Filed August 4, 2021
`
`By:
`
`
`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)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (949) 760-9502
`Tel.: (949) 760-0404
`E-mail: AppleIPR2020-1713-564@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01713
`Patent 10,624,564
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`By:
`
`
`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)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (949) 760-9502
`Tel.: (949) 760-0404
`E-mail: AppleIPR2020-1713-564@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01713
`Patent 10,624,564
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. MASIMO’S PIONEERING TECHNOLOGY .............................................. 3
`
`A.
`
`B.
`
`C.
`
`The ’564 Patent Claims ....................................................................... 3
`
`Introduction To Independent Claims .................................................. 4
`
`The ’564 Patent Prosecution ............................................................... 6
`
`III. THE PETITION’S PROPOSED COMBINATIONS .................................... 7
`
`IV. CLAIM CONSTRUCTION .......................................................................... 7
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 7
`
`VI. LEGAL STANDARD ................................................................................... 8
`
`VII. GROUND 1 FAILS TO DEMONSTRATE OBVIOUSNESS ..................... 9
`
`A. Ground 1’s Cited Art And Asserted Combination .............................. 9
`
`1.
`
`2.
`
`Petitioner’s Combination Of Ohsaki And Aizawa ................. 10
`
`Dr. Kenny’s Erroneous Characterization Of Ohsaki .............. 13
`
`B.
`
`A POSITA Would Not Have Been Motivated To
`Combine Ohsaki’s Board With Aizawa’s Sensor ............................. 16
`
`1.
`
`A POSITA Would Have Understood That
`Ohsaki’s Rectangular Board Is Incompatible With
`Aizawa’s Radially Symmetric Sensor Arrangement .............. 17
`
`a) Modifying Ohsaki’s Rectangular Board
`Would Eliminate Ohsaki’s Already Limited
`Advantages ................................................................... 17
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`b)
`
`A POSITA Would Not Have Been
`Motivated To Add A Rectangular Board To
`Aizawa’s Circular Sensor ............................................. 23
`
`2.
`
`A POSITA Would Have Understood That
`Ohsaki’s Board “Has A Tendency To Slip” At
`Aizawa’s Required Measurement Location On The
`Palm Side Of The Wrist, Near The Artery ............................. 25
`
`a)
`
`b)
`
`c)
`
`Aizawa’s Flat Acrylic Plate Improves
`Adhesion On The Palm Side Of The Wrist .................. 26
`
`Ohsaki’s Convex Board Has “A Tendency
`To Slip” When Positioned On The Palm
`Side Of The Wrist ......................................................... 32
`
`A POSITA Would Not Have Been
`Motivated To Eliminate The Benefits Of
`Aizawa’s Flat Adhesive Acrylic Plate By
`Including A Protruding Surface Similar To
`Ohsaki’s Board ............................................................. 35
`
`3.
`
`A POSITA Would Not Have Been Motivated To
`Add A Convex Protruding Surface To Aizawa’s
`Sensor Because It Would Have Been Expected To
`Reduce The Optical Signal ..................................................... 38
`
`a)
`
`b)
`
`A POSITA Would Have Understood That A
`Convex Cover Directs Light To The Center
`Of The Sensor ............................................................... 39
`
`A POSITA Would Not Have Been
`Motivated To Direct Light Away From
`Aizawa’s Detectors ....................................................... 41
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`4.
`
`A POSITA Would Not Have Selected A Convex
`Cover To Protect The Optical Elements ................................. 44
`
`Goldsmith Does Not Cure The Deficiencies In
`Petitioner’s Proposed Combination Of Aizawa and
`Ohsaki ................................................................................................ 46
`
`The Challenged Dependent Claims Are Nonobvious
`Over Ground 1 ................................................................................... 46
`
`C.
`
`D.
`
`1.
`
`2.
`
`The Dependent Claims Are Nonobvious For The
`Same Reasons As Claim 1 ...................................................... 46
`
`Claims 16 And 17 Are Nonobvious For Additional
`Reasons ................................................................................... 47
`
`VIII. GROUNDS 2-3 FAIL FOR THE SAME REASONS AS
`GROUND 1 ................................................................................................. 51
`
`IX. GROUNDS 4-6 FAIL FOR THE SAME REASONS AS
`GROUNDS 1-3 ............................................................................................ 52
`
`
`
`
`
`
`
`-iii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ............................................................................ 8
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ............................................................................ 8
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) .......................................................................... 38
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .......................................................................... 46
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) .............................................................................. 9
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ............................................................................ 8
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ............................................................................ 9
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ............................................................................ 9
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 7
`
`In re Royka,
`490 F.2d 981 (C.C.P.A. 1974) .............................................................................. 8
`
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ............................................................................ 9
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100 ..................................................................................................... 7
`
`-iv-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`I.
`
`INTRODUCTION
`
`Petitioner’s proposed combinations all suffer from the same underlying
`
`flaws. Petitioner’s combinations rely primarily on Aizawa and Ohsaki, but
`
`Petitioner ignores critical differences between these references that make them
`
`incompatible.
`
`First, Ohsaki discloses a sensor with a convex board that must be used on the
`
`back side (i.e., watch side) of the wrist to provide its asserted benefit of improved
`
`adhesion, taking advantage of the user’s bone structure. In contrast, Aizawa
`
`expressly states that its sensor is used on the palm side of the wrist, where it is
`
`positioned over the user’s artery. Petitioner argues a POSITA would have been
`
`motivated to combine Ohsaki’s convex board with Aizawa’s sensor so as “to
`
`improve adhesion between the user’s wrist and the sensor.” Pet. 22-23. But
`
`Ohsaki discloses its board “has a tendency to slip off” the palm side of the wrist.
`
`Ex. 1009 ¶[0023]. Accordingly, a POSITA seeking to improve Aizawa’s palm-
`
`side sensor would not have been motivated to add Ohsaki’s convex board,
`
`designed for the back side of the wrist. Rather, a POSITA would have
`
`affirmatively avoided making that change.
`
`Second, Ohsaki’s sensor uses a longitudinal structure in a specific
`
`orientation between bones on the back side of the wrist to reduce sensor slippage
`
`and motion. Aizawa, however, discloses a circular sensor which provides more
`
`-1-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`consistent measurements when measuring signals from the arteries on the palm
`
`side of the wrist. Transforming Ohaski’s longitudinal structure into a circular
`
`shape to fit Aizawa’s sensor would eliminate Ohsaki’s benefit of reduced slippage
`
`and movement. Conversely, changing Aizawa’s circular sensor to accommodate
`
`Ohsaki’s longitudinal structure would result in less consistent measurements. The
`
`combination of Aizawa and Ohsaki would either disrupt Aizawa’s circular
`
`symmetry, Ohsaki’s longitudinal structure, or both. Petitioner attempts to combine
`
`references that are simply incompatible.
`
`Third, Petitioner’s combination detrimentally places a convex-shaped cover
`
`over Aizawa’s peripherally located detectors. A POSITA would have believed
`
`that such a cover would undesirably direct light away from the peripheral
`
`detectors and toward the sensor’s center, thereby reducing light collection and
`
`signal strength. A POSITA would not have been motivated to decrease signal
`
`strength in the manner resulting from Petitioner’s combination.
`
`In short, 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. Petitioner does not even
`
`acknowledge these differences, much less show a POSITA would have been
`
`-2-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`motivated
`
`to combine
`
`these references and reasonably expected such a
`
`combination to be successful.
`
`
`
`For at least these reasons, Petitioner fails to demonstrate the asserted
`
`references render the claims obvious. The Board should affirm the patentability of
`
`all ’564 Patent claims.
`
`II. MASIMO’S PIONEERING TECHNOLOGY
`
`Masimo is a global medical device technology company that develops and
`
`manufactures innovative patient monitoring technologies, medical devices, and a
`
`wide array of sensors. Inventor Joe Kiani founded Masimo in 1989 as a garage
`
`start-up that revolutionized noninvasive patient monitoring. Today, Masimo is
`
`publicly traded company that employs over 6,300 people worldwide, with annual
`
`revenues of over $1.1 billion. A host of manufacturers use Masimo’s technology,
`
`including Philips, Atom, Mindray North America, GE Medical, Spacelabs, and
`
`Zoll.
`
`A. The ’564 Patent Claims
`
`Masimo’s U.S. Patent No. 10,624,564 (“’564 Patent”) discloses and claims
`
`an optical physiological measurement device that uses an innovative design to
`
`improve detection efficiency. Masimo’s claimed measurement device uses one or
`
`more emitters, multiple detectors, and a cover with a protrusion that works with a
`
`wall surrounding the detectors, enhancing sensor and device effectiveness. The
`
`-3-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`protrusion thins out the measurement site so the measured tissue attenuates less
`
`light. Ex. 1001 7:56-61. The protrusion further increases the area from which
`
`attenuated light can be measured. Id. 7:61-63. The wall connecting the cover and
`
`substrate also maximizes the amount of light that impinges on the detectors, further
`
`increasing the signal strength. Id. 36:45-51. The multiple detectors allow for an
`
`averaging of measurements that can reduce errors due to variations in the path of
`
`light passing through the tissue. Id. 9:28-33; see also id. 3:4-15, 4:25-35. The
`
`inventors discovered this innovative combination of features work together to
`
`provide greater noise cancellation and an order of magnitude increase in signal
`
`strength. Id. 9:28-33, 20:25-42; see also id. 3:4-15, 4:27-35; Ex. 2004 ¶27.
`
`B.
`
`Introduction To Independent Claims
`
`The ’564 Patent has one independent claim: claim 1.1 Claim 1 is directed to
`
`a physiological measurement device including, among other things: (1) one or
`
`more emitters configured to emit light into tissue of a user, (2) at least four
`
`detectors arranged on a substrate, (3) a cover comprising a protruding convex
`
`surface, and (4) a wall that surrounds the detectors and connects to the substrate
`
`and the cover. See claim 1. Claim 1 reads:
`
`
`1 Appendix A reproduces the challenged claims with bracketed labels for
`
`convenience.
`
`-4-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`1. A user-worn physiological measurement device comprising:
`
`one or more emitters configured to emit light into tissue of a
`
`user;
`
`at least four detectors arranged on a substrate;
`
`a cover comprising a protruding convex surface, wherein the
`
`protruding convex surface extends over all of the at least four
`
`detectors arranged on the substrate, wherein at least a portion of the
`
`protruding convex surface is rigid;
`
`one or more processors configured to:
`
`receive one or more signals from at least one of the at
`
`least four detectors, the one or more signals responsive to at
`
`least a physiological parameter of the user; and
`
`process
`
`the one or more signals
`
`to determine
`
`measurements of the physiological parameter;
`
`a network interface configured to communicate with a mobile
`
`phone;
`
`a touch-screen display configured to provide a user interface,
`
`wherein:
`
`-5-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`the user interface is configured to display indicia
`
`responsive to the measurements of the physiological parameter,
`
`and
`
`an orientation of the user interface is configurable
`
`responsive to a user input;
`
`a wall that surrounds at least the at least four detectors,
`
`wherein the wall operably connects to the substrate and the cover;
`
`a storage device configured to at least temporarily store at least
`
`the measurements of the physiological parameter; and
`
`a strap configured to position the physiological measurement
`
`device on the user.2
`
`C. The ’564 Patent Prosecution
`
`During prosecution, the Examiner agreed the claimed combination of
`
`features—including multiple detectors in conjunction with a cover comprising a
`
`protrusion—provided a patentable advance unique in the field. Ex. 1002 at 102-
`
`106. Petitioner’s references do not differ significantly from the prior art the
`
`Examiner considered and found does not teach or suggest the claimed invention.
`
`
`2 Emphasis supplied unless otherwise noted.
`
`-6-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`III. THE PETITION’S PROPOSED COMBINATIONS
`
`Petitioner presents six grounds. Pet. 9. Ground 1 combines three references:
`
`Aizawa (Ex. 1006), Ohsaki (Ex. 1009), and Goldsmith (Ex. 1011). Grounds 2-3
`
`challenge dependent claims and combine additional references with Aizawa,
`
`Ohsaki, and Goldsmith. Ground 4 combines four references: Aizawa, Ohsaki,
`
`Goldsmith, and Ali (Ex. 1019). Grounds 5-6 challenge dependent claims and
`
`combine additional references with Aizawa, Ohsaki, Goldsmith, and Ali.
`
`IV. CLAIM CONSTRUCTION
`
`Petitioner identifies no terms for construction. The Board should give the
`
`claim
`
`terms
`
`their ordinary and customary meaning, consistent with
`
`the
`
`specification, as a POSITA would understand them. 37 C.F.R. § 42.100(b);
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner asserts a POSITA “would have been a person with a working
`
`knowledge of physiological monitoring technologies. The person would have had a
`
`Bachelor of Science degree in an academic discipline emphasizing the design of
`
`electrical, computer, or software technologies, in combination with training or at
`
`least one to two years of related work experience with capture and processing of
`
`data or information, including but not limited to physiological monitoring
`
`technologies.” Pet. 8. Petitioner asserts “[a]dditional education in a relevant field
`
`-7-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`or industry experience may compensate for one of the other aspects of the POSITA
`
`characteristics stated above.” Id.
`
`Masimo notes that Petitioner’s asserted level of skill (1) requires no
`
`coursework, training or experience with optics or optical physiological monitors;
`
`(2) requires no coursework, training or experience in physiology; and (3) focuses
`
`on data processing and not sensor design. For this proceeding, Masimo
`
`nonetheless applies Petitioner’s asserted level of skill. Ex. 2004 ¶¶30-32.
`
`VI. LEGAL STANDARD
`
`A petition based on “obviousness requires a suggestion of all limitations in a
`
`claim.” CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
`
`(citing In re Royka, 490 F.2d 981, 985 (C.C.P.A. 1974)). A patent claim is not
`
`obvious unless “a skilled artisan would have been motivated to combine the
`
`teachings of the prior art references to achieve the claimed invention, and that the
`
`skilled artisan would have had a reasonable expectation of success in doing so.”
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed.
`
`Cir. 2012).
`
`To prevail on any obviousness ground, a petitioner may not simply identify
`
`individual claim components—it must show why a “skilled artisan, with no
`
`knowledge of the claimed invention, would have selected these components for
`
`combination in the manner claimed.” In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir.
`
`-8-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`2000). The petitioner must support even simple modifications with some
`
`motivation to make the change. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
`
`1984).
`
`An appropriate obviousness inquiry cannot involve even a “hint of
`
`hindsight.” Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375
`
`(Fed. Cir. 2011). A petitioner may not “simply retrace[] the path of the inventor
`
`with hindsight, discount[] the number and complexity of the alternatives, and
`
`conclude[] that the invention ... was obvious.” Ortho-McNeil Pharm., Inc. v.
`
`Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008). Likewise, “[c]are must
`
`be taken to avoid hindsight reconstruction by using the patent in suit as a guide
`
`through the maze of prior art references, combining the right references in the right
`
`way so as to achieve the result of the claims in suit.” In re NTP, Inc., 654 F.3d
`
`1279, 1299 (Fed. Cir. 2011) (internal quotations omitted).
`
`VII. GROUND 1 FAILS TO DEMONSTRATE OBVIOUSNESS
`
`A. Ground 1’s Cited Art And Asserted Combination
`
`Ground 1, like all of Petitioner’s grounds, combines Aizawa and Ohsaki.
`
`These references each disclose different physiological sensor designs, with distinct
`
`shapes, features, and detector-emitter configurations. This section introduces
`
`Petitioner’s proposed combination of Ohsaki and Aizawa and then discusses Dr.
`
`Kenny’s erroneous characterization of Ohsaki.
`
`-9-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`1.
`
`Petitioner’s Combination Of Ohsaki And Aizawa
`
`Ohsaki discloses a pulse rate sensor with a single emitter (e.g., an LED) and
`
`a single detector disposed linearly, side-by-side, under a translucent board. See,
`
`e.g., Ex. 1009 Abstract, Fig. 2, ¶[0019]; Ex. 2004 ¶35.
`
`
`
`Ohsaki (Ex. 1009) Figs. 1 and 2 (annotated, color added)
`
`Ohsaki’s linearly arranged detector and emitter (above) result in a longitudinal
`
`shape and direction that Ohsaki explains is important for to reduce slipping when
`
`placed against the backhand side of the wrist. See Ex. 1009 ¶[0019] (if the
`
`longitudinal direction of Ohsaki’s detecting element 2 “agrees with
`
`the
`
`circumferential direction of the user’s wrist 4, it has a tendency to slip off.
`
`Therefore it is desirable that the detecting element 2 is arranged so that its
`
`-10-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`longitudinal direction agrees with the longitudinal direction of the user’s arm.”).
`
`Ohsaki includes a “dedicated belt” that “fix[es] the detecting element 2 on the
`
`user’s wrist 4 in this way.” Id. ¶[0019]. Ohsaki repeatedly states that its sensor “is
`
`worn on the back side of a user’s wrist corresponding to the back of the user’s
`
`hand.” Ex. 1009 Abstract; see also id. Title, ¶¶ [0008], [0009], [0016], [0024]; Ex.
`
`2004 ¶35.
`
`In contrast, Aizawa discloses a sensor with four periphery-located
`
`photodetectors (22) around a single centrally located LED (21). Ex. 1006 Abstract,
`
`Fig. 1B.; Ex. 2004 ¶¶40-41.
`
`-11-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`DETECTOR
`
`LED
`
`DETECTOR
`
`Aizawa Fig. 1B (cross-sectional view, color added)
`
`
`
`Aizawa’s Features
` Green: central LED
`(21)
` Red: peripheral
`detectors (22)
`
`
`
`
`
`Aizawa Fig. 1A (top-down view, color added)
`
`Aizawa uses this specific configuration of multiple detectors arrayed around a
`
`single LED to ensure that at least one detector is near the measurement site, which
`
`Aizawa indicates improves measurement consistency. Ex. 1006 ¶[0027]. Aizawa
`
`detects signals on the palm side of the wrist and explains that as long as “one of the
`
`photodetectors 22 is located near the artery 11,” it is “possible to detect a pulse
`
`wave accurately.” Id. ¶¶[0026]-[0027], Fig. 2. Aizawa includes a flat transparent
`
`plate (6) that improves adhesion between the detector and the wrist, which Aizawa
`
`-12-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`states improves the detection efficiency. Id. [0030]. Aizawa’s sensor does not use
`
`a lens. Ex. 2004 ¶¶40-41.
`
`Petitioner argues a POSITA would have added Ohsaki’s translucent board,
`
`designed for a linear pulse sensor, to Aizawa’s circular sensor. Pet. 19-23. But
`
`Petitioner never identifies with specificity the resulting structure. Petitioner
`
`asserts: “[a]s shown below, a POSITA would have modified Aizawa’s flat cover
`
`to include a protruding convex surface, similar to Ohsaki’s” (Pet. 22-23):
`
`Petitioner’s Illustration (Pet. 23)
`
`
`
`Petitioner never identifies whether Ohsaki’s longitudinal board is simply placed
`
`over Aizawa, or whether its shape is changed to be circular to match Aizawa’s
`
`shape and detector arrangement. Ex. 2004 ¶¶42-43.
`
`2.
`
`Dr. Kenny’s Erroneous Characterization Of Ohsaki
`
`At his deposition in a related IPR proceeding, Dr. Kenny injected even more
`
`confusion into Petitioner’s combinations. Dr. Kenny testified he did not know the
`
`shape of Ohsaki’s board and that Ohsaki’s board could be “circular or square or
`
`-13-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`rectangular.” Ex. 2008 68:21-70:1, 71:7-72:10. Dr. Kenny is incorrect. Ohsaki
`
`illustrates two cross-sectional views of its board that confirm the board is
`
`rectangular (and not circular or square). Id.
`
`Specifically, Ohsaki Figure 2 (below left) illustrates the “long” side of
`
`Ohsaki’s detector element (2) that extends from left to right in Figure 2 and in the
`
`longitudinal direction (up-and-down the arm) on a user’s wrist. Ex. 1009 ¶[0019];
`
`Ex. 2004 ¶¶36-39.
`
`
`
`Ohsaki Ex. 1009 Fig. 2 (left) & Fig. 1 (right) showing different cross-sections
`(color added: Purple: detecting element 2/package 5; Blue: translucent board 8)
`
`
`Figure 2 (above left) shows that the board (8) spans nearly the entire length of the
`
`detecting element’s (2) “long” side. Ohsaki Figure 1 (above right) shows the
`
`“short” side of Ohsaki’s detecting element (2) that extends from left to right in
`
`Figure 1 and in the circumferential direction (around) of the user’s wrist. Ex. 1009
`
`¶¶[0012], [0019]; see also Ex. 2008 118:3-119:7, 120:5-13, 121:3-15 (Dr. Kenny
`
`confirming longitudinal directionality); Ex. 2004 ¶¶36-39. As shown in Figure 1
`
`-14-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`above, the board’s length (8, blue) is much shorter than the detecting element’s
`
`length (2, purple) in the circumferential direction. Ex. 1009 ¶¶[0012], [0019],
`
`Figs. 1, 2; see also Ex. 2008 118:3-119:7, 120:5-13, 121:3-15; Ex. 2004 ¶¶36-39.
`
`Taken together, a POSITA would have understood that Ohsaki’s figures and
`
`description show that both Ohsaki’s detecting element (2) and board (8) have a
`
`very pronounced longitudinal directionality and are much longer than they are
`
`wide. Ex. 2004 ¶¶36-39; Ex. 1009 Figs. 1, 2, ¶[0019]. A POSITA would have
`
`understood that the top-down view of Ohsaki’s sensor—including the package,
`
`board, and emitter and detector—would look approximately like the figure below:
`
`
`
`Drawing based on Ohsaki, illustrating the sensor’s rectangular shape
`Ex. 2004 ¶38
`
`This is consistent with the remainder of Ohsaki, which emphasizes that the sensor
`
`has a longitudinal direction that must be aligned with the longitudinal direction of
`
`the user’s arm to prevent slippage. Ex. 1009 ¶[0019]; Ex. 2004 ¶¶36-39.
`
`-15-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`B. A POSITA Would Not Have Been Motivated To Combine Ohsaki’s
`Board With Aizawa’s Sensor
`
`Petitioner fails to show the cited art would have led a POSITA to Masimo’s
`
`claims. Petitioner argues a POSITA would have modified Aizawa’s flat adhesive
`
`acrylic plate “to include a protruding convex surface, similar to Ohsaki’s, to
`
`improve adhesion between the user’s wrist and the sensor, improve detection
`
`efficiency, and protect the elements within the housing.” Pet. 22-23, 47. But
`
`Petitioner fails to show that any of these alleged “motivations” are even present,
`
`much less that they would have motivated a POSITA to create Masimo’s claimed
`
`invention. Ex. 2004 ¶44.
`
`In the sections below, Masimo explains why a POSITA would not have been
`
`motivated to make Petitioner’s proposed combination. First, a POSITA would
`
`have understood that Ohsaki’s rectangular board would be incompatible with
`
`Aizawa’s circular sensor arrangement, undercutting any motivation to improve
`
`adhesion to the user’s tissue. Second, a POSITA would have understood that to
`
`obtain any benefit from Ohsaki’s board, the sensor must be positioned on the
`
`backhand side of the wrist—far from the arteries on the palm side of the wrist
`
`where Aizawa’s sensor takes its pulse measurements. Third, a POSITA would
`
`have believed that adding a convex-shaped cover would direct light away from
`
`Aizawa’s peripherally located detectors, resulting in reduced signal strength and
`
`decreased detection efficiency. Finally, a POSITA would not have replaced
`
`-16-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`Aizawa’s flat adhesive acrylic plate with Ohsaki’s translucent board for the
`
`purpose of protecting Aizawa’s sensor elements because Ohsaki’s translucent
`
`board would introduce complications and concerns. Ex. 2004 ¶45.
`
`1.
`
`A POSITA Would Have Understood That Ohsaki’s Rectangular
`Board Is Incompatible With Aizawa’s Radially Symmetric Sensor
`Arrangement
`
`a) Modifying Ohsaki’s Rectangular Board Would Eliminate
`Ohsaki’s Already Limited Advantages
`
`Petitioner’s
`
`illustrated combination
`
`fundamentally changes Ohsaki’s
`
`structure and eliminates the longitudinal shape that gives Ohsaki’s translucent
`
`board the ability to prevent slipping. Pet. 22-23; Ex. 1009 ¶[0019]; Ex. 2004 ¶¶46-
`
`47. Petitioner’s illustrated combination changes Ohsaki’s rectangular translucent
`
`board and makes it circular so that it covers Aizawa’s holder 23 (in green, below):
`
`
`
`
`
`Petitioner’s illustration of the combination
`of Aizawa, Ohsaki, and Goldsmith (Pet. 47)
`
`Petitioner’s illustration of Aizawa’s
`circular sensor (Pet. 49)
`
`
`
`-17-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`Petitioner claims a POSITA would have been motivated to add Ohsaki’s
`
`board to Aizawa’s circular sensor to improve adhesion. Pet.20, 22-23, 47, 49.3
`
`But Petitioner’s proposed modification eliminates the longitudinal shape that
`
`Ohsaki specifically identifies as important for the benefit of reducing slipping. Ex.
`
`1009 ¶[0019]; Ex. 2004 ¶¶46-47.
`
`Specifically, Ohsaki places a longitudinal sensor on the backhand side of a
`
`user’s wrist to avoid interacting with bones in the wrist. See Ex. 1009 ¶[0006]
`
`(discussing need to avoid pressing on “two bones (the radius and the ulna)”),
`
`¶[0024] (“the radius and the ulna inside the user’s wrist 4 are not pressed”); Ex.
`
`2004 ¶48; see also, e.g., Ex. 1009 ¶¶[0023]-[0024], Abstract, Title, Fig. 1 (Ohsaki
`
`device worn on back side of wrist). Dr. Kenny asserted in deposition for a related
`
`IPR proceeding where the definition of a POSITA is the same as in this proceeding
`
`that a POSITA would have information and knowledge of physiology. Ex. 2007
`
`435:10-20. As illustrated below (left), the forearm bones (the radius and ulna) on
`
`the arm’s backhand (or watch) side create a longitudinal opening at the junction
`
`between the wrist and forearm with no muscle insertions. Ex. 2010 at 49 (Plate
`
`3 Ohsaki does not specifically discuss improving adhesion. Instead,
`
`Petitioner attempts to link Ohaski’s disclosure of a “convex surface [that] prevents
`
`slippage” with “improv[ing] adhesion.” See Pet. 21, 23 (citing Ex. 1009 ¶[0025]);
`
`Ex. 2004 ¶53.
`
`-18-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`434). The radius and ulna, against which Ohsaki warns against pressing (Ex. 1009
`
`¶¶[0006], [0024]), flank either side of this gap. Ex. 2004 ¶54.
`
`Longitudinal
`Positioned
`
`Circumferential
`Positioned
`
`
`Rectangular sensor positioned in longitudinal (left) versus
`circumferential (right) direction on wrist/forearm
`(partial posterior (back side) view of wrist/forearm from Ex. 2010 at 49 (Plate 434))
`
`
`
`
`Consistent with this anatomy, Ohsaki indicates that the sensor’s longitudinal
`
`direction must be aligned with the longitudinal direction of the user’s arm. Ex.
`
`1009 ¶[0019]; Ex. 2004 ¶49. Ohsaki explains that—in contrast—aligning the
`
`sensor’s longitudinal direction with the circumferential direction of the user’s arm
`
`undesirably results in “a tendency [for Ohsaki’s sensor] to slip off.” Ex. 1009
`
`¶[0019]. As illustrated above (right), a sensor aligned with the circumferential
`
`direction of the user’s wrist undesirably interacts with the radius and the ulna,
`
`which Osaki warns against. Id. ¶¶[0006], [0024]; see also Ex. 2008 132:7-14,
`
`125:20-126:11; Ex. 2004 ¶49.
`
`-19-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`A POSITA would have understood that changing Ohsaki’s rectangular board
`
`into a circular shape would eliminate the advantages discussed above. Ex. 2004
`
`¶50. A circular shape cannot be placed in any longitudinal direction and thus
`
`cannot coincide with the longitudinal direction of the user’s wrist, as taught by
`
`Ohsaki. Instead, a circular shape extends equally in all directions, including in the
`
`circumferential direction of the user’s wrist, which Ohsaki explains results in
`
`slipping. Ex. 1009 ¶[0019]; Ex. 2004 ¶¶50-51. Dr. Kenny acknowledged that
`
`changing a longitudinal structure to a circle eliminates any longitudinal
`
`directionality. Ex. 2008 165:20-166:5. As illustrated below, unlike Ohsaki’s
`
`longitudinal sensor, a circular shape would not fit within the user’s anatomy and
`
`would undesirably press against the user’s radius and ulna, which Ohsaki
`
`specifically cautions against. See Ex. 1009 ¶[0006] (“the user feels uncomfortable
`
`since the radius and the ulna are pressed”); see also id. ¶[0024] (when Ohsaki’s
`
`sensor “is arranged on the back side of the user’s wrist…the radius and ulna inside
`
`the user’s wrist…are not pressed”); Ex. 2004 ¶¶50-51.
`
`-20-
`
`
`
`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
` Ohsaki’s Longitudinal Teachings
`
`Petitioner’s Proposed Combination
`
`Rectangular
`Sensor
`
`Circular Sensor
`
`
`
`Rectangular structure positioned in longitudinal direction (left) versus
`circular structure (right) on wrist/forearm
`(partial posterior (back side) view of wrist/forearm from Ex. 2010 at 49 (Plate 434))
`
` circular shape would press on the user’s arm in all directions and thus cannot
`
` A
`
`avoid undesirable interaction with the user’s bone structure. Ohsaki teaches that
`
`such interaction with the user’s anatomy results in slipping. Ex. 1009 ¶¶[0006],
`
`[0023]-[0024]; Ex. 2004 ¶51.
`
`It appears that neither Petitioner nor Dr. Kenny understood this aspect of
`
`Ohsaki’s disclosure. Indeed, Dr. Kenny testified that he did not know the shape of
`
`Ohsaki’s board, stating that Ohsaki’s board could be “circular or squar
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
