`
`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APPLE INC.
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner
`________________
`
`Case IPR2020-01715
`U.S. Patent 10,631,765
`________________
`
`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
`
`1
`
`

`

`TABLE OF CONTENTS
`Introduction ...................................................................................................... 8 
`
`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
`
`
`
`I. 
`
`II.  Ground 1 Establishes Obviousness ................................................................. 8 
`
`A.  Ohsaki does not teach or require that its translucent board 8 is
`“rectangular” in shape. ........................................................................ 13 
`B.  A POSITA would have recognized the benefits of Ohsaki’s teachings
`when applied to Aizawa’s sensor. ....................................................... 17 
`C.  Modifying Aizawa’s sensor to include a convex cover as taught by
`Ohsaki enhances the sensor’s light-gathering ability. ......................... 21 
`i. 
`Masimo ignores the well-known principle of reversibility ...... 23 
`
`ii.  Masimo ignores the behavior of scattered light in a reflectance-
`
`type pulse sensor ....................................................................... 26 
`
`E. 
`
`F. 
`
`D.  A POSITA would have been motivated to select a convex cover to
`protect the optical elements. ................................................................ 33 
`A POSITA would have been motivated to add an additional emitter to
`Aizawa. ................................................................................................ 33 
`A POSITA would have enabled the combined sensor of Aizawa,
`Inokawa, and Ohsaki to communicate wirelessly with a handheld
`computing device, based on the teachings of Mendelson-2006.......... 35 
`G.  A POSITA would have expected success in performing the
`combination ......................................................................................... 39 
`The dependent claims are rendered obvious by Aizawa-Inokawa-
`Ohsaki-Mendelson-2006 ..................................................................... 40 
`III.  Grounds 2-3 Establish Obviousness .............................................................. 41 
`
`H. 
`
`IV.  Conclusion ..................................................................................................... 41 
`
`2
`
`

`

`
`
`
`EXHIBITS
`
`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
`
`APPLE-1001
`
`US Patent No. 10,631,765
`
`APPLE-1002
`
`File History for U.S. Patent No. 10,631,765
`
`APPLE-1003
`
`Declaration of Dr. Kenny
`
`APPLE-1004
`
`Curriculum Vitae of Dr. Kenny
`
`APPLE-1005
`
`Masimo Corporation, et al. v. Apple Inc., Complaint, Civil
`Action No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1006
`
`US Pub. No. 2002/0188210 (“Aizawa”)
`
`APPLE-1007
`
`JP Pub. No. 2006/296564 (“Inokawa”)
`
`APPLE-1008
`
`Certified English Translation of Inokawa and Translator’s
`Declaration
`
`APPLE-1009
`
`US Pub. No. 2001/0056243 (“Ohsaki”)
`
`APPLE-1010
`
`“A Wearable Reflectance Pulse Oximeter for Remote
`Physiological Monitoring,” Y. Mendelson, et al.; Proceedings
`of the 28th IEEE EMBS Annual International Conference,
`2006; pp. 912-915 (“Mendelson-2006”)
`
`APPLE-1011
`
`US Pub. No. US 2007/0093786 (“Goldsmith”)
`
`APPLE-1012
`
`US Patent No. 6,801,799 (“Mendelson-799”)
`
`APPLE-1013
`
`US Pub. No. 2004/0054291 (“Schulz”)
`
`APPLE-1014-1015
`
`RESERVED
`
`APPLE-1016
`
`US Patent No. 3,789,601 (“Bergey”)
`
`3
`
`

`

`
`APPLE-1017
`
`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
`
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic Institute,
`Biomedical Engineering Program, Worcester, MA 01609;
`Association for the Advancement of Medical Instrumentation,
`vol. 22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`
`APPLE-1018
`
`“Skin Reflectance Pulse Oximetry: In Vivo Measurements from
`the Forearm and Calf,” Y. Mendelson, et al.; Journal of Clinical
`Monitoring, vol. 7, No. 1, January 1991 (“Mendelson 1991”)
`
`APPLE-1019
`
`Excerpts from Design of Pulse Oximeters, J.G. Webster; Insti-
`tution of Physics Publishing, 1997 (“Webster”)
`
`APPLE-1020
`
`QuickSpecs; HP iPAQ Pocket PC h4150 Series
`
`APPLE-1021
`
`Excerpts from How to Do Everything with Windows Mobile,
`Frank McPherson; McGraw Hill, 2006 (“McPherson”)
`
`APPLE-1022
`
`Excerpts from Master Visually Windows Mobile 2003, Bill
`Landon, et al.; Wiley Publishing, Inc., 2004 (“Landon”)
`
`APPLE-1023
`
`“Stimulating Student Learning with a Novel ‘In-House’ Pulse
`Oximeter Design,” J. Yao and S. Warren; Proceedings of the
`2005 American Society for Engineering Education Annual
`Conference & Exposition, 2005 (“Yao”)
`
`APPLE-1024
`
`US Pub. No. 2008/0194932 (“Ayers”)
`
`APPLE-1025
`
`U.S. Patent No. 7,031,728 (“Beyer”)
`
`APPLE-1026
`
`RESERVED
`
`APPLE-1027
`
`National Instruments LabVIEW User Manual
`
`APPLE-1028-1030
`
`RESERVED
`
`APPLE-1031
`
`Scheduling Order, Masimo v. Apple et al., Case 8:20-cv-00048,
`Paper 37 (April 17, 2020)
`
`4
`
`

`

`
`APPLE-1032
`
`APPLE-1033
`
`APPLE-1034
`
`APPLE-1035
`
`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
`
`Stipulation by Apple
`
`Telephonic Status Conference, Masimo v. Apple et al., Case
`8:20-cv-00048, Paper 78 (July 13, 2020)
`
`Joseph Guzman, “Fauci says second wave of coronavirus is
`‘inevitable’”, TheHill.com (Apr. 29, 2020), available at:
`https://thehill.com/changing-america/resilience/natural-
`disasters/495211-fauci-says-second-wave-of-coronavirus-is
`
`“Tracking the coronavirus in Los Angeles County,”
`LATimes.com (Aug. 20, 2020), available at
`https://www.latimes.com/projects/california-coronavirus-cases-
`tracking-outbreak/los-angeles-county/
`
`APPLE-1036
`
`Order Amending Scheduling Order, Masimo et al. v. True
`Wearables et al., Case 8:18-CV-02001 (July 7, 2020)
`
`APPLE-1037
`
`Masimo Corporation, et al. v. Apple Inc., Second Amended
`Complaint, Civil Action No. 8:20-cv-00048 (C.D. Cal.)
`
`APPLE-1038
`
`U.S. Patent No. 7,558,622 (“Tran”)
`
`APPLE-1039
`
`Declaration of Jacob R. Munford
`
`APPLE-1040
`
`Order Granting Stipulation to Amend the Scheduling Order,
`Masimo v. Apple et al., Case 8:20-cv-00048, Paper 201
`(September 21, 2020)
`
`APPLE-1041
`
`U.S. Patent No. 7,251,513 (“Kondoh”)
`
`APPLE-1042
`
`JP Pub. No. 2005-270543 (“Tanagi”)
`
`APPLE-1043
`
`Certified English Translation of Tanagi and Translator’s Decla-
`ration
`
`5
`
`

`

`
`APPLE-1044
`
`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
`
`Order Regarding Motion to Stay (Redacted) in Masimo
`Corporation et al. v. Apple Inc., Case 8:20-cv-00048, October
`13, 2020
`
`APPLE-1045
`
`Declaration of Jacob R. Munford
`
`APPLE-1046
`
`Declaration of Gordon MacPherson
`
`APPLE-1047
`
`Second Declaration of Dr. Thomas W. Kenny
`
`APPLE-1048
`
`RESERVED
`
`APPLE-1049
`
`Eugene Hecht, Optics (4th Ed. 2002)
`
`APPLE-1050
`
`Excerpts of Eugene Hecht, Optics (2nd Ed. 1990), pages 79-143,
`211-220
`
`APPLE-1051
`
`Eugene Hecht, Optics (2nd Ed. 1990)
`
`APPLE-1052
`
`APPLE-1053
`
`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01520, IPR2020-01537, IPR2020-01539, Day 1 (August 1,
`2021)
`
`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01520, IPR2020-01537, IPR2020-01539, Day 2 (August 2,
`2021)
`
`APPLE-1054
`
`Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
`01536, IPR2020-01538 (August 3, 2021)
`
`APPLE-1055
`
`“Refractive Indices of Human Skin Tissues at Eight
`Wavelengths and Estimated Dispersion Relations between 300
`and 1600 nm,” H. Ding, et al.; Phys. Med. Biol. 51 (2006); pp.
`1479-1489 (“Ding”)
`
`APPLE-1056
`
`“Analysis of the Dispersion of Optical Plastic Materials,” S.
`Kasarova, et al.; Optical Materials 29 (2007); pp. 1481-1490
`(“Kasarova”)
`
`6
`
`

`

`
`APPLE-1057
`
`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
`
`“Noninvasive Pulse Oximetry Utilizing Skin Reflectance
`Photoplethysmography,” Y. Mendelson, et al.; IEEE Trans-
`actions on Biomedical Engineering, Vol. 35, No. 10, October
`1988; pp. 798-805 (“Mendelson-IEEE-1988”)
`
`APPLE-1058
`
`US Patent No. 6,198,951 (“Kosuda”)
`
`APPLE-1059
`
`Third Declaration of Jacob R. Munford
`
`
`
`7
`
`

`

`
`
`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
`
`I.
`Introduction
`Apple Inc. (“Petitioner” or “Apple”) submits this Reply to Patent Owner’s
`
`Response (“POR”) to the Petition for Inter Partes Review (“IPR”) of U.S. Patent
`
`No. 10,631,765 (“the ’765 patent”) filed by Masimo Corporation (“Patent Owner”
`
`or “Masimo”). As demonstrated below, the POR fails to address, much less rebut,
`
`positions advanced in the Petition. APPLE-1047, ¶¶1-85. Accordingly, Apple
`
`respectfully submits that the Board should find claims 1-29 (“the Challenged
`
`Claims”) of the ’765 patent unpatentable.
`
`II. Ground 1 Establishes Obviousness
`As Dr. Kenny explained in his first declaration, a “POSITA would have
`
`found it obvious to modify the [Aizawa] sensor’s flat cover…to include a
`
`lens/protrusion…similar to Ohsaki’s translucent board 8, so as to [1] improve
`
`adhesion between the user’s wrist and the sensor’s surface, [2] improve detection
`
`efficiency, [3] and protect the elements within the sensor housing.” APPLE-1003,
`
`¶¶98-102; APPLE-1047, ¶7. Dr. Kenny further explained that a POSITA would
`
`have found it obvious in view of Inokawa to include an additional LED in
`
`Aizawa’s sensor, to [1] “improve the detected pulse wave by distinguishing
`
`between blood flow detection and body movement,” “in addition to [2] enabling
`
`wireless communication between the sensor and a base station”. APPLE-1003,
`
`¶¶80-83; APPLE-1047, ¶7.
`
`8
`
`

`

`
`
`Rather than attempting to rebut Dr. Kenny’s testimony on these points,
`
`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
`
`Masimo offers, through its witness Dr. Madisetti, arguments that are factually
`
`flawed and legally irrelevant. APPLE-1047, ¶¶8-9.
`
`Specifically, Masimo contends that “Ohsaki and Aizawa employ different
`
`sensor structures (rectangular versus circular) for different measurement locations
`
`(back side versus palm side of the wrist), using different sensor surface shapes
`
`(convex versus flat) that are tailored to those specific measurement locations” and
`
`from this concludes that a POSITA would not “have been motivated to combine
`
`theses references,” and would not have “reasonably expected such a combination
`
`to be successful.” POR, 2-4. Masimo also contends that “[a]dding another LED
`
`complicates Aizawa’s sensor and increases power consumption” in addition to
`
`“eliminat[ing] the ability to take and display real-time measurements.” Id.
`
`In this way and as further explained below, the POR avoids addressing the
`
`merits of the combinations advanced by Petitioner, mischaracterizes the prior art
`
`combinations and Dr. Kenny’s testimony, and ignores the “inferences and creative
`
`steps” that a POSITA would have taken when modifying Aizawa’s sensor to
`
`achieve the benefits taught by Ohsaki, Inokawa, and Mendelson-2006. KSR Intern.
`
`Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`Contrary to Masimo’s contentions, Ohsaki nowhere describes its benefits as
`
`being limited to a rectangular sensor applied to a particular body location, and a
`
`9
`
`

`

`
`POSITA would not have understood those benefits as being so limited. APPLE-
`
`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
`
`1047, ¶¶10-11. Instead, and as shown in Ohsaki’s FIG. 2 (reproduced below),
`
`Ohsaki attributes the prevention of slippage afforded by use of its board (and
`
`improvements in signal quality) to the fact that “the convex surface of the
`
`translucent board…is in intimate contact with the surface of the user’s skin.”1
`
`APPLE-1003, ¶¶71, 98-102, 159; APPLE-1009, [0015], [0017], [0025], FIGS. 1-
`
`4B; APPLE-1047, ¶¶10-12.
`
`APPLE-1009, FIG. 2 (annotated).
`
`
`
`Absent from Ohsaki’s discussion of these benefits is any suggestion that
`
`they relate to the shape of the edge of translucent board 8 (whether circular, or
`
`
`
` 1
`
` Unless otherwise noted, emphases in quotations throughout this Reply are added.
`
`10
`
`

`

`
`other). APPLE-1047, ¶13. Rather, when describing the advantages associated with
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`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
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`the board, Ohsaki contrasts a “convex detecting surface” from a “flat detecting
`
`surface,” and explains that “if ‘the translucent board 8 has a convex
`
`surface…variation of the amount of the reflected light…that reaches the light
`
`receiving element 7 is suppressed.’” APPLE-1003, ¶¶100-102; APPLE-1009,
`
`[0015], [0025]; APPLE-1047, ¶13.
`
`Accordingly, a POSITA would have understood that a protruding convex
`
`cover would reduce slippage and thereby reduce the adverse effects of user
`
`movement on signals obtainable by Aizawa’s photodetectors, which like Ohsaki’s
`
`light receiving elements, detect light reflected from user tissue. APPLE-1047, ¶14;
`
`APPLE-1003, ¶¶98-102, 154-161; APPLE-1009, [0015], [0017], [0025], FIGS. 1-
`
`4B; see also APPLE-1006, [0012], [0013], [0023]-[0024], [0026], [0030], [0034],
`
`FIGS. 1(a)-1(b).
`
`Indeed, as described and shown by Dr. Kenny, the POSITA would have
`
`found it obvious to improve Aizawa’s sensor based on Ohsaki’s teachings, and
`
`would have been fully capable of making any inferences and creative steps
`
`necessary to achieve the benefits obtainable by modifying Aizawa’s cover to
`
`11
`
`

`

`
`feature a convex detecting surface.2 APPLE-1047, ¶15; KSR Intern. Co. v. Teleflex
`
`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
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`Inc., 550 U.S. 398, 418 (2007); see also APPLE-1008, ¶¶14-15, FIG. 1; APPLE-
`
`1024, [0012], [0024], [0033], [0035], FIG. 6.
`
`
`
`
`
`APPLE-1006, FIG. 1(b)(annotated).
`Contrary to Masimo’s contentions, the POSITA would have in no way been
`
`dissuaded from achieving those benefits by a specific body location associated
`
`
`
` 2
`
` Notably, Ohsaki nowhere depicts or describes its cover as rectangular. APPLE-
`
`1047, ¶15; APPLE-1009, [0001]-[0030]; FIGS. 1-4B. Even if Ohsaki’s cover were
`
`understood to be rectangular, “[t]he test for obviousness is not whether the features
`
`of a secondary reference may be bodily incorporated into the structure of the
`
`primary reference….” Allied Erecting v. Genesis Attachments, 825 F.3d 1373,
`
`1381 (Fed. Cir. 2016).
`
`
`
`12
`
`

`

`
`with Ohsaki’s sensor. POR, 12-14, 20-26; APPLE-1047, ¶16. Indeed, a POSITA
`
`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
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`would have understood that a light permeable convex cover would have provided
`
`the benefits described by Ohsaki in a sensor placed, for example, on the palm side
`
`of the wrist. APPLE-1047, ¶¶16-17; APPLE-1009, [0025], FIGS. 4A-4B, Claims
`
`3-8, APPLE-1019, 91.
`
`For these and other reasons explained below, Apple respectfully submits that
`
`the Board should reject Masimo’s arguments, which avoid addressing the merits of
`
`the combinations advanced in Apple’s Petition, and which are grounded in
`
`disregard for well-established principles of patent law. For example, that “[a]
`
`person of ordinary skill is also a person of ordinary creativity, not an
`
`automaton,” and that “[t]he test for obviousness is not whether the features of a
`
`secondary reference may be bodily incorporated into the structure of the primary
`
`reference,” but is instead “what the combined teachings of those references would
`
`have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413
`
`(C.C.P.A. 1981); Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313,
`
`1333 (Fed. Cir. 2020); KSR, 550 U.S. at 418); APPLE-1047, ¶18.
`
`A. Ohsaki does not teach or require that its translucent
`board 8 is “rectangular” in shape.
`The Petition demonstrates that a POSITA would have modified Aizawa in
`
`view of Ohsaki such that Aizawa’s cover “would include a convex surface,
`
`13
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`

`
`improving adhesion between a subject’s wrist and a surface of the sensor.” Pet.,
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`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
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`31-35; APPLE-1003, ¶98. Ohsaki (at [0025]) describes that the “convex surface of
`
`the translucent board 8” is responsible for this improved adhesion. See id.;
`
`APPLE-1047, ¶19.
`
`Masimo argues that adhesion is improved by the “longitudinal shape” of
`
`“Ohsaki’s translucent board [8],” not its “convex surface.” See POR, 20-26. But
`
`the cited portion of Ohsaki does not include any reference to board 8. See APPLE-
`
`1009, [0019]; APPLE-1047, ¶20. Instead, Ohsaki ascribes this “longitudinal”
`
`shape to a different component: “detecting element 2.” See id. Ohsaki never
`
`describes the “translucent board 8” as “longitudinal,” and nowhere describes
`
`“translucent board 8” and “detecting element 2” as having the same shape. See
`
`generally APPLE-1009; APPLE-1047, ¶20. Ohsaki’s FIG. 2 (reproduced below)
`
`shows that translucent board 8 (annotated yellow) is not coextensive with the entire
`
`tissue-facing side of detecting element 2 (annotated green). APPLE-1047, ¶20.
`
`14
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`

`
`
`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
`
`APPLE-1009, FIG. 2 (annotated)
`
`
`
`Based on its unsupported contention that translucent board 8 has a “very
`
`pronounced longitudinal directionality”, Masimo concludes that the translucent
`
`board 8 has a “rectangular” shape that is allegedly incompatible with Aizawa. See
`
`POR, 16-17. But Ohsaki never describes translucent board 8 as “rectangular.” In
`
`fact, the words “rectangular” and “rectangle” do not appear in Ohsaki. See
`
`generally APPLE-1009; APPLE-1047, ¶21.
`
`The POR incorrectly assumes that because Ohsaki’s light emitting element
`
`and the light receiving element are arranged in a longitudinal structure, Ohsaki’s
`
`15
`
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`

`
`translucent board must have a rectangular structure. APPLE-1009, [0009], [0019];
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`Case No. IPR2020-01715
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`POR, 1-3, 15-17. A POSITA would have known and understood that an elliptical
`
`or circular sensor or board configuration can have a longitudinal structure or
`
`appearance under a cross-sectional view, as illustrated below. APPLE-1047, ¶22;
`
`APPLE-1058, 8:42-56.
`
`APPLE-1058, FIGS. 3 and 4
`
`
`
`Masimo erroneously asserts that “Ohsaki illustrates two cross-sectional
`
`views of its board that confirm it is rectangular.” POR, 15. Masimo identifies
`
`these “two cross-sectional views” as FIGS. 1-2, and infers the supposed
`
`16
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`

`
`“rectangular shape” of the translucent board 8 based on FIG. 1 showing the “short”
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`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
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`side of the device, and FIG. 2 showing the “long” side of the same device. See
`
`POR, 15-17. But, according to Ohsaki, FIG. 2 is “a schematic diagram,” not a
`
`cross-sectional view, and Ohsaki never specifies that FIGS. 1 and 2 are different
`
`views of the same device. APPLE-1009, [0013]. Accordingly, nothing in Ohsaki
`
`supports Masimo’s inference that the “translucent board 8” must be “rectangular”
`
`in shape. See, e.g., APPLE-1009, [0013], [0019], [0025], FIG. 2; APPLE-1047,
`
`¶¶23-25.
`
`In addition, as discussed above, even if Ohsaki’s translucent board 8 were
`
`understood to be rectangular, obviousness does not require “bodily incorporation”
`
`of features from one reference into another. Facebook, 953 F.3d at 1333. A
`
`POSITA, being “a person of ordinary creativity, not an automaton,” would have
`
`been fully capable of modifying Aizawa to feature a light permeable protruding
`
`convex cover to obtain the benefits attributed to such a cover by Ohsaki. KSR, 550
`
`U.S. at 418; APPLE-1047, ¶26.
`
`B. A POSITA would have recognized the benefits of
`Ohsaki’s teachings when applied to Aizawa’s sensor.
`Masimo contends that “Ohsaki indicates that its sensor’s convex board only
`
`improves adhesion when used on the back (i.e., watch) side of the wrist,” that
`
`“Aizawa requires its sensor be positioned on the palm side of the wrist,” and
`
`17
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`

`

`
`concludes that “[a] POSITA seeking to improve adhesion of Aizawa’s sensor
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`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
`
`would not incorporate a feature that only improves adhesion at a different and
`
`unsuitable measurement location.” POR, 29. But Ohsaki does not describe that its
`
`sensor can only be used at a backside of the wrist. APPLE-1047, ¶27. Instead, at
`
`most, Ohsaki describes such an arrangement with respect to a preferred
`
`embodiment. APPLE-1047, ¶27; APPLE-1009, [0019].
`
`Indeed, Ohsaki’s disclosure would not have been understood as so limited.
`
`APPLE-1047, ¶¶28-29. For example, Ohsaki explains that “the detecting element
`
`2…may be worn on the back side of the user's forearm” as one form of
`
`modification. 3 APPLE-1009, [0030], [0028]; Claims 1-2. As another example,
`
`Ohsaki’s independent claim 5 states that “the detecting element is constructed to be
`
`worn on a user’s wrist or a user’s forearm,” without even mentioning a
`
`backside of the wrist or forearm. See also APPLE-1009, Claims 6-8. A POSITA
`
`would have understood this language to contradict Masimo’s assertion that Ohsaki
`
`discloses a “very limited benefit” and that “Ohsaki repeatedly specifies that its
`
`sensor ‘is worn on the back side of a user’s wrist corresponding to the back of the
`
`
`
` 3
`
` As Dr. Kenny explains, 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. APPLE-1047, ¶28.
`
`18
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`

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`user’s hand.’” POR, 38; APPLE-1047, ¶28. Indeed, a POSITA would have
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`Case No. IPR2020-01715
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`understood that Ohsaki’s benefits are provided when the sensor is placed, for
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`example, on either side of the user’s wrist or forearm because Ohsaki teaches no
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`such location requirement. APPLE-1047, ¶¶28-29; APPLE-1009, [0025], FIGS.
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`4A-4B.
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`Moreover, even assuming for the sake of argument that a POSITA would
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`have understood Aizawa’s sensor as being limited to placement on the palm side of
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`the wrist, and would have understood Ohsaki’s sensor’s “tendency to slip” when
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`arranged on the front side as informing consideration of Ohsaki’s teachings with
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`respect to Aizawa, that would have further motivated the POSITA to implement a
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`light permeable convex cover in Aizawa’s sensor, to improve detection efficiency
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`of that sensor when placed on the palm side. APPLE-1047, ¶30; POR, 28-41;
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`APPLE-1009, [0015], [0017], [0023], [0025], FIGS. 1-4B.
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`When describing advantages associated with its translucent board, Ohsaki
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`explains with reference to FIGS. 4A-4B (reproduced below) that “if the translucent
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`board 8 has a flat surface, the detected pulse wave is adversely affected by the
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`movement of the user’s wrist,” but that if the board “has a convex
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`surface…variation of the amount of the reflected light…that reaches the light
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`receiving element 7 is suppressed.” APPLE-1003, ¶¶98, 100; APPLE-1009,
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`[0015], [0017], [0025]; APPLE-1047, ¶31.
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`Case No. IPR2020-01715
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`APPLE-1009, FIGS. 4A, 4B.
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`
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`Contrary to Masimo’s contentions, a POSITA would not have understood
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`these benefits of a convex surface over a flat surface to be limited to one side or the
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`other of the user’s wrist. APPLE-1047, ¶¶32; APPLE-1009, [0023]-[0025].
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`Rather, a POSITA would have understood that, by promoting “intimate contact
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`with the surface of the user’s skin,” a light permeable convex cover would have
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`increased adhesion and reduced slippage of Aizawa’s sensor when placed on either
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`side of a user’s wrist or forearm, and additionally would have provided with
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`improvements in signal quality. APPLE-1047, ¶32; APPLE-1009, [0015], [0017],
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`[0025]; FIGS. 1, 2, 4A, 4B, Claims 3-8; APPLE-1019, 87, 91. Indeed, a POSITA
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`would have recognized that modifying Aizawa’s flat plate to feature a convex
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`protruding surface, as taught by Ohsaki, would have furthered Aizawa’s goal of
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`“improv[ing] adhesion between the sensor and the wrist” to “thereby further
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`Case No. IPR2020-01715
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`improve the detection efficiency.” APPLE-1006, [0013], [0026], [0030], [0034];
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`APPLE-1047, ¶32.
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`Further, the POSITA would have been fully capable of employing inferences
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`and creative steps when improving Aizawa based on Ohsaki’s teachings, and
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`would have expected success when applying those teachings. APPLE-1047, ¶33;
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`KSR, 550 U.S. at 418; In re Keller, 642 F.2d 413. Indeed, a POSITA would have
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`understood that adding a convex protrusion to Aizawa’s flat plate would have
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`provided an additional adhesive effect that would have reduced the tendency of
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`that plate to slip. APPLE-1047, ¶33.
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`C. Modifying Aizawa’s sensor to include a convex cover as
`taught by Ohsaki enhances the sensor’s light-gathering
`ability.
`Masimo argues that the combined sensor “would direct light away from the
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`detectors and thus decrease light collection and optical signal strength.” See, e.g.,
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`POR, 41-42. As explained below, a POSITA would have understood the opposite
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`to be true: that a cover featuring a convex protrusion would improve Aizawa’s
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`signal-to-noise ratio by causing more light backscattered from tissue to strike
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`Aizawa’s photodetectors than would have with a flat cover. APPLE-1047, ¶34;
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`APPLE-1019, 52, 86, 90; APPLE-1051, 84, 87-92, 135-141; APPLE-1057, 803-
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`805; APPLE-1016, FIGS. 1(a)-1(b).
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`Against this, Masimo and Dr. Madisetti assert that “a convex surface
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`Case No. IPR2020-01715
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`would…direct[] light away from the periphery and towards the center of the
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`sensor,” but, in so doing, fail to articulate a coherent position—e.g., whether
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`Masimo’s position is that “all” light or only “some” light is directed “to” or
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`“towards the center.” POR, 46; Ex. 2004, ¶88; APPLE-1047, ¶35.
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`For example, Dr. Madisetti testified that “if you have a convex surface...all
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`light reflected or otherwise would be condensed or directed towards the center.”
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`APPLE-1052, 40:4-11; see also id., 127:22-128:18; Ex. 2004, 86-87, APPLE-
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`1047, ¶36. However, during the same deposition, Dr. Madisetti further testified
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`that a convex cover would redirect light “towards the center,” which could be “a
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`general area at which the convex surface would be redirecting…light” or “a point,”
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`while contrasting the phrase “to the center” from “towards the center.” APPLE-
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`1052, 105:12-107:1, 133:19-135:11.
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`In contrast, Dr. Kenny has consistently testified that a POSITA would have
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`understood that a convex cover improves “light concentration at pretty much all of
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`the locations under the curvature of the lens,” and for at least that reason would
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`have been motivated to modify Aizawa’s sensor to include a convex cover as
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`taught by Ohsaki. Ex. 2006, 164:8-16; APPLE-1047, ¶37.
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`Case No. IPR2020-01715
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`i. Masimo ignores the well-known principle of
`reversibility
`The well-known optical principle of reversibility dispels Masimo’s claim
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`that “a convex cover condenses light towards the center of the sensor and away
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`from the periphery.” POR, 42; APPLE-1051, 87-92; APPLE-1049, 106-111;
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`APPLE-1047, ¶38. According to the principle of reversibility, “a ray going from P
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`to S will trace the same route as one from S to P.” APPLE-1051, 92, 84; APPLE-
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`1049, 101, 110; APPLE-1054, 80:20-82:20; APPLE-1047, ¶38. Importantly, the
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`principle dictates that rays that are not completely absorbed by user tissue will
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`propagate in a reversible manner. APPLE-1047, ¶38. In other words, every ray
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`that completes a path through tissue from an LED to a detector would trace an
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`identical path through that tissue in reverse, if the positions of the LED emitting
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`the ray and the receiving detector were swapped. APPLE-1047, ¶38; APPLE-
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`1051, 92.
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`
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`To illustrate the relevance of this principle, two example ray paths from the
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`LEDs (green) to the detector (red) can be seen below:
`
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`POR, 48 (red annotations added by Petitioner); APPLE-1047, ¶39.
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`Based on the principle of reversibility, a POSITA would have understood
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`that if the LED/detector configuration were swapped, as in Aizawa, the two
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`example rays would travel identical paths in reverse, from a central LED (red) to
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`surrounding detectors (green). APPLE-1047, ¶40. A POSITA would have
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`understood that, for these rays, any condensing/directing/focusing benefit achieved
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`by Inokawa’s cover (blue) under the original configuration would be identically
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`achieved under the reversed configuration:
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`
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`APPLE-1047, ¶40 (annotated).
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`Even when factoring in additional scattering that may occur when light is
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`reflected within human tissue, reversibility holds for each of the rays that are not
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`completely absorbed. APPLE-1053, 209:19-21, 207:9-209:21; APPLE-1047,
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`¶¶41-43.
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`In more detail, and as shown with respect to the example paths illustrated
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`below, each of the countless photons travelling through the system must abide by
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`Fermat’s principle. APPLE-1047, ¶44; APPLE-1049, 106-111. Consequently,
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`each photon traveling between a detector and an LED would take the identical path
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`between those points, even if the positions of the detector and LED were swapped.
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`Case No. IPR2020-01715
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`APPLE-1047, ¶44; APPLE-1053, 207:9-209:21.
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`
`
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`
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`
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`When confronted with this basic principle of reversibility during deposition,
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`Dr. Madisetti refused to acknowledge it, even going so far as to express ignorance
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`of “Fermat’s principle, whatever that is.” APPLE-1052, 89:12-19. Yet Fermat’s
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`principle, which states that a path taken by a light ray between two points is one
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`that can be traveled in the least time, is one of the most fundamental concepts in
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`optics/physics and plainly requires the principle of reversibility. APPLE-1051, 87-
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`92; APPLE-1049, 106-111; APPLE-1047, ¶¶45-48. This core concept is applied in
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`Aizawa itself. See APPLE-1003, ¶127 (“Aizawa…recognizes…reversibility”);
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`APPLE-1047, ¶34. Specifically, Aizawa explains that while the configurations
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`depicted include a central emitter surrounded by detectors, the “same effect can be
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`obtained when…a plurality of light emitting diodes 21 are disposed around the
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`Case No. IPR2020-01715
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`photodetector 22.” APPLE-1006, [0033]; APPLE-1047, ¶48; APPLE-1053,
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`209:19-21.
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`Accordingly, a POSITA would have understood that both configurations of
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`LEDs and detectors detectors—i.e., with the LED at the center as in Aizawa or
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`with the detector at the center as in Inokawa—would have identically benefitted
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`from the enhanced light-gathering ability of a convex lens/protrusion. APPLE-
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`1047, ¶¶38-49.
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`ii. Masimo ignores the behavior of scattered light
`in a reflectance-type pulse sensor
`Because Aizawa is a reflectance-type pulse sensor that receives diffuse,
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`backscattered light from the measurement site, its cover/lens cannot focus all
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`incoming light toward the sensor’s center. APPLE-1047, ¶50; Ex. 2006, 163:12-
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`164:2. Indeed, reflectance-type sensors detect light that has been “partially
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`reflected, transmitted, absorbed, and scattered by the skin and other tissues and the
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`blood before it reaches the detector.” Ex. 1019, 86. Thus, a POSITA would have
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`understood that light reaches the active detection area from various random
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`directions and angles. APPLE-1047, ¶50; APPLE-1053, 803; Ex. 1019, 90, 52.
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`
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`Snell’s law dictates this behavior of light. APPLE-1051, 84; APPLE-1049,
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`101; Ex. 1019, 52, 86, 90; APPLE-1047, ¶51. Even Dr. Madisetti agrees. APPLE-
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`1054, 80:20-82:20. For example, annotated Inokawa’s FIG. 2 shows additional
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`Case No. IPR2020-01715
`Attorney Docket: 50095-0024IP2
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`rays of light emitted from LED 21 and how some reflected/scattered light (red)
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`does not reach Inokawa’s centrally located detector:
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`
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`APPLE-1008, FIG. 2 (annotated); POR, 48; APPLE-1047, ¶51.
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`There is simply no way for a cover to focus all light at the center of the
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`sensor device. APPLE-1047, ¶¶52-54; APPLE-1051, 84; APPLE-1049, 101;
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`APPLE-1054, 80:20-82:20. As shown below, Snell’s law determines a direction of
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`a backscattered ray within a convex cover, thus providing a stark contrast to
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`Masimo’s assertions that