`
`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APPLE INC.
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner
`________________
`
`Case IPR2020-01539
`U.S. Patent 10,588,554
`________________
`
`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
`
`1
`
`

`

`
`
`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
`
`E. 
`
`F. 
`
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 7 
`I. 
`II.  Ground 1 Establishes Obviousness ................................................................. 7 
`A.  Ohsaki does not describe, much less require, its translucent board 8 to
`be “rectangular” in shape. ................................................................... 13 
`B.  A POSITA would have recognized the benefits of Ohsaki’s teachings
`when applied to Aizawa’s sensor. ....................................................... 16 
`C.  Modifying Aizawa’s sensor to include a convex cover as taught by
`Ohsaki enhances the sensor’s light-gathering ability. ......................... 20 
`The convex cover enhances the light-gathering ability of
`1. 
`Aizawa’s sensor ........................................................................ 20 
`Masimo ignores the well-known principle of reversibility ................. 20 
`i. 
`ii.  Masimo ignores the behavior of scattered light in a reflectance-type
`pulse sensor .................................................................................................... 22 
`A POSITA would have been motivated by a convex cover’s
`2. 
`ability to direct light “towards the center.” ............................... 26 
`D.  A POSITA would have been motivated to select a convex cover to
`protect the optical elements. ................................................................ 28 
`A POSITA would have been motivated to add a second emitter to
`Aizawa. ................................................................................................ 28 
`A POSITA would have enabled the combined sensor of Aizawa,
`Inokawa, and Ohsaki to communicate wirelessly with a handheld
`computing device, based on the teachings of Mendelson-2006.......... 30 
`G.  A POSITA would have expected success in performing the
`combination ......................................................................................... 35 
`The dependent claims are rendered obvious by Aizawa, Inokawa,
`Ohsaki, and Mendelson-2006 .............................................................. 35 
`III.  Ground 2 Establishes Obviousness ............................................................... 36 
`A. 
`Claims 11, 17 ....................................................................................... 37 
`B. 
`Claim 13 .............................................................................................. 37 
`IV.  Conclusion ..................................................................................................... 38 
`
`
`
`H. 
`
`
`
`2
`
`

`

`
`
`EXHIBITS
`
`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
`
`APPLE-1001
`
`US Patent No. 10,588,553
`
`APPLE-1002
`
`File History for U.S. Patent No. 10,588,553
`
`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-1014-1015
`
`RESERVED
`
`APPLE-1016
`
`US Patent No. 3,789,601 (“Bergey”)
`
`3
`
`

`

`
`APPLE-1017
`
`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
`
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic Institute,
`Biomedical Engineering Program, Worcester, MA 01609;
`Association for the Advancement of Medical Instrumentation,
`vol. 22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`
`APPLE-1018
`
`RESERVED
`
`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
`
`RESERVED
`
`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
`
`APPLE-1033
`
`Telephonic Status Conference, Masimo v. Apple et al., Case
`8:20-cv-00048, Paper 78 (July 13, 2020)
`
`4
`
`

`

`
`APPLE-1034
`
`APPLE-1035
`
`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
`
`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
`
`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)
`
`APPLE-1044
`
`“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”)
`
`5
`
`

`

`
`APPLE-1045
`
`APPLE-1046
`
`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
`
`“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 Trans-
`actions 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)
`
`APPLE-1050
`
`RESERVED
`
`APPLE-1051
`
`U.S. Pub. No. 2007/0093786 (“Goldsmith”)
`
`
`
`
`
`6
`
`

`

`
`
`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
`
`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
`
`claims 1-28 (“the Challenged Claims”) of the ’554 patent unpatentable. APPLE-
`
`1047, passim.
`
`II. Ground 1 Establishes Obviousness
`As Dr. Kenny explained previously, “one of ordinary skill would have found
`
`it obvious to modify the [Aizawa] sensor’s flat cover…to include a
`
`lens/protrusion…similar to Ohsaki’s translucent board 8, so as to [1] improve
`
`adhesion between the user’s wrist and the sensor’s surface, [2] improve detection
`
`efficiency, [3] and protect the elements within the sensor housing.” APPLE-1003,
`
`¶¶94-102; APPLE-1047, ¶7. A POSITA would have found it obvious in view of
`
`Inokawa to include an additional LED in Aizawa’s sensor, to [1] “improve the
`
`detected pulse wave by distinguishing between blood flow detection and body
`
`movement, in addition to [2] enabling wireless communication between the sensor
`
`and a base station”. APPLE-1003, ¶¶110-120; APPLE-1047, ¶7.
`
`7
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`

`

`
`
`Rather than attempting to rebut Dr. Kenny’s points, Masimo offers, through
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`its witness Dr. Madisetti, factually flawed and legally irrelevant arguments.
`
`APPLE-1047, ¶¶8-9.
`
`Specifically, Masimo contends that “Ohsaki and Aizawa employ different
`
`sensor structures (rectangular versus circular) for different measurement locations
`
`(back side versus palm side of the wrist), using different sensor surface shapes
`
`(convex versus flat) that are tailored to those specific measurement locations” and
`
`from this concludes that a POSITA would not “have been motivated to combine
`
`theses references,” and would not have “reasonably expected such a combination
`
`to be successful.” IPR2020-01539 Pap. 23 (“POR”), 1-4. Masimo also contends
`
`that “[a]dding another LED complicates Aizawa’s sensor and increases power
`
`consumption” in addition to “eliminat[ing] the ability to take and display real-time
`
`measurements.” Id.
`
`In this way, the POR avoids addressing the merits of the combinations
`
`advanced in Apple’s Petition, and ignores the “inferences and creative steps” that a
`
`POSITA would have taken when modifying Aizawa’s sensor to achieve the
`
`benefits taught by Ohsaki and Inokawa. APPLE-1047, ¶13; 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 sensor applied to a particular body location, and a
`
`8
`
`

`

`
`POSITA would not have understood those benefits as being so limited. APPLE-
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`1047, ¶10. Instead, Ohsaki shows and attributes the prevention of slippage
`
`afforded by use of its board (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 user’s skin”1 when the sensor is worn. APPLE-1003, ¶¶154-161;
`
`APPLE-1009, [0015], [0017], [0025], FIGS. 1, 2, 4A-4B; APPLE-1047, ¶10.
`
`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
`
`
`
` 1
`
` Unless otherwise noted, emphases are added.
`
`9
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`

`

`
`describing the board’s advantages, Ohsaki contrasts a “convex detecting surface”
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`from a “flat detecting surface,” explaining that “if the board “has a convex
`
`surface…variation of the amount of the reflected light…that reaches the light
`
`receiving element 7 is suppressed.” APPLE-1003, ¶¶94-102; APPLE-1009,
`
`[0015], [0025]; APPLE-1047, ¶11.
`
`Thus, a POSITA would have understood that a protruding convex cover
`
`reduces the adverse effects of user movement on signals obtainable by the
`
`photodetectors within Aizawa’s sensor, which like Ohsaki’s light receiving
`
`elements, detect light reflected from user tissue. APPLE-1047, ¶12; APPLE-1003,
`
`¶¶94-102, 154-161; APPLE-1009, [0015], [0017], [0025], FIGS. 1, 2, 4A, 4B; see
`
`also APPLE-1006, [0012], [0013], [0023], [0024], [0026], [0030], [0034], FIGS.
`
`1(a), 1(b).
`
`As Dr. Kenny explains, the POSITA would have found it obvious to
`
`improve Aizawa’s sensor 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 modifying Aizawa’s cover to feature a convex detecting
`
`10
`
`

`

`
`surface.2 APPLE-1047, ¶¶13-14; KSR, 550 U.S. at 418; see also APPLE-1008,
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`¶¶14-15, FIG. 1; APPLE-1024, [0012], [0024], [0033], [0035], FIG. 6 (reproduced
`
`below).
`
`
`
`
`
`APPLE-1006, FIG. 1(b)(annotated).
`And, contrary to Masimo’s contentions, the POSITA would not have been
`
`dissuaded from achieving those benefits by a specific body location associated
`
`
`
` 2
`
` Notably, Ohsaki nowhere depicts or describes its cover as rectangular. APPLE-
`
`1047, ¶14; 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
`
`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).
`
`
`
`11
`
`

`

`
`with Ohsaki’s sensor. POR, 16-18, 30-42; APPLE-1047, ¶15. Indeed, a POSITA
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`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. APPLE-1047, ¶15; APPLE-1009, [0025], Claim 3, FIGS 4A, 4B; see
`
`also APPLE-1019, 91.
`
`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 disregard well-established
`
`principles of patent law. APPLE-1047, ¶¶7-15. 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, 1333 (Fed. Cir. 2020); KSR,
`
`550 U.S. at 418.
`
`
`
`12
`
`

`

`
`
`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
`A. Ohsaki does not describe, much less require, its
`translucent board 8 to be “rectangular” in shape.
`The Petition demonstrates that a POSITA would have modified Aizawa in
`
`view of Ohsaki such that Aizawa’s cover “would include a convex surface,
`
`improving adhesion between a subject’s wrist and a surface of the sensor.” Pet.,
`
`34-38; APPLE-1003, ¶¶[0094]-[0099]. Ohsaki (at [0025]) describes that the
`
`“convex surface of the translucent board 8” is responsible for this improved
`
`adhesion. See id.; APPLE-1047, ¶16.
`
`Masimo argues that it is not the “convex surface” that improves adhesion
`
`(i.e., prevents slippage) in Ohsaki, but instead a supposed “longitudinal shape” of
`
`“Ohsaki’s translucent board [8].” See POR, 21-27 . But the portion of Ohsaki
`
`cited does not include any reference to board 8. See APPLE-1009, [0019];
`
`APPLE-1047, ¶17. Instead, Ohsaki ascribes this “longitudinal” shape to a different
`
`component: “detecting element 2.” See id. Ohsaki never describes the
`
`“translucent board 8” as “longitudinal,” and nowhere describes “translucent board
`
`8” and “detecting element 2” as having the same shape. See generally APPLE-
`
`1009; APPLE-1047, ¶17. In fact, Ohsaki’s FIG. 2 (reproduced below) shows that
`
`translucent board 8 (annotated yellow) is not coextensive with the entire tissue-
`
`facing side of detecting element 2 (annotated green). APPLE-1047, ¶17.
`
`13
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`

`
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`APPLE-1009, FIG. 2 (annotated)
`
`
`
`Based on its unsupported contention that translucent board 8 has a “very
`
`pronounced longitudinal directionality”, Masimo concludes that the translucent
`
`board 8 has a “rectangular” shape that is allegedly incompatible with Aizawa. See
`
`POR, 17-18. But Ohsaki never describes translucent board 8, or any other
`
`component, as “rectangular.” See generally APPLE-1009; APPLE-1047, ¶18.
`
`Attempting to confirm its false conclusion, Masimo asserts that “Ohsaki
`
`illustrates two cross-sectional views of its board that confirm it is rectangular.”
`
`POR, 16-17 . Masimo identifies these “two cross-sectional views” as FIGS. 1 and
`
`14
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`

`

`
`2, and infers the supposed “rectangular shape” of the translucent board 8 based on
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`FIG. 1 showing the “short” side of the device, and FIG. 2 showing the “long” side
`
`of the same device. See POR, 16-18. But, according to Ohsaki, FIG. 2 is “a
`
`schematic diagram,” not a cross-sectional view, and Ohsaki never specifies that
`
`FIGS. 1 and 2 are different views of the same device. APPLE-1009, [0013].
`
`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, ¶19; Hockerson-Halberstadt, Inc. v. Avia Group
`
`Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000). Ohsaki certainly does not include any
`
`disclosure “requiring” this particular shape. See id.
`
`Section B.1 of the POR presents multiple arguments with respect to Ground
`
`1 that are premised on Ohsaki requiring the translucent board 8 to be
`
`“rectangular.” See POR, 20-29. Because Ohsaki requires no such shape for the
`
`translucent board 8, these arguments fail. APPLE-1047, ¶¶19-20.
`
`In addition, even if Ohsaki’s translucent board 8 were somehow understood
`
`to be rectangular, obviousness does not require “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 modifying Aizawa
`
`to feature a light permeable protruding convex cover to obtain the benefits
`
`15
`
`

`

`
`attributed to such a cover by Ohsaki. Facebook, 953 F.3d at 1333; KSR, 550 U.S.
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
`
`at 418; APPLE-1047, ¶21.
`
`B. A POSITA would have recognized the benefits of
`Ohsaki’s teachings when applied to Aizawa’s sensor.
`Masimo contends that Ohsaki’s convex board “only improves adhesion
`
`when used on the back (i.e., watch) side of the wrist,” that “Aizawa requires its
`
`sensor be positioned on the palm side of the wrist,” and concludes that “[a]
`
`POSITA seeking to improve adhesion of Aizawa’s sensor would not incorporate a
`
`feature that only improves adhesion at a different and unsuitable measurement
`
`location.” POR, 30-36. But Ohsaki does not describe that its sensor can only be
`
`used at a backside of the wrist. APPLE-1047, ¶22. Instead, at most, Ohsaki
`
`describes such an arrangement with respect to a preferred embodiment. APPLE-
`
`1047, ¶22; APPLE-1009, [0019].
`
`Indeed, Ohsaki’s claim language reinforces that Ohsaki’s description would
`
`not have been understood as so limited. APPLE-1047, ¶23. For example,
`
`Ohsaki’s claim 1 recites “the detecting element is…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 recites “the detecting element is…worn on a user’s
`
`wrist or a user’s forearm,” without even mentioning a backside of the wrist or
`
`forearm. See also APPLE-1009, Claims 4-8. A POSITA would have understood
`
`16
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`

`
`this language to directly contradict Masimo’s assertion that Ohsaki discloses a
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`“very limited benefit” and that “Ohsaki repeatedly specifies that its sensor ‘is worn
`
`on the back side of a user’s wrist corresponding to the back of the user’s hand.’”
`
`POR, 26; APPLE-1047, ¶23. Thus, 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, ¶23; APPLE-1009, [0025],
`
`FIGS. 4A, 4B.
`
`Section B.2 of the POR presents several arguments with respect to Ground 1
`
`that are premised on Ohsaki requiring the detecting element to be worn on a back
`
`side of a user’s wrist or a user’s forearm. See POR, 30-42. Because Ohsaki
`
`requires no such location for the translucent board 8, these arguments fail.
`
`APPLE-1047, ¶24.
`
`Moreover, even assuming for the sake of argument that a POSITA would
`
`have understood Aizawa’s sensor as being limited to placement on the palm side of
`
`the wrist, and would have understood Ohsaki’s sensor’s “tendency to slip” when
`
`arranged on the front side as informing consideration of Ohsaki’s teachings with
`
`respect to Aizawa, that would have further motivated the POSITA to implement a
`
`light permeable convex cover in Aizawa’s sensor, to improve detection efficiency
`
`of that sensor when placed on the palm side. APPLE-1047, ¶25; POR, 30-42;
`
`APPLE-1009, [0015], [0017], [0023], [0025], FIGS. 1, 2, 3A, 3B, 4A, 4B.
`
`17
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`

`
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`When describing advantages associated with its translucent board, Ohsaki
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`explains with reference to FIGS. 4A and 4B (reproduced below) that “if the
`
`translucent board 8 has a flat surface, the detected pulse wave is adversely affected
`
`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, ¶¶96, 157; APPLE-1009,
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`[0015], [0017], [0025].
`
`APPLE-1009, FIGS. 4A, 4B.
`
`
`
`Contrary to Masimo’s contentions, a POSITA would not have understood
`
`these benefits of a convex surface over a flat surface to be limited to one side or the
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`other of the user’s wrist. APPLE-1047, ¶¶26-27; APPLE-1009, [0023]-[0025].
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`Rather, a POSITA would have understood that, by promoting “intimate contact
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`with the surface of the user’s skin,” a light permeable convex cover would have
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`increased adhesion and reduced slippage of Aizawa’s sensor when placed on the
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`palm side of a user’s wrist, with associated improvements in signal quality.
`
`APPLE-1047, ¶27; APPLE-1009, [0015], [0017], [0025]; FIGS. 1, 2, 4A, 4B,
`
`Claims 3-8; see also APPLE-1019, 87, 91. Indeed, a POSITA would have
`
`recognized that modifying Aizawa’s flat plate to feature a convex protruding
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`surface, as taught by Ohsaki, would have furthered Aizawa’s stated goal of
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`“improv[ing] adhesion between the sensor and the wrist” to “thereby further
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`improve the detection efficiency.” APPLE-1006, [0013], [0026], [0030], [0034];
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`APPLE-1047, ¶27.
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`Further, the POSITA would have been fully capable of employing inferences
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`and creative steps when improving Aizawa based on Ohsaki’s teachings, and
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`would have expected success when applying those teachings. APPLE-1047, ¶28;
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`KSR, 550 U.S. at 418; In re Keller, 642 F.2d 413. Indeed, a POSITA would have
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`understood that adding a convex protrusion to Aizawa’s flat plate would provide
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`an additional adhesive effect that would reduce the tendency of that plate to slip.
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`APPLE-1047, ¶¶22-28.
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
`C. Modifying Aizawa’s sensor to include a convex cover as
`taught by Ohsaki enhances the sensor’s light-gathering
`ability.
`Masimo argues that the combined sensor “would direct light away from the
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`detectors and thus decrease light collection and optical signal strength—not
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`increase signal strength[.]” See, e.g., POR, 42-50. As explained below, a POSITA
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`would have understood the opposite to be true: that a cover featuring a convex
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`protrusion would improve Aizawa’s signal-to-noise ratio by causing more light
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`backscattered from tissue to strike Aizawa’s photodetectors than would have with a
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`flat cover. APPLE-1047, ¶29; APPLE-1019, 52, 86, 90; APPLE-1040, 84, 87-92,
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`135-141; APPLE-1046, 803-805; APPLE-1016, FIGS. 1(a)-1(b).
`
`1. The convex cover enhances the light-gathering
`ability of Aizawa’s sensor
`
`
`
`A POSITA would have understood that a convex cover improves “light
`
`concentration at pretty much all of the locations under the curvature of the lens,”
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`as opposed to only at a single point at the center as asserted by Masimo. POR, 43-
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`50; Ex. 2006, 164:8-16; APPLE-1047, ¶30.
`
`Masimo ignores the well-known principle
`of reversibility 
`The well-known optical principle of reversibility dispels Masimo’s claim
`
`i.
`
`that “a convex cover condenses light towards the center of the sensor and away
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`from the periphery,” when applied to Aizawa. POR, 40; APPLE-1040, 87-92;
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`APPLE-1049, 106-111; APPLE-1047, ¶31. According to this principle, “a ray
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`going from P to S will trace the same route as one from S to P.” APPLE-1040, 92,
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`84; APPLE-1049, 101, 110; APPLE-1043, 80:20-82:20; APPLE-1047, ¶31.
`
`
`
`To illustrate this principle’s relevancy, two example ray paths from the
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`LEDs (green) to the detector (red) are shown below in Inokawa’s FIG. 2:
`
`
`POR, 46 (red annotations added by Petitioner); APPLE-1047, ¶32.
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`By flipping the LED/detector configuration, as in Aizawa, and applying the
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`principle of reversibility, it is readily observed that the two example ray paths
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`shown above simply reverse their direction, such that any
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`condensing/directing/focusing benefit achieved by Inokawa’s cover (blue) under
`
`the original configuration would be identically achieved under the reversed
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`configuration:
`
`APPLE-1047, ¶33 (annotated).
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`Dr. Madisetti refused to acknowledge this basic principle of reversibility
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`during deposition, even going so far as to express ignorance of “Fermat’s principle,
`
`whatever that is.” APPLE-1041, 89:12-19. Yet Fermat’s principle, which states
`
`that a path taken by a light ray between two points is one that can be traveled in the
`
`least time, is one of the most fundamental concepts in optics/physics and plainly
`
`requires the principle of reversibility. APPLE-1040, 87-92; APPLE-1049, 106-
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`111; APPLE-1047, ¶34. Dr. Madisetti further tried to brush way the applicability
`
`of this principle as being a “new theory.” Id., 84:2-85:7. But far from being a new
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`theory, this core concept is applied in Aizawa itself. See APPLE-1003, ¶127
`
`(“Aizawa…recognizes this reversibility”); APPLE-1047, ¶34.
`
`In short, a POSITA would have understood that both configurations of LEDs
`
`and detectors—i.e., with the LED at the center as in Aizawa or with the detector at
`
`the center as in Inokawa—would identically benefit from the enhanced light-
`
`gathering ability of a convex lens/protrusion. APPLE-1047, ¶¶31-35.
`
`ii. Masimo ignores the behavior of scattered
`light in a reflectance-type pulse sensor 
`Because Aizawa is a reflectance-type pulse detector that receives diffuse,
`
`backscattered light from the measurement site, its cover/lens cannot focus all
`
`incoming light at a single point. APPLE-1047, ¶36; Ex. 2006, 163:12-164:2.
`
`Indeed, reflectance-type sensors work by detecting light that has been “partially
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`reflected, transmitted, absorbed, and scattered by the skin and other tissues and the
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`blood before it reaches the detector.” Ex. 1019, 86. A POSITA would have
`
`understood that light that backscatters from the measurement site after diffusing
`
`through tissue reaches the active detection area from various random directions and
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`angles. APPLE-1047, ¶36; APPLE-1042, 803; Ex. 1019, 90, 52.
`
`
`
`Basic laws of refraction, namely Snell’s law, dictate this behavior of light.
`
`APPLE-1040, 84; APPLE-1049, 101; Ex. 1019, 52, 86, 90; APPLE-1047, ¶37.
`
`Even Dr. Madisetti agrees that Snell’s law should apply. See APPLE-1043, 80:20-
`
`82:20. For example, as shown in the annotated figure below, some of the rays of
`
`light emitted from LED 21 do not reach Inokawa’s centrally located detector:
`
`APPLE-1008, FIG. 2 (annotated); POR, 16; APPLE-1047, ¶37.
`
`For many of these rays, there is simply no way for a cover to focus all light
`
`at the center of the sensor device. APPLE-1047, ¶¶39-41; APPLE-1040, 84;
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`APPLE-1049, 101; APPLE-1043, 80:20-82:20. Dr. Kenny’s illustration below
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`shows how Snell’s law determines a direction of a backscattered ray within a
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`convex cover, thus providing a stark contrast to Masimo’s assertions that all such
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`rays must be redirected toward a central detector:
`
`
`
`APPLE-1047, ¶40.
`
`
`
`Indeed, far from focusing light to the center as Masimo contends, Ohsaki’s
`
`convex cover provides at best a slight refracting effect, such that light rays that
`
`otherwise would have missed the detection area are instead directed toward that
`
`area as they pass through the interface provided by the cover. APPLE-1047, ¶42.
`
`This is especially true for Aizawa’s configuration where light detectors are
`
`arranged symmetrically about a central light source, so as to enable backscattered
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`light to be detected within a circular active detection area surrounding that source.
`
`Ex. 1019, 86, 90. The slight refracting effect is further confirmed by the similar
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`indices of refraction between human tissue and a typical cover material (e.g.,
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`acrylic). APPLE-1047, ¶*** (citing APPLE-1044, 1486; APPLE-1045, 1484).
`
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`To support the misguided notion that a convex cover focuses all incoming
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`light at the center, Masimo relies heavily on the ’553 patent’s FIG. 14B
`
`(reproduced below):
`
`APPLE-1001, FIG. 14B (as annotated at POR, 45)
`
`
`
`Masimo treats this figure as an illustration of the behavior of all convex
`
`surfaces with respect to all types of light, and conclude that “a convex surface
`
`condenses light away from the periphery and towards the sensor’s center.” POR,
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`44.
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`But FIG. 14B is not an accurate representation of light that has been
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`reflected from a tissue measurement site. For example, the light rays (1420) shown
`
`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, ¶45. By
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`contrast, the detector(s) of reflectance type pulse detectors detect light that has
`
`been “partially reflected, transmitted, absorbed, and scattered by the skin and other
`
`tissues and the blood before it reaches the detector.” APPLE-1019, 86. For
`
`example, a POSITA would have understood from Aizawa’s FIG. 1(a) that light
`
`that backscatters from the measurement site after diffusing through tissue reaches
`
`the circular active detection area provided by Aizawa’s detectors from various
`
`random directions and angles, as opposed to collimated rays as shown in FIG. 14B.
`
`APPLE-1047, ¶¶36-45; APPLE-1019, 52, 86, 90; APPLE-1046, 803-805; see also
`
`APPLE-1012, FIG. 7.
`
`2. A POSITA would have been motivated by a convex
`cover’s ability to direct light “towards the center.”
`
`
`
`As Dr. Kenny explains, a convex cover’s general ability to direct light
`
`“toward” a “general area” supports the notion that the convex cover modification
`
`allows more light to be gathered generally, including at the non-centrally located
`
`detectors as found in Aizawa. APPLE-1008, [0015]; APPLE-1047, ¶46. Indeed,
`
`even Dr. Madisetti appeared to back away from Masimo’s illogical suggestion that
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`a convex cover somehow focuses all light at a central point, (POR, 43-45)
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`Case No. IPR2020-01539
`Attorney Docket: 50095-0013IP2
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`clarifying that Inokawa focuses light “towards” a “general area,” rather than a
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`specific point.