurement site so the measured tissue attenuates less
`
`light. Ex. 1001 7:46-51. The protrusion further increases the area from which
`
`attenuated light can be measured. Id. 7:51-53. The wall connecting the cover and
`
`substrate also maximizes the amount of light that impinges on the detectors, further
`
`increasing the signal strength. Id. 36:35-41. The multiple detectors allow for an
`
`averaging of measurements that can reduce errors due to variations in the path of
`
`light passing through the tissue. Id. 9:18-23; see also id. 3:13-24, 4:16-27. The
`
`inventors discovered these features work together to provide greater noise
`
`cancellation and an order of magnitude increase in signal strength. Id. 9:18-23,
`
`20:14-30; see also id. 3:13-23, 4:16-27; Ex. 2004 ¶27.
`
`-6-
`
`

`

`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`B.
`
`Introduction To Independent Claims
`The ’554 Patent has two independent claims: claims 1 and 20.2 Each is
`
`directed to a physiological measurement system including, among other things: (1)
`
`a plurality of emitters configured to emit light into tissue of a user, (2) at least four
`
`detectors wherein each of the at least four detectors has a corresponding window
`
`that allows light to pass through to the detector, (3) a cover comprising a single
`
`protruding convex surface, (4) a wall that surrounds the detectors; and (5) a
`
`handheld computing device in wireless communication with the physiological
`
`sensor device. See Ex. 1001 Claims 1, 20. Claim 1 illustrates the many interacting
`
`features described in the ’554 Patent. Claim 1 reads:
`
`1. A physiological measurement system comprising:
`
`a physiological sensor device comprising:
`
`a plurality of emitters configured to emit light into tissue of a
`
`user;
`
`at least four detectors, wherein each of the at least four
`
`detectors has a corresponding window that allows light to pass
`
`through to the detector;
`
`a wall that surrounds at least the at least four detectors; and
`
`
`2 Appendix A reproduces the claims with bracketed labels for convenience.
`
`-7-
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`

`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`
`a cover that operably connects to the wall and that is
`
`configured to be located between tissue of the user and the at least
`
`four detectors when the physiological sensor device is worn by the
`
`user, wherein:
`
`the cover comprises a single protruding convex surface,
`
`and
`
`at least a portion of the cover is sufficiently rigid to cause
`
`tissue of the user to conform to at least a portion of a shape of
`
`the single protruding convex surface when the physiological
`
`sensor device is worn by the user; and
`
`a handheld computing device in wireless communication with the
`
`physiological sensor device, wherein the handheld computing device
`
`comprises:
`
`one or more processors configured to wirelessly receive one or
`
`more signals from the physiological sensor device, the one or more
`
`signals responsive to at least a physiological parameter of the user;
`
`a touch-screen display configured to provide a user interface,
`
`wherein:
`
`the user interface is configured to display indicia responsive to
`
`measurements of the physiological parameter, and
`
`-8-
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`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`
`an orientation of the user interface is configurable responsive to
`
`a user input; and
`
`a storage device configured to at least temporarily store at least
`
`the measurements of the physiological parameter.
`
`C. The ’554 Patent Prosecution
`During prosecution, the Examiner agreed that the claimed combination of
`
`features—including multiple detectors, each with a corresponding window, in
`
`conjunction with a cover comprising a single protruding convex surface—provided
`
`a patentable advance unique in the field. Ex. 1002 at 383-385. Petitioner’s
`
`references do not differ significantly from the prior art the Examiner considered
`
`and found does not teach or suggest the claimed invention.
`
`III. THE PETITION’S PROPOSED COMBINATIONS
`In an attempt to replicate the many interacting features of Masimo’s claims,
`
`Petitioner presents one ground combining four references. Specifically, Ground 1
`
`combines Mendelson ’799 (Ex. 1012), Ohsaki (Ex. 1009), Schulz (Ex. 1013), and
`
`Mendelson 2006 (Ex. 1010). Pet. 11-12.
`
`IV. CLAIM CONSTRUCTION
`Petitioner identifies no terms for construction. The Board should give the
`
`claim
`
`terms
`
`their ordinary and customary meaning, consistent with
`
`the
`
`-9-
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`

`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`
`specification, as a POSITA would understand them. 37 C.F.R. § 42.100(b);
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner asserts that a POSITA “would have been a person with a working
`
`knowledge of physiological monitoring technologies. The person would have had a
`
`Bachelor of Science degree in an academic discipline emphasizing the design of
`
`electrical, computer, or software technologies, in combination with training or at
`
`least one to two years of related work experience with capture and processing of
`
`data or information, including but not limited to physiological monitoring
`
`technologies.” Pet. 10-11. Alternatively, Petitioner asserts a POSITA could have
`
`“a Master of Science degree in a relevant academic discipline with less than a year
`
`of related work experience in the same discipline.” Id.
`
`Masimo notes that Petitioner’s asserted level of skill (1) requires no
`
`coursework, training or experience with optics or optical physiological monitors;
`
`(2) requires no coursework, training or experience in physiology; and (3) focuses
`
`on data processing and not sensor design. For this proceeding, Masimo
`
`nonetheless applies Petitioner’s asserted level of skill. Ex. 2004 ¶¶32-35.
`
`VI. LEGAL STANDARD
`A petition based on “obviousness requires a suggestion of all limitations in a
`
`claim.” CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
`
`-10-
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`

`

`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`
`(citing In re Royka, 490 F.2d 981, 985 (C.C.P.A. 1974)). A patent claim is not
`
`obvious unless “a skilled artisan would have been motivated to combine the
`
`teachings of the prior art references to achieve the claimed invention, and that the
`
`skilled artisan would have had a reasonable expectation of success in doing so.”
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed.
`
`Cir. 2012).
`
`To prevail on any obviousness ground, a petitioner may not simply identify
`
`individual claim components—it must show why a “skilled artisan, with no
`
`knowledge of the claimed invention, would have selected these components for
`
`combination in the manner claimed.” In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir.
`
`2000). The petitioner must support even simple modifications with some
`
`motivation to make the change. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
`
`1984).
`
`An appropriate obviousness inquiry cannot involve even a “hint of
`
`hindsight.” Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375
`
`(Fed. Cir. 2011). A petitioner may not “simply retrace[] the path of the inventor
`
`with hindsight, discount[] the number and complexity of the alternatives, and
`
`conclude[] that the invention ... was obvious.” Ortho-McNeil Pharm., Inc. v.
`
`Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008). Likewise, “[c]are must
`
`be taken to avoid hindsight reconstruction by using the patent in suit as a guide
`
`-11-
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`

`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`
`through the maze of prior art references, combining the right references in the right
`
`way so as to achieve the result of the claims in suit.” In re NTP, Inc., 654 F.3d
`
`1279, 1299 (Fed. Cir. 2011) (internal quotations omitted).
`
`VII. GROUND 1 FAILS TO DEMONSTRATE OBVIOUSNESS
`A. Ground 1’s Cited Art And Asserted Combination
`Ground 1 first combines Ohsaki with Mendelson ’799. These references,
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`however, disclose two different physiological monitor designs with distinct shapes,
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`features, and detector and emitter configurations. Ground 1 then adds Schulz to
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`address a non-existent problem—saturation of the detectors. Finally, Petitioner
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`adds a fourth reference, Mendelson 2006, which confirms a POSITA would not
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`have combined Ohsaki and Mendelson ’799 into a wrist-worn device in the first
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`place, and certainly would not have looked to Schulz to reduce the amount of
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`detected light.
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`1.
`Petitioner’s Combination Of Ohsaki And Mendelson ’799
`Ohsaki discloses a pulse rate sensor with a single emitter (e.g., an LED) and
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`a single detector disposed linearly, side-by-side, under a translucent board. See,
`
`e.g., Ex. 1009 Abstract, Fig. 2, ¶[0019]; Ex. 2004 ¶37.
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`Ohsaki’s linearly arranged detector and emitter (above) result in a longitudinal
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`shape and direction that Ohsaki explains is important to reduce slipping when
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`placed against the backhand side of the wrist. See Ex. 1009 ¶[0019] (if the
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`longitudinal direction of Ohsaki’s detecting element 2 “agrees with
`
`the
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`circumferential direction of the user’s wrist 4, it has a tendency to slip off.
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`Therefore it is desirable that the detecting element 2 is arranged so that its
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`longitudinal direction agrees with the longitudinal direction of the user's arm.”).
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`Ohsaki includes a “dedicated belt” that “fix[es] the detecting element 2 on the
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`user’s wrist 4 in this way.” Id.; Ex. 2004 ¶37.
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`In contrast, Mendelson ’799 (below) discloses an oxygen saturation sensor
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`that includes no protruding cover and uses a circular array of multiple detectors
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`surrounding multiple LEDs. Ex. 1012 Fig. 7; see also id. 1:11-13 (“This invention
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`is generally in the field of pulse oximetry, and relates to a sensor for use in a pulse
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`oximeter, and a method for the pulse oximeter operation.”).
`
`
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`Mendelson ’799 explains that its radial symmetry is an important part of its sensor
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`design. See, e.g., id. 4:59-65 (a “radially-symmetric photodetector array can help
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`to maximize the detection of backscattered light from the skin”), 12:35-13:11
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`(using symmetrical array to identify aberrant measurements); Ex. 2004 ¶42.
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`Petitioner argues a POSITA would have added Ohsaki’s translucent board—
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`designed for a linear pulse sensor—to Mendelson ’799’s circular oximeter. Pet.
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`30. But Petitioner inconsistently describes its own combination. Petitioner argues
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`that a cover “would simply be placed over the components” in Mendelson ’799 and
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`assumes it “would perform the same function as taught by Ohsaki.” Pet. 32 (citing
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`Ex. 1003 ¶92). However, Petitioner then illustrates the resulting combination (Pet.
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`31) with a circular cover (in red) over Mendelson ’799’s optical components. Ex.
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`2004 ¶¶43-44.
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`
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`Petitioner’s Illustration Of Its Alleged Combination (Pet. 31)
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`Petitioner’s combination also adds features found nowhere in the cited
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`references, with no motivation or explanation for why a POSITA would have
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`added these features. For example, Petitioner’s combination shows a cover
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`(below, top in red) spanning the entire space above the substrate:
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`
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`Top: Petitioner’s Figure (Pet. 52) (additional color and annotation added)
`Bottom: Ohsaki Ex. 1009 Fig. 2 (color added)
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`In contrast, Ohsaki places its translucent board (above, bottom in red) in an
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`opening within the top of the package. Ex. 1009 Fig. 2; ¶[0017]. In addition,
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`Petitioner’s combination includes a wall with notches for the cover (illustrated
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`above, within circles). Neither Mendelson ’799, Ohsaki (above, bottom), nor any
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`other of Petitioner’s cited Ground 1 references include this notched wall feature.
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`Ex. 2004 ¶¶45-46.
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`Dr. Kenny admitted his declaration does not explain or acknowledge these
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`changes. Ex. 2008 205:21-208:5; see also id. 208:6-19 (no reference discloses this
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`structure). Petitioner’s addition of a notch is significant: the notch insets the cover
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`into the wall, which changes the cover’s height relative to the underlying optical
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`components. The notch results in a sensor with a light shield shorter than the
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`surrounding wall. A POSITA would have expected each of Petitioner’s
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`unexplained modifications to impact sensor performance. Ex. 2004 ¶¶45-46.
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`2.
`Dr. Kenny’s Erroneous Characterization Of Ohsaki
`At his deposition, Dr. Kenny injected even more confusion into Petitioner’s
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`combinations. As discussed below in Section VII.B.3.a, Dr. Kenny distanced
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`himself from Petitioner’s illustration of its combination, disclaiming almost any
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`specific three-dimensional structure. Ex. 2008 57:19-58:16, 59:18-60:9; see also
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`id. 30:5-18, 31:13-32:5, 35:5-36:16, 36:17-37:5, 214:2-11, 215:8-14. Dr. Kenny
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`testified he did not know the shape of Ohsaki’s board and that Ohsaki’s board
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`could be “circular or square or rectangular.” Ex. 2008 68:21-70:1, 71:7-72:10.
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`Dr. Kenny is incorrect. Ohsaki illustrates two cross-sectional views of the
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`board that confirm it is rectangular. Ex. 2004 ¶38-41. Specifically, Ohsaki Figure
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`2 (below left) illustrates the “long” side of Ohsaki’s detector element (2) that
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`extends from left to right in Figure 2 and in the longitudinal direction (up and
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`down the arm) of a user’s wrist. Ex. 1009 ¶[0019]; see also id. ¶[0017] (“detecting
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`element” is made up of “package 5, a light emitting element 6 (e.g., LED), a light
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`receiving element 7 (e.g., PD), and a translucent board 8.”); Ex. 2004 ¶38-41.
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`Ohsaki Ex. 1009 Fig. 2 (left) & Fig. 1 (right) showing different cross-sections
`(color added: Purple: detecting element 2/package 5; Blue: translucent board 8)
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`Figure 2 (above left) shows that the board (8) spans nearly the entire length of the
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`detecting element’s (2) “long” side. Ohsaki Figure 1 (above right) shows the
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`“short” side of Ohsaki’s detecting element (2) that extends from left to right in
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`Figure 1 and in the circumferential direction (around) of the user’s wrist. Ex. 1009
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`¶¶[0012], [0019]; see also Ex. 2008 118:3-119:7, 120:5-13, 121:3-15 (Dr. Kenny
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`confirming longitudinal directionality); Ex. 2004 ¶38-41. As shown in Figure 1
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`above, the board’s length (8, blue) is much shorter than the detecting element’s
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`length (2, purple) in the circumferential direction. Ex. 2004 ¶38-41.
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`Taken together, a POSITA would have understood that Ohsaki’s figures and
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`description show that the board (8) has a very pronounced longitudinal
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`directionality and is much longer than it is wide. Ex. 1009 ¶¶[0012], [0017],
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`[0019], Figs. 1, 2.; Ex. 2004 ¶38-41. A POSITA would have understood that the
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`top-down view of Ohsaki’s sensor, including the package, board, and emitter and
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`detector, would look approximately like the figure below:
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`
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`Drawing based on Ohsaki, illustrating the sensor’s rectangular shape
`(Ex. 2004 ¶40)
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`This is consistent with the remainder of Ohsaki, which emphasizes that the sensor
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`has a longitudinal direction that must be aligned with the longitudinal direction of
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`the user’s arm to prevent slippage. Ex. 1009 ¶[0019]; Ex. 2004 ¶38-41.
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`3.
`Petitioner’s Addition Of A Third Reference:

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