`
`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`
`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
`________________
`
`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
`
`

`

`
`
`I. 
`II. 
`
`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1 
`GROUND 1 ESTABLISHES OBVIOUSNESS ............................................. 1 
`A.  Ohsaki does not describe, much less require, its convex translucent
`board 8 to be “rectangular” in shape. ........................................................ 7 
`B.  A POSITA would have recognized the benefits of Ohsaki’s teachings
`when applied to Mendelson-799’s sensor, at virtually any measurement
`location. ................................................................................................... 10 
`C.  Adding a convex cover to Mendelson-799 as taught by Ohsaki enhances
`the sensor’s light-gathering ability. ........................................................ 13 
`1. 
`Patent Owner ignores the behavior of scattered light in relation to
`reflectance-type pulse sensors and oximeters. .............................. 13 
`2.  A POSITA would have implemented the sensor resulting from the
`combination of Mendelson-799 and Ohsaki to prevent air gaps
`between the skin and the detectors ................................................ 17 
`D.  A POSITA would have found the advantages of using a convex cover to
`outweigh the slight possibility of scratching the cover .......................... 19 
`E.  A POSITA would have added an opaque layer to the combined sensor of
`Mendelson-799 and Ohsaki based on the teachings of Schulz ............... 19 
`1.  A POSITA would have modified the combined sensor of
`Mendelson-799 and Ohsaki to guard against saturation based on
`Schulz’s teachings ......................................................................... 20 
`Schulz’s teachings are applicable to the combined sensor of
`Mendelson-799 and Ohsaki ........................................................... 22 
`3.  A POSITA would have understood Schulz’s teachings to render
`obvious a corresponding window for each of at least four
`detectors. ........................................................................................ 23 
`4.  A POSITA would have understood Schulz’s window to restrict the
`amount of ambient light reaching the corresponding detector ...... 24 
`F.  A POSITA would have enabled the combined sensor of Mendelson-799,
`Ohsaki, and Schulz to communicate wirelessly with a handheld
`computing device, based on the teachings of Mendelson-2006 ............. 26 
`G.  A POSITA would have expected success in performing the combination
` ................................................................................................................. 28 
`H.  The challenged dependent claims are rendered obvious by Mendelson-
`799, Ohsaki, Schulz, and Mendelson-2006. ........................................... 29 
`
`2. 
`
`ii
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`

`

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`III.  CONCLUSION .............................................................................................. 31 
`
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`iii
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`
`EXHIBITS
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
`
`APPLE-1001
`
`US Patent No. 10,588,554
`
`APPLE-1002
`
`File History for U.S. Patent No. 10,588,554
`
`APPLE-1003
`
`Declaration of Dr. Kenny
`
`APPLE-1004
`
`Curriculum Vitae of Dr. Kenny
`
`APPLE-1005
`
`Masimo Corporation, et al. v. Apple Inc., Complaint, Civil
`Action No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1006
`
`US Pub. No. 2002/0188210 (“Aizawa”)
`
`APPLE-1007
`
`JP Pub. No. 2006/296564 (“Inokawa”)
`
`APPLE-1008
`
`Certified English Translation of Inokawa and Translator’s
`Declaration
`
`APPLE-1009
`
`US Pub. No. 2001/0056243 (“Ohsaki”)
`
`APPLE-1010
`
`“A Wearable Reflectance Pulse Oximeter for Remote
`Physiological Monitoring,” Y. Mendelson, et al.; Proceedings
`of the 28th IEEE EMBS Annual International Conference,
`2006; pp. 912-915 (“Mendelson-2006”)
`
`APPLE-1011
`
`RESERVED
`
`APPLE-1012
`
`US Patent No. 6,801,799 (“Mendelson ’799”)
`
`APPLE-1013
`
`US Pub. No. 2004/0054291 (“Schulz”)
`
`APPLE-1014-1016
`
`RESERVED
`
`APPLE-1017
`
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic Institute,
`Biomedical Engineering Program, Worcester, MA 01609;
`
`iv
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`

`

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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`Association for the Advancement of Medical Instrumentation,
`Vol. 22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`
`APPLE-1018
`
`“Skin Reflectance Pulse Oximetry: In Vivo Measurements from
`the Forearm and Calf,” Y. Mendelson, et al.; Journal of Clinical
`Monitoring, vol. 7, No. 1, January 1991 (“Mendelson 1991)
`
`APPLE-1019
`
`Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`
`APPLE-1020
`
`QuickSpecs; HP iPAQ Pocket PC h4150 Series
`
`APPLE-1021
`
`How to Do Everything with Windows Mobile, Frank
`McPherson; McGraw Hill, 2006 (“McPherson”)
`
`APPLE-1022
`
`Master Visually Windows Mobile 2003, Bill Landon, et al.;
`Wiley Publishing, Inc., 2004 (“Landon”)
`
`APPLE-1023
`
`“Stimulating Student Learning with a Novel ‘In-House’ Pulse
`Oximeter Design,” J. Yao and S. Warren; Proceedings of the
`2005 American Society for Engineering Education Annual
`Conference & Exposition, 2005 (“Yao”)
`
`APPLE-1024
`
`US Pub. No. 2008/0194932 (“Ayers”)
`
`APPLE-1025
`
`U.S. Patent No. 7,031,728 (“Beyer”)
`
`APPLE-1026
`
`US Pub. No. 2007/0145255 (“Nishikawa”)
`
`APPLE-1027
`
`National Instruments LabVIEW User Manual
`
`APPLE-1028-1030
`
`RESERVED
`
`APPLE-1031
`
`Scheduling Order, Masimo v. Apple et al., Case 8:20-cv-00048,
`Paper 37 (April 17, 2020)
`
`APPLE-1032
`
`Stipulation by Apple
`
`v
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`

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`APPLE-1033
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`APPLE-1034
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`APPLE-1035
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`Telephonic Status Conference, Masimo v. Apple et al., Case
`8:20-cv-00048, Paper 78 (July 13, 2020)
`
`Joseph Guzman, “Fauci says second wave of coronavirus is
`‘inevitable’”, TheHill.com (Apr. 29, 2020), available at:
`https://thehill.com/changing-america/resilience/natural-
`disasters/495211-fauci-says-second-wave-of-coronavirus-is
`
`“Tracking the coronavirus in Los Angeles County,”
`LATimes.com (Aug. 20, 2020), available at
`https://www.latimes.com/projects/california-coronavirus-cases-
`tracking-outbreak/los-angeles-county/
`
`APPLE-1036
`
`Declaration of Jacob R. Munford
`
`APPLE-1037
`
`Order Granting Motion to Stay in Masimo Corporation et al. v.
`Apple Inc., Civil Action No. 8:20-cv-00048-JVS-JDE, October
`13,2020
`
`APPLE-1038
`
`Second Declaration of Jacob R. Munford
`
`APPLE-1039
`
`Excerpts of Eugene Hecht, Optics (2nd Ed. 1990), pages 79-143,
`211-220
`
`APPLE-1040
`
`Eugene Hecht, Optics (2nd Ed. 1990)
`
`APPLE-1041
`
`APPLE-1042
`
`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01520, IPR2020-01537, IPR2020-01539, Day 1 (August 1,
`2021)
`
`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01520, IPR2020-01537, IPR2020-01539, Day 2 (August 2,
`2021)
`
`APPLE-1043
`
`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01536, IPR2020-01538 (August 3, 2021)
`
`vi
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`APPLE-1044
`
`APPLE-1045
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`APPLE-1046
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`“Refractive Indices of Human Skin Tissues at Eight
`Wavelengths and Estimated Dispersion Relations between 300
`and 1600 nm,” H. Ding, et al.; Phys. Med. Biol. 51 (2006); pp.
`1479-1489 (“Ding”)
`
`“Analysis of the Dispersion of Optical Plastic Materials,” S.
`Kasarova, et al.; Optical Materials 29 (2007); pp. 1481-1490
`(“Kasarova”)
`
`“Noninvasive Pulse Oximetry Utilizing Skin Reflectance
`Photoplethysmography,” Y. Mendelson, et al.; IEEE
`Transactions on Biomedical Engineering, Vol. 35, No. 10,
`October 1988; pp. 798-805 (“Mendelson-IEEE-1988”)
`
`APPLE-1047
`
`Second Declaration of Dr. Thomas W. Kenny
`
`APPLE-1048
`
`RESERVED
`
`APPLE-1049
`
`Eugene Hecht, Optics (4th Ed. 2002)
`
`
`
`
`
`vii
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`

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`
`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`I.
`Introduction
`Apple Inc. (“Petitioner” or “Apple”) submits this Reply to Patent Owner’s
`
`Response (“POR”) to the Petition for Inter Partes Review (“IPR”) of U.S. Patent
`
`No. 10,588,554 (“the ’554 patent”) filed by Masimo Corporation (“Patent Owner”
`
`or “Masimo”). As demonstrated below with reference to evidence including Dr.
`
`Kenny’s testimony, the POR fails to address, much less rebut, positions advanced
`
`in the Petition. Accordingly, Apple respectfully submits that the Board should find
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`claims 1-7 and 20-28 (“the Challenged Claims”) of the ’554 patent unpatentable.
`
`II. Ground 1 Establishes Obviousness
`In its POR, Masimo first addresses the “Mendelson ’799 and Ohsaki”
`
`portion of the full Mendelson ’799-Ohsaki-Schulz-Mendelson 2006 combination
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`advanced in Ground 1. As Dr. Kenny explained at length in his first declaration,
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`“Ohsaki would have motivated one of ordinary skill to add a light permeable
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`protruding convex cover to Mendelson ’799’s sensor, to [1] improve adhesion
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`between the sensor and the user’s tissue, to [2] improve detection efficiency, and to
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`[3] provide additional protection to the elements accommodated within sensor
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`housing 17.” APPLE-1003, [0146] (citing APPLE-1009, [0015], [0017], [0025],
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`FIGS. 1, 2, 4A, 4B). Rather than attempting to rebut Dr. Kenny’s testimony on
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`these points, Masimo offers, through its witness Dr. Madisetti, arguments that are
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`factually flawed and legally irrelevant. APPLE-1047, ¶7.
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`1
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`

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`Specifically, Masimo contends that Mendelson-799 and Ohsaki “employ (1)
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`different sensor structures (rectangular versus circular), (2) for different
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`measurements (pulse rate versus oxygen saturation)…(3) in different measurement
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`locations,” and from this concludes that “[a] POSITA would not have been
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`motivated to combine” the references, and would not have “reasonably expected
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`such a combination to be successful.” POR, 1-4.
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`In this way, the POR avoids addressing the merits of the combinations
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`advanced in Apple’s Petition, and ignores the “inferences and creative steps” that a
`
`POSITA would have taken when modifying Mendelson-799’s sensor to achieve
`
`the benefits taught by Ohsaki. APPLE-1047, ¶¶7-9; KSR Intern. Co. v. Teleflex
`
`Inc., 550 U.S. 398, 418 (2007).
`
`Contrary to Masimo’s contentions, Ohsaki nowhere describes its benefits as
`
`being limited to a rectangular pulse rate sensor applied to a particular body
`
`location, and a POSITA would not have understood those benefits as being so
`
`limited. APPLE-1047, ¶10. Instead, and as shown in Ohsaki’s FIG. 2 (reproduced
`
`below), Ohsaki attributes the reduction of slippage afforded by use of translucent
`
`board 8 (and related improvements in signal quality) to the fact that “the convex
`
`surface of the translucent board…is in intimate contact with the surface of the
`
`2
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`

`

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`user’s skin”1 when the sensor is worn. APPLE-1003, [0148]; APPLE-1009,
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`[0015], [0017]-[0018], [0025], FIGS. 1, 2, 4A, 4B.
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`APPLE-1009, FIG. 2 (annotated).
`
`
`
`Notably absent from Ohsaki’s discussion of these benefits is any mention or
`
`suggestion that they relate to a shape of the exterior edge of Ohsaki’s board
`
`(whether circular, rectangular, ovoid, or other). APPLE-1047, ¶11. Rather, when
`
`describing the advantages associated with the board, Ohsaki contrasts a “convex
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`detecting surface” from a “flat detecting surface,” and explains that “if the
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`translucent board 8 has a flat surface, the detected pulse wave is adversely affected
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`by the movement of the user’s wrist,” but that if the board “has a convex
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`1 Unless otherwise noted, emphases in quotations throughout this Reply are added.
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`3
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`

`

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`surface…variation of the amount of the reflected light…that reaches the light
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`receiving element 7 is suppressed.” APPLE-1003, [0149]; APPLE-1008, [0015],
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`[0025].
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`From this and related description, a POSITA would have understood that a
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`light permeable protruding convex cover would reduce the adverse effects of user
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`movement on signals obtainable by the detectors within Mendelson-799’s sensor,
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`which like Ohsaki’s light receiving elements, detect light reflected from user
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`tissue. APPLE-1047, ¶¶11-12; APPLE-1009, [0025]; FIGS. 4A, 4B; APPLE-
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`1012, 3:5-14, 6:16-35, 8:27-29, 1:41-60; APPLE-1019, 36-37, 87-88, 91, 124.
`
`Indeed, and as described by Dr. Kenny with respect to the figures reproduced
`
`below, the POSITA would have found it obvious to improve Mendelson-799’s
`
`pulse oximeter based on Ohsaki’s teachings, and would have been fully capable of
`
`making any inferences and creative steps necessary to achieve the benefits
`
`obtainable by attaching a light permeable protruding convex cover to Mendelson-
`
`799’s housing.2 APPLE-1047, ¶12; KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398,
`
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`2 Notably, Ohsaki nowhere depicts or describes its cover as rectangular. APPLE-
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`1049, ¶19; APPLE-1009, [0001]-[0030]; FIGS. 1, 2, 3A, 3B, 4A, 4B. Even if
`
`Ohsaki’s cover were understood to be rectangular, “[t]he test for obviousness is not
`
`4
`
`

`

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`418 (2007); see also APPLE-1008, [0058], FIG. 2; APPLE-1026, [0022], [0032],
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`[0035], FIG. 6.
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`APPLE-1012, FIG. 7 (annotated, with additional section view).
`
`And, contrary to Masimo’s contentions, the POSITA would have in no way
`
`been dissuaded from achieving those benefits by a specific body location
`
`
`
`
`whether the features of a secondary reference may be bodily incorporated into the
`
`structure of the primary reference….” Allied Erecting v. Genesis Attachments, 825
`
`F.3d 1373, 1381 (Fed. Cir. 2016).
`
`
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`5
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`

`

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`associated with Ohsaki’s sensor. POR, 32-38; APPLE-1047, ¶13. Indeed, it has
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`been well understood for decades that reflective pulse oximetry sensors like
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`Mendelson-799’s can be placed “on virtually any place on the body where we can
`
`expect light reflection due to tissue.” APPLE-1019, 91. And a POSITA would
`
`have understood that a light permeable convex cover would have provided the
`
`benefits described by Ohsaki in a sensor placed, for example, on the palm side of
`
`the wrist or forearm. APPLE-1047, ¶13; see also APPLE-1009, [0025], Claims 4-
`
`8; FIGS. 4A, 4B.
`
`For these and other reasons explained below, Apple respectfully submits that
`
`the Board should reject Masimo’s arguments, which avoid addressing the merits of
`
`the combinations advanced in Apple’s Petition, and which are grounded in
`
`disregard for well-established principles of patent law. For example, that “[a]
`
`person of ordinary skill is also a person of ordinary creativity, not an
`
`automaton,” and that “[t]he test for obviousness is not whether the features of a
`
`secondary reference may be bodily incorporated into the structure of the primary
`
`reference,” but is instead “what the combined teachings of those references would
`
`have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413
`
`(C.C.P.A. 1981); Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313,
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`1333 (Fed. Cir. 2020); KSR, 550 U.S. at 418.
`
`6
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`

`
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`The sections below address the arguments with respect to Ground 1
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`presented in Masimo’s POR against the backdrop of the description above. As
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`explained below, these arguments fail. See APPLE-1047, ¶¶7-16
`
`A. Ohsaki does not describe, much less require, its convex
`translucent board 8 to be “rectangular” in shape.
`As noted above, the Petition demonstrates that “Ohsaki would have
`
`motivated a POSITA to add a light permeable protruding convex cover to
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`Mendelson ’799’s sensor” at least “to improve adhesion between the sensor and
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`the user’s tissue[.]” Petition, 30 (citing APPLE-1003, [0084]-[0092]; APPLE-
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`1009, [0015], [0017], [0025], FIGS. 1, 2, 4A, 4B). As also described above,
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`Ohsaki (at [25]) describes that the “convex surface of the translucent board 8” is
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`responsible for this improved adhesion. See id.; APPLE-1047, ¶17.
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`Masimo argues that it is not the “convex surface” that improves adhesion
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`(i.e., reduces slippage) in Ohsaki, but instead a supposed “longitudinal shape” of
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`“Ohsaki’s translucent board [8].” See POR, 23-28 (citing APPLE-1009, [0019]).
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`But the portions of Ohsaki cited to support this characterization do not include any
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`reference to translucent board 8. See APPLE-1009, [0019]. Instead, the cited
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`portion of Ohsaki ascribes this “longitudinal” shape to a different component:
`
`“detecting element 2.” Id. Ohsaki never describes the “translucent board 8” as
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`“longitudinal,” and nowhere does Ohsaki describe the “translucent board 8” and
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`“detecting element 2” as having the same shape. See generally APPLE-1009;
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`7
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`APPLE-1047, ¶18. In fact, as illustrated in Ohsaki’s FIG. 2 (reproduced below),
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`the translucent board 8 (annotated yellow) is not coextensive with the entire tissue-
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`facing side of detecting element 2 (annotated green). APPLE-1047, ¶18:
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`APPLE-1009, FIG. 2 (annotated)
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`
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`Based on its unsupported contention that translucent board 8 must have a
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`“very pronounced longitudinal directionality”, Masimo concludes that translucent
`
`board 8 has a “rectangular” shape that is allegedly incompatible with Mendelson-
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`799. See POR, 17-19. But Ohsaki never describes translucent board 8, or any
`
`other component, as “rectangular”; in fact, the words “rectangular” and “rectangle”
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`8
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`do not appear in Ohsaki’s disclosure. See generally APPLE-1009; APPLE-1047,
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`Case No. IPR2020-01538
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`¶21. Attempting to confirm its false conclusion, Masimo asserts that “Ohsaki
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`illustrates two cross-sectional views of the board that confirm it is rectangular.”
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`POR, 17. Masimo identifies these “two cross-sectional views” as FIGS. 1 and 2,
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`and infers the supposed “rectangular shape” of the translucent board 8 based on
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`FIG. 1 showing the “short” side of the device, and FIG. 2 showing the “long” side
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`of the same device. See POR, 17-18. But, according to Ohsaki, FIG. 2 is “a
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`schematic diagram,” not a cross-sectional view, and Ohsaki never specifies that
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`FIGS. 1 and 2 are different views of the same device. APPLE-1009, [0013].
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`Accordingly, nothing in Ohsaki supports Masimo’s inference that the “translucent
`
`board 8” must be “rectangular” in shape. See, e.g., APPLE-1009, [0013], [0019],
`
`[0025], FIG. 2; APPLE-1047, ¶21; Hockerson-Halberstadt v. Avia, 222 F.3d 951,
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`956 (Fed. Cir. 2000). Further, even if it is possible for the translucent board 8 to be
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`“rectangular,” Ohsaki certainly does not include any disclosure “requiring” this
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`particular shape. See id.
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`Section B.1 of the POR presents several arguments premised on Ohsaki
`
`requiring the translucent board 8 to be “rectangular.” See POR, 22-31. Because
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`Ohsaki requires no such shape for the translucent board 8, these arguments fail.
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`APPLE-1047, ¶¶17-23.
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`9
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`In addition, as discussed above (supra, 6-7), even if Ohsaki’s translucent
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`board 8 were somehow understood to be rectangular, obviousness does not require
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`“bodily incorporation” of features from one reference into another, and a POSITA,
`
`being “a person of ordinary creativity, not an automaton,” would have been fully
`
`capable of attaching a light permeable protruding convex cover to Mednelson-
`
`799’s housing to obtain the benefits attributed to such a cover by Ohsaki. APPLE-
`
`1047, ¶23; Facebook, 953 F.3d at 1333; KSR, 550 U.S. at 418.
`
`B. A POSITA would have recognized the benefits of Ohsaki’s
`teachings when applied to Mendelson-799’s sensor, at
`virtually any measurement location.
`Masimo contends that Ohsaki’s benefits are specific to “the backhand side of
`
`the wrist.” POR, 32. But Ohsaki does not describe that its sensor can only be used
`
`at backside of the wrist. APPLE-1047, ¶24. Instead, at most, Ohsaki describes
`
`such an arrangement with respect to a preferred embodiment. APPLE-1047, ¶24;
`
`APPLE-1009, [0019].
`
`Indeed, Ohsaki’s claim language reinforces that Ohsaki’s description would
`
`not have been understood as so limited. APPLE-1047, ¶25. For example,
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`Ohsaki’s independent claim 1 states that “the detecting element is constructed to be
`
`worn on a back side of a user’s wrist or a user’s forearm.” See also APPLE-1009,
`
`Claim 2. As another example, Ohsaki’s independent claim 3 states that “the
`
`detecting element is constructed to be worn on a user’s wrist or a user’s forearm,”
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`10
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`without even mentioning a backside of the wrist or forearm. See also APPLE-
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`1019, Claims 4-8. From this and related description, a POSITA would have
`
`understood that Ohsaki’s benefits are provided when the sensor is placed, for
`
`example, on either side of the user’s wrist or forearm. APPLE-1047, ¶25; APPLE-
`
`1009, [0025], FIGS. 4A, 4B.
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`Moreover, even if a POSITA would have somehow misunderstood Ohsaki’s
`
`sensor as limited to placement on the backside of the wrist, and even if the
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`difficulty that Masimo alleges with respect to obtaining pulse oximetry
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`measurements from that location were true, that would have further motivated the
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`POSITA to implement a light permeable convex cover in Mendelson-799’s sensor,
`
`to improve detection efficiency. APPLE-1047, ¶26; POR, 32-38; APPLE-1009,
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`[0015], [0017], [0025], FIGS. 1, 2, 4A, 4B.
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`Indeed, when describing advantages associated with its translucent board,
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`Ohsaki explains with reference to FIGS. 4A and 4B (reproduced below) that “if the
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`translucent board 8 has a flat surface, the detected pulse wave is adversely affected
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`by the movement of the user’s wrist,” but that if the board “has a convex
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`surface…variation of the amount of the reflected light…that reaches the light
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`receiving element 7 is suppressed.” APPLE-1003, [0149]; APPLE-1009, [0015],
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`[0017], [0025].
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`Case No. IPR2020-01538
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`APPLE-1009, FIGS. 4A, 4B.
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`
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`As discussed above (supra 6), a POSITA would have understood that
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`reflectance pulse oximetry sensors like Mendelson-799’s can be placed “on
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`virtually any place on the body where we can expect light reflection due to tissue,”
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`and would have further understood from Ohsaki that, by promoting “intimate
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`contact with the surface of the user’s skin,” a convex cover would have prevented
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`slippage of Mendelson-799’s sensor when placed, for example, on either side of a
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`user’s wrist or forearm, with associated improvements in signal quality. APPLE-
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`1047, ¶¶24-30; APPLE-1019, 91; APPLE-1009, [0015], [0017], [0025], FIGS. 4A,
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`4B, Claims 4-8.
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`C. Adding a convex cover to Mendelson-799 as taught by
`Ohsaki enhances the sensor’s light-gathering ability.
`In defiance of fundamental principles of elementary optics, Masimo argues
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`that a POSITA would not have combined Mendelson-799 and Ohsaki as proposed
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`because the combined sensor “would direct light away from the detectors.” See,
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`e.g., POR, 38. As explained in more detail below, a POSITA would have
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`understood the opposite to be true: that Ohsaki’s cover would improve Mendelson-
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`799’s signal-to-noise ratio by causing more light backscattered from tissue to strike
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`Mendelson-799’s detectors than would have absent the cover. APPLE-1047, ¶¶31-
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`45; APPLE-1019, 52, 86, 90; APPLE-1040, 84, 87-92, 135-141; APPLE-1046,
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`803-805; APPLE-1012, FIG. 7
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`1.
`
`Patent Owner ignores the behavior of scattered light in
`relation to reflectance-type pulse sensors and
`oximeters.
`Masimo relies heavily on FIG. 14B from the ’554 patent (reproduced below)
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`to support its contention that a convex cover would direct light to a point in the
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`center of the combined sensor:
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`Case No. IPR2020-01538
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`APPLE-1001, FIG. 14B (as annotated at POR, 40)
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`
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`Masimo and Dr. Madisetti treat this figure as an illustration of the behavior
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`of a convex surface with respect to “all types of light,” regardless of the angle of
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`incidence, and conclude that “the convex shape directs light from the periphery
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`toward the center” as shown in FIG. 14B. POR, 39-40; APPLE-1041, 56:9-60:2.
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`But FIG. 14B is not an accurate representation of light that has been
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`reflected from a tissue measurement site. For example, the light rays (1420) shown
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`in FIG. 14B are collimated (i.e., travelling paths parallel to one another), and each
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`light ray’s path is perpendicular to the detecting surface. APPLE-1047, ¶¶32-34.
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`14
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`Even for the collimated light shown in FIG. 14B, the focusing of light at the
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`Case No. IPR2020-01538
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`center only occurs if the light beam happens to be perfectly aligned with the axis of
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`symmetry of the lens. See Ex. 2007, 298:11-299:1; APPLE-1047, ¶35. If the
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`collimated light enters the lens at any other angle, as shown below, the light will
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`focus at a diffent point:
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`APPLE-1040, 141 (annotated)
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`
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`In this regard, Dr. Madisetti’s overly-simplistic statements only apply to a
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`special narrow case of collimated light incident on a convex lens along the axis of
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`symmetry. APPLE-1042, 166:12-182:3; APPLE-1047, ¶36. A POSITA would
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`have understood that Dr. Madisetti’s statements do not reflect the behavior of
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`diffuse light incident on a convex lens-like surface, such as the light incident on the
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`convex cover of the combined sensor of Mendelson-799 and Ohsaki. APPLE-
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`Case No. IPR2020-01538
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`1047, ¶36.
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`The detector(s) of reflectance type pulse detectors and oximeters (like the
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`devices disclosed by Mendelson-799 and Ohsaki) detect light that has been
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`“partially reflected, transmitted, absorbed, and scattered by the skin and other
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`tissues and the blood before it reaches the detector.” APPLE-1019, 86; APPLE-
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`1047, ¶37. In other words, and as a POSITA would have understood from
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`Mendelson-799’s FIG. 7, the light that backscatters from the measurement site
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`after diffusing through tissue reaches the circular active detection area provided by
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`Mendelson-799’s detectors from various random directions and angles, as opposed
`
`to all light entering from the same direction and at the same angle as shown in FIG.
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`14B. APPLE-1047, ¶¶37-38; APPLE-1019, 52, 86, 90; APPLE-1046, 803-805;
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`see also APPLE-1012, FIG. 7.
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`Further, far from focusing light to the center as Patent Owner contends, a
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`POSITA would have understood that Ohsaki’s cover provides a refracting effect,
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`such that light rays that otherwise would have missed the circular active detection
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`area are instead directed toward that area as they pass through the interface
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`provided by the cover.3 APPLE-1047, ¶¶38-39; APPLE-1019, 52; APPLE-1007,
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`Case No. IPR2020-01538
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`[0015]; APPLE-1040, 87-92, 135-141; APPLE-1041, 60:7-61:6, 70:8-18.
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`More specifically, because covers used in pulse detection and pulse oximetry
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`tend to have indices of refraction that differ slightly from the index of refraction of
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`human tissue , a cover like Ohsaki’s would have been understood to increase
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`Mendelson-799’s light-gathering ability by causing light to refract towards the
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`circular active detection area as it crosses the interface provided by the cover such
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`that, overall, more of the partially reflected, transmitted, absorbed, and ultimately
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`back scattered light strikes the detectors than otherwise would have absent the
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`cover. APPLE-1047, ¶¶32-40; APPLE-1040, 84; APPLE-1044, 1486; APPLE-
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`1045, 1484; APPLE-1019, 52, 86, 90.
`
`2.
`
`A POSITA would have implemented the sensor
`resulting from the combination of Mendelson-799 and
`Ohsaki to prevent air gaps between the skin and the
`detectors
`Masimo argues that the addition of a convex cover “contradicts
`
`Mendelson ’799’s warning against ‘the potential for specular reflection…when an
`
`
`3 During deposition, Dr. Madisetti contrasted the phrase “to the center” from
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`“towards the center,” and explained his view that a convex cover would redirect
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`light “toward the center,” which he further clarified to be “a general area.”
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`APPLE-1041, 133:19-135:11.
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`air gap exists between the sensor and the skin.” POR, 43-44. But this argument
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`Case No. IPR2020-01538
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`ignores Ohsaki’s teachings that “the convex surface of the translucent member is
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`in intimate contact with the surface of the user's skin.” APPLE-1009, [0025];
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`APPLE-1047, ¶41. Masimo infers the presence of alleged “air gaps” based on un-
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`labeled portions of Ohsaki’s FIG. 1. See POR, 44.
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`Yet, it is well established that patent figures should not be interpreted as
`
`precise and drawn to scale unless otherwise stated. Hockerson-Halberstadt, 222
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`F.3d at 956. Moreover, Dr. Kenny and Dr. Madisetti have both repeatedly
`
`indicated that a POSITA would not have interpreted reference figures as precise
`
`drawings. See, e.g., APPLE-1047, ¶42; Ex. 2006, 73:19-21; APPLE-1041, 79:19-
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`80:2 (“I believe that to a POSA, these figures are not detailed optical diagrams”).
`
`Even assuming for the sake of argument alone that the introduction of air
`
`gaps could arise through incorporation of a convex cover into Mendelson-799’s
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`sensor, it would have been well within a POSITA’s capability to apply “inferences
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`and creative steps” when adapting Ohsaki’s teachings to obviate such air gaps.
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`APPLE-1047, ¶43; KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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`Moreover, the very teachings of Mendelson-799 cited by the POR would have
`
`motivated the POSITA to adapt Ohsaki’s teachings in that manner. APPLE-1047,
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`¶43; APPLE-1012, 2:58-61, 5:60-63; Ex. 2008, 229-7-13.
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`Finally, even if some minor air gaps would have remained, it is well
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`Case No. IPR2020-01538
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`established that “[a] given course of action often has simultaneous advantages and
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`disadvantages, and this does not necessarily obviate motivation to combine.”
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`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
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`D. A POSITA would have found the advantages of using a
`convex cover to outweigh the slight possibility of scratching
`the cover
`Masimo claims that “a POSITA would have understood that a flat cover
`
`would provide better protection than a convex surface because…it would be less
`
`prone to scratches.” POR, 45-47. Even assuming this to be true, one possible
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`disadvantage that competes with the known advantages would not have negated a
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`POSITA’s motivation to combine. APPLE-1047, ¶45; In re Fulton, 391 F.3d
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`1195, 73 USPQ2d 1141 (Fed. Cir. 2004). Indeed, the POSITA would have
`
`understood the multiple advantages of a convex cover described in the Petition to
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`outweigh any possibility of scratching. APPLE-1047, ¶45; Winner Int’l Royalty
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`Corp. v. Wang, 202 F.3d 1340, 1349, n. 8 (Fed. Cir. 2000); see also Medichem,
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`437 F.3d at 1165.
`
`E. A POSITA would have added an opaque layer to the
`combined sensor of Mendelson-799 and Ohsaki based on the
`teachings of Schulz
`Masimo also argues that “a POSITA would not have been motivated to
`
`combine Schulz with Mendelson ’799, Ohsaki, and Mendelson 2006.” See POR,
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`47-52. But Masimo mischaracterizes and, at times, completely fails to address the
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`justifications provided in the Petition for modifying the sensor based on Schulz.
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`Compare POR, 47-52 to Petition, 25-43; APPLE-1047, ¶46. Thus, Masimo’s
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`arguments fail.
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`1.
`
`A POSITA would have modified the combined sensor
`of Mendelson-799 and Ohsaki to guard against
`saturation based on Schulz’s teachings
`Masimo ar