throbber
Filed December 17, 2021
`
`By:
`
`
`On behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Jarom D. Kesler (Reg. No. 57,046)
`Stephen W. Larson (Reg. No. 69,133)
`Shannon H. Lam (Reg. No. 65,614)
`Benjamin A. Katzenellenbogen (Reg. No. 53,102)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (949) 760-9502
`Tel.: (949) 760-0404
`Email: AppleIPR2020-1722-695@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01722
`Patent 10,470,695
`
`
`
`
`
`MASIMO SUR-REPLY TO PETITIONER REPLY
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page No.
`
`
`
`
`
`INTRODUCTION .................................................................................... 1
`
`CHIN’S DIFFUSER IS NOT NECESSARY FOR THICK
`TISSUE ..................................................................................................... 2
`
`A.
`
`Chin’s Sensor Addresses Issues Specific to Thin Tissue
`Measurement Sites ......................................................................... 2
`
`B. Masimo’s Expert Testimony Is Corroborated by Evidence
`of Record ........................................................................................ 4
`
` DIFFUSERS CAN MAKE SENSORS WORSE BY REDUCING
`THE LIGHT REACHING THE DETECTOR ......................................... 7
`
` GROUND 1D: SARANTOS, MENDELSON, AND CHIN .................... 8
`
`A. A POSITA Would Not Desire to Pass Light Through More
`Tissue at a Thick Tissue Measurement Site ................................... 9
`
`B. A Diffuser Negatively Impacts a Sensor Because It
`Decreases the Already Small Amount of Detectable AC
`Light Intensity .............................................................................. 10
`
` GROUND 2C: ACKERMANS AND CHIN .......................................... 13
`
`A. A POSITA Would Not Desire to Pass Light Through More
`Tissue at a Thick Tissue Measurement Site ................................. 13
`
`B. Adding A Diffuser Directly Contradicts Ackermans’
`Teaching of Maintaining a Compact Design to Minimize
`The Effects Of Motion Artifacts. ................................................. 14
`
` CONCLUSION ....................................................................................... 16
`
`
`
`-i-
`
`

`

`TABLE OF AUTHORITIES
`
`Page No(s).
`
`In re Magnum Oil Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ..................................................................... 6
`
`In re Preda,
`401 F.2d 825 (C.C.P.A. 1968) ....................................................................... 4
`
`
`
`
`
`-ii-
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`

`

`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
`
`
`
`INTRODUCTION
`
`In its Reply, Apple premised all of its arguments on a contextless cite to
`
`Chin and an unsupported assertion about Masimo’s experimental evidence.
`
`First, Apple repeatedly argued that Chin is not directed only to “thin tissue”
`
`devices like nostril sensors because of “Chin’s explicit disclosure that its sensor
`
`‘could attach to any body part.’” REPLY (Paper 18) at 2, 5, 10, 11, 12, 14, 15
`
`(quoting EX1006 at 5:55-56, emphasis by Apple). But Apple offered no context
`
`for this quote. The quoted statement is a general statement about pulse oximetry
`
`and unrelated to the specific nostril sensor relied on in the Petition. No such pulse
`
`oximetry sensor exists that can attach to any body part. It is well established that
`
`sensors must be designed for the intended measurement sites. EX1021 at 87, 88,
`
`91. Chin is no different.
`
`Second, Apple criticized Masimo’s evidence showing that a diffuser reduces
`
`the light reaching a detector in a reflectance-based sensor. In short, Apple argued
`
`that, because the asserted references teach multiple detectors, Masimo’s evidence
`
`based on a sensor having a single detector to show the reduction in light can be
`
`summarily discarded. But Apple makes the wrong comparison. The relevant
`
`comparison is between a sensor with a diffuser and a sensor without a diffuser. If a
`
`one detector sensor proves a diffuser causes less light to reach the one detector,
`
`each additional detector will likewise receive less light. The reduction of light
`
`-1-
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`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
`
`received by each detector will result in an overall reduction of light received by the
`
`sensor. That is, for a sensor with a given number of detectors, the addition of a
`
`diffuser results in less light detected than that same detector without the diffuser.
`
`Thus, Masimo has shown that a POSITA would have known a reflectance-based
`
`sensor receives less light with the addition of the diffuser, regardless of the number
`
`of detectors.
`
`As Apple supports its entire Reply on these two flawed allegations, Apple
`
`failed to demonstrate obviousness. Accordingly, the Board should affirm the
`
`patentability of Claims 6, 14, and 21 of the ’695 Patent.
`
` CHIN’S DIFFUSER IS NOT NECESSARY FOR THICK TISSUE
`
`A. Chin’s Sensor Addresses Issues Specific to Thin Tissue
`Measurement Sites
`
`Apple in its Petition argued “[i]t would have been obvious to a POSITA to
`
`combine Chin’s diffuser with Sarantos-Mendelson-1991 physiological monitoring
`
`device to diffuse the light that is emitted from the light source emitters so that the
`
`emitted light could pass through more tissue and blood.” Pet. (Paper 2) at 61.
`
`Apple made the same argument with respect to the combination of Ackermans and
`
`Chin. Id. at 102-103. Masimo in its Response explained that Chin needs its diffuser
`
`because Chin’s sensor is designed for thin tissue measurement sites (e.g., ear lobe
`
`or nostril) with less tissue available to generate sufficient backscattering, meaning
`
`less light reaches the detector. POR (Paper 13) at 16-19. Masimo also explained
`
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`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
`
`that Chin’s efforts to increase backscattering are not needed at measurement sites
`
`with sufficiently thick tissue (e.g., wrist, forearm, or calf) like Sarantos,
`
`Mendelson, Ackermans, and Venkatraman. Id. at 19-20; EX2001 ¶ 56.
`
`On reply, Apple did not dispute that thin tissue measurement sites may not
`
`include sufficient tissue for ample light backscattering. See POR at 17; see also
`
`EX1021 at 52 (“The intensity of the light scattered by the tissue depends on such
`
`factors as . . . on the tissue thickness . . . .”). Apple also did not dispute that less
`
`backscattering leads to a less accurate oxygen or pulse rate measurement. See POR
`
`at 17. Rather, Apple argued that “Patent Owner provides no evidentiary support—
`
`besides uncorroborated testimony from its expert—for this alleged dichotomy
`
`between ‘thin tissue’ and ‘thick tissue’ pulse oximeters.” Reply at 4. Apple
`
`recognized Masimo’s Response provided support from Chin, Sarantos, and
`
`Ackermans for its thin tissue argument, but discounts the evidence for failing to
`
`explicitly use the words “thick” and “thin.” Id. at 5. When asked whether Chin uses
`
`the word “thin” to describe the tissue, Masimo’s expert, Dr. Madisetti explained:
`
`To a POSITA it does. . . . I’d refer to Figure 5B [of Chin]. I’d refer to
`
`its use of – its exclusive and only use in referencing ear, as well as
`
`nostril, which a POSITA would understand are thin tissues. And
`
`Figure 5B also confirms that by saying that the tissue is between 3 and
`
`5 millimeter.
`
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`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
`
`EX1022 at 20:4-12. Thus, a POSITA would have understood that Chin discloses
`
`sensors designed for thin tissue measurement sites. See In re Preda, 401 F.2d 825,
`
`826 (C.C.P.A. 1968) (“[I]n considering the disclosure of a reference, it is proper to
`
`take into account not only specific teachings of the reference but also the
`
`inferences which one skilled in the art would reasonably be expected to draw
`
`therefrom.”).
`
`B. Masimo’s Expert Testimony Is Corroborated by Evidence of
`Record
`
`Apple on reply argued
`
`that Masimo’s Response “relies solely on
`
`uncorroborated expert testimony to support its conclusion that pulse oximetry
`
`techniques described with respect to one tissue site—such as those described in
`
`Chin—are inapplicable to devices operating at a different tissue site—such as the
`
`wrist-worn devices described in Sarantos and Ackermans.” Reply at 4. But it is
`
`well-established that different sensor configurations are used depending on the
`
`thickness of the tissue. Transmittance-type sensors like Chin’s are typically placed
`
`on thin tissue measurement sites like the patient’s finger, toe, ear or nose. EX1021
`
`at 87. Reflectance-type sensors, like Sarantos, Mendelson, Ackermans, and
`
`Venkatraman, are used on thick tissue measurement sites when transmittance-type
`
`sensors cannot be used. See id.
`
`Apple cited to Chin’s discussion that its sensor “could attach to any body
`
`part.” EX1006 at 5:55-56. But this statement in Chin is associated with FIG. 2 of
`
`-4-
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`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
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`Chin (reproduced below) and separate from Chin’s ear and nasal embodiments
`
`relied on in the Petition. See Pet. at 61, 102-103 (citing EX1006 at 2:4-7 (ear lobe),
`
`8:25-29 (nostril)).
`
`
`
`EX1006 at FIG. 2. FIG. 2 of Chin shows the wire connection between a monitor 64
`
`and a sensor 15. Id. at 5:26-34. Chin describes that “[b]y using four wires to a
`
`position close to the sensor, the resistance effects of the wiring and any
`
`connections are also taken into account.” Id. at 5:39-41. Thus, Chin’s statement
`
`that its sensor “could attach to any body part” is specific to the wiring arrangement
`
`shown in FIG. 2. Apple has not demonstrated that the specific nostril sensor
`
`configuration Apple relied on in its Petition could attach to any body part. See also
`
`EX1021 at 91 (“The major disadvantage of the transmittance probes is that the
`
`sensor application is limited to peripheral parts of the body such as the finger tips,
`
`toes, ear and nose in the adults or on the foot or palms in the infant.”).
`
`-5-
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`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
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`Apple argued that “it was well-known that reflectance pulse oximeters, such
`
`as those described in Sarantos and Ackermans, ‘can be used to measure arterial
`
`oxygen saturation at virtually any place on the human body.’” Reply at 5-6 (citing
`
`EX1021 at 88, 91). But Apple’s quoted statement, in full, reads “[r]eflectance
`
`probes can be used to measure arterial oxygen saturation virtually any place on the
`
`human body where the probe can be placed.” EX1021 at 88 (emphasis added).
`
`Sensor placement is not as flexible as Apple suggests. Apple has not shown that
`
`Chin’s transmittance-type sensor can be applied to thicker tissue sites (e.g., the
`
`wrist) or that the reflectance sensors like Sarantos, Mendelson, or Ackermans can
`
`be applied to thinner tissue sites (e.g., ear lobe or nostril). Moreover, Apple’s
`
`citations also explain that “[r]eflectance probes can be placed on virtually any
`
`place on the body where we can expect light reflection due to tissue.” EX1021 at
`
`91 (emphasis added). A POSITA would have understood that a wrist measurement
`
`site is generally unsuitable for oximetry for other reasons. But Apple’s argument is
`
`otherwise consistent with Masimo’s argument that a wrist measurement site is
`
`abundantly thick and does not suffer from the same light backscattering problems
`
`in Chin. See POR at 16-17.
`
`Based on the foregoing, Apple on reply still fails to articulate why a
`
`POSITA would apply a diffuser from a thin-tissue device like Chin to a thick-
`
`tissue device like Sarantos or Ackermans. In re Magnum Oil Int’l, Ltd., 829 F.3d
`
`-6-
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`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
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`1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving obviousness, a
`
`petitioner cannot employ mere conclusory statements.”).
`
` DIFFUSERS CAN MAKE SENSORS WORSE BY REDUCING THE
`LIGHT REACHING THE DETECTOR
`
`Masimo in its Response explained that adding a diffuser into the optical
`
`system of a reflectance sensor reduces the amount of light that reaches the detector,
`
`which leads to less accurate oxygen or pulse rate measurements. POR at 20-21;
`
`EX2001 ¶ 57. To confirm this understanding, Dr. Madisetti, conducted
`
`experiments applying different diffuser materials to reflectance-type sensors. POR
`
`at 20-21; EX2001 ¶¶ 58-59. On reply, Apple did not dispute that a diffuser reduces
`
`the light that reaches the detector. Apple also did not dispute that reducing the light
`
`that reaches the detector would lead to less accurate oxygen or pulse
`
`measurements. Instead, Apple argued that “Dr. Madisetti’s experiment is irrelevant
`
`to the present proceeding, because the Masimo pulse oximeter used in these
`
`experiments includes a single photodetector.” Reply at 7. But as Dr. Madisetti
`
`explained in his deposition:
`
`[The results are] applicable to singular detector configurations,
`
`multiple detector configurations, arrays, circular, high aspect ratio,
`
`any type of detector configuration because it is just confirming the
`
`basic knowledge of a POSA or a POSITA that a diffuser reduces the
`
`signal strength by spreading it out across a larger area.
`
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`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
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`And all my results in the experiments were just adding additional
`
`support to the basic knowledge of a POSA and are applicable to all
`
`types of sensors, detectors, and diffuser configurations.
`
`EX1022 at 57:21–58:14; see also id. at 56:22–57:20. Dr. Madisetti also explained
`
`that “it’s a basic physic[s] property that if you take light and spread it over a larger
`
`area, the same amount of light over the larger amount of area, the intensity of light
`
`will decrease.” Id. at 61:9–62:1. Thus, even though the experiments included a
`
`single photodetector, the experiments simply confirmed that a diffuser reduces the
`
`intensity of light no matter how many detectors were present.
`
`Apple asserted that “[d]evices with multiple detectors will detect additional
`
`reflected light that will not be detected by a single detector (i.e., light that strikes
`
`the area of the device covered by the additional detector). Reply at 8. But even
`
`with multiple detectors, a device with a diffuser will reduce light to all the
`
`detectors compared to a device without a diffuser. EX1022 at 57:21–58:14; see
`
`also id. at 56:22–57:20. A POSITA interested in maximizing the amount of
`
`backscattered light using multiple detectors would not have been motivated to
`
`include a diffuser that reduces the amount of light reaching the detector, in some
`
`instances by half or more. See POR at 25, 32; EX2001 ¶¶ 58-60.
`
` GROUND 1D: SARANTOS, MENDELSON, AND CHIN
`
`Sarantos discloses a wrist-worn sensor applied to thick tissue. EX1014 at
`
`7:12-16; EX2001 ¶ 62. As explained above, a device applied to thick tissue, like a
`
`-8-
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`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
`
`Sarantos-Mendelson device, does not have Chin’s thin tissue problem. See supra
`
`§ II. Thus, a POSITA having a Sarantos-Mendelson device would have no reason
`
`to look to Chin’s diffuser solution for its thin tissue problem. POR at 21-22.
`
`EX2001 ¶¶ 62-64.
`
`Moreover, Masimo in its Response questioned how a POSITA would
`
`incorporate a diffuser from Chin’s transmittance-type, nostril sensor into a
`
`Sarantos-Mendelson reflectance-type device “specifically the way described in
`
`Chin.” POR at 24-25. Chin fails to disclose any specific implementation of its
`
`diffuser. Id. On reply, Apple did not provide any clarity.
`
`A. A POSITA Would Not Desire to Pass Light Through More Tissue
`at a Thick Tissue Measurement Site
`
`Apple argued “a POSITA would have been motivated to incorporate Chin’s
`
`diffuser into the pulse oximeter of Sarantos and Mendelson because the diffuser
`
`will cause the light ‘to pass through more tissue, and thus more blood,’ resulting in
`
`a stronger reflected signal at the detectors, which ‘allows it to be more easily
`
`processed by the oximeter electronics and software’ to determine the measured
`
`physiological parameters.” Pet. at 62-63 (citations omitted). But a POSITA would
`
`have understood that adding a diffuser to a reflectance sensor would significantly
`
`reduce the light reaching the detector, making the signal more difficult to process.
`
`See supra § III.
`
`-9-
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`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
`
`At thicker tissue sites like the wrist, it can be difficult to detect the “AC”
`
`component of the measured light (corresponding to heart rate). EX2001 ¶ 69. Any
`
`reduction in light reaching the detector could be detrimental to signal quality.
`
`During his deposition, Dr. Madisetti explained that “the signal quality may be
`
`affected, specifically when you look at pulse oximetry sensors, where the pulsatile
`
`component can be very small, and it could be a very small percentage of something
`
`less than 2 percent of the recorded values.” EX1022 at 51:15–52:9; see also
`
`EX1021 at 107 (“This pulsatile component is very small compared to the
`
`nonpulsatile component. Therefore great care must be taken when determining and
`
`eventually analyzing these values, as we desire the pulsatile component.”). Thus, a
`
`POSITA would not have been motivated to incorporate Chin’s diffuser into a
`
`Sarantos-Mendelson device because causing the light to pass through more tissue
`
`at a thick tissue measurement site would negatively impact measurement accuracy.
`
`POR at 22; EX2001 ¶ 63. There is no evidence that such a combination would be
`
`successful. POR at 24-25.
`
`B. A Diffuser Negatively Impacts a Sensor Because It Decreases the
`Already Small Amount of Detectable AC Light Intensity
`
`Masimo in its Response explained that a POSITA would not have been
`
`motivated to spread light in Sarantos because, as shown in FIG. 4 of Sarantos, the
`
`AC component falls off to lower intensities at locations further from the
`
`emitter 408. POR at 27-28; see also EX1021 at 89 (“For a constant LED intensity
`
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`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
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`the light intensity detected by the photodiode decreases roughly exponentially as
`
`the radial distance between the LEDs and the photodiode is increased . . . .”).
`
`
`
`EX1014 at FIG. 4 (as annotated at POR at 27). On reply, Apple argued that
`
`Masimo’s arguments “assume, without support, that the addition of Chin’s diffuser
`
`would spread the light from Sarantos’ emitter to an extent that the pattern of light
`
`reaching the photodetectors would be vastly changed, thus disrupting the operation
`
`of the device.” Reply at 12. But as shown above, even a 1 mm difference decreases
`
`the detectable light intensity. EX1014 at 8:63-67 (“Thus, the bin in the lower left
`
`corner [at 2 mm] sees 20% of the total AC light intensity . . . , whereas the bin
`
`immediately to the right of that bin [at 3 mm] only sees 9% of the total AC light
`
`intensity or power within that region.”). Beyond a 4 mm distance from the emitter,
`
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`IPR2020-01722
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`there is hardly any detectable light intensity. As confirmed by Dr. Madisetti’s
`
`experiments, a diffuser would only decrease the already small amount of detectable
`
`AC light intensity, in some instances by half or more. See supra § III.
`
`Apple also argued that that Sarantos discloses photodetectors “spac[ed]
`
`closer than 1 mm or farther than 4 mm.” Reply at 12 (citing EX1014 at 18:66–
`
`19:2). But Sarantos also discloses:
`
`While the photodetector element may be positioned with its closest
`
`edge further than 4 mm from the center of the light source, doing so
`
`may prove counterproductive, as a higher-intensity light source may
`
`be needed to ensure that sufficient light is diffused across the
`
`increased distance in order to obtain a sufficiently strong signal at the
`
`photodetector. As a higher-intensity light source will generally
`
`consume additional power, such a compromise may be undesirable in
`
`a wearable fitness monitor context.
`
`EX1014 at 19:13-21; see also EX1021 at 89 (“[I]n practice, the LED driving
`
`current
`
`is
`
`limited by
`
`the manufacturer to a specified maximum power
`
`dissipation.”). When read in context, a POSITA would not have been motivated to
`
`spread light in Sarantos because doing so would require a higher-intensity light
`
`source. POR at 29-30; EX2001 ¶ 73. A higher-intensity light source would be an
`
`undesirable power drain in a battery-powered wearable device. POR at 29-30;
`
`EX2001 ¶ 73.
`
`-12-
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`IPR2020-01722
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`Based on at least the foregoing, Apple has not shown obviousness based on
`
`the combination of Sarantos, Mendelson, and Chin.
`
` GROUND 2C: ACKERMANS AND CHIN
`
`Ackermans discloses a wrist-worn sensor applied to thick tissue. EX2001
`
`¶ 77. Ackermans’ device does not have Chin’s thin tissue problem. See supra § II.
`
`Thus, a POSITA having Ackermans’ device would have no reason to look to
`
`Chin’s diffuser solution to its thin tissue problem. EX2001 ¶ 77.
`
`Moreover, Masimo in its Response questioned how a POSITA would
`
`incorporate a diffuser from Chin’s transmittance-type, nostril sensor into
`
`Ackermans’ reflectance-type device “specifically the way described in Chin.” POR
`
`at 36-37. Chin fails to disclose any specific implementation of its diffuser. Id. On
`
`reply, Apple did not provide any clarity.
`
`A. A POSITA Would Not Desire to Pass Light Through More Tissue
`at a Thick Tissue Measurement Site
`
`Apple argued “a POSITA would have been motivated to incorporate Chin’s
`
`diffuser into the pulse oximeter of Ackermans because the diffuser will cause the
`
`light ‘to pass through more tissue, and thus more blood,’ resulting in a stronger
`
`reflected signal at the detectors, which ‘allows it to be more easily processed by the
`
`oximeter electronics and software’ to determine the measured physiological
`
`parameters.” Pet. at 104 (citations omitted). But a POSITA would have understood
`
`-13-
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`

`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
`
`that adding a diffuser to a reflectance sensor would significantly reduce the amount
`
`of light reaching the detector. See supra § III.
`
`At thicker tissue sites like the wrist, it can be difficult to detect the “AC”
`
`component of the measured light (corresponding to heart rate). EX2001 ¶ 83. Any
`
`reduction in light reaching the detector could be detrimental to signal quality.
`
`During his deposition, Dr. Madisetti explained that “the signal quality may be
`
`affected, specifically when you look at pulse oximetry sensors, where the pulsatile
`
`component can be very small, and it could be a very small percentage of something
`
`less than 2 percent of the recorded values.” EX1022 at 51:15–52:9; see also
`
`EX1021 at 107 (“This pulsatile component is very small compared to the
`
`nonpulsatile component. Therefore great care must be taken when determining and
`
`eventually analyzing these values, as we desire the pulsatile component.”). Thus, a
`
`POSITA would not have been motivated to incorporate Chin’s diffuser into
`
`Ackermans’ device because causing the light to pass through more tissue at a thick
`
`tissue measurement site would negatively measurement accuracy. EX2001 ¶ 78.
`
`There is no evidence that such a combination would be successful. POR at 36-37.
`
`B. Adding a Diffuser Directly Contradicts Ackermans’ Teaching of
`Maintaining a Compact Design to Minimize the Effects of Motion
`Artifacts.
`
`Masimo in its Response explained that a POSITA would not have been
`
`motivated to spread light in Ackermans because Ackermans seeks to arrange its
`
`-14-
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`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
`
`light emitter and detector “in a compact way that allows obtaining a high quality
`
`signal.” Ackermans makes its sensor compact so the “signal delivered by the
`
`[]detector 30 is less affected by movement artifacts.” EX1016 at 5:28-33. Apple on
`
`reply argued that “Patent Owner’s arguments assume, without support, that the
`
`addition of Chin’s diffuser would spread the light from Ackermans’ emitter to an
`
`extent that the pattern of light reaching the photodetectors would be vastly
`
`changed, thus disrupting the operation of the device.’” Reply at 16. But as
`
`confirmed by Dr. Madisetti’s experiment, the diffuser would reduce the amount of
`
`light reaching any detector, in some instances by half or more. See supra § III.
`
`Even slight spreading of light would require the Ackerman’s detector elements to
`
`be spaced further from the emitter. This would be counter to Ackermans’ desire to
`
`maintain a compact design to minimize the effects of motion artifacts. See EX1016
`
`at 5:28-33. Moreover, spacing the detectors further from the emitter would require
`
`a higher intensity emitter that consumes additional power. POR at 40-41; EX2001
`
`¶ 88; see also EX1014 at 19:13-21 (“As a higher-intensity light source will
`
`generally consume additional power, such a compromise may be undesirable in a
`
`wearable fitness monitor context.”); EX1021 at 88 (“[I]n practice, the LED driving
`
`current
`
`is
`
`limited by
`
`the manufacturer to a specified maximum power
`
`dissipation.”). A POSITA would not have made the proposed modifications to
`
`-15-
`
`

`

`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
`
`Ackermans’ battery-powered device to avoid consuming additional power. POR at
`
`41; EX2001 ¶ 88.
`
`Based on at least the foregoing, Apple has not shown obviousness based on
`
`the combination of Ackermans and Chin.
`
` CONCLUSION
`
`For the reasons discussed above, the Board should confirm the patentability
`
`of Claims 6, 14, and 21 of the ’695 Patent.
`
`Dated: December 17, 2021
`
`Respectfully submitted,
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`By: /Shannon Lam/
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Shannon H. Lam (Reg. No. 65,614)
`Benjamin A. Katzenellenbogen (Reg. No. 53,102)
`
`Attorneys for Patent Owner
`Masimo Corporation
`
`-16-
`
`

`

`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
`
`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 C.F.R. §42.24(d), the undersigned certifies that the foregoing
`
`MASIMO SUR-REPLY TO PETITIONER REPLY, exclusive of the parts
`
`exempted as provided in 37 C.F.R. §42.24(a), contains 3,477 words and therefore
`
`complies with the type-volume limitations of 37 C.F.R. §42.24(c).
`
`Dated: December 17, 2021
`
`
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
` /Shannon Lam/
`Shannon H. Lam (Reg. No. 65,614)
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`
`
`

`

`IPR2020-01722
`Apple v. Masimo – Patent 10,470,695
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e) and with the agreement
`
`of counsel for Petitioner, a true and correct copy of MASIMO SUR-REPLY TO
`
`PETITIONER REPLY is being served electronically on December 17, 2021, to
`
`the email addresses below:
`
`W. Karl Renner
`Daniel D. Smith
`Kenneth Hoover
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR50095-0004IP1@fr.com; PTABInbound@fr.com; dsmith@fr.com;
`axf-ptab@fr.com, hoover@fr.com
`
`
`
`Dated: December 17, 2021
`
`
`54672553
`
`
`
`By: /Shannon Lam/
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Shannon H. Lam (Reg. No. 65,614)
`Benjamin A. Katzenellenbogen (Reg. No. 53,102)
`
`Attorneys for Patent Owner
`Masimo Corporation
`
`
`
`

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