Filed: October 15, 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: AppleIPR2020-1539-554@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01539
`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: AppleIPR2020-1539-554@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01539
`U.S. Patent 10,588,554
`
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO REPLY
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`II.
`
`INTRODUCTION ......................................................................................... 1
`
`ARGUMENT ................................................................................................. 3
`
`A. Ground 1 .............................................................................................. 3
`
`1.
`
`2.
`
`3.
`
`A POSITA Would Have Understood That
`Ohsaki’s Board Is Longitudinal And Even Small
`Changes Result In Slippage ...................................................... 3
`
`a)
`
`b)
`
`Ohsaki’s Board Is Longitudinal ...................................... 3
`
`Petitioner’s Additional Arguments
`Regarding Ohsaki Are Unpersuasive ............................. 7
`
`Petitioner Incorrectly Asserts That Ohsaki’s Board
`Prevents Slipping “On Either Side Of The User’s
`Wrist Or Forearm” .................................................................. 11
`
`A Convex Cover Does Not Enhance Aizawa’s
`Light-Gathering Ability .......................................................... 14
`
`a)
`
`b)
`
`c)
`
`Petitioner Contradicts Its Admissions .......................... 14
`
`The Principle Of Reversibility Is Irrelevant
`To Petitioner’s Proposed Combination ........................ 16
`
`Petitioner’s Other New Theories Are
`Similarly Misplaced ...................................................... 18
`
`4.
`
`Petitioner Does Not Dispute That A Convex Cover
`Would Be More Prone To Scratches ...................................... 22
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`5.
`
`Petitioner Establishes No Motivation To Modify
`Aizawa’s Sensor To Include Both Multiple
`Detectors And Multiple Emitters ............................................ 23
`
`6. Mendelson 2006 Underscores Petitioner’s
`Hindsight Reconstruction ........................................................ 25
`
`7.
`
`Expectation Of Success ........................................................... 26
`
`B.
`
`C.
`
`Claims 11, 17, 28 ............................................................................... 27
`
`Claim 13 ............................................................................................ 28
`
`III. CONCLUSION ............................................................................................ 29
`
`-ii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 27
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) .................................................................... 10, 14
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) ............................................................................ 9
`TQ Delta, LLC v. CISCO Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ............................................................................ 8
`
`
`
`
`
`
`
`-iii-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`Declaration of Jeremiah S. Helm in Support of Pro Hac Vice
`Motion
`
`Declaration of William R. Zimmerman in Support of Pro Hac Vice
`Motion
`
`Reserved
`
`Declaration of Dr. Vijay K. Madisetti
`
`Curriculum Vitae of Dr. Vijay K. Madisetti
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01520, IPR2020-01537, IPR2020-01539
`(April 22, 2021)
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01520, IPR2020-01537, IPR2020-01539
`(April 23, 2021)
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01536, IPR2020-01538 (April 24, 2021)
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01536, IPR2020-01538 (April 25, 2021)
`
`Frank H. Netter, M.D., Section VI Upper Limb, Atlas of Human
`Anatomy (2003), Third Edition (“Netter”)
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Exhibit List, Page 1
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`
`Exhibit No.
`
`Description
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Petition for Inter Partes Review IPR2020-01520
`
`Declaration of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01520
`
`2021
`
`Reserved
`
`“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”)
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`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)
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`
`
`Exhibit List, Page 2
`
`
`
`IPR2020-01539
`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 modify Aizawa’s “flat cover…to include a lens/protrusion…similar
`
`to Ohsaki’s translucent board.” Reply 7; Pet. 36-37. That is incorrect.
`
`Petitioner’s first motivation is to “improve adhesion.” Id. Masimo directly
`
`responded, pointing out that Aizawa discloses a palm-side sensor and that
`
`Petitioner’s proposed combination has a shape that would increase slipping at
`
`Aizawa’s measurement location. Patent Owner Response (“POR”) 20-27, 30-42.
`
`Indeed, Aizawa teaches a flat surface improves adhesion on the wrist’s palm-side
`
`and Ohsaki teaches a convex surface tends to slip on the wrist’s palm-side. POR
`
`30-42. Both references thus undermine Petitioner’s proposed motivation of
`
`improved adhesion. Rather than address these contrary teachings, Petitioner
`
`asserts that Ohsaki’s sensor has no particular shape and reduces slipping at any
`
`body location. Reply 13-16. That contradicts Ohsaki, which illustrates its sensor’s
`
`longitudinal shape and explains how even slightly changing the sensor’s
`
`-1-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`orientation or measurement location results in slipping. Ex. 1009 Figs. 1, 2, 3A-
`
`3B, ¶¶[0019], [0023]. Petitioner’s first motivation fails.
`
`Masimo also responded to Petitioner’s second motivation, a purported
`
`“improve[d] detection efficiency.” Reply 7. As Masimo explained, Petitioner
`
`admitted that adding a convex cover to Aizawa’s sensor would direct light away
`
`from the sensor’s peripherally located detectors. POR 42-50. Thus, Petitioner’s
`
`proposed combination decreases optical signal strength and detection efficiency—
`
`the opposite of Petitioner’s motivation to “improve detection efficiency.”
`
`Petitioner’s second motivation fails.
`
`Petitioner’s third motivation is to “protect the elements within the sensor
`
`housing.” Reply 7. 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 50-51. Petitioner now concedes the disadvantage of scratching and abandons
`
`the “protection” motivation. Reply 28.
`
`Accordingly, none of Petitioner’s asserted motivations demonstrate that a
`
`POSITA would have been led to Masimo’s innovative claimed technology. The
`
`Board should reject Petitioner’s proposed combination.
`
`-2-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`II. ARGUMENT
`
`A. Ground 1
`1.
`
`A POSITA Would Have Understood That Ohsaki’s Board Is
`Longitudinal And Even Small Changes Result In Slippage
`a) Ohsaki’s Board Is Longitudinal
`
`The petition argued that a POSITA would have modified Aizawa’s flat cover
`
`“to include a lens/protrusion…similar to Ohsaki’s translucent board 8.” Pet. 36.1
`
`Ohsaki Fig. 1 (left) & Fig. 2 (right) (annotated, POR 12)
`
`Petitioner’s proposed combination places the lens/protrusion over Aizawa’s
`
`circular sensor. Pet. 52, 54 (below).
`
`
`
`
`1 All emphasis is added unless otherwise noted.
`
`-3-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`
`
`
`
`
`Petitioner’s combination
`
`Petitioner never explained how or why a POSITA would have been motivated to
`
`change Ohsaki’s longitudinal board into a circular cover. This change eliminates
`
`the shape that Ohsaki indicates prevents slipping. POR 11-15, 20-27.
`
`Lacking any credible basis to change the shape of Ohsaki’s board, Petitioner
`
`asserts that Ohsaki’s board has no particular shape. Reply 13-16. Petitioner thus
`
`embraces the vague testimony of its declarant, Dr. Kenny, who testified he did not
`
`know the shape of Ohsaki’s board and that the board could be “circular or square
`
`or rectangular.” Ex. 2008 68:21-70:1, 71:7-72:10; Ex. 2027 162:15-20. But
`
`Petitioner cannot allege that Ohsaki’s board has no geometry while also arguing
`
`Aizawa’s cover would be modified “to include a lens/protrusion…similar to
`
`Ohsaki’s translucent board 8.” Pet. 36.
`
`Regardless, Ohsaki refutes Petitioner’s position. As Masimo explained,
`
`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 16-18;
`
`Ex. 1009 ¶[0019].
`
`-4-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`
`
`
`Ohsaki Fig. 2 (left) & Fig. 1 (center) (Ex. 1009 ¶[0019], color added)
`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 16-18; Ex. 2004 ¶¶38-41.
`
`Petitioner argues that “Ohsaki never specifies that FIGS. 1 and 2 are
`
`different views of the same device.” Reply 15. But Ohsaki never describes
`
`Figures 1 and 2 as illustrating different devices and instead discusses them
`
`together. 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 the “long” side of a detecting element. Ex.
`
`-5-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`2004 ¶¶38-41. Petitioner cannot maintain these figures illustrate no geometry for
`
`the board. Reply 13-16.
`
`Petitioner’s position also conflicts with Ohsaki’s explanation of why its
`
`sensor’s longitudinal shape and 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 explained that Ohsaki’s
`
`shape and intended placement take advantage of the watch-side forearm/wrist
`
`area’s particular bone structure to prevent slipping. POR 22-24; Ex. 2004 ¶¶54-56.
`
`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 watch-side of wrist/forearm
`(Ex. 2004 ¶54)
`
`Ohsaki teaches that aligning its longitudinal shape across the wrist (above
`
`right)—instead of up-and-down the arm (above left)—results in “a tendency to
`
`-6-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`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 ¶¶54-57; POR 22-25. Petitioner has no answer to these
`
`arguments.2
`
`b)
`
`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 15. 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],
`
`
`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. Ex. 2027
`
`248:18-249:6, 254:17-255:11. Dr. Kenny likewise agreed user anatomy plays a
`
`role in preventing motion. Ex. 2027 158:16-159:8.
`
`-7-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`[0023]; POR 21-27. Thus, Ohsaki would have taught a POSITA that Petitioner’s
`
`proposed circular convex cover would not improve adhesion.
`
`Second, Petitioner asserts that Ohsaki “nowhere describes ‘translucent board
`
`8’ and ‘detecting element 2’ as having the same shape.” Reply 13-14. But
`
`Masimo never argued that Ohsaki’s board and detecting element 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 circular combination.
`
`POR 16-18, 20-27.
`
`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 10-11, 19. 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 POSITA is “a person of ordinary creativity,” and
`
`Ohsaki’s features need not be “bodily incorporated.” Reply 15-16. But
`
`Petitioner’s resulting combination eliminates the longitudinal directionality
`
`-8-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`Ohsaki describes as important to avoid slipping. POR 16-18, 20-27. Petitioner
`
`never explains how a POSITA’s “creativity” would prevent a circular convex
`
`surface from slipping on the wrist’s palm-side. Reply 15-16. Petitioner ignores
`
`Ohsaki’s teachings and thus violates the fundamental rule that “a prior patent must
`
`be considered in its entirety, i.e., as a whole, including portions that would lead
`
`away from the invention in suit.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d
`
`1561, 1568 (Fed. Cir. 1987).
`
`Fifth, Petitioner claims Masimo argued it “is not the ‘convex surface’ that
`
`improves adhesion” but instead the “‘longitudinal shape.’” Reply 13. 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 16-18, 20-27. Ohsaki 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
`
`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 (“I believe that the element being
`
`tested in Figure 3(a) and 3B has a convex cover”), 158:15-20; Ex. 2004 ¶¶74-78.
`
`-9-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`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).
`
`Sixth, Petitioner suggests Masimo’s arguments are limited to just the shape
`
`of Ohsaki’s board. Reply 13-16. But Masimo additionally argued that the circular
`
`shape of Petitioner’s proposed combination leads to slipping. As illustrated below,
`
`Petitioner’s proposed circular sensor (and convex surface) negatively interacts with
`
`the radius and ulna, resulting in slipping. POR 24-25; Ex. 2004 ¶¶55-57.
`
`
`
`Ohsaki teaches that its sensor helps prevent slipping when aligned with the user’s
`
`arm, but slips when positioned across the user’s wrist. Ex. 1009 ¶[0019]; see also
`
`id. ¶¶[0006], [0024]. Petitioner’s proposed circular sensor cannot avoid anatomical
`
`interactions that result in slipping. POR 24-25. Petitioner’s arguments do not
`
`overcome Ohsaki’s express disclosures.
`
`-10-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`2.
`Petitioner Incorrectly Asserts That Ohsaki’s Board Prevents
`Slipping “On Either Side Of The User’s Wrist Or Forearm”
`Petitioner also fails to overcome Ohsaki’s express disclosure that Ohsaki’s
`
`convex board only prevents slipping on the wrist’s watch-side. Ex. 1009 ¶[0023],
`
`Figs. 3A-3B. Petitioner argues that Ohsaki’s benefits are not specific to a
`
`particular side of the wrist. Reply 16-17. 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 also
`
`consistently 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].
`
`In contrast to Ohsaki, Aizawa requires measurements from the wrist’s palm-
`
`side close to the arteries. POR 30-42. Aizawa repeatedly teaches a flat surface
`
`improves adhesion on the wrist’s palm-side. POR 34-36; Ex. 2004 ¶¶66-73.
`
`Petitioner never demonstrates that a POSITA would use Ohsaki’s convex board on
`
`Aizawa’s sensor when Ohsaki’s board tends to slip on the wrist’s palm-side—
`
`-11-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`Aizawa’s required measurement site. POR 30-42; Ex. 2004 ¶¶66-84; Ex. 1009
`
`¶[0023], Figs. 3A-3B.4
`
`Indeed, Petitioner acknowledges Aizawa’s palm-side measurement
`
`requirement. Reply 17. But Petitioner nonsensically argues that because Ohsaki’s
`
`board has a “tendency to slip” on the wrist’s palm-side, that “would have further
`
`motivated” a POSITA to change Aizawa’s flat adhesive cover to a convex surface.
`
`Id. (emphasis in original). A tendency to slip is the opposite of Petitioner’s
`
`“improve[d] adhesion” motivation. POR 30-42. A POSITA would have credited
`
`Aizawa’s and Ohsaki’s teachings and concluded that changing Aizawa’s flat
`
`adhesive plate to a convex surface would detrimentally increase slipping. Id.
`
`Petitioner asserts “a POSITA would have understood that Ohsaki’s benefits
`
`are provided…on either side of the user’s wrist or forearm.” Reply 17. Petitioner
`
`newly identifies Ohsaki’s claim 1, which refers to the “back side of a user’s wrist
`
`or a user’s forearm.” Id. 16 (emphasis in original). But Ohsaki discloses a
`
`“wristwatch-type” device (Ex. 1009 Title), and the “forearm” refers to that same
`
`anatomical junction—not some other measurement location. POR 22-25, 38; Ex.
`
`4 Dr. Kenny provided no analysis of Ohsaki’s Figures 3A-3B, which
`
`evaluate slipping at different measurement locations. Dr. Kenny confirmed
`
`Ohsaki’s paragraphs 15, 17, 25, and Figures 4A-4B, which he relied on for
`
`support, do not address measurement location. Ex. 2027 136:12-140:13.
`
`-12-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`2004 ¶¶54-59, 80. Petitioner also cites Ohsaki’s claim 3 and states that the claim
`
`does not mention “a backside of the wrist or forearm.” Reply 16. But Ohsaki’s
`
`claim 3 likewise does not mention a convex surface and is therefore irrelevant.5
`
`Moreover, as discussed above, Ohsaki’s overall disclosure undermines Petitioner’s
`
`proposed combination.
`
`Petitioner additionally cites Ohsaki’s disclosure of “intimate contact”
`
`between the convex surface and the user’s skin. Reply 18-19. Petitioner argues
`
`this “intimate contact” would necessarily improve Aizawa’s flat adhesive plate on
`
`the palm-side of the wrist. But, as discussed, Ohsaki teaches its convex board
`
`tends to slip on the wrist’s palm-side regardless of any intimate contact. Ex. 1009
`
`¶[0023], Figs. 3A-3B. In contrast, Aizawa teaches a flat surface improves
`
`adhesion on the wrist’s palm-side. Ex. 1006 ¶[0013].
`
`Finally, Petitioner cites generic “inferences and creative steps” and argues
`
`that “adding a convex protrusion to Aizawa’s flat plate would provide an
`
`additional adhesive effect.” Reply 19-20. Petitioner does not explain the “creative
`
`5 Ohsaki’s other claims support Masimo’s position. 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 circular sensor. See id. Claim 6 (depending from claim 5), Claim 5
`
`(linear sensor arranged “in a longitudinal direction of the user’s arm”).
`
`-13-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`steps” or why a POSITA would ignore both Aizawa’s teaching that a flat plate
`
`improves adhesion on the wrist’s palm-side and Ohsaki’s teaching that a convex
`
`surface tends to slip on the wrist’s palm-side. DePuy, 567 F.3d at 1326 (“inference
`
`of nonobviousness is especially strong” if cited art undermines proffered reason for
`
`combination).
`
`3.
`
`A Convex Cover Does Not Enhance Aizawa’s Light-Gathering
`Ability
`a)
`Petitioner Contradicts Its Admissions
`
`Petitioner’s proposed combination also makes no sense because it places a
`
`convex cover over Aizawa’s peripherally located detectors. As Masimo
`
`explained, a convex cover would direct light away from Aizawa’s peripheral
`
`detectors and decrease optical signal strength—the opposite of Petitioner’s asserted
`
`motivation of improving detection efficiency. POR 42-50. Petitioner and Dr.
`
`Kenny admitted that a convex cover condenses light towards the sensor’s center
`
`and away from the sensor’s periphery. Id. Petitioner illustrated this principle:
`
`-14-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`
`Petitioner’s Illustration (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
`
`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 ¶¶86-87.
`
`None of Petitioner’s reply arguments overcome these admissions. Instead,
`
`Petitioner mischaracterizes Masimo’s position as asserting “that a convex cover
`
`somehow focuses all light at a central point.” Reply 26-27; see also id. 22
`
`(“cannot focus all incoming light at a single point”), 23 (“focus all light at the
`
`center of the sensor”), 25 (“all incoming light at the center”). 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
`
`-15-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`center and away from Aizawa’s peripheral detectors. POR 42-44; Ex. 2004 ¶¶89,
`
`93.
`
`b)
`
`The Principle Of Reversibility Is Irrelevant To Petitioner’s
`Proposed Combination
`
`Petitioner tries to avoid its admissions with a new theory based on the
`
`“principle of reversibility.” Reply 20-21. Petitioner claims that “[f]ar from being a
`
`new theory, this core concept is applied in Aizawa itself.” Id. 22. Petitioner cites a
`
`stray statement from Dr. Kenny’s background discussion on Aizawa that used the
`
`word “reversibility.” Id. (quoting Ex. 1003 ¶127). But nowhere did Dr. Kenny or
`
`Petitioner previously analyze or identify the principle of reversibility. See Pet. 27
`
`(discussing “reversibility” of Aizawa’s configuration). Petitioner’s cited sentence
`
`does not even discuss optics. Petitioner’s new theory improperly denies Masimo
`
`the opportunity to respond with expert testimony.
`
`Petitioner’s new theory is also irrelevant. Petitioner argues the path of a
`
`reflected light ray would trace an identical route forward and backward. Reply 22.
`
`This argument assumes conditions that are not present when tissue scatters and
`
`absorbs light. Petitioner asserts that tissue randomly scatters and absorbs light
`
`rays, which would cause forward and reverse light paths to be unpredictable and
`
`likely different. See id. 22-23 (reflectance-type sensors measure “random” light
`
`that was “reflected, transmitted, absorbed, and scattered…before it reaches the
`
`detector”); Ex. 2027 188:6-17, 29:11-30:7, 31:8-32:3, 38:17-42:6. Petitioner never
`
`-16-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`explains how the principle of reversibility applies to “random” scattered and
`
`absorbed light.
`
`Indeed, Dr. Kenny testified that “light backscattered from the tissue can go
`
`in a large number of possible directions, not any single precise direction.” Ex.
`
`2027 17:12-18; see also id. 17:19-19:2 (random path and absorbance), 38:17-
`
`40:13, 40:14-42:6 (“Every photon tracing that particular path…would have a
`
`potentially different interaction with the tissue and it would be scattered,
`
`potentially, in a different direction than the photon arriving before and after it.”).
`
`In contrast, the principle of reversibility provides that “a ray going from P to S [in
`
`one direction] will trace the same route as one going from S to P [the opposite
`
`direction]” assuming there is no absorption or scattering. Ex. 1040 at 51
`
`(illustrating diffuse reflection), 53 (defining principle of reversibility), 207
`
`(principle of reversibility requires no absorption). Dr. Kenny also testified that the
`
`principle of reversibly applies to a light ray between two points and admitted it
`
`does not apply to randomly scattered light in bulk. Ex. 2027 207:9-208:22. In that
`
`circumstance, Dr. Kenny merely testified that light “can go” or “could go” along
`
`the same path. Id. 207:17-209:21, 210:8-211:6. That hardly supports Petitioner’s
`
`argument that light will necessarily travel the same paths regardless of whether the
`
`LEDs and detectors are reversed.
`
`-17-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`Indeed, the principle of reversibility does not even address the relevant
`
`issue: whether changing Aizawa’s flat surface to a convex surface results in more
`
`light on Aizawa’s peripherally located detectors. See Ex. 2027 212:3-14.
`
`Petitioner attempts to use the theory of reversibility to argue that one could simply
`
`reverse the LEDs and detectors and obtain the same benefit from a convex surface.
`
`Reply 21-22. However, the principle of reversibility does not indicate that one
`
`could reverse sensor components and still obtain the same benefit from a
`
`convex—as opposed to a flat—surface. Dr. Kenny testified that the benefit of a
`
`convex surface would not be “obvious” if one moves the “LEDs and detectors
`
`around….” Ex. 2006 86:19-87:6.6
`
`c)
`
`Petitioner’s Other New Theories Are Similarly Misplaced
`
`Petitioner next argues that Masimo “ignores the behavior of scattered light in
`
`a reflectance-type pulse sensor.” Reply 22-23. Masimo’s arguments, however,
`
`directly address a reflectance-type pulse sensor and cited Petitioner’s and Dr.
`
`Kenny’s admissions about how a convex surface redirects incoming light. POR
`
`42-50. Petitioner then raises a series of new arguments against a position that
`
`6 Contrary to Petitioner’s argument, Reply 22, Dr. Madisetti did not “express
`
`ignorance” of Fermat’s principle: his testimony referred to “a stationary OPL,” an
`
`undefined term in the passage about which he was asked. Ex. 1041 89:12-19.
`
`Indeed, Dr. Madisetti’s earlier testimony cited “Fermat’s law.” Id. 33:17-34:13.
`
`-18-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`Masimo never took—that a convex surface focuses all light to a single point.
`
`Reply 23-24. None of Petitioner’s arguments demonstrate a POSITA would have
`
`been motivated to change Aizawa’s flat surface to a convex surface to improve
`
`signal strength.
`
`First, Petitioner asserts that “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….” Id. But that directly
`
`undermines Petitioner’s provided motivation “to include a lens/protrusion…similar
`
`to Ohsaki’s” to “improve detection efficiency.” Pet. 36-37. This new “slight
`
`refracting effect” argument trivializes Petitioner’s proposed motivation and
`
`conflicts with its prior admissions that “the incoming light is ‘condensed’ toward
`
`the center” (Ex. 2020 at 69-70).
`
`Second, Petitioner attempts to distinguish Figure 14B in Masimo’s patent as
`
`showing the impact of a convex surface on collimated light instead of diffuse
`
`backscattered light. Reply 25-26. But Masimo’s patent makes no such distinction.
`
`See POR 44-45. Moreover, Dr. Kenny admitted “one of ordinary skill in the art
`
`would expect a diffuse light source encountering a convex lens of the sort that
`
`we’re contemplating today, would lead to convergence of the light on the opposite
`
`side of the lens, in general” and that there would be “a convergence of most of the
`
`light rays.” Ex. 2007 423:7-424:18.
`
`-19-
`
`
`
`IPR2020-01539
`Apple Inc. v. Masimo Corporation
`Third, Petitioner argues that a convex cover “allows more light to be
`
`gathered generally, including at [Aizawa’s] non-centrally located detectors….”
`
`Reply 26-27. But Dr. Kenny confirmed this new theory is not in his declaration.
`
`Ex. 2006 207:11-208:1. Dr. Kenny could not support this new theory with any
`
`evidence. Ex. 2007 294:17-298:10. Dr. Kenny testified, “I’m sure there are
`
`journal articles that describe the effect,” but did not identify any when asked (Ex.
`
`2007 295:5-11), and Petitioner’s reply cites none. Dr. Kenny also admitted that the
`
`convex shape in Petitioner’s proposed combination is a new creation found
`
`nowhere in any cited reference. Ex. 2027 223:6-224:1; compare Ex. 1047 ¶14 with
`
`Ex. 1009 Fig. 2.
`
`Petitioner embraces Dr. Kenny’s deposition theory that a convex surface
`
`“allows the detectors to capture reflected light that otherwise would have missed
`
`them completely.” Reply 27. Petitioner suggests that a convex surface would
`
`direct some light from the sensor’s far left and far right edge to the peripheral
`
`detectors. Id. Petitioner illustrates its theory as follows:
`
`Id. Petitioner’s theory is unavailing beca
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
