`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APPLE INC.
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`________________
`
`Case IPR2020-01713
`U.S. Patent 10,624,564
`
`________________
`
`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
`
`
`
`
`
`Case No. IPR2020-01713
`Attorney Docket: 50095-0023IP1
`
`I.
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 7
`GROUND 1 ESTABLISHES OBVIOUSNESS ............................................. 7
`A. Ohsaki does not teach or require that its translucent board 8 is
`“rectangular” in shape ............................................................................. 12
`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
`D. A POSITA would have been motivated to select a convex cover to
`protect the optical elements .................................................................... 33
`E. A POSITA would have combined Aizawa and Ohsaki with Goldsmith34
`F. The claimed protrusion height in claims 16 and 17 would have been
`obvious to a POSITA .............................................................................. 34
`III. GROUND 2 ESTABLISHES OBVIOUSNESS ........................................... 37
`IV. GROUNDS 3-6 ESTABLISH OBVIOUSNESS .......................................... 40
`V.
`CONCLUSION .............................................................................................. 40
`
`
`
`
`
`
`
`
`ii
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`
`
`EXHIBITS
`
`Case No. IPR2020-01713
`Attorney Docket: 50095-0023IP1
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`APPLE-1001
`
`U.S. Patent No. 10,624,564 to Jeroen Poeze, et al. (“the ‘564
`Patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ‘564 Patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Thomas Kenny
`
`APPLE-1004
`
`RESERVED
`
`APPLE-1005
`
`RESERVED
`
`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
`
`US Pub. No. 2007/0093786 (“Goldsmith”)
`
`APPLE-1012
`
`processor, Merriam Webster’s Collegiate Dictionary, 10th Ed.,
`Merriam Webster Inc., 1999
`
`APPLE-1013
`
`US Patent No. 4,941,236 (“Sherman”)
`
`APPLE-1014
`
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al., Medical Instrumentation, Vol.
`22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`
`iii
`
`
`
`
`APPLE-1015
`
`Case No. IPR2020-01713
`Attorney Docket: 50095-0023IP1
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` US Pub. No. 2008/0194932 (“Ayers”)
`
`APPLE-1016
`
` U.S. Patent No. 7,558,622 (“Tran”)
`
`APPLE-1017
`
` U.S. Patent No. 6,351,217 (“Kuhns”)
`
`APPLE-1018
`
` U.S. Patent No. 7,656,393 (“King”)
`
`APPLE-1019
`
` U.S. Patent No. 6,584,336 (“Ali”)
`
`APPLE-1020
`
`US Pub. No. 2004/0054291 (“Schulz”)
`
`APPLE-1021
`
`Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`
`APPLE-1022
`
`U.S. Patent No. 6,912,413 (“Rantala”)
`
`APPLE-1023
`
`U.S. Patent No. 7,251,513 (“Kondoh”)
`
`APPLE-1024
`
`US Pub. No. 2004/0152957 (“Stivoric”)
`
`APPLE-1025
`
`JP Pub. No. 2005-270543 (“Tanagi”)
`
`APPLE-1026
`
`Certified English Translation of Tanagi and Translator’s
`Declaration
`
`APPLE-1027 to 1030
`
`RESERVED
`
`APPLE-1031
`
`Scheduling Order, Masimo v. Apple, 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)
`
`iv
`
`
`
`
`APPLE-1034
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`APPLE-1035
`
`Case No. IPR2020-01713
`Attorney Docket: 50095-0023IP1
`
`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
`
`
`APPLE-1037
`
`Order Amending Scheduling Order, Masimo et al. v. True
`Wearables et al., Case 8:18-CV-02001 (July 7, 2020)
`
`Masimo Corporation, et al. v. Apple Inc., Second Amended
`Complaint, Civil Action No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1038 to 1039
`
`RESERVED
`
`APPLE-1040
`
`Order Granting Stipulation to Amend the Scheduling Order,
`Masimo v. Apple, Case 8:20-cv-00048, Paper 201 (September
`21, 2020)
`
`APPLE-1041
`
`U.S. Patent No. 8,040,758 (“Dickinson”)
`
`APPLE-1042 to 1047
`
`RESERVED
`
`APPLE-1048
`
`Order Re Motion to Stay, Masimo v. Apple, Case 8:20-cv-
`00048, Paper 201 (October 13, 2020)
`
`APPLE-1049
`
`Declaration of Robert Jacob Munford
`
`APPLE-1050
`
`Second Declaration of Dr. Thomas W. Kenny
`
`APPLE-1051
`
`Eugene Hecht, Optics (2nd Ed. 1990)
`
`APPLE-1052
`
`Eugene Hecht, Optics (4th Ed. 2002)
`
`v
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`
`
`
`APPLE-1053
`
`APPLE-1054
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`APPLE-1055
`
`
`APPLE-1056
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`APPLE-1057
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`APPLE-1058
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`APPLE-1059
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`Case No. IPR2020-01713
`Attorney Docket: 50095-0023IP1
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`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01536, IPR2020-01538 (August 3, 2021)
`
`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01520, IPR2020-01537, IPR2020-01539, Day 1 (August 1,
`2021)
`
`Deposition Transcript of Dr. Thomas W. Kenny in IPR2020-
`01520, IPR2020-01536, IPR2020-01537, IPR2020-01538,
`IPR2020-01539, Day 2 (September 18, 2021)
`
`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01520, IPR2020-01537, IPR2020-01539, Day 2 (August 2,
`2021)
`
`“Refractive Indices of Human Skin Tissues at Eight
`Wavelengths and Estimated Dispersion Relations between 300
`and 1600 nm,” H. Ding, et al.; Phys. Med. Biol. 51 (2006); pp.
`1479-1489 (“Ding”)
`
`“Analysis of the Dispersion of Optical Plastic Materials,” S.
`Kasarova, et al.; Optical Materials 29 (2007); pp. 1481-1490
`(“Kasarova”)
`
`“Noninvasive Pulse Oximetry Utilizing Skin Reflectance
`Photoplethysmography,” Y. Mendelson, et al.; IEEE
`Transactions on Biomedical Engineering, Vol. 35, No. 10,
`October 1988; pp. 798-805 (“Mendelson-IEEE-1988”)
`
`APPLE-1060
`
`U.S. Pat. No. 6,198,951 (“Kosuda”)
`
`APPLE-1061
`
`Second Declaration of Jacob Robert Munford
`
`
`
`vi
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`Case No. IPR2020-01713
`Attorney Docket: 50095-0023IP1
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`I.
`Introduction
`Apple Inc. (“Petitioner” or “Apple”) submits this Reply to Patent Owner’s
`
`Response (IPR2020-01713, Pap. 14)(“POR”) to the IPR Petition of U.S. Patent No.
`
`10,624,564 (“the ’564 Patent”) filed by Masimo Corporation (“Patent Owner” or
`
`“Masimo”). As demonstrated below, the POR fails to address positions advanced in
`
`the Petition. Accordingly, Apple respectfully submits that the Board should find
`
`claims 1-30 (“the Challenged Claims”) of the ’564 Patent unpatentable.
`
`II. Ground 1 Establishes Obviousness
`As Dr. Kenny explained in his first declaration (APPLE-1003), a POSITA
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`“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
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`efficiency, [3] and protect the elements within the sensor housing.” APPLE-1003,
`
`¶¶66-73; APPLE-1050, ¶¶7-8. Rather than attempting to rebut Dr. Kenny’s
`
`testimony on these points, Masimo offers, through its witness Dr. Madisetti,
`
`arguments that are factually flawed and legally irrelevant. Id.
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`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
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`from this concludes that “[a] POSITA would [not] have been motivated to combine
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`the references and reasonably expected such a combination to be successful.” POR,
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`1-3.
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`In this way and as further explained below, the POR avoids addressing the
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`merits of the combinations advanced by Petitioner, relies on mischaracterizing the
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`prior art combinations and Dr. Kenny’s testimony, 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 Goldsmith. APPLE-1050, ¶9; KSR Intern.
`
`Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`Contrary to Masimo’s contentions, Ohsaki does not limit its benefits to a
`
`rectangular sensor applied to a particular body location, and a POSITA would not
`
`have understood those benefits as being so limited. APPLE- 1050, ¶10. Instead, and
`
`as shown in Ohsaki’s FIG. 2 (reproduced below), Ohsaki attributes the reduction of
`
`slippage afforded by use of translucent board 8 (and additional 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 APPLE-1003, ¶¶54, 68;
`
`APPLE-1009, [0015], [0017], [0025], FIGS. 1, 2, 4A, 4B; APPLE-1050, ¶11.
`
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`1 Unless otherwise noted, emphases in quotations throughout this Reply are added.
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`APPLE-1009, FIG. 22
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`Absent from Ohsaki’s discussion of these benefits is any suggestion that they
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`relate to a shape of the perimeter of the translucent board 8 (whether circular,
`
`rectangular, ovoid, or other). APPLE-1050, ¶12. Rather, when describing the
`
`advantages associated with translucent board 8, Ohsaki contrasts a “convex
`
`detecting surface” from a “flat detecting surface,” and explains 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
`
`surface…variation of the amount of the reflected light…that reaches the light
`
`receiving element 7 is suppressed.” APPLE-1003, ¶69; APPLE-1009, [0015],
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`[0025]; APPLE-1050, ¶12.
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`2 Figure annotations in this and other figures in this reply are shown in color.
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`Accordingly, a POSITA would have understood that a protruding convex
`
`cover would reduce the adverse effects of user movement on signals obtainable by
`
`Aizawa’s photodetectors, which like Ohsaki’s light receiving elements, detect light
`
`reflected from user tissue. APPLE- 1050, ¶¶12-13; APPLE-1003, ¶¶107, 131, 48;
`
`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 described by Dr. Kenny with respect to the figures reproduced below, 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 surface.3 APPLE-1050, ¶¶14-16; KSR, 550 U.S. at 418;
`
`APPLE-1008, ¶¶14-15, FIG. 1; APPLE-1015, [0012], [0024], [0033], [0035], FIG. 6.
`
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`3 Notably, Ohsaki nowhere depicts or describes a rectangular cover. 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).
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`10
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`Aizawa’s FIG. 1(b) (reproduced below) shows the results of the proposed
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`combination.
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`APPLE-1006, FIG. 1(b)
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`
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`Contrary to Masimo’s contentions, the POSITA would have in no way been
`
`dissuaded from achieving those benefits by a specific body location associated with
`
`Ohsaki’s sensor. POR, 25-38; APPLE-1050, ¶¶15-16. Instead, a POSITA would
`
`have understood that a light permeable convex cover would have provided the
`
`benefits described by Ohsaki in a sensor placed, e.g., on the palm side of the wrist.
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`APPLE-1050, ¶15; APPLE-1009, [0025], Claim 3, FIGS 4A, 4B; APPLE-1021, 91.
`
`For these and other reasons explained below, the Board should reject Masimo’s
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`arguments, which avoid addressing the merits of the combinations advanced by
`
`Petitioner, and which are grounded in disregard for well-established principles of
`
`patent law (e.g., 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
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`primary reference,” but is instead “what the combined teachings of those references
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`would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413
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`(C.C.P.A. 1981); Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313,
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`1333 (Fed. Cir. 2020); KSR, 550 U.S. at 418); APPLE-1050, ¶17.
`
`
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`A. Ohsaki does not teach or require that its translucent board
`8 is “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.”
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`Petition, 19-23; APPLE-1003, ¶67. Ohsaki (at [0025]) describes that the
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`“convex surface of the translucent board 8” is responsible for this improved
`
`adhesion. Id.; APPLE-1050, ¶18.
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`Masimo argues that adhesion is improved by the “longitudinal shape” of
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`“Ohsaki’s translucent board [8]” the “convex surface.” POR, 10, 17-25 (citing
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`APPLE-1009, [0019]). But the cited portion of Ohsaki does not include any
`
`reference to board 8. APPLE-1009, [0019]. Instead, Ohsaki ascribes this
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`“longitudinal” shape to a different component: “detecting element 2.” See id. Ohsaki
`
`never describes the “translucent board 8” as “longitudinal,” and nowhere describes
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`“translucent board 8” and “detecting element 2” as having the same shape. See
`
`generally APPLE-1009. In fact, as illustrated in Ohsaki’s FIG. 2 (reproduced below),
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`12
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`translucent board 8 (annotated yellow) is not coextensive with the entire tissue-facing
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`side of detecting element 2 (annotated green). APPLE-1050, ¶18.
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`APPLE-1009, FIG. 2
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`Based on the unsupported contention that translucent board 8 has a “very
`
`pronounced longitudinal directionality,” Masimo concludes that the translucent board
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`8 has a “rectangular” shape that is allegedly incompatible with Aizawa. See POR,
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`16-17. But Ohsaki never describes translucent board 8 as “rectangular.” In fact, the
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`words “rectangular” and “rectangle” do not appear in Ohsaki. See generally APPLE-
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`1009; APPLE-1050, ¶19.
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`13
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`The POR incorrectly assumes that because Ohsaki’s light emitting element and
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`the light receiving element are arranged in a longitudinal structure, Ohsaki’s
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`translucent board must have a rectangular structure. APPLE-1009, [0009], [0019];
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`POR, 1-3, 13-25. A POSITA would have known and understood that an elliptical or
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`circular sensor or board configuration can have a longitudinal structure or appearance
`
`under a cross-sectional view. APPLE-1050, ¶20. An example illustrating such an
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`understanding is shown below in US Patent No. 6,198,951 (“Kosuda”)’s FIGS. 3 and
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`4. APPLE-1060, 8:42-56.
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`APPLE-1060, FIGS 3 and 4
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`14
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`Attempting to confirm its false conclusion, Masimo asserts that “Ohsaki
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`illustrates two cross-sectional views of its board that confirm it is rectangular.” POR,
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`14 (citing Ex. 2004, [39]-[42]). Masimo identifies these “two cross-sectional views”
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`as FIGS. 1 and 2, and infers the supposed “rectangular shape” of the translucent
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`board 8 based on FIG. 1 showing the “short” side of the device, and FIG. 2 showing
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`the “long” side of the same device. POR, 14-16. But, Ohsaki’s FIG. 2 is “a
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`schematic diagram,” not a cross-sectional view, and Ohsaki never specifies that
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`FIGS. 1 and 2 are different views of the same device. APPLE-1009, [0013].
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`Accordingly, nothing in Ohsaki supports Masimo’s inference that the “translucent
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`board 8” must be “rectangular” in shape. See, e.g., APPLE-1009, [0013], [0019],
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`[0025], FIG. 2; APPLE-1050, ¶21. Further, even if it is possible for the translucent
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`board 8 to be “rectangular,” Ohsaki does not teach nor include any disclosure
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`“requiring” this particular shape. Id.
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`Multiple arguments with respect to Ground 1 in the POR are premised on
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`Ohsaki requiring the translucent board 8 to be “rectangular.” POR, 17-25. Because
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`Ohsaki reveals no such requirement, these arguments fail. APPLE-1050, ¶22.
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`In addition, as discussed above, even if Ohsaki’s translucent board 8 were
`
`understood to be rectangular, obviousness does not require “bodily incorporation” of
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`features from one reference into another. A POSITA, being “a person of ordinary
`
`creativity, not an automaton,” would have been fully capable of modifying Aizawa to
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`15
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`feature a light permeable protruding convex cover to obtain the benefits attributed to
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`such a cover by Ohsaki. Facebook, 953 F.3d at 1333; KSR, 550 U.S. at 418; APPLE-
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`1050, ¶23.
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`B. A POSITA would have recognized the benefits of Ohsaki’s
`teachings when applied to Aizawa’s sensor
`Masimo contends that “Ohsaki indicates that its sensor’s convex board only
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`improves adhesion when used on the back (i.e., watch) side of the wrist,” that
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`“Aizawa requires its sensor be positioned on the palm side of the wrist,” and
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`concludes that “[a] POSITA seeking to improve adhesion of Aizawa’s sensor would
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`not incorporate a feature that only improves adhesion at a different and unsuitable
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`measurement location.” POR, 25-26. But Ohsaki does not describe that its sensor
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`can only be used at a backside of the wrist. Instead, at most, Ohsaki describes such
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`an arrangement with respect to a preferred embodiment. APPLE-1050, ¶24; APPLE-
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`1009, [0019].
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`Indeed, Ohsaki’s specification and claim language reinforce that Ohsaki’s
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`description is not so limited. For example, Ohsaki explains that “the detecting
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`element 2…may be worn on the back side of the user's forearm” as one form of
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`modification. APPLE-1009, [0030], [0028] (providing a section titled
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`16
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`
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`“[m]odifications”).4 Similarly, Ohsaki’s claim 1 states that “the detecting element is
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`constructed to be worn on a back side of a user’s wrist or a user’s forearm.” See
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`also APPLE-1009, claims 1-2. As another example, Ohsaki’s independent claim 5
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`states that “the detecting element is constructed to be worn on a user’s wrist or a
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`user’s forearm,” without even mentioning a backside of the wrist or forearm. See
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`also APPLE-1009, Claims 6-8. A POSITA would have understood this language to
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`contradict Masimo’s assertion that “[t]o obtain any benefit from Ohsaki’s board, the
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`sensor must be positioned on the backhand side of the wrist.” POR, 16; APPLE-
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`1050, ¶25. Yet, as explained above, a POSITA would have understood that Ohsaki’s
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`benefits are provided when the sensor is placed, for example, on either side of the
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`user’s wrist or forearm. APPLE-1050, ¶25; APPLE-1009, [0025], FIGS. 4A, 4B.
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`Section B.2 of the POR presents several arguments with respect to Ground 1
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`that are premised on Ohsaki requiring the detecting element to be worn on a back
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`side of a user’s wrist or a user’s forearm. See POR, 25-38. Because Ohsaki has no
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`such requirement, these arguments fail. APPLE-1050, ¶26.
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`4 As Dr. Kenny explains, the gap between the ulna and radius bones at the forearm is
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`even greater than the gap between bones at the wrist, which is already wide enough to
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`easily accommodate a range of sensor shapes (including circular). APPLE-1050,
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`¶25.
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`17
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`Moreover, even assuming for sake of argument that a POSITA would have
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`understood Aizawa’s sensor as being limited to placement on the backside of the
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`wrist, and would have understood Ohsaki’s sensor’s “tendency to slip” when
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`arranged on the front side as informing consideration of Ohsaki’s teachings with
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`respect to Aizawa, that would have further motivated the POSITA to implement a
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`light permeable convex cover in Aizawa’s sensor, to improve detection efficiency of
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`that sensor when placed on the palm side. APPLE-1050, ¶27; APPLE-1009, [0015],
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`[0017], [0023], [0025], FIGS. 1-4B.
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`When describing advantages associated with its translucent board, Ohsaki
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`explains with reference to FIGS. 4A and 4B (reproduced below) that “if the
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`translucent board 8 has a flat surface, the detected pulse wave is adversely affected by
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`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, ¶¶69-70; APPLE-1009, [0015],
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`[0017], [0025].
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`18
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`Case No. IPR2020-01713
`Attorney Docket: 50095-0023IP1
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`APPLE-1009, FIGS. 4A, 4B
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`
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`Contrary to Masimo’s contentions, a POSITA would not have understood these
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`benefits of a convex surface over a flat surface to be limited to one side or the other
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`of the user’s wrist. APPLE-1050, ¶¶28-29; APPLE-1009, [0023]-[0025]. Rather, a
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`POSITA would have understood that, by promoting “intimate contact with the
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`surface of the user’s skin,” a light permeable convex cover would have increased
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`adhesion and reduced slippage of Aizawa’s sensor when placed on either side of a
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`user’s wrist or forearm, and additionally would have provided with associated
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`improvements in signal quality. APPLE-1050, ¶29; APPLE-1009, [0015], [0017],
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`[0025]; FIGS. 1, 2, 4A, 4B, claims 3-8; APPLE-1021, 87, 91. Indeed, a POSITA
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`would have recognized that modifying Aizawa’s flat plate to feature a convex
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`protruding surface, as taught by Ohsaki, would have furthered Aizawa’s goal of
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`19
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`“improv[ing] adhesion between the sensor and the wrist” to “thereby further improve
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`Case No. IPR2020-01713
`Attorney Docket: 50095-0023IP1
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`the detection efficiency.” APPLE-1006, [0013], [0026], [0030], [0034]; APPLE-
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`1050, ¶29.
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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 would
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`have expected success when applying those teachings. KSR, 550 U.S. at 418; In re
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`Keller, 642 F.2d 413; APPLE-1050, ¶30. Indeed, a POSITA would have understood
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`that adding a convex protrusion to Aizawa’s flat plate would have provided an
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`additional adhesive effect that would have reduced the tendency of that plate to slip.
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`Id.
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`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.” POR,
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`38-39. As explained below, a POSITA would have understood the opposite to be
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`true—that a cover featuring a convex protrusion would improve Aizawa’s signal-
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`to-noise ratio by causing more light backscattered from tissue to strike Aizawa’s
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`photodetectors than would have with a flat cover. APPLE-1050, ¶31; APPLE-
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`1021, 52, 86, 90; APPLE-1051, 84, 87-92, 135-141; APPLE-1059, 803-805;
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`APPLE-1006, FIGS. 1(a)-1(b). The convex cover enhances the light-gathering
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`ability of Aizawa’s sensor.
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`20
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`Against this, Masimo and Dr. Madisetti assert that “a convex surface
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`Case No. IPR2020-01713
`Attorney Docket: 50095-0023IP1
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`would…direct[] light away from the periphery and towards the center of the sensor,”
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`but, in so doing, fail to articulate a coherent position—e.g., whether Masimo’s
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`position is that “all” light or only “some” light is directed “to” or “towards the
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`center.” POR, 38-44, Ex. 2004, ¶¶79-88.
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`For example, Dr. Madisetti testified during deposition that “as I describe in my
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`Declaration...if you have a convex surface...all light reflected or otherwise would be
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`condensed or directed towards the center.” APPLE-1054, 40:4-11; see also id.,
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`127:22-128:18; Ex. 2004, 52 (“A POSITA Would Have Understood That a Convex
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`Cover Directs Light To The Center Of The Sensor”), ¶¶80-83. However, during the
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`same deposition, Dr. Madisetti further stated that that a convex cover would redirect
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`light “towards the center,” which could be “a general area at which the convex
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`surface would be redirecting…light” or “a point,” while contrasting the phrase “to the
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`center” from “towards the center.” APPLE-1054, 105:12-107:1, 133:19-135:11.
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`In contrast, and as explained in more detail below, Dr. Kenny has consistently
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`testified that 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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`and for at least that reason would have been motivated to modify Aizawa’s sensor to
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`include a convex cover as taught by Ohsaki. POR, 39-43; Ex. 2006, 164:8-16;
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`APPLE-1050, ¶¶32-34.
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`21
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`Case No. IPR2020-01713
`Attorney Docket: 50095-0023IP1
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`i. Masimo ignores the well-known principle of
`reversibility
`The well-known optical principle of reversibility dispels Masimo’s claim that
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`“a convex cover condenses light towards the center of the sensor and away from the
`
`periphery,” when applied to Aizawa. POR, 39; APPLE-1051, 87-92; APPLE-1052,
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`106-111; APPLE-1050, ¶35. According to the principle of reversibility, “a ray going
`
`from P to S will trace the same route as one from S to P.” APPLE-1051, 92, 84;
`
`APPLE-1052, 101, 110; APPLE-1053, 80:20-82:20. Importantly, the principle
`
`dictates that rays that are not completely absorbed by user tissue will propagate in a
`
`reversible manner. APPLE-1050, ¶35. In other words, every ray that completes a
`
`path through tissue from an LED to a detector would trace an identical path through
`
`that tissue in reverse, if the positions of the LED emitting the ray and the receiving
`
`detector were swapped. APPLE-1050, ¶35; APPLE-1051, 92.
`
`The annotated versions of Inokawa’s FIG. 2 presented below together illustrate
`
`the principle of reversibility applied in context. As shown, Inokawa’s FIG. 2
`
`illustrates two example ray paths from surrounding LEDs (green) to a central detector
`
`(red):
`
`
`
`APPLE-1007, FIG. 2
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`
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`22
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`
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`As a consequence of the principle of reversibility, a POSITA would have
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`Case No. IPR2020-01713
`Attorney Docket: 50095-0023IP1
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`understood that if the LED/detector configuration were swapped, as in Aizawa, the
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`two example rays would travel identical paths in reverse, from a central LED (red) to
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`surrounding detectors (green). APPLE-1050, ¶¶35-36. A POSITA would have
`
`understood that, for these rays, any condensing/directing/focusing benefit achieved
`
`by Inokawa’s cover (blue) under the original configuration would be identically
`
`achieved under the reversed configuration:
`
`
`APPLE-1007, FIG. 2
`
`Even when factoring in additional scattering that may occur when light is
`
`
`
`reflected within human tissue, reversibility holds for each of the rays that are not
`
`completely absorbed; consequently, “if we’re concerned with the impact of the lens
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`on the system, it’s absolutely reversible.” APPLE-1055, 209:19-21, 207:9-209:21;
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`APPLE-1050, ¶¶36-43.
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`In more detail, and as shown with respect to the example paths illustrated
`
`below (which include additional scattering within tissue), each of the countless
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`photons travelling through the system must abide by Fermat’s principle. APPLE-
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`1050, ¶40; APPLE-1052, 106-111. Consequently, even when accounting for various
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`23
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`random redirections and partial absorptions, each photon traveling between a detector
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`Case No. IPR2020-01713
`Attorney Docket: 50095-0023IP1
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`and an LED would take the quickest—and identical—path between those points,
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`even if the positions of the detector and LED were swapped. APPLE-1050, ¶37;
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`APPLE-1055, 207:9-209:21 (“one could look at any particular randomly scattered
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`path…and the reversibility principle applies to all of the pieces [of that path] and,
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`therefore, applies to the aggregate”).
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`When confronted with this basic principle of reversibility during deposition,
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`Dr. Madisetti refused to acknowledge it, even going so far as to express ignorance of
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`“Fermat’s principle, whatever that is.” APPLE-1054, 89:12-19. Yet Fermat’s
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`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
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`optics/physics and plainly requires the principle of reversibility. APPLE-1051, 87-
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`92; APPLE-1052, 106-111; APPLE-1050, ¶44. Dr. Madisetti tried to brush away the
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`24
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`applicability of this principle as being a “new theory.” Id., 84:2- 85:7. But far from
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`Case No. IPR2020-01713
`Attorney Docket: 50095-0023IP1
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`being a new theory, this core concept is applied in Aizawa. Indeed, Aizawa
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`recognizes such reversibility, stating that while the configurations depicted include a
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`central emitter surrounded by detectors, the “same effect can be obtained when…a
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`plurality of light emitting diodes 21 are disposed around the photodetector 22.”
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`APPLE-1006, [0033]; APPLE-1050, ¶44; APPLE-1055, 209:19-21.
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`Accordingly, based at least on the principle of reversibility, a POSITA would
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`have understood that configurations of LEDs and detectors would have identically
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`benefitted from the enhanced light-gathering ability of a convex lens/protrusion.
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`APPLE-1050, ¶45.
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`ii. Masimo ignores the behavior of scattered light
`in a reflectance-type pulse sensor
`Because Aizawa is a reflectance-type pulse sensor that receives diffuse,
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`backscattered light from the measurement site, its cover/lens cannot focus all
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`incoming light toward the sensor’s center. APPLE-1050, ¶46; Ex. 2006, 163:12-
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`164:2 (“A lens in general…doesn’t produce a single focal point”). Indeed,
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`reflectance-type sensors work by detecting light that has been “partially reflected,
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`transmitted, absorbed, and scattered by the skin and other tissues and the blood before
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`it reaches the detector.” APPLE-1021, 86. A POSITA would have understood that
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`light that backscatters from the measurement site after diffusing through tissue
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`25
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`
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`reaches the active detection area from random directions and angles. APPLE-1050,
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`Case No. IPR2020-01713
`Attorney Docket: 50095-0023IP1
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`¶46; APPLE-1056, 803; APPLE-1021, 90, 52.
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`Basic laws of refraction, namely Snell’s law, dictate this behavior of light.
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`APPLE-1051, 84; APPLE-1052, 101; APPLE-1053, 80:20-82:20; APPLE-1021, 52,
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`86, 90; APPLE-1050, ¶¶42-47. For example, referring to Masimo’s version of
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`Inokawa’s FIG. 2, further annotated below to show additional rays of light emitted
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`from LED 21, it is clearly seen how some of the reflected/scattered light from the
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`measurement site does not reach Inokawa’s centrally located detector. APPLE-1050,
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`¶47.
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`
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`APPLE-1008, FIG. 2; POR, 14
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`For these and countless other rays that are not shown, there is simply no way
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`for a cover to focus all light at the center of the sensor device. APPLE-1050, ¶48;
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`APPLE-1051, 84; APPLE-1052, 101; APPLE-1053, 80:20-82:20. Dr. Kenny’s
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`illustrative example below shows how Snell’s law determines a dir
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