Filed July 23, 2021
`
`
`On behalf of Patent Owner Masimo Corporation
`By:
`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: AppleIPR2020-1714-765@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01714
`U.S. Patent 10,631,765
`
`
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`On behalf of Patent Owner Masimo Corporation
`By:
`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: AppleIPR2020-1714-765@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01714
`U.S. Patent 10,631,765
`
`
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION .................................................................................... 1
`
`II. MASIMO’S PIONEERING TECHNOLOGY ......................................... 5
`
`A.
`
`B.
`
`C.
`
`The ’765 Patent Claims .................................................................. 6
`
`Introduction To Independent Claims ............................................. 7
`
`The ’765 Patent Prosecution .......................................................... 9
`
`III. THE PETITION’S PROPOSED COMBINATIONS ............................... 9
`
`IV. CLAIM CONSTRUCTION ..................................................................... 9
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART .................................... 10
`
`VI. LEGAL STANDARD ............................................................................ 10
`
`VII. GROUND 1 FAILS TO DEMONSTRATE OBVIOUSNESS .............. 12
`
`A. Ground 1’s Cited Art And Asserted Combination ....................... 12
`
`1.
`
`2.
`
`3.
`
`4.
`
`Petitioner’s Combination Of Ohsaki And
`Mendelson ’799.................................................................. 12
`
`Dr. Kenny’s Erroneous Characterization Of Ohsaki ......... 17
`
`Petitioner’s Addition Of A Third Reference: Schulz ....... 19
`
`Petitioner’s Addition Of A Fourth Reference:
`Mendelson 2006 ................................................................. 21
`
`B. A POSITA Would Not Have Been Motivated To Combine
`Ohsaki’s Board With Mendelson ’799’s Sensor .......................... 22
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`1.
`
`A POSITA Would Have Understood That Ohsaki’s
`Rectangular Board Is Incompatible With Mendelson
`’799’s Radially Symmetric Sensor Arrangement .............. 23
`
`2.
`
`3.
`
`a) Modifying Ohsaki’s Rectangular Board Would
`Eliminate The Advantages Ohsaki Teaches ............ 23
`
`b)
`
`A POSITA Would Not Have Been Motivated
`To Add A Rectangular Board To Mendelson
`’799’s Circular Sensor ............................................. 29
`
`A POSITA Would Have Understood That Ohsaki’s
`Required Measurement Location Would Result In
`Weak Signals For Mendelson ’799’s Oxygen
`Saturation Measurements ................................................... 32
`
`A POSITA Would Not Have Been Motivated To
`Reduce Optical Signal By Adding A Convex Lens To
`Mendelson ’799’s Sensor ................................................... 38
`
`a)
`
`b)
`
`c)
`
`A POSITA Would Have Understood That A
`Convex Cover Directs Light To The Center Of
`The Sensor ............................................................... 38
`
`A POSITA Would Have Sought To Avoid The
`Air Gaps Introduced By Ohsaki’s Rectangular
`Board ........................................................................ 43
`
`A POSITA Would Not Have Selected A
`Convex Cover To Protect The Optical
`Elements .................................................................. 45
`
`C. A POSITA Would Not Have Been Motivated To Decrease
`Signal Strength From The Measurement Site With A
`Window Taught By Schulz .......................................................... 47
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`D.
`
`E.
`
`F.
`
`Petitioner’s Fourth Reference, Mendelson 2006, Further
`Undermines Petitioner’s Combination ......................................... 52
`
`The Petition Provides No Evidence Of An Expectation Of
`Success ......................................................................................... 55
`
`The Challenged Dependent Claims Are Nonobvious Over
`Ground 1 ....................................................................................... 56
`
`1.
`
`2.
`
`3.
`
`The Challenged Dependent Claims Are Not Obvious
`For At Least The Same Reasons That The
`Independent Claims Are Not Obvious ............................... 56
`
`Claims 7 And 26, And Dependent Claims ......................... 56
`
`Claim 29 ............................................................................. 59
`
`VIII. GROUND 2 FAILS TO DEMONSTRATE OBVIOUSNESS .............. 63
`
`IX. GROUND 3 FAILS TO DEMONSTRATE OBVIOUSNESS .............. 63
`
`X. GROUND 4 FAILS TO DEMONSTRATE OBVIOUSNESS .............. 63
`
`XI. CONCLUSION ....................................................................................... 64
`
`
`
`
`
`
`
`-iii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ................................................................... 11
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ................................................................... 10
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ................................................................... 56
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ..................................................................... 11
`
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ................................................................... 42
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ................................................................... 11
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ................................................................... 12
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ................................................................... 11
`
`Pers. Web Techs. v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................... 42, 43
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ................................................... 10
`
`In re Royka,
`490 F.2d 981 (C.C.P.A. 1974) ..................................................................... 11
`
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ................................................................... 11
`
`-iv-
`
`
`
`TABLE OF AUTHORITIES
`(Cont’d)
`
`OTHER AUTHORITIES
`
`Page No(s).
`
`35 U.S.C. § 312 ................................................................................................. 43
`
`37 C.F.R. § 42.100 ............................................................................................ 10
`
`
`
`
`
`-v-
`
`
`
`IPR2020-01714
`Apple Inc. v. Masimo Corporation
`
`I.
`
`INTRODUCTION
`
`Petitioner’s obviousness challenge fails because it attempts to combine
`
`references that are fundamentally incompatible. Petitioner’s modifications
`
`undermine the operation of the combination, resulting in a device that is inferior to
`
`the device of each of the unmodified references.
`
`Specifically, Petitioner seeks to combine Ohsaki’s rectangular-shaped
`
`convex translucent board (red, below left) as a cover over Mendelson ’799’s
`
`circular array of detectors (yellow, below right).
`
`
`Emitter
`
`
`
`Detector
`
`Rectangular
`Translucent
`Board
`
`
`
` Emitter
`
`Detectors
`
`Emitter
`
`Emitter
`
`
`
`
`
` Ohsaki (color added)
`
`
`
` Mendelson ’799 (color added)
`
`Petitioner is inconsistent in describing its proposed combination. Petitioner relies
`
`on Dr. Kenny, who states a cover “would simply be placed over the components”
`
`in Mendelson ’799 (above right), and then assumes the cover “would perform the
`
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`IPR2020-01714
`Apple Inc. v. Masimo Corporation
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`same function as taught by Ohsaki.”1 Ex. 1003 ¶100; Pet. 29 (citing Ex. 1003
`
`¶100). But, notwithstanding the rectangular shape of Ohsaki’s board, Petitioner
`
`illustrates a resulting combination (id. 29) with a circular cover (red below) over
`
`the optical components of Mendelson ’799’s sensor.
`
`Petitioner’s Proposed Combination (Pet. 29)
`
`
`
`Petitioner never explains why or how a POSITA would change Ohsaki’s
`
`rectangular board into a circular cover. As discussed below, changing Ohsaki’s
`
`rectangular board into a circle would eliminate the rectangular shape Ohsaki
`
`explains is required for its benefits. Likewise, as explained below, adding
`
`
`1 Emphasis supplied unless otherwise noted.
`
`2
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`IPR2020-01714
`Apple Inc. v. Masimo Corporation
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`Ohsaki’s rectangular board onto Mendelson ’799’s circular structure would disrupt
`
`the circular shape Mendelson ’799 explains is required for its benefits.
`
`Petitioner simply ignores these and other critical differences between these
`
`references. First, Ohsaki is a simple pulse wave sensor that measures pulse rate
`
`with one detector and one emitter that must be used on the backhand (i.e., watch)
`
`side of the wrist for any purported beneficial effect. In contrast, Mendelson ’799 is
`
`a pulse oximetry sensor that measures blood oxygen saturation with a dozen
`
`detectors and at least three different wavelengths of light. A POSITA seeking to
`
`improve a pulse oximetry sensor would have avoided the backhand side of the
`
`wrist—Ohsaki’s mandatory measuring location—as providing insufficient signal.
`
`Second, Mendelson ’799 uses its circular detector arrangement to reduce
`
`errors from aberrant measurements. Disturbing the symmetric environment of
`
`Mendelson ’799 would eliminate its ability to double-check similar measurements
`
`against each other and reduce errors. In contrast, Ohsaki uses a longitudinal
`
`structure in a specific orientation on the back side of the wrist to reduce motion.
`
`Eliminating Ohsaki’s longitudinal structure would eliminate Ohsaki’s benefit of
`
`reduced sensor movement. The combination of Mendelson ’799 and Ohsaki would
`
`either disrupt Mendelson ’799’s symmetry, or Ohsaki’s longitudinal directionality,
`
`or both. The references are simply incompatible.
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`IPR2020-01714
`Apple Inc. v. Masimo Corporation
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`Third, Petitioner’s combination detrimentally places a convex-shaped cover
`
`over Mendelson ’799’s peripherally located detectors. A POSITA would have
`
`expected such a cover to undesirably direct light toward the center of the sensor
`
`and away from the peripheral detectors, reducing light collection. A POSITA
`
`would not have been motivated to decrease signal strength, particularly given the
`
`importance Mendelson ’799 placed on strong signals for pulse oximetry.
`
`In short, Ohsaki and Mendelson ’799 employ (1) different sensor structures
`
`(rectangular versus circular), (2) for different measurements (pulse rate versus
`
`oxygen saturation), and (3) in different measurement locations (wrist backhand
`
`versus avoiding wrist backhand). A POSITA would not have been motivated to
`
`combine these fundamentally different references, much less reasonably expected
`
`such a combination to be successful.
`
`To address additional claim limitations, Petitioner is also forced to add two
`
`more references to its already strained combination: Schulz and Mendelson 2006.
`
`Petitioner argues a POSITA would have added Schulz “to guard against saturation”
`
`of the detectors. Pet. 30. But there is no evidence saturation was a problem for
`
`Ohsaki or Mendelson ’799. Indeed, the motivation for Petitioner’s combination of
`
`Ohsaki and Mendelson ’799 is to “improve[] signal strength” (id. 29)—the
`
`opposite of Schulz’s goal of reducing light reaching the detectors. Moreover,
`
`Schulz discloses a single aperture that limits light to the detector, not multiple
`
`4
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`IPR2020-01714
`Apple Inc. v. Masimo Corporation
`
`different windows, as required by the claims. Indeed, none of Ground 1’s four
`
`references disclose a sensor where “each of the at least four detectors has a
`
`corresponding window” (Ex. 1001 Claims 1, 21).
`
`Finally, Petitioner claims Mendelson 2006 would have motivated a POSITA
`
`to wirelessly transmit information or data to a PDA’s touchscreen display. Pet. 37-
`
`40. But Petitioner ignores Mendelson 2006’s teachings as a whole. Mendelson
`
`2006 teaches the benefits of a single detector placed on the forehead. A POSITA
`
`would have understood Mendelson 2006’s forehead-sensor approach to be distinct
`
`from Ohsaki’s wrist-worn approach and Schulz’s ear-clip approach. Accordingly,
`
`a POSITA looking at Mendelson 2006’s full disclosure would have been led away
`
`from Petitioner’s combination. The Board should affirm the patentability of the
`
`’765 Patent’s challenged 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 and employs over 6,300 people worldwide, with annual revenues of
`
`over $1.1 billion. A host of manufacturers use Masimo’s technology in their
`
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`IPR2020-01714
`Apple Inc. v. Masimo Corporation
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`devices, including Philips, Atom, Mindray North America, GE Medical, Spacelabs,
`
`and Zoll.
`
`A. The ’765 Patent Claims
`
`Masimo’s U.S. Patent No. 10,631,765 (“’765 Patent”) discloses and claims a
`
`physiological measurement system that uses an innovative design to improve
`
`detection efficiency. Masimo’s claimed sensor and measurement device use
`
`multiple detectors, one or more emitters, and a cover with a protrusion that works
`
`with a wall surrounding the detectors, enhancing sensor and device effectiveness.
`
`The protrusion thins out the measurement site so the measured tissue attenuates
`
`less light. Ex. 1001 7:46-51. The protrusion further increases the area from which
`
`attenuated light can be measured. Id. 7:51-53. The wall connecting the cover and
`
`substrate also maximizes the amount of light that impinges on the detectors, further
`
`increasing the signal strength. Id. 36:35-41. Windows can, inter alia, be used to
`
`direct light from the measurement site to the photodetectors. See, e.g., id. 19:28-
`
`38. 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. 9:18-23;
`
`see also id. 3:13-24, 4:16-27. The inventors discovered these features work
`
`together to provide greater noise cancellation and an order of magnitude increase
`
`in signal strength. Id. 9:18-23, 20:14-30; see also id. 3:13-23, 4:16-27; Ex. 2004
`
`¶27.
`
`6
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`IPR2020-01714
`Apple Inc. v. Masimo Corporation
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`B.
`
`Introduction To Independent Claims
`
`The ’765 Patent has two independent claims: claims 1 and 21.2 Each is
`
`directed to a physiological measurement system including, among other things: (1)
`
`one or more emitters configured to emit light into tissue of a user, (2) at least four
`
`detectors wherein each of the at least four detectors has a corresponding window
`
`that allows light to pass through to the detector, (3) a wall that surrounds the at
`
`least four detectors, (4) a cover comprising a protruding convex surface, and (5) a
`
`handheld computing device in wireless communication with the physiological
`
`sensor device. See Ex. 1001 Claims 1, 21. Claim 1 illustrates the many interacting
`
`features described in the ’765 Patent. Claim 1 reads:
`
`1. A physiological measurement system comprising:
`
`a physiological sensor device comprising:
`
`one or more emitters configured to emit light into tissue of a
`
`user;
`
`at least four detectors, wherein each of the at least four
`
`detectors has a corresponding window that allows light to pass
`
`through to the detector;
`
`a wall that surrounds at least the at least four detectors; and
`
`
`2 Appendix A reproduces the claims with bracketed labels for convenience.
`
`7
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`IPR2020-01714
`Apple Inc. v. Masimo Corporation
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`a cover comprising a protruding convex surface, wherein the
`
`protruding convex surface is above all of the at least four detectors,
`
`wherein at least a portion of the protruding convex surface is rigid,
`
`and wherein the cover operably connects to the wall; and
`
`a handheld computing device in wireless communication with the
`
`physiological sensor device, wherein the handheld computing device
`
`comprises:
`
`one or more processors configured to wirelessly receive one or
`
`more signals from the physiological sensor device, the one or more
`
`signals responsive to at least a physiological parameter of the user;
`
`a touch-screen display configured to provide a user interface,
`
`wherein:
`
`the user interface is configured to display indicia
`
`responsive to measurements of the physiological parameter, and
`
`an orientation of the user interface is configurable
`
`responsive to a user input; and
`
`a storage device configured to at least temporarily store at least
`
`the measurements of the physiological parameter.
`
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`IPR2020-01714
`Apple Inc. v. Masimo Corporation
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`C. The ’765 Patent Prosecution
`
`During prosecution, the Examiner agreed that the claimed combination of
`
`features—including multiple detectors, each with a corresponding window, in
`
`conjunction with a cover comprising a protruding convex surface—provided a
`
`patentable advance unique in the field. Ex. 1002 at 99-100. Petitioner’s references
`
`do not differ significantly from the prior art the Examiner considered and found
`
`does not teach or suggest the claimed invention.
`
`III. THE PETITION’S PROPOSED COMBINATIONS
`
`In an attempt to replicate the many interacting features of Masimo’s claims,
`
`Petitioner combines four references, and for certain claims, adds a fifth.
`
`Specifically, for Ground 1, which challenges claims 1-8, 10-13, 15-16, and 20-29,
`
`Petitioner combines Mendelson ’799 (Ex. 1012), Ohsaki (Ex. 1009), Schulz (Ex.
`
`1013), and Mendelson 2006 (Ex. 1010). Pet. 10. For each of Grounds 2-4,
`
`Petitioner adds a fifth reference to its proposed combination. Specifically, for
`
`Ground 2, which challenges claim 9, Petitioner adds Bergey (Ex. 1016); for
`
`Ground 3, which challenges claim 14, Petitioner adds Goldsmith (Ex. 1011); and
`
`for Ground 4, which challenges claims 17-19, Petitioner adds Aizawa (Ex. 1006).
`
`IV. CLAIM CONSTRUCTION
`
`Petitioner identifies no terms for construction. The Board should give the
`
`claim
`
`terms
`
`their ordinary and customary meaning, consistent with
`
`the
`
`9
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`IPR2020-01714
`Apple Inc. v. Masimo Corporation
`
`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 that 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. 9. Alternatively, Petitioner asserts a POSITA could have “a
`
`Master of Science degree in a relevant academic discipline with less than a year of
`
`related work experience in the same discipline.” 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 ¶¶32-35.
`
`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)
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`(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) (citation omitted).
`
`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.
`
`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
`
`11
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`IPR2020-01714
`Apple Inc. v. Masimo Corporation
`
`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 and citations omitted).
`
`VII. GROUND 1 FAILS TO DEMONSTRATE OBVIOUSNESS
`
`A. Ground 1’s Cited Art And Asserted Combination
`
`Ground 1 first combines Ohsaki with Mendelson ’799. These references,
`
`however, disclose two different physiological monitor designs with distinct shapes,
`
`features, and detector and emitter configurations. Ground 1 then adds Schulz to
`
`address a non-existent problem—saturation of the detectors. Finally, Petitioner
`
`adds a fourth reference, Mendelson 2006, which confirms a POSITA would not
`
`have combined Ohsaki and Mendelson ’799 into a wrist-worn device in the first
`
`place, and certainly would not have looked to Schulz to reduce the amount of
`
`detected light.
`
`1.
`
`Petitioner’s Combination Of Ohsaki And Mendelson ’799
`
`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 ¶37.
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`
`
`Ohsaki’s linearly arranged detector and emitter (above) result in a longitudinal
`
`shape and direction that Ohsaki explains is important 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
`
`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
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`user’s wrist 4 in this way.” Id.; Ex. 2004 ¶37.
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`In contrast, Mendelson ’799 (below) discloses an oxygen saturation sensor
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`that includes no protruding cover and uses a circular array of multiple detectors
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`surrounding multiple LEDs. Ex. 1012 Fig. 7; see also id. 1:11-13 (“This invention
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`is generally in the field of pulse oximetry, and relates to a sensor for use in a pulse
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`oximeter, and a method for the pulse oximeter operation.”).
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`
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`Mendelson ’799 explains that its radial symmetry is an important part of its sensor
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`design. See, e.g., id. 4:59-65 (a “radially-symmetric photodetector array can help
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`to maximize the detection of backscattered light from the skin”), 12:35-13:11
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`(using symmetrical array to identify aberrant measurements); Ex. 2004 ¶42.
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`Petitioner argues a POSITA would have added Ohsaki’s translucent board—
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`designed for a linear pulse sensor—to Mendelson ’799’s circular oximeter. Pet.
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`27-28. But Petitioner inconsistently describes its own combination. Petitioner
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`relies on Dr. Kenny to argue that a cover “would simply be placed over the
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`components” in Mendelson ’799 and then assumes the cover “would perform the
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`same function as taught by Ohsaki.” Ex. 1003 ¶100; Pet. 29 (citing Ex. 1003
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`¶100). However, Petitioner then illustrates the resulting combination (Pet. 29) with
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`a circular cover (in red) over Mendelson ’799’s optical components. Ex. 2004
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`¶¶43-44.
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`
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`Petitioner’s Illustration Of Its Alleged Combination (Pet. 29)
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`Petitioner’s combination also adds features found nowhere in the cited
`
`references, with no motivation or explanation for why a POSITA would have
`
`added these features. For example, Petitioner’s combination shows a cover
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`(below, top in red) spanning the entire space above the substrate:
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`Top: Petitioner’s Figure (Pet. 47) (additional color and annotation added)
`Bottom: Ohsaki Ex. 1009 Fig. 2 (color added)
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`In contrast, Ohsaki places its translucent board (above, bottom in red) in an
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`opening within the top of the package. Ex. 1009 Fig. 2; ¶[0017]. In addition,
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`Petitioner’s combination includes a wall with notches for the cover (illustrated
`
`above, within circles). Neither Mendelson ’799, Ohsaki (above, bottom), nor any
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`other of Petitioner’s cited Ground 1 references include this notched wall feature.
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`Ex. 2004 ¶¶45-46.
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`In his declaration, Dr. Kenny does not explain these changes, and he
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`admitted in deposition that no reference discloses this structure. Ex. 2008 205:21-
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`208:19. Petitioner’s addition of a notch is significant: the notch insets the cover
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`into the wall, which changes the cover’s height relative to the underlying optical
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`components. The notch results in a sensor with a light shield shorter than the
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`surrounding wall. A POSITA would have expected each of Petitioner’s
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`unexplained modifications to impact sensor performance. Ex. 2004 ¶¶45-46.
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`2.
`
`Dr. Kenny’s Erroneous Characterization Of Ohsaki
`
`At his deposition in a related proceeding, Dr. Kenny injected even more
`
`confusion into Petitioner’s combinations. As discussed below in Section VII.B.3.a,
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`Dr. Kenny distanced himself from Petitioner’s illustration of its combination,
`
`disclaiming almost any specific three-dimensional structure. Ex. 2008 57:19-
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`58:16, 59:18-60:9; see also id. 30:5-18, 31:13-32:5, 35:5-36:16, 36:17-37:5, 214:2-
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`11, 215:8-14. Dr. Kenny testified he did not know the shape of Ohsaki’s board
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`and that Ohsaki’s board could be “circular or square or rectangular.” Ex. 2008
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`68:21-70:1, 71:7-72:10.
`
`Dr. Kenny is incorrect. Ohsaki illustrates two cross-sectional views of the
`
`board that confirm it is rectangular. Ex. 2004 ¶¶38-41. Specifically, Ohsaki
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`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) of a user’s wrist. Ex. 1009 ¶[0019]; see also id. ¶[0017] (“detecting
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`element” is made up of “package 5, a light emitting element 6 (e.g., LED), a light
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`receiving element 7 (e.g., PD), and a translucent board 8.”); Ex. 2004 ¶¶38-41.
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`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
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`“short” side of Ohsaki’s detecting element (2) that extends from left to right in
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`Figure 1 and in the circumferential direction (around) of the user’s wrist. Ex. 1009
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`¶¶[0012], [0019]; see also Ex. 2008 118:3-119:7, 120:5-13, 121:3-15 (Dr. Kenny
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`confirming longitudinal directionality); Ex. 2004 ¶¶38-41. As shown in Figure 1
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`above, the board’s length (8, blue) is much shorter than the detecting element’s
`
`length (2, purple) in the circumferential direction. Ex. 2004 ¶¶38-41.
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`Taken together, a POSITA would have understood that Ohsaki’s figures and
`
`description show that the board (8) has a very pronounced longitudinal
`
`directionality and is much longer than it is wide. Ex. 1009 ¶¶[0012], [0017],
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`[0019], Figs. 1, 2; Ex. 2004 ¶38-41. A POSITA would have understood that the
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`top-down view of Ohsaki’s sensor, including the package, board, and emitter and
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`detector, would look approximately like the figure below:
`
`
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`Drawing based on Ohsaki, illustrating the sensor’s rectangular shape
`(Ex. 2004 ¶40)
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`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 ¶38-41.
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`3.
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`Petitioner’s Addition Of A Third Reference: Schulz
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`To try and meet the claim requirement of “at least four detectors, wherein
`
`each of the at least four detectors has a corresponding window that allows light to
`
`pass through to the detector,” (Ex. 1001 Claims 1, 21) Petitioner adds a third
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`reference: Schulz. Schulz’s sensor uses a window in opaque material to block a
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`“proper amount of light” coming from the tissue measurement site and avoid
`
`saturation of the detector. Ex. 1013 ¶[0073]. Petitioner argues a POSITA would
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`have combined Schulz with Ohsaki and Mendelson ’799 “to guard against
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`saturation.” Pet. 30. But Petitioner provides no evidence a POSITA would have
`
`expected detector saturation in Ohsaki, Mendelson ’799, or the proposed
`
`combination. Pet. 30-34. Likewise, Petitioner provides no evidence a POSITA
`
`would have been motivated to decrease the optical signal strength in the sensor of
`
`Ohsaki, Mendelson ’799, or the proposed combination. Id. To the contrary,
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`Petitioner argues a POSITA would have been motivated to combine Ohsaki and
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`Mendelson ’799 by the desire for “improved signal strength.” Pet. 29. Moreover,
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`Schulz does not even disclose the use of a corresponding window for each of at
`
`least four detectors—it discloses a single window that limits light coming from the
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`tissue measurement site. Ex. 1013 ¶[0073]; Ex. 2004 ¶49.
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`In addition, Schulz is generally directed to an ear sensor, which measures
`
`light passing through, e.g., the thin earlobe structure. Ex. 1013 Title, Abstract, Fig.
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`1, ¶¶[0033], [0065]. In contrast, Ohsaki requires that its sensor be used on the
`
`backhand side of the wrist. See, e.g., Ex. 1009 Title, Abstract; Section VII.A.1,
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`supra, VII.B.1-2, infra. Mendelson ’799 likewise does not indicate its sensor can
`
`be used on the ear and instead contrasts its reflectance sensor with transmission
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`sensors attached to an earlobe. Ex. 1012 2:8-13; Ex. 2004 ¶49. Petitioner never
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`accounts for these differences.
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`4.
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`Petitioner’s Addition Of A Fourth Reference: Mendelson 2006
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`Finally, Petitioner adds a fourth reference, Mendelson 2006, to address the
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`claim requirement of “a handheld computing device in wireless communication
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`with the physiological sensor device.” Ex. 1001 Claims 1, 21. Petitioner argues a
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`POSITA would have been motivated to combine Mendelson 2006 with the other
`
`three references to wirelessly transmit data to a touch-screen display. Pet. 37-
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`40. But Mendelson 2006 as a whole further demonstrates that a POSITA would
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`not have been motivated to combine Ohsaki and Mendelson ’799 in the first place.
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