IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Jeroen Poeze, et al.
`In re Patent of:
`10,631,765
`U.S. Patent No.:
`
`April 28, 2020
`Issue Date:
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`Appl. Serial No.: 16/725,478
`
`Filing Date:
`December 23, 2019
`Title:
`MULTI-STREAM DATA COLLECTION SYSTEM FOR
`NONINVASIVE MEASUREMENT OF BLOOD
`CONSTITUENTS
`
`
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,631,765
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`1
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`
`Jeroen Poeze, et al.
`In re Patent of:
`10,631,765
`U.S. Patent No.:
`
`April 28, 2020
`Issue Date:
`
`Appl. Serial No.: 16/725,478
`
`Filing Date:
`December 23, 2019
`Title:
`MULTI-STREAM DATA COLLECTION SYSTEM FOR
`NONINVASIVE MEASUREMENT OF BLOOD
`CONSTITUENTS
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,631,765
`
`
`
`
`1
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`Apple is filing two petitions (IPR2020-01714 and IPR2020-01715)
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`challenging U.S. Patent No. 10,631,765 (the “’765 Patent”). Pursuant to the
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`November 2019 Trial Practice Guide Update, this paper provides: “(1) a ranking of
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`the petitions in the order in which [Petitioner] wishes the Board to consider the
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`merits, if the Board uses its discretion to institute any of the petitions, and (2) a
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`succinct explanation of the differences between the petitions, why the issues
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`addressed by the differences are material, and why the Board should exercise its
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`discretion to institute additional petitions.” Trial Practice Guide, 59-61.
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`I.
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`Ranking of Petitions
`Although Apple believes that both petitions are meritorious and justified,
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`Petitioner requests that the Board consider the petitions in the following order:
`
`Rank
`1
`2
`
`Petition
`IPR2020-01714
`IPR2020-01715
`
`Primary Reference
`Mendelson-799
`Aizawa
`
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`II. Considerations in Allowing Multiple Petitions Covering Different
`Grounds Where Patent Owner Has Asserted a Large Number of Claims
`Apple is a defendant in a pending infringement suit involving the ’765
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`Patent, in addition to eleven other patents that are presently asserted. The District
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`Court recently ordered the parties to submit a “Joint Claim Narrowing Proposal”
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`by November 23, 2020, Patent Owner has not yet narrowed the asserted claims.
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`2
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`APPLE-1033, 1; APPLE-1040, 1-3. As such, any of the ’765 Patent’s 29 claims
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`might potentially be asserted.
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`Given the uncertainty of which claims will ultimately be asserted, Petitioner
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`is forced to address all claims of the ’765 Patent in the present IPRs. If Petitioner
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`were to leave some claims unaddressed, Patent Owner would be free to
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`strategically tailor its final set of asserted claims in the Litigation to include claims
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`left unaddressed in these IPRs. Petitioner attempted to fully address all 29 claims
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`in a single petition, but was forced to split its arguments into two petitions due to
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`word count constraints.
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`Thus, the need for two Petitions is driven by uncertainty regarding which
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`claims will ultimately be asserted in the Litigation. Patent Owner should not be
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`allowed to hamper Apple’s ability to effectively use IPR as a defense by choosing
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`to leave its assertion broad.
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`III. Material Differences Between the Petitions
`Material differences exist. At bottom, the Petitions are non-redundant
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`simply in their reliance on different combinations of references that address the
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`claim elements in materially different ways. Although the combinations of
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`references presented in each Petition render obvious the claims of the ’765 Patent,
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`they do so in different ways, using different description.
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`3
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`IPR2020-01714 relies on Mendelson-799 as its primary reference.
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`Mendelson-799 describes a pulse oximeter featuring a sensor housing 17 that
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`accommodates a “light source 12 composed of three closely spaced light emitting
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`elements (e.g., LEDs or laser sources)” and an array of twelve “discrete detectors
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`(e.g., photodiodes).” APPLE-1012, Title, Abstract, 9:22-40, 10:16-37, FIGS. 7, 8.
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`In contrast, the primary reference in IPR2020-01715 is Aizawa, which describes a
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`pulse wave sensor featuring “four photodetectors” disposed around a central light
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`source and a “holder” that secures the light source and photodetectors. APPLE-
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`1006, ¶[0023]; FIGS. 1(a), 1(b).
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`These distinct primary references, in combination with various secondary
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`references, apply differently to the claims of the ’765 Patent. Additionally,
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`motivation to combine the distinct sets of references presented in the two Petitions
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`materially differs.
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`In summary, the Petitions are not redundant, duplicative, or substantially
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`similar. Each Petition provides a strong showing of unpatentability and/or
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`obviousness, without repeating the same theory. Accordingly, Petitioner requests
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`that the Board institute trial on both Petitions.
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`4
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`Dated: September 30, 2020
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`Respectfully submitted,
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` /W. Karl Renner/
` W. Karl Renner, Reg. No. 41,265
`Andrew B. Patrick, Reg. No. 63,471
`Usman Khan, Reg. No. 70,439
`Grace J. Kim, Reg. No. 71,977
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
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`5
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the under-signed
`certifies that on September 30, 2020, a complete and entire copy of this Notice
`Ranking Petitions was provided via Federal Express, to the Patent Owner by
`serving the correspondence address of record as follows:
`
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`MASIMO CORPORATION (MASIMO)
`2040 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE CA 92614
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`/Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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`6
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