Filed December 8, 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
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`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
`U.S. Patent 10,624,564
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO REPLY
`
`
`
`
`
`
`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
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`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
`U.S. Patent 10,624,564
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO REPLY
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`2.
`
`3.
`
`INTRODUCTION .................................................................................... 1
`I.
`II. ARGUMENT ............................................................................................ 3
`A. Ground 1 ......................................................................................... 3
`1.
`A POSITA Would Have Understood That Ohsaki’s
`Board Is Longitudinal And Even Small Changes
`Result In Slippage ................................................................ 3
`a)
`Ohsaki’s Board Is Longitudinal ................................. 3
`b)
`Petitioner’s Additional Arguments Regarding
`Ohsaki Are Unpersuasive .......................................... 8
`Petitioner Incorrectly Asserts That Ohsaki’s Board
`Prevents Slipping “On Either Side Of The User’s
`Wrist Or Forearm” ............................................................. 12
`A Convex Cover Does Not Enhance Aizawa’s Light-
`Gathering Ability ............................................................... 15
`a)
`Petitioner Contradicts Its Admissions ..................... 15
`b)
`The Principle Of Reversibility Is Irrelevant To
`Petitioner’s Proposed Combination ......................... 16
`Petitioner’s Other New Theories Are Similarly
`Misplaced ................................................................. 20
`Petitioner Does Not Dispute That A Convex Cover
`Would Be More Prone To Scratches ................................. 24
`Claims 16 and 17 .......................................................................... 25
`B.
`C. Ground 2 ....................................................................................... 27
`
`c)
`
`4.
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`D. Grounds 3-6 .................................................................................. 28
`III. CONCLUSION ....................................................................................... 28
`
`
`
`-ii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) ............................................................. 11, 15
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) ................................................................... 10
`TQ Delta, LLC v. CISCO Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ..................................................................... 9
`
`
`
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`-iii-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`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 protruding convex
`
`surface…similar to Ohsaki’s” translucent board. Reply 7; Pet. 22-23. 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”) 16-25. 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 25-
`
`38. 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 12-20. That contradicts Ohsaki, which illustrates its sensor’s longitudinal
`
`shape and explains how even slightly changing the sensor’s orientation or
`
`-1-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`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 38-44. 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 44-46. Petitioner now apparently agrees, conceding the disadvantage of
`
`scratching but arguing “multiple advantages” would “outweigh any alleged
`
`possibility of scratching.” Reply 33. Petitioner establishes no advantages for a
`
`convex surface in the proposed combination, let alone multiple advantages.
`
`Regardless, Petitioner does not explain why a POSITA would have chosen a
`
`convex cover—the one alternative Petitioner admits suffers from scratching—from
`
`the many different alternatives for protection. Ex. 2009 394:18-396:17.
`
`-2-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`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.
`
`II. ARGUMENT
`
`A. Ground 1
`A POSITA Would Have Understood That Ohsaki’s Board Is
`1.
`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 protruding convex surface similar to Ohsaki’s” translucent board.
`
`Pet. 22-23.1
`
`Ohsaki Fig. 1 (left) & Fig. 2 (right) (annotated, POR 10)
`
`1 All emphasis is added unless otherwise noted.
`
`
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`-3-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`Petitioner’s proposed combination places the lens/protrusion over Aizawa’s
`
`circular sensor. Pet. 47 (below).
`
`
`
`
`
`Petitioner’s combination (Pet. 47, 49)
`
`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 10-15, 17-23.
`
`Lacking any credible basis to change the shape of Ohsaki’s board, Petitioner
`
`asserts that Ohsaki’s board has no particular shape. Reply 12-15. 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 protruding convex surface similar
`
`to Ohsaki’s” translucent board. Pet. 22-23.
`
`-4-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`Regardless, Ohsaki itself 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
`
`13-15; Ex. 1009 ¶[0019].
`
`
`
`Ohsaki Fig. 2 (left) & Fig. 1 (center) (Ex. 1009 ¶[0019], color added)
`(showing long and short directions, respectively);
`Plan view illustrating board’s shape (right) (Ex. 2004 ¶¶35-39)
`
`
`Petitioner argues “[a] POSITA would have known and understood that an elliptical
`
`or circular sensor or board configuration can have a longitudinal structure or
`
`appearance under a cross-sectional view.” Reply 14. But Ohsaki shows the two
`
`cross-sections (Figs. 1-2), which eliminates any ambiguity. 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 13-15; Ex. 2004
`
`-5-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`¶¶36-39. Moreover, Ohsaki’s description (Ex. 1009 ¶[0019]) confirms Ohsaki’s
`
`board’s longitudinal shape. Ex. 2004 ¶¶35-39.
`
`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.
`
`2004 ¶¶35-39. Petitioner cannot maintain these figures illustrate no geometry for
`
`the board. Reply 12-15.
`
`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 and its declarant, Dr.
`
`Madisetti, explained that Ohsaki’s shape and intended placement take advantage of
`
`the watch-side forearm/wrist area’s particular bone structure to prevent slipping.
`
`Ex. 2004 ¶¶48-50. 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.; POR 18-19.
`
`-6-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`Interaction of Ohsaki’s longitudinal structure with watch-side of wrist/forearm (Ex.
`2004 ¶48)
`
`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
`
`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 ¶¶48-49; POR 18-21.
`
`Petitioner has no answer to these arguments. Instead, Petitioner argues in a
`
`footnote that Dr. Kenny’s declaration demonstrates that “the gap between the ulna
`
`and radius bones is even greater than the gap between the bones at the wrist, which
`
`is already wide enough to easily accommodate a range of sensor shapes.” Reply
`
`17 (citing Ex. 1050 ¶25). But Dr. Kenny provided no evidence or analysis to
`
`support his assertions. In contrast, Dr. Madisetti explained that Ohsaki positions
`
`-7-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`its sensor at the junction between the wrist and forearm, supporting his opinion
`
`with anatomical drawings. Ex. 2004 ¶48.2
`
`b)
`
`Petitioner’s
`
`regarding Ohsaki’s
`
`Petitioner’s Additional Arguments Regarding Ohsaki Are
`Unpersuasive
`additional
`arguments
`
`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],
`
`[0023]; POR 17-23. Thus, Ohsaki would have taught a POSITA that Petitioner’s
`
`proposed circular convex cover would not improve adhesion.
`
`
`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 Dr. Kenny included no such anatomical figures
`
`and cited no evidence supporting his opinion. Ex. 2027 248:18-249:6, 254:17-
`
`255:11; Ex. 1050 ¶25. Dr. Kenny likewise agreed user anatomy plays a role in
`
`preventing motion, but again provided no analysis or evidence other than his
`
`conclusory statement. Ex. 2027 158:16-159:8; Ex. 1050 ¶25.
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`-8-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`Second, Petitioner asserts that Ohsaki “nowhere describes ‘translucent board
`
`8’ and ‘detecting element 2’ as having the same shape.” Reply 12. But Masimo
`
`never argued that Ohsaki discloses that its “translucent board 8” and “detecting
`
`element 2” must have an identical shape. Masimo explained why a POSITA
`
`would understand Ohsaki’s board has a longitudinal shape and why a POSITA
`
`would not have been motivated to use a longitudinally shaped board in Petitioner’s
`
`proposed circular combination. POR 13-15, 17-25.
`
`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, 19-20. 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) (emphasis omitted).
`
`Fourth, Petitioner argues a POSITA is “a person of ordinary creativity,” and
`
`“bodily incorporation” of Ohsaki’s features is not necessary. Reply 15. But
`
`Petitioner’s resulting combination eliminates the longitudinal directionality
`
`Ohsaki describes as important to avoid slipping. POR 17-23. Petitioner never
`
`explains how a POSITA’s “creativity” would prevent a circular convex surface
`
`-9-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`from slipping on the wrist’s palm-side. Reply 15. 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 that “adhesion is improved by the
`
`‘longitudinal shape’ of ‘Ohsaki’s translucent board’.” Reply 12. 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 13-15, 17-23. 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
`
`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
`
`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 ¶¶70-73.
`
`-10-
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`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 12-16. That is also incorrect. Masimo additionally
`
`argued that the circular shape of Petitioner’s proposed combination leads to
`
`slipping. As illustrated below, Petitioner’s proposed circular sensor (and its
`
`convex surface) will negatively interact with the radius and ulna, resulting in
`
`slipping. POR 19-21; Ex. 2004 ¶¶49-51.
`
`
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`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 19-21. Petitioner’s arguments regarding
`
`the shape and orientation of Ohsaki’s board do not overcome Ohsaki’s express
`
`disclosures.
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`-11-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`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 limits its sensor to measurements from the
`
`wrist’s palm-side close to the arteries. POR 11-13, 16-17, 26-32. Aizawa
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`repeatedly teaches a flat surface improves adhesion on the wrist’s palm-side. POR
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`26-32; Ex. 2004 ¶¶61-67. 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—Aizawa’s required measurement site. POR 25-38; Ex. 2004
`
`¶¶61-78; Ex. 1009 ¶[0023], Figs. 3A-3B.4
`
`
`4 Dr. Kenny provided no analysis of Ohsaki’s Figures 3A-3B, which
`
`evaluate slipping at different measurement locations. Dr. Kenny confirmed
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`Indeed, Petitioner acknowledges Aizawa’s palm-side measurement
`
`requirement. Reply 18. 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.
`
`Reply 18. But a tendency to slip is the opposite of Petitioner’s “improved
`
`adhesion” motivation. POR 25-38. A POSITA would have credited both
`
`Aizawa’s and Ohsaki’s teachings and concluded that changing the flat adhesive
`
`plate in Aizawa’s palm-side sensor 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
`
`first points to Ohsaki’s claim 1, which refers to the “back side of a user’s wrist or a
`
`user’s forearm.” Id. (emphasis in original). But Ohsaki discloses a “wristwatch-
`
`type” device (Ex. 1009 Title), and thus the “forearm” refers to the same anatomical
`
`junction—not some other measurement location. POR 18-21, 35; Ex. 2004 ¶¶48-
`
`53, 74. Petitioner also points to Ohsaki’s claim 5 and states that the claim does not
`
`mention “a backside of the wrist or forearm.” Reply 17. But Ohsaki’s claim 5
`
`likewise does not mention a convex surface. Indeed, Ohsaki’s claim 5 requires a
`
`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.
`
`-13-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`sensor arranged “in a longitudinal direction of the user’s arm,” further supporting
`
`Masimo’s position.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. Id. 19-20. 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 have provided an
`
`additional adhesive effect that would have reduced the tendency of that plate to
`
`slip.” Reply 20. Petitioner again does not explain the “creative steps” a POSITA
`
`might take. “Creative steps” would not lead a POSITA to ignore both Aizawa’s
`
`5 Ohsaki’s other claims also support Masimo’s position. For example,
`
`claims 1 and 2 specify a convex surface used on the back side of the wrist or
`
`forearm. Ex. 1009 Claims 1, 2. Claim 6 requires a longitudinal shape and
`
`orientation incompatible with Petitioner’s proposed circular sensor. See Ex. 1009
`
`Claim 6 (depending from claim 5).
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`Apple v. Masimo
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`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
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`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
`Petitioner Contradicts Its Admissions
`a)
`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 38-44. 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:
`
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`Petitioner’s Illustration, IPR2020-01520 (Ex. 2019 at 45)
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`-15-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`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 ¶¶80-81.
`
`None of Petitioner’s reply arguments overcome these admissions. Instead,
`
`Petitioner argues that a “pattern of incoming light cannot be focused by a convex
`
`lens towards any single location,” suggesting that Masimo’s position is that a
`
`convex cover somehow focuses all light at a central point. Reply 30; see also id.
`
`(“the light rays…cannot be focused to a single point”), 25 (“cannot focus all
`
`incoming light toward the sensor’s 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 center and away
`
`from Aizawa’s peripheral detectors. POR 39-41; Ex. 2004 ¶¶83, 86.
`
`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 22. Petitioner claims that “[f]ar from being a
`
`new theory, this core concept is applied in Aizawa.” Id. 25. As support, Petitioner
`
`quotes a stray statement from Aizawa that the “same effect can be obtained
`
`-16-
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`
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`when…a plurality of light emitting diodes 21 are disposed around the
`
`photodetector 22.” Id. (quoting Ex. 1006 ¶[0033]). However, Petitioner’s cited
`
`paragraph does not even discuss optics. Moreover, Petition points to nothing in its
`
`initial papers raising the principle of reversibility. Id. 24-25. Petitioner’s new
`
`theory is improper, denying 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-
`
`23. This argument assumes conditions that are not present when tissue scatters and
`
`absorbs light. Even Petitioner admits that tissue randomly scatters and absorbs
`
`light rays, which would cause forward and reverse light paths to be unpredictable
`
`and very likely different. See id. 25-26 (reflectance-type sensors measure
`
`“random” light that was “reflected, transmitted, absorbed, and scattered by the skin
`
`and other tissues and the blood before it reaches the detector”); Ex. 2027 188:6-17,
`
`29:11-30:7, 31:8-32:3, 38:17-42:6. Petitioner never explains how the principle of
`
`reversibility could apply to such “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 (reiterating random path and absorbance),
`
`38:17-40:13, 40:14-42:6 (“Every photon tracing that particular path…would have a
`
`-17-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`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. 1051 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.
`
`Petitioner accordingly misapplies the principle of reversibility to the
`
`proposed combination. 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 22-23. Petitioner illustrates this argument with yet another new theory of
`
`-18-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`“aggregate” reversibility, which stiches together different rays produced from
`
`different random scattering events. Reply 24. Petitioner’s aggregate ray theory
`
`does not address the question of how a change from a flat to convex surface would
`
`redirect more light towards the center and away from peripheral detectors. As
`
`Petitioner previously illustrated, a convex surface redirects incoming light towards
`
`the center as compared to a flat surface. Ex. 2019 at 45.
`
`
`Petitioner’s Illustration, IPR2020-01520 (Ex. 2019 at 45)
`
`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. As Dr. Kenny testified, 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
`
`
`6 Contrary to Petitioner’s argument, Reply 24, Dr. Madisetti did not “express
`
`ignorance” of Fermat’s principle: his testimony referred to “a stationary OPL,” an
`
`-19-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
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`Petitioner’s Other New Theories Are Similarly Misplaced
`c)
`Petitioner next argues that Masimo “ignores the behavior of scattered light in
`
`a reflectance-type pulse sensor.” Reply 25. Not so. Masimo’s arguments directly
`
`address a reflectance-type pulse sensor, and Masimo cited Petitioner’s and Dr.
`
`Kenny’s admissions about how a convex surface redirects incoming light. POR
`
`38-44. Petitioner then raises a series of new arguments against a position that
`
`Masimo never took—that a convex surface focuses all light to a single point.
`
`Reply 25-27. 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 a slight
`
`refracting effect, such that light rays that may have missed the detection area are
`
`instead directed toward that area as they pass through the interface provided by the
`
`cover.” Reply 27. But that directly undermines Petitioner’s provided motivation
`
`“to include a lens/protrusion…similar to Ohsaki’s” to “improve detection
`
`efficiency.” Id. 7 (citing Ex. 1003 ¶¶66-73). This new “slight refracting effect”
`
`argument trivializes Petitioner’s proposed motivation and conflicts with its prior
`
`
`undefined term in the passage about which he was asked. Ex. 1054 89:12-19.
`
`Indeed, Dr. Madisetti’s earlier testimony cited “Fermat’s law.” Id. 33:17-34:13.
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`-20-
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`IPR2020-01713 – Patent 10,624,564
`Apple v. Masimo
`
`admissions that “the incoming light is ‘condensed’ toward the center” (Ex. 2020 at
`
`69-70).
`
`Even if the theory had merit, however, it would be unavailing because it fails
`
`to consider the greater decrease in light at the detectors due to light redirection to a
`
`more central location. See Ex. 2027 19:16-21:8. As Dr. Kenny confirmed, the
`
`circle of backscattered light’s intensity “decreases with the square of the distance”
`
`between the central emitter and peripheral detectors. Ex. 2027 49:17-50:13, 57:10-
`
`22; see also Ex. 1014 at 2 (“The intensity of the backscattered light decreases in
`
`direct proportion to the square of the distance between the photodetector and the
`
`LEDs”.). Thus, any purported signal obtained from light redirected from the
`
`sensor’s edge would be relatively weak and fail to make up for the much greater
`
`loss of signal strength when light is redirected away from the detectors and towards
`
`a more central position. See id.
`
`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 27-29. But Masimo’s patent makes no such distinction.
`
`See POR 40-41. Moreover, Dr. Kenny admitted “one of ordinary skill i
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