Filed December 10, 2021
`
`By:
`
`
`On behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (949) 760-9502
`Tel.: (949) 760-0404
`E-mail: AppleIPR2020-1714-765@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
`Patent 10,631,765
`
`
`
`
`
`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
`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
`Patent 10,631,765
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO REPLY
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION .................................................................................... 1
`
`II. ARGUMENT ............................................................................................ 2
`
`A. A POSITA Would Have Understood That Ohsaki’s Board
`Is Longitudinal And Even Small Changes Result In
`Slippage .......................................................................................... 2
`
`1.
`
`2.
`
`Ohsaki’s Board Is Longitudinal ........................................... 2
`
`Petitioner’s Additional Arguments Regarding Ohsaki
`Are Unpersuasive ................................................................. 8
`
`B.
`
`Petitioner Incorrectly Asserts Ohsaki’s Board Prevents
`Slipping “At Virtually Any Measurement Location” .................. 11
`
`C. A Convex Cover Does Not Enhance Mendelson ’799’s
`Light-Gathering Ability ................................................................ 15
`
`1.
`
`2.
`
`Petitioner Contradicts Its Admissions And Evidence ........ 15
`
`A POSITA Would Have Avoided Ohsaki’s Air Gaps ....... 19
`
`D. A Convex Cover Would Be More Prone To Scratches ............... 21
`
`E.
`
`Petitioner Mischaracterizes Schulz’s Teachings .......................... 22
`
`F. Mendelson 2006 Underscores Petitioner’s Hindsight
`Reconstruction .............................................................................. 27
`
`G.
`
`H.
`
`Petitioner Fails To Show A Reasonable Expectation Of
`Success ......................................................................................... 28
`
`Petitioner’s Proposed Combination Includes Still-
`Unexplained Changes Impacting The Proposed
`Combination’s Functionality ........................................................ 28
`
`-i-
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`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`I.
`
`Claim 29 ....................................................................................... 29
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`III. CONCLUSION ....................................................................................... 31
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`
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`-ii-
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`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) ................................................................... 10
`
`DSS Tech. Mgmt., Inc. v. Apple Inc.,
`885 F.3d 1367 (Fed. Cir. 2018) ................................................................... 25
`
`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) ................................................................... 21
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) ................................................................... 27
`
`TQ Delta, LLC v. CISCO Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ..................................................................... 9
`
`
`
`-iii-
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`IPR2020-01714
`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 Masimo “avoids addressing the merits” of Petitioner’s
`
`three purported motivations to combine Mendelson ’799 and Ohsaki. Reply 2.
`
`That is incorrect. Petitioner’s first motivation was to “improve adhesion.” Id. 1.
`
`Masimo directly responded, pointing out that Petitioner’s proposed combination
`
`has a shape that Ohsaki indicates would tend to slip. Patent Owner Response
`
`(“POR”) 22-28. Rather than substantively respond, Petitioner argues Ohsaki has
`
`no particular shape and that Ohsaki’s benefit of reduced slipping would apply to
`
`any shaped sensor used at any body location. Reply 6-10. That contradicts
`
`Ohsaki, which illustrates its sensor’s long shape and explains how even slightly
`
`changing the sensor’s orientation or measurement location results in slipping. Ex.
`
`1009 Figs. 1, 2, 3A-3B, ¶¶[0019], [0023]. Petitioner has no response to these
`
`Ohsaki teachings and thus simply ignores them. Petitioner’s first motivation fails.
`
`Masimo also responded to Petitioner’s second motivation, a purported
`
`motivation to “improve detection efficiency.” Reply 1. As Masimo explained,
`
`Petitioner admitted adding a convex cover to Mendelson ’799’s sensor would
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`direct light away from the sensor’s peripherally located detectors. POR 38-43.
`
`Thus, a POSITA would have understood that Petitioner’s proposed combination
`
`decreases optical signal strength and detection efficiency—the opposite of
`
`Petitioner’s alleged motivation. Thus, Petitioner’s second motivation fails.
`
`Petitioner’s third motivation was to “provide additional protection to the
`
`elements” in the housing. Reply 1. 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 45-47. Petitioner now concedes the disadvantage of scratching
`
`and abandons the “protection” motivation. Reply 20.
`
`Accordingly, none of Petitioner’s asserted motivations demonstrate that a
`
`POSITA would have been led to Masimo’s innovative claimed technology. The
`
`Board should affirm the patentability of Masimo’s claims.
`
`II. ARGUMENT
`
`A. A POSITA Would Have Understood That Ohsaki’s Board Is
`Longitudinal And Even Small Changes Result In Slippage
`
`1. Ohsaki’s Board Is Longitudinal
`
`The petition argued adding Ohsaki’s rectangular board (blue, below) to
`
`Mendelson ’799’s circular sensor “would have amounted to nothing more than use
`
`of a known technique to improve similar devices in the same way.” Pet. 29.
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`Apple v. Masimo
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`Ohsaki Fig. 1 (left) & Fig. 2 (right) (annotated, POR 12-13)
`
`Petitioner asserted the combination would result in a circular convex cover
`
`(below) over the optical components of Mendelson ’799’s sensor. Pet. 28-29.
`
`
`
`Petitioner’s Combination (Pet. 29)
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`Apple v. Masimo
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`Petitioner never explained how or why a POSITA would change Ohsaki’s
`
`longitudinal board into a circular cover. That change would eliminate the
`
`longitudinal shape Ohsaki indicates prevents slipping. POR 17-19, 23-28.
`
`Lacking any credible basis to change the shape of Ohsaki’s board, Petitioner
`
`asserts Ohsaki’s board has no particular shape. Reply 6-10. Petitioner thus
`
`embraces the vague testimony of its declarant, Dr. Kenny, who refused to specify
`
`any particular three-dimensional structure for Ohsaki’s board or the proposed
`
`combination. See, e.g., Ex. 2008 57:19-58:16, 59:18-60:9, 213:17-214:11, 215:8-
`
`14. Dr. Kenny testified he did not know the shape of Ohsaki’s board and that the
`
`board could be “circular or square or rectangular.” Id. 68:21-70:1, 71:7-72:10; Ex.
`
`2027 162:15-20. Petitioner cannot allege Ohsaki’s board has no geometry while
`
`also arguing adding Ohsaki’s board is “a known technique to improve similar
`
`devices in the same way.” Pet. 29.
`
`Regardless, Ohsaki refutes Petitioner’s position. 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 17-19; Ex. 1009 ¶[0019].
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`IPR2020-01714
`Apple v. Masimo
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`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 ¶¶38-41)
`
`Petitioner argues “[a] POSITA would have known and understood that an elliptical
`
`or circular sensor or board configuration can also have a longitudinal structure or
`
`appearance under a cross-sectional view….” Reply 9. 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 Ohsaki’s board (8) and detecting element (2) both
`
`have a longitudinal shape (exemplified above right). POR 17-19; Ex. 2004 ¶¶38-
`
`41.
`
`Petitioner argues “Ohsaki never specifies that FIGS. 1 and 2 are different
`
`views of the same device.” Reply 10. But Ohsaki never describes Figures 1 and 2
`
`as illustrating different devices and instead discusses them in connection with each
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`-5-
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`Apple v. Masimo
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`other. See Ex. 1009 ¶¶[0016]-[0027]. Regardless, even considered separately,
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`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 a detecting element’s “long” side. Ex.
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`2004 ¶¶38-41. Petitioner cannot maintain these figures illustrate no geometry at
`
`all for the board. Reply 6-11.
`
`Ohsaki even explains why its sensor’s longitudinal shape and intended
`
`placement are important. Ohsaki teaches 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 forearm/wrist area’s
`
`particular bone structure to prevent slipping. POR 24-26; Ex. 2004 ¶¶53-54. 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.
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`Interaction of Ohsaki’s longitudinal structure with wrist/forearm (Ex. 2004 ¶53)
`
`Ohsaki expressly states aligning its longitudinal shape across the wrist
`
`(above right)—as opposed to 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 ¶¶55-56; POR 26-28.
`
`Petitioner has no answer to these arguments. Instead, Petitioner argues in a
`
`footnote that Dr. Kenny’s declaration demonstrates “the gap between the ulna and
`
`radius bones at the forearm is even greater than the gap between bones at the wrist,
`
`which is already wide enough to easily accommodate a range of sensor shapes.”
`
`Reply 11 n.3 (citing Ex. 1047 ¶25). But Dr. Kenny provided no evidence or
`
`analysis to support his assertions. In contrast, Dr. Madisetti explained Ohsaki
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`IPR2020-01714
`Apple v. Masimo
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`positions its sensor at the junction between the wrist and forearm, supporting his
`
`opinion with anatomical drawings. Ex. 2004 ¶53.1
`
`2.
`
`Petitioner’s Additional Arguments Regarding Ohsaki Are
`Unpersuasive
`
`Petitioner’s
`
`additional
`
`arguments
`
`regarding Ohsaki’s
`
`shape
`
`are
`
`unpersuasive. First, Petitioner argues there is nothing “requiring” Ohsaki’s board
`
`to have a longitudinal shape. Reply 10. But the issue is not what Ohsaki
`
`requires—the issue is what Ohsaki teaches to a POSITA. Ohsaki teaches its
`
`longitudinal shape is necessary to prevent slipping, directly undermining
`
`Petitioner’s alleged motivation. Indeed, Ohsaki teaches even small changes in
`
`sensor orientation or measurement location result in slippage. Ex. 1009 ¶¶[0019],
`
`[0023]; POR 23-28. Thus, Ohsaki would have taught a POSITA that Petitioner’s
`
`proposed circular convex cover would not improve adhesion.
`
`
`1 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 cited no such evidence supporting his opinion.
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`Ex. 2027 248:18-249:6, 254:17-255:11; Ex. 1047 ¶25. Dr. Kenny likewise agreed
`
`user anatomy plays a role in preventing motion, but again provided no analysis or
`
`evidence supporting his conclusory statements. Ex. 2027 158:16-159:8; Ex. 1047
`
`¶25.
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`Apple v. Masimo
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`Second, Petitioner asserts “nowhere does Ohsaki describe the ‘translucent
`
`board 8’ and ‘detecting element 2’ as having the same shape.” Reply 7. But
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`Masimo never argued 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 combination that has a circular structure. POR 17-19, 23-28.
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`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 4. 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 “person of ordinary skill is also a person of
`
`ordinary creativity,” and Ohsaki’s features need not be “bodily incorporated.”
`
`Reply 6. But putting aside Petitioner’s failure to explain how a POSITA would
`
`place Ohsaki’s longitudinal board onto Mendelson ’799’s circular sensor,
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`IPR2020-01714
`Apple v. Masimo
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`Petitioner’s resulting combination eliminates the longitudinal directionality
`
`Ohsaki describes as important to avoid slipping. POR 23-28.
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`Fifth, Petitioner claims Masimo argued it “is not the ‘convex surface’ that
`
`improves adhesion” but instead the “‘longitudinal shape.’” Reply 7. 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 17-19, 23-28. Ohsaki itself explains a sensor positioned
`
`across the user’s wrist “has a tendency to slip off.” Ex. 1009 ¶[0019]. Ohsaki also
`
`explains a convex surface on the palm-side of the user’s wrist “has a tendency to
`
`slip.” Id. ¶[0023], Figs. 3A-3B.2 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
`
`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 6-10. But Masimo additionally argued the circular shape
`
`
`2 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, 158:15-20; Ex. 2004 ¶57.
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`IPR2020-01714
`Apple v. Masimo
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`of Petitioner’s 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 26-28; Ex. 2004 ¶¶55-57.
`
`
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`Ohsaki expressly states its sensor helps prevent slipping when aligned with the
`
`user’s arm but nevertheless slips when positioned across the user’s wrist. Ex. 1009
`
`¶[0019]; see also id. ¶¶[0006], [0024]. As Masimo explained, Petitioner’s
`
`proposed circular sensor cannot avoid anatomical interactions that result in
`
`slipping. POR 26-28. None of Petitioner’s arguments regarding the shape and
`
`orientation of Ohsaki’s board overcome Ohsaki’s express disclosures.
`
`B.
`
`Petitioner Incorrectly Asserts Ohsaki’s Board Prevents Slipping “At
`Virtually Any Measurement Location”
`
`Petitioner also fails to overcome Ohsaki’s express disclosure that Ohsaki
`
`must be used on the wrist’s watch-side to prevent slipping. Ex. 1009 ¶[0023].
`
`Petitioner argues Ohsaki’s benefits are not specific to a particular side of the wrist.
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`Reply 11-12. But Ohsaki teaches the opposite: small changes in the measurement
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`location, including from the wrist’s watch-side to the palm-side, cause “a tendency
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`to slip.” Ex. 1009 ¶[0023]. Ohsaki illustrates this slipping in Figures 3A-3B,
`
`which the petition and reply both ignore. Ohsaki repeatedly 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].3
`
`A POSITA would have believed that the wrist’s watch-side would be an
`
`unsuitable measurement location for Mendelson ’799’s oximeter because the
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`wrist’s watch-side provides a weak and unpredictable signal and is distant from the
`
`wrist’s palm-side arteries. POR 22-23, 32-38. Mendelson’s work demonstrated
`
`the wrist’s watch-side is a particularly unsuitable measurement location for a
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`circular oximeter. See, e.g., Ex. 2003 at 3-4; POR 32-33. Petitioner fails to show
`
`why a POSITA starting with Mendelson ’799’s circular oximeter would look to
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`Ohsaki’s board. As discussed, Ohsaki explains its board only prevents slipping in
`
`a particular orientation on the wrist’s watch-side.4
`
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`3 Moreover, contrary to Petitioner’s argument that Ohsaki’s sensor can be
`
`used anywhere, Dr. Kenny testified it would not “be practical to place [Ohsaki’s]
`
`elements on the forehead or the earlobe or the leg, I think that’s obvious.” Ex.
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`2027 140:14-141:16.
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`4 Neither Dr. Kenny nor Petitioner analyzed Ohsaki’s Figures 3A-3B.
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`Instead, Petitioner relies on Ohsaki’s paragraphs 15, 17, 25, and Figures 4A-4B.
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`Petitioner acknowledges the difficulty of performing pulse oximetry on the
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`watch-side but argues that difficulty would have made a POSITA even more
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`motivated to use Ohsaki’s convex cover. Reply 12. But Petitioner never explains
`
`why a POSITA would have been motivated—contrary to conventional wisdom—to
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`use Mendelson ’799’s oximeter on the watch-side of the wrist in the first place.
`
`POR 32-38. A POSITA would have believed oximetry measurements at that
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`location, far from the wrist’s arteries, would be weak, noisy, and require
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`considerable pressure even to discern a signal. Id. Ohsaki’s design helps reduce
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`movement-related artifacts, but Ohsaki does not purport to improve a weak and
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`barely discernable signal. Compare Ex. 1009 Fig. 4A with Fig. 4B. Moreover, a
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`weak signal would be a significant issue because, as discussed below, Petitioner’s
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`proposed combination reduces the signal strength further by placing a convex
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`surface over an oximeter with detectors at the oximeter’s periphery. POR 38-43.
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`Petitioner asserts a POSITA would have “understood from Ohsaki that…a
`
`light permeable convex cover would have prevented slippage of Mendelson-’799’s
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`sensor when placed, for example, on either side of a user’s wrist or forearm.”
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`Reply 13-14.5 But Ohsaki states the opposite—that a convex surface “has a
`
`
`Reply 12. But Dr. Kenny confirmed those paragraphs and figures—unlike Figures
`
`3A-3B—do not address Ohsaki’s measurement location. Ex. 2027 136:12-140:13.
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`5 All emphasis is added unless otherwise noted.
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`tendency to slip” on the wrist’s palm-side. Ex. 1009 ¶[0023], Figs. 3A-3B
`
`(illustrating slipping on the wrist’s palm-side).
`
` Furthermore, another of
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`Petitioner’s cited references confirms that a flat surface—not a convex surface—
`
`improves adhesion on the palm side of the wrist. See, e.g., Ex. 1006 ¶[0013] (flat
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`“plate-like member…makes it possible to improve adhesion between the senor and
`
`the wrist”); see also id. ¶¶[0026], [0030], [0034] (flat plate improves adhesion),
`
`Fig. 1B (illustrating flat surface); Ex. 2004 ¶82. Petitioner ignores these teachings
`
`and evidence.
`
`Petitioner instead cites, for the first time, Ohsaki’s claims. Reply 11.
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`Petitioner first points to Ohsaki’s claim 1, which refers to the “back side of a user’s
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`wrist or a user’s forearm.” Id. (emphasis in original). But Ohsaki discloses a
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`“wristwatch-type” device (Ex. 1009 Title), and thus the “forearm” refers to the
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`same anatomical junction—not some other measurement location. POR 27-28, 32.
`
`A POSITA would have understood Ohsaki’s claim 1 refers to the backhand side
`
`(i.e., watch-side) of (1) the wrist or (2) the adjacent portion of the forearm
`
`connected to the wrist where the sensor fits between the bones of the
`
`forearm/wrist. Ex. 2004 ¶¶56-57. Petitioner also points to Ohsaki’s claim 5 and
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`states that the claim does not mention “a backside of the wrist or forearm.” Reply
`
`12. But Ohsaki’s claim 5 likewise does not mention a convex surface. However,
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`Ohsaki’s claim 5 does require a light sensor arranged “in a longitudinal direction of
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`the user’s arm,” further supporting Masimo’s position.6
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`As discussed, Ohsaki expressly discloses a sensor with a convex surface
`
`tends to slip on the wrist’s palm-side—directly undermining Petitioner’s asserted
`
`motivation to combine. Ex. 1009 ¶[0023], Figs. 3A-3B. Indeed, there is no
`
`teaching in Ohsaki that a convex surface prevents slipping at any location other
`
`than the watch-side of the wrist/forearm. POR 23-28. Ohsaki’s overall disclosure
`
`would have dissuaded a POSITA
`
`from pursuing Petitioner’s proposed
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`combination.
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`C. A Convex Cover Does Not Enhance Mendelson ’799’s Light-Gathering
`Ability
`
`1.
`
`Petitioner Contradicts Its Admissions And Evidence
`
`Petitioner’s proposed combination also makes no sense because it places a
`
`convex cover over Mendelson ’799’s peripherally located detectors. As Masimo
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`explained, a convex cover would direct light away from Mendelson ’799’s
`
`
`6 Ohsaki’s other claims similarly 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 id.
`
`Claims 6 (depending from claim 5).
`
`-15-
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`IPR2020-01714
`Apple v. Masimo
`
`peripheral detectors and decrease optical signal strength—the opposite of
`
`Petitioner’s asserted motivation of improving detection efficiency. POR 38-43.
`
`There should be no dispute on this. As Masimo explained (POR 38-43), Petitioner
`
`and Dr. Kenny both admitted a convex cover condenses light towards the sensor’s
`
`center and away from the sensor’s periphery. Petitioner illustrated this principle:
`
`
`Petitioner’s Illustration (IPR2020-01520, Ex. 2019 at 45)
`
`Dr. Kenny confirmed when light enters a convex surface, “the incoming light is
`
`‘condensed’ toward the center.” Ex. 2020 at 69-70. Dr. Kenny also confirmed 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
`
`¶¶72-76.
`
`None of Petitioner’s reply arguments overcome these admissions. First,
`
`Petitioner mischaracterizes Masimo’s position as asserting “that a convex cover
`
`-16-
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`
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`IPR2020-01714
`Apple v. Masimo
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`would direct light to a point in the center of the combined sensor.” Reply 15.7 But
`
`Masimo never argued all incoming light condenses to a single point. Instead,
`
`Masimo explained a convex surface would direct relatively more light towards the
`
`center and away from Mendelson ’799’s peripheral detectors. POR 38-41.
`
`Second, Petitioner dismisses the ’765 Patent’s Figure 14B as merely
`
`illustrating the path of light that is “collimated (i.e., traveling paths parallel to one
`
`another)” and not “an accurate representation of light that has been reflected from a
`
`tissue measurement site.” Reply 16. But Figure 14B illustrates how a POSITA
`
`would view a convex surface as generally directing light toward the sensor’s
`
`center. POR 39-40; Ex. 2004 ¶74.
`
`Third, Petitioner asserts that, because light “diffusing through tissue”
`
`reaches the convex surface “from various directions and angles,” some “light rays
`
`that otherwise would have missed the circular active detection area are instead
`
`
`7 Petitioner also argues that “Masimo and its witness Dr. Madisetti fail to
`
`articulate a coherent position” because Dr. Madisetti “testified that ‘the center’
`
`could be ‘a general area at which the convex surface would be redirecting…light’
`
`or ‘a point.’” Reply 14 n.4. Masimo, supported by Dr. Madisetti’s testimony, took
`
`the consistent and coherent position that a POSITA would have understood a
`
`convex surface would have directed more light towards the sensor’s center than a
`
`flat surface. POR 39-41; Ex. 2004 ¶¶73-76.
`
`-17-
`
`
`
`IPR2020-01714
`Apple v. Masimo
`
`directed toward that area.” Reply 16-17. But none of Petitioner’s accompanying
`
`citations support that assertion. Id. Furthermore, as another of Petitioner’s
`
`references explains, the circle of backscattered light’s intensity “decreases in direct
`
`proportion to the square of the distance between the photodetector and the LEDs.”
`
`Ex. 1017 at 2; Ex. 2027 49:17-50:13, 57:10-22. Thus, any signal strength from
`
`light redirected from the edge would be weak and fail to compensate for the much
`
`stronger lost signal strength from light directed towards the center. Id.
`
`Fourth, Petitioner argues “Ohsaki’s cover provides a slight refracting effect.”
`
`Reply 17. But that directly undermines Petitioner’s original motivation to
`
`combine: that adding a convex surface would predictably result in “improved
`
`signal strength.” Pet. 29. Petitioner’s assertion that Ohsaki’s cover provides a
`
`“slight refracting effect”
`
`trivializes Petitioner’s proposed motivation and
`
`undermines its petition.
`
`Fifth, Petitioner argues Ohsaki “demonstrates the use of a cover featuring a
`
`convex surface to direct light to a non-centrally located detector.” Reply 18. But
`
`Ohsaki does not teach its arrangement redirects light towards the detector, and
`
`instead discusses slipping. See Ex. 1009 ¶¶[0019], [0023]-[0025]. Ohsaki’s sensor
`
`further includes only a single emitter and detector positioned side-by-side, unlike
`
`Mendelson ’799’s circular sensor. Ex. 1012 Fig. 7.
`
`-18-
`
`
`
`IPR2020-01714
`Apple v. Masimo
`
`Moreover, while Petitioner asserts numerous new and complex optical
`
`theories, Petitioner never explains why or how a POSITA would have known or
`
`considered those theories, much less arrived at Masimo’s claims. Petitioner never
`
`disputes its 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. POR 10.8 Rather than consider Petitioner’s various complex theories, a
`
`POSITA would have understood and applied the straightforward understanding
`
`that a convex surface condenses light toward the center. If anything, Petitioner’s
`
`new arguments emphasizing the complexity of optics undermine Petitioner’s
`
`obviousness arguments. Id. 41-43. Petitioner fails to show its theories would have
`
`motivated a POSITA to arrive at Petitioner’s flawed combination.
`
`2.
`
`A POSITA Would Have Avoided Ohsaki’s Air Gaps
`
`Ohsaki discloses its convex surface creates air gaps, which Mendelson ’799
`
`teaches to avoid. POR 43-45. Petitioner originally misidentified Ohsaki’s air gaps
`
`as part of Ohsaki’s board. Id. But Dr. Kenny confirmed Ohsaki’s figures show air
`
`gaps at the edge of the convex board. Ex. 2009 376:3-377:5. Dr. Madisetti also
`
`
`8 Despite testifying there are “thousands of textbooks” describing lens
`
`design, Dr. Kenny cited none in his declarations. Ex. 2027 109:4-110:12, 112:16-
`
`113:5.
`
`-19-
`
`
`
`IPR2020-01714
`Apple v. Masimo
`
`confirmed Ohsaki teaches its convex surface creates air gaps. Ex. 2004 ¶¶77-80.
`
`Petitioner does not dispute such air gaps would dissuade a POSITA from
`
`modifying Mendelson ’799. Instead, Petitioner (1) contradicts Dr. Kenny’s
`
`admissions, (2) suggests Ohsaki discloses no air gaps, and (3) accuses Masimo of
`
`improperly “infer[ing] the presence of alleged ‘air gaps.’” Reply 19-20. Petitioner
`
`also argues Ohsaki’s figures “should not be interpreted as precise and drawn to
`
`scale….” Id. Ohsaki (below) clearly illustrates its convex surface results in
`
`peripheral air gaps.
`
`Ohsaki Fig. 1 (annotated, Ex. 2004 ¶77)
`
`
`
`While Ohsaki states its convex board “is in intimate contact with the surface
`
`of the user’s skin” (Ex. 1009 ¶[0025]), that intimate contact is around the apex of
`
`the convex surface and creates air gaps on the sides. Ex. 2004 ¶¶78-79. As Dr.
`
`Madisetti explained, such air gaps are particularly detrimental for Mendelson
`
`’799’s circular oximeter because Mendelson ’799’s peripheral detectors are near
`
`-20-
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`
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`IPR2020-01714
`Apple v. Masimo
`
`the air gaps. Id. ¶80; see In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382
`
`(Fed. Cir. 2007) (“a reference teaches away from a combination when using it in
`
`that combination would produce an inoperative result”). A POSITA would have
`
`avoided such air gaps and would not have been motivated to add a convex surface
`
`to Mendelson ’799’s sensor.
`
`D. A Convex Cover Would Be More Prone To Scratches
`
`Petitioner does not dispute or substantively rebut Masimo’s contention “that
`
`a flat cover would provide better protection than a convex surface” because it
`
`“would be less prone to scratches.” POR 46. Instead, Petitioner argues such a
`
`“possible disadvantage” merely “competes with the known advantages” of adding
`
`Ohsaki’s board to Mendelson ’799’s sensor and “would not have negated a
`
`POSITA’s motivation to combine.” Reply 20. But Petitioner identifies no
`
`plausible advantages for its asserted combination. Moreover, the risk of scratches
`
`directly undermines Petitioner’s argument that a POSITA would have included a
`
`convex cover instead of a flat surface to provide “additional protection.” POR 45-
`
`47. As Dr. Kenny acknowledged, a convex cover would have been one of many
`
`different alternatives to provide protection. Ex. 2009 394:18-396:17. Petitioner
`
`never explains why a POSITA would have chosen an alternative leading to
`
`undesirable scratching.
`
`-21-
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`
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`IPR2020-01714
`Apple v. Masimo
`
`E.
`
`Petitioner Mischaracterizes Schulz’s Teachings
`
`Petitioner asserts a POSITA would have added Schulz’s “windows” to
`
`Mendelson ’799’s sensor “to guard against saturation” from “ambient light.”
`
`Reply 21. But Schulz’s solution for ambient light was not a window. Schulz’s
`
`solution was a light absorbent material on the outer housing cover shown in
`
`Figure 7 (below). Ex. 1013 ¶[0041].
`
`Schulz’s Cover (700) (Ex. 1013 Fig. 7) (annotated)
`
`
`
`As illustrated, the “cover 700” covers an emitter or detector and “is constructed of
`
`an absorbent material so as to block ambient light for noise reduction at the
`
`detector.” Ex. 1013 ¶[0041], Figs. 5B, 7; Ex. 2004 ¶¶86-87; Ex. 2027 229:12-
`
`230:1, 232:7-14; POR 49-50. Dr. Kenny does not analyze Schulz’s actual solution
`
`for ambient light. Ex. 2027 230:19-231:5, 232:7-14.
`
`Schulz discloses a window to reduce light from the sensor’s emitter. Ex.
`
`1013 ¶[0073].
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