Filed: October 12, 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’S SUR-REPLY TO REPLY
`
`
`
`
`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`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’S SUR-REPLY TO REPLY
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`ARGUMENT .................................................................................................. 2
`A. A POSITA Would Have Understood That Ohsaki’s
`Board Is Longitudinal And Even Small Changes Result
`In Slippage ............................................................................................ 2
`1.
`Ohsaki’s Board Is Longitudinal ................................................. 2
`2.
`Petitioner’s Additional Arguments Regarding
`Ohsaki Are Unpersuasive .......................................................... 7
`Petitioner Incorrectly Asserts That Ohsaki’s Board
`Prevents Slipping “At Virtually Any Measurement
`Location” ............................................................................................ 10
`A Convex Cover Does Not Enhance Mendelson ’799’s
`Light-Gathering Ability ...................................................................... 15
`1.
`Petitioner Contradicts Its Admissions And
`Evidence ................................................................................... 15
`A POSITA Would Have Avoided Ohsaki’s Air
`Gaps.......................................................................................... 19
`Petitioner Does Not Dispute That A Convex Cover
`Would Be More Prone To Scratches .................................................. 21
`Petitioner Mischaracterizes Schulz’s Teachings ................................ 21
`Petitioner’s Addition Of Mendelson 2006 Underscores
`Petitioner’s Hindsight Reconstruction ............................................... 27
`Petitioner Fails To Show A Reasonable Expectation Of
`Success ............................................................................................... 27
`
`B.
`
`C.
`
`2.
`
`D.
`
`E.
`F.
`
`G.
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`H.
`
`Petitioner’s Proposed Combination Includes Still-
`Unexplained Changes Impacting The Proposed
`Combination’s Functionality .............................................................. 28
`Claim 28 ............................................................................................. 29
`I.
`III. CONCLUSION ............................................................................................. 30
`
`
`
`
`
`
`-ii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) ............................................................................ 9
`DSS Tech. Mgmt., Inc. v. Apple Inc.,
`885 F.3d 1367 (Fed. Cir. 2018) .......................................................................... 25
`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) .......................................................................... 20
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) .......................................................................... 27
`TQ Delta, LLC v. CISCO Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ............................................................................ 8
`
`
`
`
`
`
`
`-iii-
`
`
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`EXHIBIT LIST
`
`Exhibit
`No.
`2001 Declaration of Jeremiah S. Helm in Support of Pro Hac Vice Motion
`2002 Declaration of William R. Zimmerman in Support of Pro Hac Vice
`Motion
`
`Description
`
`2003
`
`“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”)
`
`2004 Declaration of Dr. Vijay K. Madisetti
`
`2005 Curriculum Vitae of Dr. Vijay K. Madisetti
`
`2006
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01520, IPR2020-01537, IPR2020-01539 (April 22,
`2021)
`
`2007
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01520, IPR2020-01537, IPR2020-01539 (April 23,
`2021)
`2008 Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01536, IPR2020-01538 (April 24, 2021)
`2009 Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01536, IPR2020-01538 (April 25, 2021)
`
`2010
`
`Frank H. Netter, M.D., Section VI Upper Limb, Atlas of Human
`Anatomy (2003), Third Edition (“Netter”)
`
`2011 Reserved
`
`2012 Reserved
`
`2013 Declaration of Carol Peterson
`
`Exhibit List, Page 1
`
`
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`Exhibit
`No.
`
`Description
`
`2014
`
`2015
`
`2016
`
`2017
`
`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”)
`
`2018
`
`“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”)
`
`2022 Reserved
`
`2023
`
`Second Declaration of Carol Peterson [Served Only]
`
`2024
`
`Printout of Institute of Electronics, Information and Communication
`Engineers (IEICE) webpage,
`https://www.ieice.org/publications/proceedings/summary.php?iconf=ITC-
`CSCC&session_num=P1&number=P1-32&year=2008, last accessed June
`21, 2021 [Served Only]
`
`Exhibit List, Page 2
`
`
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`Exhibit
`No.
`2025 Reserved
`
`2026 Reserved
`
`Description
`
`2027
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01520, IPR2020-01536, IPR2020-01537, IPR2020-
`01538, IPR2020-01539 (September 18, 2021)
`
`Exhibit List, Page 3
`
`
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`I.
`INTRODUCTION
`Petitioner attempts to rewrite a flawed petition that misunderstood the cited
`
`references and basic optical principles.
`
` Petitioner’s new arguments are
`
`inconsistent with its prior positions, conflict with the cited references, and
`
`constitute a hindsight-driven reconstruction of Masimo’s claims.
`
`Petitioner asserts that Masimo did not respond to Petitioner’s three purported
`
`motivations to combine Mendelson ’799 and Ohsaki. Reply 1. That is incorrect.
`
`Petitioner’s first motivation was to “improve adhesion.” Id. Masimo directly
`
`responded, pointing out that Petitioner’s proposed combination has a shape that
`
`Ohsaki indicates would tend to slip. Patent Owner Response (“POR”) 22-28.
`
`Rather than substantively respond, Petitioner argues Ohsaki has no particular shape
`
`and that Ohsaki’s benefit of reduced slipping would apply to any shaped sensor
`
`used at any body location. Reply 7-9. That contradicts Ohsaki, which illustrates
`
`its sensor’s long shape and explains how even slightly changing the sensor’s
`
`orientation or measurement location results in slipping. Ex. 1009 Figs. 1, 2,
`
`3A-3B, ¶¶[0019], [0023]. Petitioner has no response to these Ohsaki teachings and
`
`thus simply ignores them. Petitioner’s first motivation fails.
`
`Masimo also responded to Petitioner’s second motivation, a purported
`
`motivation to “improve detection efficiency.” Reply 1. As Masimo explained,
`
`Petitioner admitted that adding a convex cover to Mendelson ’799’s sensor would
`
`-1-
`
`
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`direct light away from the sensor’s peripherally located detectors. POR 38-43.
`
`Thus, a POSITA would have understood that Petitioner’s proposed combination
`
`decreases optical signal strength and detection efficiency—the opposite of
`
`Petitioner’s alleged motivation. Thus, Petitioner’s second motivation fails.
`
`Petitioner’s third motivation was to “provide additional protection to the
`
`elements” in the housing. Reply 1. As Masimo explained, a POSITA would have
`
`viewed a convex surface as inferior to a flat surface due to an increased risk of
`
`scratching. POR 45-47. Petitioner now concedes the disadvantage of scratching
`
`and abandons the “protection” motivation. Reply 19.
`
`Accordingly, none of Petitioner’s asserted motivations demonstrate that a
`
`POSITA would have been led to Masimo’s innovative claimed technology. The
`
`Board should affirm the patentability of Masimo’s claims.
`
`II. ARGUMENT
`A. A POSITA Would Have Understood That Ohsaki’s Board Is
`Longitudinal And Even Small Changes Result In Slippage
`1. Ohsaki’s Board Is Longitudinal
`The petition argued Ohsaki’s rectangular board (blue, below) “would simply
`
`be placed over the components” of Mendelson ’799’s circular sensor. Pet. 32.1
`
`
`1 All emphasis is added unless otherwise noted.
`
`-2-
`
`
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`
`Ohsaki Fig. 1 (left) & Fig. 2 (right) (annotated, POR 12-13)
`
`Petitioner asserted the combination would result in a circular convex cover
`
`(below) over the optical components of Mendelson ’799’s sensor. Pet. 30-31.
`
`
`
`Petitioner’s Combination (Pet. 31)
`
`
`
`-3-
`
`
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`Petitioner never explained how or why a POSITA would change Ohsaki’s
`
`longitudinal board into a circular cover. That change would eliminate the
`
`longitudinal shape that Ohsaki indicates prevents slipping. POR 17-19, 23-28.
`
`Lacking any credible basis to change the shape of Ohsaki’s board, Petitioner
`
`asserts that Ohsaki’s board has no particular shape. Reply 7-9. Petitioner thus
`
`embraces the vague testimony of its declarant, Dr. Kenny, who refused to specify
`
`any particular three-dimensional structure for Ohsaki’s board or the proposed
`
`combination. See, e.g., Ex. 2008 57:19-58:16, 59:18-60:9, 213:17-214:11, 215:8-
`
`14. Dr. Kenny testified he did not know the shape of Ohsaki’s board and that the
`
`board could be “circular or square or rectangular.” Id. 68:21-70:1, 71:7-72:10; Ex.
`
`2027 162:15-20. Petitioner cannot allege that Ohsaki’s board has no geometry
`
`while also arguing the board “would simply be placed over the components” in
`
`Mendelson ’799’s circular sensor. Pet. 32.
`
`Regardless, Ohsaki refutes Petitioner’s position. Ohsaki describes its
`
`detecting element (2) as having one side (Figure 2, below left in purple) longer
`
`than the other (Figure 1, below center in purple). POR 17-19; Ex. 1009 ¶[0019].
`
`-4-
`
`
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`
`
`
`Ohsaki Fig. 2 (left) & Fig. 1 (center) (Ex. 1009 ¶[0019], color added)
`(showing long and short directions, respectively);
`Plan view illustrating board’s shape (right) (Ex. 2004 ¶¶38-41)
`
`Ohsaki’s Figure 2 (above left) shows the “long” side of the detecting element (2)
`
`(purple) and illustrates the board (8) (blue) spanning most of that “long” side.
`
`Ohsaki’s Figure 1 (above center) shows the “short” side of the detecting element
`
`(2) (purple) and illustrates the board (8) (blue) as spanning only a small part of that
`
`“short” side. A POSITA would have concluded that Ohsaki’s board (8) and
`
`detecting element (2) both have a longitudinal shape (exemplified above right).
`
`POR 17-19; Ex. 2004 ¶¶38-41.
`
`Petitioner argues “Ohsaki never specifies that FIGS. 1 and 2 are different
`
`views of the same device.” Reply 9. But Ohsaki never describes Figures 1 and 2
`
`as illustrating different devices and instead discusses them in connection with each
`
`other. See Ex. 1009 ¶¶[0016]-[0027]. Regardless, even considered separately,
`
`Figures 1 and 2 illustrate a longitudinal board. Figure 1 shows a convex board that
`
`is much thinner than the “short” side of a detecting element. Figure 2 shows a
`
`convex board nearly the same length as a detecting element’s “long” side. Ex.
`
`-5-
`
`
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`2004 ¶¶38-41. Petitioner cannot maintain these figures illustrate no geometry at
`
`all for the board. Reply 7-10.
`
`Ohsaki even explains why its sensor’s longitudinal shape and intended
`
`placement are important. Ohsaki teaches that even small changes in its sensor’s
`
`orientation or body location result in “a tendency to slip.” Ex. 1009 ¶¶[0019],
`
`[0023], Figs. 3A-3B. Masimo and its declarant, Dr. Madisetti, explained that
`
`Ohsaki’s shape and intended placement take advantage of the forearm/wrist area’s
`
`particular bone structure to prevent slipping. POR 24-26; Ex. 2004 ¶¶53-54. As
`
`illustrated below, Ohsaki’s longitudinal structure sits within the forearm/wrist
`
`area’s anatomy when properly oriented (below left) but tends to slip when rotated
`
`away from this orientation (below right). Id.
`
`Interaction of Ohsaki’s longitudinal structure with wrist/forearm (Ex. 2004 ¶53)
`
`Ohsaki expressly states that aligning its longitudinal shape across the wrist
`
`(above right)—as opposed to up and down the arm (above left)—results in “a
`
`
`
`-6-
`
`
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`tendency to slip.” Ex. 1009 ¶[0019]. As Dr. Madisetti explained, changing
`
`Ohsaki’s longitudinal shape to a circular structure, as Petitioner proposes, would
`
`result in slippage because a circular sensor would not fit into the anatomical
`
`opening in the wrist/forearm. Ex. 2004 ¶¶55-56; POR 26-28. Petitioner has no
`
`answer to these arguments.2
`
`2.
`
`Petitioner’s Additional Arguments Regarding Ohsaki Are
`Unpersuasive
`Petitioner’s
`additional
`
`arguments
`
`regarding Ohsaki’s
`
`shape
`
`are
`
`unpersuasive. First, Petitioner argues there is nothing “requiring” Ohsaki’s board
`
`to have a longitudinal shape. Reply 9. But the issue is not what Ohsaki requires—
`
`the issue is what Ohsaki teaches to a POSITA. Ohsaki teaches that its longitudinal
`
`shape is necessary to prevent slipping, directly undermining Petitioner’s alleged
`
`motivation. Indeed, Ohsaki teaches that even small changes in sensor orientation
`
`or measurement location result in slippage. Ex. 1009 ¶¶[0019], [0023]; POR 23-
`
`
`2 Dr. Kenny admitted a POSITA would have considered anatomical details
`
`“such as…the illustrations that Dr. Madisetti provided” when designing a convex
`
`surface that prevents slipping, but included no such anatomical figures with any of
`
`his opinions. Ex. 2027 248:18-249:6; 254:17-255:11. Dr. Kenny likewise agreed
`
`user anatomy plays a role in preventing motion. Id. 158:16-159:8.
`
`-7-
`
`
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`28. Thus, Ohsaki would have taught a POSITA that Petitioner’s proposed circular
`
`convex cover would not improve adhesion.
`
`Second, Petitioner asserts “nowhere does Ohsaki describe the ‘translucent
`
`board 8’ and ‘detecting element 2’ as having the same shape.” Reply 7. But
`
`Masimo never argued Ohsaki discloses that its “translucent board 8” and
`
`“detecting element 2” must have an identical shape. Masimo explained why a
`
`POSITA would understand Ohsaki’s board has a longitudinal shape and why a
`
`POSITA would not have been motivated to use a longitudinally shaped board in
`
`Petitioner’s proposed combination that has a circular structure. POR 17-19, 23-28.
`
`Third, Petitioner retreats to generic “inferences and creative steps” to allege
`
`obviousness without identifying what those inferences and creative steps might be
`
`or how they would yield any benefit. Reply 4. Unsupported and conclusory
`
`arguments “[u]ntethered
`
`to any
`
`supporting evidence, much
`
`less any
`
`contemporaneous evidence, … ‘fail to provide any meaningful explanation for why
`
`one of ordinary skill in the art would be motivated to combine these references at
`
`the time of this invention.’” TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352,
`
`1362 (Fed. Cir. 2019).
`
`Fourth, Petitioner argues “a person of ordinary skill is also a person of
`
`ordinary creativity,” and Ohsaki’s features need not be “bodily incorporated.”
`
`Reply 6. But putting aside Petitioner’s failure to explain how a POSITA would
`
`-8-
`
`
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`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`place Ohsaki’s longitudinal board onto Mendelson ’799’s circular sensor,
`
`Petitioner’s resulting combination eliminates the longitudinal directionality
`
`Ohsaki describes as important to avoid slipping. POR 23-28.
`
`Fifth, Petitioner claims Masimo argued it “is not the ‘convex surface’ that
`
`improves adhesion” but instead the “‘longitudinal shape.’” Reply 7. In reality,
`
`Masimo argued a POSITA would have understood Ohsaki’s convex board must
`
`also have a longitudinal shape oriented up-and-down the watch-side of the user’s
`
`wrist/forearm. POR 17-19, 23-28. Ohsaki itself explains that a sensor positioned
`
`across the user’s wrist “has a tendency to slip off.” Ex. 1009 ¶[0019]. Ohsaki also
`
`explains that a convex surface on the palm-side of the user’s wrist “has a tendency
`
`to slip.” Id. ¶[0023], Figs. 3A-3B.3 A “tendency to slip” is the opposite of
`
`Petitioner’s asserted motivation of improving adhesion. “An inference of
`
`nonobviousness is especially strong where the prior art’s teachings undermine the
`
`very reason being proffered as to why a person of ordinary skill would have
`
`combined the known elements.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`
`Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009).
`
`
`3 Both declarants agree that Figures 3A-3B (discussed in Ohsaki ¶¶[0023]-
`
`[0024]) compare a convex surface’s slipping on the back- and palm-side of the
`
`wrist, respectively. See Ex. 2008 157:5-158:1, 158:15-20; Ex. 2004 ¶57.
`
`-9-
`
`
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`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`Sixth, Petitioner suggests Masimo’s arguments are limited to just the shape
`
`of Ohsaki’s board. Reply 7-10. But Masimo additionally argued the circular shape
`
`of Petitioner’s combination leads to slipping. As illustrated below, Petitioner’s
`
`proposed circular sensor (and its convex surface) will negatively interact with the
`
`radius and ulna, resulting in slipping. POR 26-28; Ex. 2004 ¶¶55-57.
`
`
`
`Ohsaki expressly states that its sensor helps prevent slipping when aligned with the
`
`user’s arm but nevertheless slips when positioned across the user’s wrist. Ex. 1009
`
`¶[0019]; see also id. ¶¶[0006], [0024]. As Masimo explained, Petitioner’s
`
`proposed circular sensor cannot avoid anatomical interactions that result in
`
`slipping. POR 26-28. None of Petitioner’s arguments regarding the shape and
`
`orientation of Ohsaki’s board overcome Ohsaki’s express disclosures.
`
`B.
`
`Petitioner Incorrectly Asserts That Ohsaki’s Board Prevents Slipping
`“At Virtually Any Measurement Location”
`Petitioner also fails to overcome Ohsaki’s express disclosure that Ohsaki
`
`must be used on the wrist’s watch-side to prevent slipping. Ex. 1009 ¶[0023].
`
`-10-
`
`
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`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`Petitioner argues that Ohsaki’s benefits are not specific to a particular side of the
`
`wrist. Reply 10-11. But Ohsaki teaches the opposite: small changes in the
`
`measurement location, including from the wrist’s watch-side to the palm-side,
`
`cause “a tendency to slip.” Ex. 1009 ¶[0023]. Ohsaki illustrates this slipping in
`
`Figures 3A-3B, which the petition and reply both ignore. Ohsaki repeatedly
`
`emphasizes its “sensor is worn on the back side of a user’s wrist.” Id. Abstract; see
`
`also id. Title, ¶¶[0008], [0009], [0014], [0016], [0023]-[0024].4
`
`A POSITA would have believed that the wrist’s watch-side would be an
`
`unsuitable measurement location for Mendelson ’799’s oximeter because the
`
`wrist’s watch-side provides a weak and unpredictable signal and is distant from the
`
`wrist’s palm-side arteries. POR 22-23, 32-38. Mendelson’s work demonstrated
`
`the wrist’s watch-side is a particularly unsuitable measurement location for a
`
`circular oximeter. See, e.g., Ex. 2003 at 3-4; POR 32-33. Petitioner fails to show
`
`why a POSITA starting with Mendelson ’799’s circular oximeter would look to
`
`
`4 Moreover, contrary to Petitioner’s argument that Ohsaki’s sensor can be
`
`used anywhere, Dr. Kenny testified it would not “be practical to place [Ohsaki’s]
`
`elements on the forehead or the earlobe or the leg, I think that’s obvious.” Ex.
`
`2027 140:14-141:16.
`
`-11-
`
`
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`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`Ohsaki’s board. As discussed, Ohsaki explains that its board only prevents
`
`slipping in a particular orientation on the wrist’s watch-side.5
`
`Petitioner acknowledges the difficulty of performing pulse oximetry on the
`
`watch-side but argues that difficulty would have made a POSITA even more
`
`motivated to use Ohsaki’s convex cover. Reply 11. But Petitioner never explains
`
`why a POSITA would have been motivated—contrary to conventional wisdom—to
`
`use Mendelson ’799’s oximeter on the watch-side of the wrist in the first place.
`
`POR 32-38. A POSITA would have believed that oximetry measurements at that
`
`location, far from the wrist’s arteries, would be weak, noisy, and require
`
`considerable pressure even to discern a signal. Id. Ohsaki’s design helps reduce
`
`movement-related artifacts, but Ohsaki does not purport to improve a weak and
`
`barely discernable signal. Compare Ex. 1009 Fig. 4A with Fig. 4B. Moreover, a
`
`weak signal would be a significant issue because, as discussed below, Petitioner’s
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`proposed combination reduces the signal strength further by placing a convex
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`surface over an oximeter with detectors at the oximeter’s periphery. POR 38-43.
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`5 Neither Dr. Kenny nor Petitioner analyzed Ohsaki’s Figures 3A-3B.
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`Instead, Petitioner relies on Ohsaki’s paragraphs 15, 17, 25, and Figures 4A-4B.
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`Reply 11. But Dr. Kenny confirmed those paragraphs and figures—unlike Figures
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`3A-3B—do not address Ohsaki’s measurement location. Ex. 2027 136:12-140:13.
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`-12-
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`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`Petitioner asserts a POSITA would have “understood from Ohsaki that…a
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`convex cover would have prevented slippage of Mendelson-’799’s sensor when
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`placed, for example, on either side of a user’s wrist or forearm.” Reply 12. But
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`Ohsaki states the opposite—that a convex surface “has a tendency to slip” on the
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`wrist’s palm-side. Ex. 1009 ¶[0023], Figs. 3A-3B (illustrating slipping on the
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`wrist’s palm-side). Furthermore, another of Petitioner’s cited references confirms
`
`that a flat surface—not a convex surface—improves adhesion on the palm side of
`
`the wrist. See, e.g., Ex. 1006 ¶[0013] (flat “plate-like member…makes it possible
`
`to improve adhesion between the senor and the wrist”); see also id. ¶¶[0026],
`
`[0030], [0034] (flat plate improves adhesion), Fig. 1B (illustrating flat surface); Ex.
`
`2004 ¶82. Petitioner ignores these teachings and evidence.
`
`Petitioner instead cites, for the first time, Ohsaki’s claims. Reply 10.
`
`Petitioner first points to Ohsaki’s claim 1, which refers to the “back side of a user’s
`
`wrist or a user’s forearm.” Id. (emphasis in original). But Ohsaki discloses a
`
`“wristwatch-type” device (Ex. 1009 Title), and thus the “forearm” refers to the
`
`same anatomical junction—not some other measurement location. POR 27-28, 32.
`
`A POSITA would have understood Ohsaki’s claim 1 refers to the backhand side
`
`(i.e., watch-side) of (1) the wrist or (2) the adjacent portion of the forearm
`
`connected to the wrist where the sensor fits between the bones of the
`
`forearm/wrist. Ex. 2004 ¶¶56-57. Petitioner also points to Ohsaki’s claim 3 and
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`-13-
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`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`states that the claim does not mention “a backside of the wrist or forearm.” Reply
`
`10-11. But Ohsaki’s claim 3 likewise does not mention a convex surface and is
`
`thus irrelevant.
`
`As discussed, Ohsaki expressly discloses that a sensor with a convex surface
`
`tends to slip on the wrist’s palm-side—directly undermining Petitioner’s asserted
`
`motivation to combine. Ex. 1009 ¶[0023], Figs. 3A-3B.6 Indeed, there is no
`
`teaching in Ohsaki that a convex surface prevents slipping at any location other
`
`than the watch-side of the wrist/forearm. POR 23-28. Ohsaki’s overall disclosure
`
`would have dissuaded a POSITA
`
`from pursuing Petitioner’s proposed
`
`combination.
`
`
`6 Ohsaki’s other claims similarly support Masimo’s position. For example,
`
`claims 1 and 2 specify a convex surface used on the back side of the wrist or
`
`forearm. Ex. 1009 Claims 1, 2. Claim 6 requires a longitudinal shape and
`
`orientation incompatible with Petitioner’s proposed circular sensor. See id.
`
`Claims 6 (depending from claim 5), 5 (requiring linear sensor arranged “in a
`
`longitudinal direction of the user’s arm”).
`
`-14-
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`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`C. A Convex Cover Does Not Enhance Mendelson ’799’s Light-Gathering
`Ability
`1.
`Petitioner Contradicts Its Admissions And Evidence
`Petitioner’s proposed combination also makes no sense because it places a
`
`convex cover over Mendelson ’799’s peripherally located detectors. As Masimo
`
`explained, a convex cover would direct light away from Mendelson ’799’s
`
`peripheral detectors and decrease optical signal strength—the opposite of
`
`Petitioner’s asserted motivation of improving detection efficiency. POR 38-43.
`
`There should be no dispute on this. As Masimo explained (POR 38-43), Petitioner
`
`and Dr. Kenny both admitted a convex cover condenses light towards the sensor’s
`
`center and away from the sensor’s periphery. Petitioner illustrated this principle:
`
`
`Petitioner’s Illustration (IPR2020-01520, Ex. 2019 at 45)
`
`Dr. Kenny confirmed that when light enters a convex surface, “the incoming light
`
`is ‘condensed’ toward the center.” Ex. 2020 at 69-70. Dr. Kenny also confirmed
`
`that the convex surface would cause “more light in the center than at the outer
`
`-15-
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`
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`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`edge in this example.” Ex. 2006 204:1-13. Dr. Kenny agreed, “that’s because
`
`light’s being directed towards the center and away from the edge….” Id. 204:14-
`
`20; Ex. 2004 ¶¶72-76.
`
`None of Petitioner’s reply arguments overcome these admissions. First,
`
`Petitioner mischaracterizes Masimo’s position as asserting “that a convex cover
`
`would direct light to a point in the center of the combined sensor.” Reply 13. But
`
`Masimo never argued that all incoming light condenses to a single point. Instead,
`
`Masimo explained that a convex surface would direct relatively more light towards
`
`the center and away from Mendelson ’799’s peripheral detectors. POR 38-41.
`
`Second, Petitioner dismisses the ’554 Patent’s Figure 14B as merely
`
`illustrating the path of light that is “collimated (i.e., traveling paths parallel to one
`
`another)” and not “an accurate representation of light that has been reflected from a
`
`tissue measurement site.” Reply 14-15. But Figure 14B illustrates how a POSITA
`
`would view a convex surface as generally directing light toward the sensor’s
`
`center. POR 39-40; Ex. 2004 ¶74.
`
`Third, Petitioner cites a new figure and argues that for collimated light,
`
`“focusing of light at the center only occurs if the light beam happens to be
`
`perfectly aligned with the axis of symmetry of the lens.” Reply 15. But, again,
`
`Masimo never argued that all light focuses at the center. Moreover, Petitioner
`
`states that the backscattered light at issue would not be “collimated” and instead
`
`-16-
`
`
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`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`would be diffuse light that enters the lens from many directions. Reply 15-16; Ex.
`
`2027 37:21-38:16. Light entering the convex surface from all angles would, on
`
`average, result in more light directed towards the center and less light at the
`
`periphery—as compared to a flat surface—and therefore less light at the
`
`peripherally located detectors. Ex. 2004 ¶¶71-75. Furthermore, Petitioner’s figure
`
`ignores the structure of Petitioner’s proposed combination. Petitioner’s figure
`
`(below left) attempts to show the green rays will converge at a focal point away
`
`from the center of the lens:
`
`
`
`Petitioner’s “focal” figure (left, Reply 15)
`Petitioner’s “focal” figure (center, Reply 15) (annotated by Masimo)
`Petitioner’s proposed combination (right, Pet. 31)
`
`But unlike Petitioner’s figure, Petitioner’s proposed combination (above right)
`
`places detectors near the cover. As shown above (center), examining the light
`
`paths at points near the lens (as shown by the dotted line) reveals that the left green
`
`-17-
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`
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`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`ray diverges to the right and closer to the center of the lens. Likewise, the right
`
`green ray diverges to the left and closer to the center of the lens. Thus, Petitioner’s
`
`figure confirms a convex surface will direct light toward the center of Petitioner’s
`
`combination.
`
`Fourth, Petitioner asserts that, because light “diffusing through tissue”
`
`reaches the convex surface “from various random directions and angles,” some
`
`“light rays that otherwise would have missed the circular active detection area are
`
`instead directed toward that area.” Reply 16-17. But none of Petitioner’s
`
`accompanying citations support that assertion. Id. Furthermore, as another of
`
`Petitioner’s references explains, the circle of backscattered light’s intensity
`
`“decreases in direct proportion to the square of the distance between the
`
`photodetector and the LEDs.” Ex. 1017 at 2; Ex. 2027 49:17-50:13, 57:10-22.
`
`Thus, any signal strength from light redirected from the edge would be weak and
`
`fail to compensate for the much stronger lost signal strength from light directed
`
`towards the center. Id.
`
`Notably, while Petitioner asserts numerous new and complex optical
`
`theories, Petitioner never explains why or how a POSITA would have known or
`
`considered those theories, much less arrived at Masimo’s claims. Petitioner never
`
`disputes its level of skill (1) requires no coursework, training, or experience with
`
`optics or optical physiological monitors; (2) requires no coursework, training, or
`
`-18-
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`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`experience in physiology; and (3) focuses on data processing and not sensor
`
`design. POR 10.7 Rather than consider Petitioner’s various complex theories, a
`
`POSITA would have understood and applied the straightforward understanding
`
`that a convex surface condenses light toward the center. If anything, Petitioner’s
`
`new arguments emphasizing the complexity of optics undermine Petitioner’s
`
`obviousness arguments. Id. 41-43. Petitioner fails to show its theories would have
`
`motivated a POSITA to arrive at Petitioner’s flawed combination.
`
`2.
`A POSITA Would Have Avoided Ohsaki’s Air Gaps
`Ohsaki discloses that its convex surface creates air gaps, which Mendelson
`
`’799 teaches to avoid. POR 43-45. Petitioner originally misidentified Ohsaki’s air
`
`gaps as part of Ohsaki’s board. Id. But Dr. Kenny confirmed Ohsaki’s figures
`
`show air gaps at the edge of the convex board. Ex. 2009 376:3-377:5. Dr.
`
`Madisetti also confirmed Ohsaki teaches its convex surface creates air gaps. Ex.
`
`2004 ¶¶77-80. Petitioner does not dispute that such air gaps would dissuade a
`
`POSITA from modifying Mendelson ’799. Instead, Petitioner (1) contradicts Dr.
`
`Kenny’s admissions, (2) suggests Ohsaki discloses no air gaps, and (3)
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