Filed July 27, 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: AppleIPR2020-1715-765@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01715
`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: AppleIPR2020-1715-765@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01715
`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 .................................................................. 5
`
`Introduction To Independent Claims ............................................. 6
`
`The ’765 Patent Prosecution .......................................................... 8
`
`III. THE PETITION’S PROPOSED COMBINATIONS ............................... 8
`
`IV. CLAIM CONSTRUCTION ..................................................................... 9
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 9
`
`VI. LEGAL STANDARD ............................................................................ 10
`
`VII. GROUND 1 FAILS TO DEMONSTRATE OBVIOUSNESS .............. 11
`
`A. Ground 1’s Cited Art And Asserted Combination ....................... 11
`
`1.
`
`2.
`
`3.
`
`4.
`
`Petitioner’s Combination Of Ohsaki And Aizawa ............ 12
`
`Dr. Kenny’s Erroneous Characterization Of Ohsaki ......... 15
`
`Petitioner’s Addition Of Inokawa To The
`Combination of Ohsaki and Aizawa .................................. 17
`
`Petitioner’s Addition Of Mendelson 2006 To The
`Combination Of Ohsaki, Aizawa, And Inokawa ............... 19
`
`
`
`
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`B. A POSITA Would Not Have Been Motivated To Combine
`Ohsaki’s Board With Aizawa’s Sensor ........................................ 19
`
`1.
`
`A POSITA Would Have Understood That Ohsaki’s
`Rectangular Board Is Incompatible With Aizawa’s
`Radially Symmetric Sensor Arrangement ......................... 20
`
`a) Modifying Ohsaki’s Rectangular Board Would
`Eliminate Ohsaki’s Already Limited
`Advantages .............................................................. 20
`
`b)
`
`A POSITA Would Not Have Been Motivated
`To Add A Rectangular Board To Aizawa’s
`Circular Sensor ........................................................ 26
`
`2.
`
`A POSITA Would Have Understood That Ohsaki’s
`Board “Has A Tendency To Slip” At Aizawa’s
`Required Measurement Location On The Palm Side
`Of The Wrist, Near The Artery .......................................... 28
`
`a)
`
`b)
`
`c)
`
`Aizawa’s Flat Acrylic Plate Improves
`Adhesion On The Palm Side Of The Wrist ............. 29
`
`Ohsaki’s Convex Board Has “A Tendency To
`Slip” When Positioned On The Palm Side Of
`The Wrist ................................................................. 35
`
`A POSITA Would Not Have Been Motivated
`To Eliminate The Benefits Of Aizawa’s Flat
`Adhesive Acrylic Plate By Including A
`Lens/Protrusion Similar To Ohsaki’s Board ........... 38
`
`
`
`
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`3.
`
`A POSITA Would Not Have Been Motivated To Add
`A Convex Lens/Protrusion To Aizawa’s Sensor
`Because It Would Have Been Expected To Reduce
`The Optical Signal ............................................................. 41
`
`a)
`
`b)
`
`A POSITA Would Have Understood That A
`Convex Cover Directs Light To The Center Of
`The Sensor ............................................................... 42
`
`A POSITA Would Not Have Been Motivated
`To Direct Light Away From Aizawa’s
`Detectors .................................................................. 44
`
`4.
`
`A POSITA Would Not Have Selected A Convex
`Cover To Protect The Optical Elements ............................ 49
`
`Petitioner Identifies No Valid Motivation To Add A Second
`Emitter .......................................................................................... 50
`
`Petitioner’s Motivation To Add Mendelson 2006
`Undermines Its Motivation to Add A Second Emitter ................. 57
`
`The Petition Provides No Evidence Of An Expectation Of
`Success ......................................................................................... 61
`
`C.
`
`D.
`
`E.
`
`F.
`
`The Challenged Dependent Claims Are Nonobvious .................. 62
`
`1.
`
`2.
`
`The Challenged Dependent Claims are Nonobvious
`For The Same Reasons As Claims 1 And 20 ..................... 62
`
`Claims 12, 18, and 29 Are Nonobvious For
`Additional Reasons ............................................................ 63
`
`VIII. GROUND 2 FAILS FOR THE SAME REASONS AS
`GROUND 1 ............................................................................................ 66
`
`-iii-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`IX. GROUND 3 FAILS FOR THE SAME REASONS AS
`GROUND 1 ............................................................................................ 66
`
`
`
`
`
`-iv-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ................................................................... 10
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ................................................................... 10
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) ................................................................... 41
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ................................................................... 62
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ..................................................................... 10
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ................................................................... 10
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ................................................................... 11
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ................................................................... 11
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..................................................... 9
`
`In re Royka,
`490 F.2d 981 (C.C.P.A. 1974) ..................................................................... 10
`
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ................................................................... 11
`
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) ................................................................... 62
`
`-v-
`
`
`
`TABLE OF AUTHORITIES
`(Cont’d)
`
`OTHER AUTHORITIES
`
`Page No(s).
`
`37 C.F.R. § 42.100 .............................................................................................. 9
`
`
`
`
`
`-vi-
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`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
`
`I.
`
`INTRODUCTION
`
`Petitioner’s proposed combinations all suffer from the same underlying
`
`flaws. Petitioner’s four reference combination relies primarily on Aizawa and
`
`Ohsaki, but Petitioner ignores critical differences between these references that
`
`make them incompatible.
`
`First, Ohsaki discloses a sensor with a convex board that must be used on the
`
`back side (i.e., watch side) of the wrist to provide its asserted benefit of improved
`
`adhesion, taking advantage of the user’s bone structure. In contrast, Aizawa
`
`expressly states that its sensor is used on the palm side of the wrist, where it is
`
`positioned over the user’s artery. Petitioner argues a POSITA would have been
`
`motivated to combine Ohsaki’s convex board with Aizawa’s sensor “so as to
`
`improve adhesion between the user’s wrist and the sensor’s surface.” Pet. 33-34.
`
`But Ohsaki discloses its board “has a tendency to slip off” the palm side of the
`
`wrist. Ex. 1009 ¶[0023]. Accordingly, a POSITA seeking to improve Aizawa’s
`
`palm-side sensor would not have been motivated to add Ohsaki’s convex board,
`
`designed for the back side of the wrist. Rather, a POSITA would have
`
`affirmatively avoided making that change.
`
`Second, Ohsaki’s sensor uses a longitudinal structure in a specific
`
`orientation between bones on the back side of the wrist to reduce sensor slippage
`
`and motion. Aizawa, however, discloses a circular sensor which provides more
`
`-1-
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`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
`
`consistent measurements when measuring signals from the arteries on the palm
`
`side of the wrist. Transforming Ohaski’s longitudinal structure into a circular
`
`shape to fit Aizawa’s sensor would eliminate Ohsaki’s benefit of reduced slippage
`
`and movement. Conversely, changing Aizawa’s circular sensor to accommodate
`
`Ohsaki’s longitudinal structure would result in less consistent measurements. The
`
`combination of Aizawa and Ohsaki would either disrupt Aizawa’s circular
`
`symmetry, Ohsaki’s longitudinal structure, or both. Petitioner attempts to combine
`
`references that are simply incompatible.
`
`Third, Petitioner’s combination detrimentally places a convex-shaped cover
`
`over Aizawa’s peripherally located detectors. A POSITA would have believed
`
`that such a cover would undesirably direct light away from the peripheral
`
`detectors and toward the sensor’s center, thereby reducing light collection and
`
`signal strength. A POSITA would not have been motivated to decrease signal
`
`strength in the manner resulting from Petitioner’s combination.
`
`In short, Ohsaki and Aizawa employ different sensor structures (rectangular
`
`versus circular) for different measurement locations (back side versus palm side of
`
`the wrist), using different sensor surface shapes (convex versus flat) that are
`
`tailored to those specific measurement locations. Petitioner does not even
`
`acknowledge these differences, much less show a POSITA would have been
`
`-2-
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`
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`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
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`motivated
`
`to combine
`
`these references and reasonably expected such a
`
`combination to be successful.
`
`Petitioner also adds a third reference, Inokawa, in an attempt to include
`
`another emitter in its proposed system. Petitioner argues the ability to detect body
`
`movement would have motivated a POSITA to add a second LED. But Aizawa
`
`already includes the ability to calculate motion load with its single LED. Adding
`
`another LED complicates Aizawa’s sensor and increases power consumption—a
`
`detrimental result for a wrist-worn device. Petitioner fails to account for these
`
`undesirable results from its proposed combination of references. Petitioner also
`
`argues a second LED would allow Aizawa to transmit data to a base device with a
`
`configuration like that in Inokawa:
`
`
`Petitioner’s Illustration of Inokawa’s Base Device (Pet. 15)
`
`-3-
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`
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`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
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`But Aizawa’s sensor already includes a wireless transmitter, so Aizawa does
`
`not need to incorporate Inokawa’s onerous base-device data transmission.
`
`Petitioner’s declarant, Dr. Kenny, acknowledged that Aizawa indicates no
`
`problems with Aizawa’s form of data transmission. Ex. 2007 409:13-410:2. More
`
`importantly, Aizawa’s goal is “real-time measuring” (Ex. 1006 ¶[0004]), with the
`
`transmitter “transmitting the measured pulse rate data to a display,” (id. ¶[0015]).
`
`Inokawa’s system, however, transmits pulse rate data only when the sensor is
`
`removed from the body and “mounted onto the base device.” See, e.g., Ex. 1008
`
`Abstract. Replacing Aizawa’s wireless transmission with a base-device-transmitter
`
`would eliminate the ability to take and display real-time measurements—one of
`
`Aizawa’s stated goals—while increasing power consumption and cost.
`
`Finally, in an attempt to satisfy the claim’s requirement of “a handheld
`
`computing device in wireless communication with the physiological sensor
`
`device,” Petitioner adds Mendelson 2006’s alleged wireless transmitter and PDA to
`
`Petitioner’s combination of Aizawa, Inokawa, and Ohsaki. This addition makes no
`
`sense because Petitioner’s combination already replaced Aizawa’s wireless
`
`transmitter with Inokawa’s base station approach.
`
` Petitioner’s circular
`
`reasoning—where Petitioner arbitrarily removes and then adds back in the same
`
`functionality—is simply hindsight reconstruction of Masimo’s claims.
`
`-4-
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`
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`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
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`For at least these reasons, Petitioner fails to demonstrate the asserted
`
`references render the claims obvious. 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 a
`
`publicly traded company that employs over 6,300 people worldwide, with annual
`
`revenues of over $1.1 billion. A host of manufacturers use Masimo’s technology,
`
`including Philips, Atom, Mindray North America, GE Medical, Spacelabs, and
`
`Zoll.
`
`A. The ’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
`
`-5-
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`
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`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
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`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. 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.
`
`Windows can, inter alia, be used to direct light from the measurement site to the
`
`photodetectors. See, e.g., id. 19:28-38. 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.
`
`B.
`
`Introduction To Independent Claims
`
`The ’765 Patent has two independent claims: claims 1 and 21.1 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
`
`
`1 Appendix A reproduces the claims with bracketed labels for convenience.
`
`-6-
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`
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`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
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`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;
`
`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:
`
`-7-
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`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
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`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.2
`
`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
`
`Petitioner presents three grounds. Pet. 9-10. Ground 1 challenges claims 1-
`
`8, 10-13, and 15-29 and combines four references: Aizawa (Ex. 1006), Inokawa
`
`(Ex. 1007; translation at Ex. 1008), Ohsaki (Ex. 1009), and Mendelson 2006 (Ex.
`
`1010). Ground 2 challenges dependent claim 9 based on a combination of five
`
`references, adding Bergey (Ex. 1016) to the combination of Aizawa, Inokawa,
`
`
`2 Emphasis supplied unless otherwise noted.
`
`-8-
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`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
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`Ohsaki, and Mendelson 2006. Pet. 9-10. Ground 3 challenges dependent claim 14
`
`based on a combination of five references, adding Goldsmith (Ex. 1011) to the
`
`combination of Aizawa, Inokawa, Ohsaki, and Mendelson 2006. Pet. 9-10.
`
`IV. CLAIM CONSTRUCTION
`
`Petitioner identifies no terms for construction. The Board should give the
`
`claim
`
`terms
`
`their ordinary and customary meaning, consistent with
`
`the
`
`specification, as a POSITA would understand them. 37 C.F.R. § 42.100(b);
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner asserts a POSITA “would have been a person with a working
`
`knowledge of physiological monitoring technologies. The person would have had a
`
`Bachelor of Science degree in an academic discipline emphasizing the design of
`
`electrical, computer, or software technologies, in combination with training or at
`
`least one to two years of related work experience with capture and processing of
`
`data or information, including but not limited to physiological monitoring
`
`technologies.” Pet. 8-9. Petitioner asserts “the person could have also had 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;
`
`-9-
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`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
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`(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)
`
`(citing In re Royka, 490 F.2d 981, 985 (C.C.P.A. 1974)). A patent claim is not
`
`obvious unless “a skilled artisan would have been motivated to combine the
`
`teachings of the prior art references to achieve the claimed invention, and that the
`
`skilled artisan would have had a reasonable expectation of success in doing so.”
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed.
`
`Cir. 2012).
`
`To prevail on any obviousness ground, a petitioner may not simply identify
`
`individual claim components—it must show why a “skilled artisan, with no
`
`knowledge of the claimed invention, would have selected these components for
`
`combination in the manner claimed.” In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir.
`
`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).
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`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
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`An appropriate obviousness inquiry cannot involve even a “hint of
`
`hindsight.” Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375
`
`(Fed. Cir. 2011). A petitioner may not “simply retrace[] the path of the inventor
`
`with hindsight, discount[] the number and complexity of the alternatives, and
`
`conclude[] that the invention ... was obvious.” Ortho-McNeil Pharm., Inc. v.
`
`Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008). Likewise, “[c]are must
`
`be taken to avoid hindsight reconstruction by using the patent in suit as a guide
`
`through the maze of prior art references, combining the right references in the right
`
`way so as to achieve the result of the claims in suit.” In re NTP, Inc., 654 F.3d
`
`1279, 1299 (Fed. Cir. 2011) (internal quotations omitted).
`
`VII. GROUND 1 FAILS TO DEMONSTRATE OBVIOUSNESS
`
`A. Ground 1’s Cited Art And Asserted Combination
`
`Ground 1, like all of Petitioner’s grounds, combines Aizawa, Inokawa,
`
`Ohsaki, and Mendelson 2006.
`
` These references each disclose different
`
`physiological sensor designs, with distinct shapes, features, and detector-emitter
`
`configurations. This section introduces Petitioner’s proposed combination of
`
`Ohsaki and Aizawa, discusses Dr. Kenny’s erroneous characterization of Ohsaki,
`
`and then discusses Petitioner’s conflicting proposed addition of Inokawa and
`
`Mendelson 2006 to the combination of Ohsaki and Aizawa.
`
`-11-
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`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
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`1.
`
`Petitioner’s Combination Of Ohsaki And Aizawa
`
`Ohsaki discloses a pulse rate sensor with a single emitter (e.g., an LED) and
`
`a single detector disposed linearly, side-by-side, under a translucent board. See,
`
`e.g., Ex. 1009 Abstract, Fig. 2, ¶[0019]; Ex. 2004 ¶37.
`
`
`
`Ohsaki (Ex. 1009) Figs. 1 and 2 (annotated, color added)
`
`Ohsaki’s linearly arranged detector and emitter (above) result in a longitudinal
`
`shape and direction that Ohsaki explains is important 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
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`the
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`circumferential direction of the user’s wrist 4, it has a tendency to slip off.
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`Therefore it is desirable that the detecting element 2 is arranged so that its
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`longitudinal direction agrees with the longitudinal direction of the user’s arm.”).
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`Ohsaki includes a “dedicated belt” that “fix[es] the detecting element 2 on the
`
`user’s wrist 4 in this way.” Id. ¶[0019]. Ohsaki repeatedly states that its sensor “is
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`worn on the back side of a user’s wrist corresponding to the back of the user’s
`
`hand.” Ex. 1009 Abstract; see also id. Title, ¶¶ [0008], [0009], [0016], [0024]; Ex.
`
`2004 ¶37.
`
`In contrast, Aizawa discloses a sensor with four periphery-located
`
`photodetectors (22) around a single centrally located LED (21). Ex. 1006 Abstract,
`
`Fig. 1B.; Ex. 2004 ¶¶42-43.
`
`DETECTOR
`
`LED
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`DETECTOR
`
`Aizawa Fig. 1B (cross-sectional view, color added)
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`Apple v. Masimo
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`Aizawa’s Features
` Green: central LED
`(21)
` Red: peripheral
`detectors (22)
`
`
`
`
`
`Aizawa Fig. 1A (top-down view, color added)
`
`Aizawa uses this specific configuration of multiple detectors arrayed around a
`
`single LED to ensure that at least one detector is near the measurement site, which
`
`Aizawa indicates improves measurement consistency. Ex. 1006 ¶[0027]. Aizawa
`
`detects signals on the palm side of the wrist and explains that as long as “one of the
`
`photodetectors 22 is located near the artery 11,” it is “possible to detect a pulse
`
`wave accurately.” Id. ¶¶[0026]-[0027], Fig. 2. Aizawa includes a flat transparent
`
`plate (6) that improves adhesion between the detector and the wrist, which Aizawa
`
`states improves the detection efficiency. Id. [0030]. Aizawa’s sensor does not use
`
`a lens. Ex. 2004 ¶¶42-43.
`
`Petitioner argues a POSITA would have added Ohsaki’s translucent board,
`
`designed for a linear pulse sensor, to Aizawa’s circular sensor. Pet. 31-35. But
`
`Petitioner never identifies with specificity the resulting structure. Petitioner
`
`asserts: “[a]s shown below, the POSITA would have found it obvious to modify
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`the sensor’s flat cover (left) to include a lens/protrusion (right), similar to Ohsaki’s
`
`translucent board 8” (Pet. 33-34):
`
`Petitioner’s Illustration (Pet. 34)
`
`
`
`Petitioner never identifies whether Ohsaki’s longitudinal board is simply placed
`
`over Aizawa, or whether its shape is changed to be circular to match Aizawa’s
`
`shape and detector arrangement. Ex. 2004 ¶¶45-46.
`
`2.
`
`Dr. Kenny’s Erroneous Characterization Of Ohsaki
`
`At his deposition in a related IPR proceeding, Dr. Kenny injected even more
`
`confusion into Petitioner’s combinations. Dr. Kenny testified he did not know the
`
`shape of Ohsaki’s board and that Ohsaki’s board could be “circular or square or
`
`rectangular.” Ex. 2008 68:21-70:1, 71:7-72:10. Dr. Kenny is incorrect. Ohsaki
`
`illustrates two cross-sectional views of its board that confirm the board is
`
`rectangular (and not circular or square). Ex. 2004 ¶¶38-41.
`
`Specifically, Ohsaki Figure 2 (below left) illustrates the “long” side of
`
`Ohsaki’s detector element (2) that extends from left to right in Figure 2 and in the
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`longitudinal direction (up-and-down the arm) on a user’s wrist. Ex. 1009 ¶[0019];
`
`Ex. 2004 ¶¶38-41.
`
`
`
`Ohsaki Ex. 1009 Fig. 2 (left) & Fig. 1 (right) showing different cross-sections
`(color added: Purple: detecting element 2/package 5; Blue: translucent board 8)
`
`
`Figure 2 (above left) shows that the board (8) spans nearly the entire length of the
`
`detecting element’s (2) “long” side. Ohsaki Figure 1 (above right) shows the
`
`“short” side of Ohsaki’s detecting element (2) that extends from left to right in
`
`Figure 1 and in the circumferential direction (around) of the user’s wrist. Ex. 1009
`
`¶¶[0012], [0019]; see also Ex. 2008 118:3-119:7, 120:5-13, 121:3-15 (Dr. Kenny
`
`confirming longitudinal directionality); Ex. 2004 ¶¶38-41. As shown in Figure 1
`
`above, the board’s length (8, blue) is much shorter than the detecting element’s
`
`length (2, purple) in the circumferential direction. Ex. 1009 ¶¶[0012], [0019],
`
`Figs. 1, 2; see also Ex. 2008 118:3-119:7, 120:5-13, 121:3-15; Ex. 2004 ¶¶38-41.
`
`Taken together, a POSITA would have understood that Ohsaki’s figures and
`
`description show that both Ohsaki’s detecting element (2) and board (8) have a
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`very pronounced longitudinal directionality and are much longer than they are
`
`wide. Ex. 2004 ¶¶38-41; Ex. 1009 Figs. 1, 2, ¶¶[0012], [0017], [0019]. A
`
`POSITA would have understood that the top-down view of Ohsaki’s sensor—
`
`including the package, board, and emitter and detector—would look approximately
`
`like the figure below:
`
`
`
`Drawing based on Ohsaki, illustrating the sensor’s rectangular shape
`Ex. 2004 ¶40
`
`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.
`
`3.
`
`Petitioner’s Addition Of Inokawa To The Combination of Ohsaki
`and Aizawa
`
`Petitioner includes a third reference, Inokawa, in its combination in an
`
`attempt to add another emitter to its proposed system. Inokawa does not disclose a
`
`sensor with multiple emitters and multiple detectors. Nevertheless, Petitioner
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`argues Inokawa’s discussion of the ability to detect body movement would have
`
`motivated a POSITA to add a second emitter to Aizawa. Pet. 23-24. Petitioner
`
`argues a second emitter would also enable Aizawa to transmit data to a base device
`
`with a configuration like Inokawa (id. 25):
`
`
`Petitioner’s Illustration of Inokawa’s Base Device (id. 15, 25)
`
`As shown above, Inokawa’s base-station approach only transmits data when the
`
`sensor is mounted on the base device. See, e.g., Ex. 1008 Abstract. Thus,
`
`Inokawa’s cumbersome system requires the user to remove the monitoring device
`
`from the user and attach it to a base station before the sensor can transmit data. Ex.
`
`2007 405:2-7; see, e.g., Ex. 1008 Figs. 3, 8; Ex. 2004 ¶¶47-48.
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`4.
`
`Petitioner’s Addition Of Mendelson 2006 To The Combination Of
`Ohsaki, Aizawa, And Inokawa
`
`Finally, in an attempt to satisfy the claims’ requirement of a handheld
`
`computing device in wireless communication with the physiological sensor device,
`
`Petitioner is forced to add a fourth reference: Mendelson 2006. Pet. 26-30. After
`
`previously arguing a POSITA would have removed Aizawa’s wireless transmitter
`
`in favor of Inokawa’s base station data transfer approach, Petitioner asserts
`
`Mendelson 2006 would have motivated a POSITA to add a wireless transmitter
`
`back into the proposed combination. Id.; Ex. 2004 ¶49.
`
`B. A POSITA Would Not Have Been Motivated To Combine Ohsaki’s
`Board With Aizawa’s Sensor
`
`Petitioner fails to show the cited art would have led a POSITA to Masimo’s
`
`claims. Petitioner argues a POSITA would have modified Aizawa’s flat adhesive
`
`acrylic plate “to include a lens/protrusion…similar to Ohsaki’s translucent board”
`
`“to improve adhesion between the user’s wrist and the sensor’s surface,” to
`
`“improve detection efficiency,” and to “protect the elements within the sensor
`
`housing.” Pet. 33-34, 51-52. But Petitioner fails to show that any of these alleged
`
`“motivations” are even present, much less that they would have motivated a
`
`POSITA to create Masimo’s claimed invention. Ex. 2004 ¶50.
`
`In the sections below, Masimo explains why a POSITA would not have been
`
`motivated to make Petitioner’s proposed combination. First, a POSITA would
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`Apple v. Masimo
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`have understood that Ohsaki’s rectangular board would be incompatible with
`
`Aizawa’s circular sensor arrangement, undercutting any motivation to improve
`
`adhesion to the user’s tissue. Second, a POSITA would have understood that to
`
`obtain any benefit from Ohsaki’s board, the sensor must be positioned on the
`
`backhand side of the wrist—far from the arteries on the palm side of the wrist
`
`where Aizawa’s sensor takes its pulse measurements. Third, a POSITA would
`
`have believed that adding a convex-shaped cover would direct light away from
`
`Aizawa’s peripherally located detectors, resulting in reduced signal strength and
`
`decreased detection efficiency. Finally, a POSITA would not have replaced
`
`Aizawa’s flat adhesive acrylic plate with Ohsaki’s translucent board for the
`
`purpose of protecting Aizawa’s sensor elements because Ohsaki’s translucent
`
`board would introduce complications and concerns. Ex. 2004 ¶51.
`
`1.
`
`A POSITA Would Have Understood That Ohsaki’s Rectangular
`Board Is Incompatible With Aizawa’s Radially Symmetric Sensor
`Arrangement
`
`a) Modifying Ohsaki’s Rectangular Board Would Eliminate
`Ohsaki’s Already Limited Advantages
`
`Petitioner’s
`
`illus
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