`
`Al-Ali
`In re Patent of:
`10,470,695 Attorney Docket No.: 50095-0004IP1
`U.S. Patent No.:
`November 12, 2019
`Issue Date:
`Appl. Serial No.: 16/226,249
`Filing Date:
`December 19, 2018
`Title:
`ADVANCED PULSE OXIMETRY SENSOR
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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. 10,470,695
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`Apple is filing two petitions (IPR2020-01722 and IPR2020-01723)
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`challenging U.S. Patent No. 10,470,695 (the “’695 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:
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`Rank
`1
`2
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`Petition
`IPR2020-01722
`IPR2020-01723
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`Primary Reference(s)
`Sarantos, Ackermans
`Mendelson ’799
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`II. Considerations in Allowing Multiple Petitions Covering Different
`Grounds Where The Challenged Patent Has a Large Number of Claims
`The need for two Petitions in the present case is driven by the large number
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`of claims (30) in the ’695 Patent. 30 claims is a larger than normal number of
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`claims in a U.S. patent, as evidenced by the Patent Office charging additional fees
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`to examine patent applications with more than 20 claims, and the PTAB charging
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`additional fees to consider challenges of patents with more than 20 claims. See
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`USPTO Fee Schedule (Last Revised on September 1, 2020), available at
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`https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-
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`schedule.
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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 ’695 Patent,
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`they do so in different ways, using different description.
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`IPR2020-01722 relies on Sarantos and Ackermans as their primary
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`reference. Sarantos describes a “wristband-type wearable fitness monitor” that
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`measures “physiological parameters” of the wearer, such as the person’s “heart
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`rate” and “blood oxygenation levels.” APPLE-1014, 2:5-14, 5:55-59, 7:12-14,
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`13:39-47. Ackermans describes an optical sensor specifically for measuring the
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`blood oxygenation levels of a user. APPLE-1016, Abstract, 1, 2-5.
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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 ’695 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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`3
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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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`Dated: October 2, 2020
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`Respectfully submitted,
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` /W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Dan Smith, Reg. No. 71,278
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`4
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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 undersigned
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`certifies that on October 2, 2020, a complete and entire copy of this Notice
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`Ranking Petitions was provided via Federal Express, to the Patent Owner by
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`serving the correspondence address of record as follows:
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
`MASIMO CORPORATION (MASIMO)
`2040 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE CA 92614
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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