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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01733
`U.S. Patent 10,702,195
`
`
`
`
`
`DECLARATION OF VIJAY K. MADISETTI, PH.D.
`
`
`
`
`Masimo Ex. 2004
`Apple v. Masimo
`IPR2020-01733
`
`
`
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`QUALIFICATIONS ........................................................................................ 1
`
`II. MATERIALS CONSIDERED ........................................................................ 8
`
`III. UNDERSTANDING OF PATENT LAW .................................................... 10
`
`A.
`
`B.
`
`C.
`
`Level Of Ordinary Skill In The Art ..................................................... 10
`
`Claim Construction ............................................................................. 11
`
`Obviousness ......................................................................................... 12
`
`IV.
`
`INTRODUCTION TO MASIMO’S ’195 PATENT ..................................... 13
`
`A.
`
`B.
`
`The ’195 Patent ................................................................................... 13
`
`Introduction To The Independent Claims Of The ’195
`Patent ................................................................................................... 14
`
`V.
`
`THE PETITION’S PROPOSED COMBINATIONS .................................... 16
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 16
`
`VII. GROUNDS 1-2 DO NOT ESTABLISH OBVIOUSNESS .......................... 18
`
`A.
`
`Introduction To Ground 1 ................................................................... 18
`
`1.
`
`2.
`
`3.
`
`4.
`
`Ohsaki Discloses A Pulse Rate Sensor With A
`Single Emitter And A Single Detector That
`Must Be Arranged Linearly On The Back Side
`Of The Wrist ............................................................................. 18
`
`The Shape Of Ohsaki’s Board .................................................. 20
`
`Aizawa Discloses A Circular Pulse Sensor .............................. 23
`
`Ground 1’s Motivation To Add Ohsaki And
`Aizawa To The Proposed Combination .................................... 24
`
`
`-i-
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`
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`5.
`
`6.
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`Dr. Kenny’s Proposed Addition Of Mendelson
`2003 to Ground 1 ...................................................................... 27
`
`Dr. Kenny’s Further Addition of Goldsmith to
`Ground 1 ................................................................................... 30
`
`B.
`
`A POSITA Would Not Have Been Motivated To
`Combine Ohsaki’s Board With Aizawa’s Sensor ............................... 30
`
`1.
`
`2.
`
`3.
`
`4.
`
`A POSITA Would Have Understood That
`Ohsaki’s Rectangular Board Would Not Work
`With Aizawa’s Circular Sensor Arrangement .......................... 32
`
`A POSITA Would Have Understood That
`Ohsaki’s Board Would Have Been Detrimental
`In Combination With Aizawa’s Sensor Because
`Ohsaki’s Board “Has A Tendency To Slip” At
`Aizawa’s Measurement Location On The Palm
`Side Of The Wrist, Near The Artery ......................................... 41
`
`A POSITA Would Not Have Been Motivated
`To Reduce The Measured Optical Signal By
`Adding A Convex Lens/Protrusion To
`Aizawa’s Sensor ........................................................................ 56
`
`A POSITA Would Not Have Selected A
`Convex Cover To Protect The Sensor’s Optical
`Elements .................................................................................... 65
`
`C.
`
`Dr. Kenny’s Modification Of Aizawa’s Detector
`Arrangement Based On Mendelson 2003 Changes
`Aizawa’s Principle Of Operation And Produces An
`Inferior Sensor ..................................................................................... 67
`
`1.
`
`Dr. Kenny’s Proposed Combination Changes
`Aizawa’s Principle Of Operation And
`Eliminates A Feature Aizawa Repeatedly
`Identifies As Important ............................................................. 69
`
`
`-ii-
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`2.
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`Dr. Kenny’s Proposed Modification Would
`Result In Increased Power Consumption
`Compared To Aizawa’s Existing Embodiment ........................ 72
`
`3. Mendelson 2003 Teaches Against Using Its
`Particular Detector Arrangement, Which Was
`Designed For Performing Experiments, For An
`Actual Monitoring Device ........................................................ 75
`
`D. Goldsmith Does Not Address The Deficiencies In Dr.
`Kenny’s Proposed Combination Of Aizawa, Ohsaki,
`and Mendelson 2003 ........................................................................... 79
`
`E.
`
`F.
`
`The Challenged Dependent Claims Are Nonobvious
`Over Ground 1 ..................................................................................... 80
`
`Ground 2 Fails For The Same Reasons As Ground 1 ......................... 84
`
`VIII. OATH ............................................................................................................ 85
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`-iii-
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`
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`I, Vijay K. Madisetti, Ph.D., declare as follows:
`
`1.
`
`I have been retained by counsel for Patent Owner Masimo
`
`Corporation (“Masimo”) as an independent expert witness in this proceeding. I
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`have been asked to provide my opinions regarding the Petition in this action and
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`the declaration offered by Thomas W. Kenny, Ph.D., (Ex. 1003) challenging the
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`patentability of claims 1-17 of U.S. Patent No. 10,702,195 (“the ’195 Patent”). I
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`am being compensated at my usual and customary rate for the time I spend
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`working on this proceeding, and my compensation is not affected by its outcome.
`
`I.
`QUALIFICATIONS
`2. My qualifications are set forth in my curriculum vitae, a copy of
`
`which is included as Exhibit 2005. A summary of my qualifications follows.
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`3.
`
`I am a professor in Electrical and Computer Engineering at the
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`Georgia Institute of Technology (“Georgia Tech”). I have worked in the area of
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`digital signal processing, wireless communications, computer engineering,
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`integrated circuit design, and software engineering for over 25 years, and have
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`authored, co-authored, or edited several books and numerous peer-reviewed
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`technical papers in these area.
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`4.
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`I obtained my Ph.D. in Electrical Engineering and Computer Science
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`at the University of California, Berkeley, in 1989. While there, I received the
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`-1-
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`
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`Demetri Angelakos Outstanding Graduate Student Award and the IEEE/ACM Ira
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`M. Kay Memorial Paper Prize.
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`5.
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`I joined Georgia Tech in the Fall of 1989 and am now a tenured full
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`professor in Electrical and Computer Engineering. Among other things, I have
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`been active in the areas of digital signal processing, wireless communications,
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`integrated circuit design (analog & digital), system-level design methodologies and
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`tools, and software engineering. I have been the principal investigator (“PI”) or
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`co-PI in several active research programs in these areas, including DARPA’s
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`Rapid Prototyping of Application Specific Signal Processors, the State of
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`Georgia’s Yamacraw Initiative, the United States Army’s Federated Sensors
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`Laboratory Program, and
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`the United States Air Force Electronics Parts
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`Obsolescence Initiative. I have received an IBM Faculty Award and NSF’s
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`Research Initiation Award. I have been awarded the 2006 Frederick Emmons
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`Terman Medal by
`
`the American Society of Engineering Education for
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`contributions to Electrical Engineering, including authoring a widely used textbook
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`in the design of VLSI digital signal processors.
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`6.
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`During the past 20 years at Georgia Tech, I have created and taught
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`undergraduate and graduate courses in hardware and software design for signal
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`processing, computer engineering (software and hardware systems), computer
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`engineering and wireless communication circuits.
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`-2-
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`7.
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`I have been involved in research and technology in the area of digital
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`signal processing since the late 1980s, and I am the Editor-in-Chief of the CRC
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`Press’s 3-volume Digital Signal Processing Handbook (1998, 2010).
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`8.
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`I have founded three companies in the areas of signal processing,
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`embedded software, military chipsets involving imaging technology, and software
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`for computing and communications systems. I have supervised Ph.D. dissertations
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`of over twenty engineers in the areas of computer engineering, signal processing,
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`communications, rapid prototyping, and system-level design methodology.
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`9.
`
` I have designed several specialized computer and communication
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`systems over the past two decades at Georgia Tech for tasks such as wireless audio
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`and video processing and protocol processing for portable platforms, such as cell
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`phones and PDAs. I have designed systems that are efficient in view of
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`performance, size, weight, area, and thermal considerations. I have developed
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`courses and classes for industry on these topics, and many of my lectures in
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`advanced computer system design, developed under the sponsorship of the United
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`States Department of Defense in the late 1990s, are available for educational use at
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`http://www.eda.org/rassp and have been used by several U.S. and international
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`universities as part of their course work. Some of my recent publications in the
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`area of design of computer engineering and wireless communications systems and
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`associated protocols are listed in Exhibit 2005.
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`-3-
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`10.
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`In the mid 2006-2007 timeframe, I collaborated with Professor John
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`Scharf and his colleagues at Emory Healthcare system in developing FFT-based
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`pulse oximetry system prototypes on FPGAs, which extended technologies
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`developed by Prof. Scharf and his colleagues from the 1996 time frame (See T.
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`Rusch, R. Sankar, J. Scharf, “Signal Processing Methods for Pulse Oximetry”,
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`Comput. Bio. Med, Vol. 26, No. 2, 1996). Some of my more recent publications in
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`the area of biological signal processing and bioinformatics are listed in my CV and
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`include, A. Bahga, V. Madisetti, “Healthcare Data Integration and Informatics in
`
`the Cloud”, IEEE Computer, Vol. 48, Issue 2, 2015, and “Cloud-Based
`
`Information Integration Informatics Framework for Healthcare Applications”,
`
`IEEE Computer, Issue 99, 2013. In addition to my signal processing experience
`
`specific to pulse oximetry, I also have experience in developing systems for other
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`physiological signals. Beginning in the early 1990s, I worked, in particular, with
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`ECG/EKG signals, and, in general, with biomedical signals and systems.
`
`11.
`
`In addition to my signal processing experience specific to pulse
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`oximetry, I also have experience in developing algorithms and systems for other
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`physiological signals. I worked with ECG/EKG signals in particular, and
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`biomedical signals and systems in general, beginning in the early 1990s. In
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`particular, I worked with graduate student Dr. Shahram Famorzadeh, in 1990 and
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`1991, to analyze and apply pattern recognition (a category of signal processing
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`-4-
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`
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`algorithms that is based on correlation with a set of templates) to ECG/EKG
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`waveforms to identify physiological conditions.
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`12.
`
`I have experience with biomedical signals and devices in the field of
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`speech and image processing since the late 1980s. I worked on deconvolution
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`algorithms to recover the state of the system based on observed measurements of
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`the physiological signals in the 1993-1998 time-frame. These signal processing
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`techniques can be applied to pulse oximetry signals, and I have been working with
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`these techniques since the mid-1980s.
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`13.
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`I have studied, researched and published in the area of adaptive filter
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`signal processing for noise reduction and signal prediction, using correlation-based
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`approaches since the mid-1980s, both in the time-domain and frequency domain,
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`and also to ray-tracing applications, such as Seismic Migration for oil and shale
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`gas exploration. See for instance, V. Madisetti & D. Messerschmitt, Dynamically
`
`Reduced Complexity Implementation of Echo Cancellers, IEEE International
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`Conference on Speech, Acoustics and Signal Processing, ICASSP 1986, Tokyo,
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`Japan, and M. Romdhane and V. Madisetti, “All-Digital Oversampled Front-End
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`Sensors” IEEE Signal Processing Letters, Vol 3, Issue 2, 1996, and “LMSGEN: A
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`Prototyping Environment for Programmable Adaptive Digital Filters in VLSI”,
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`VLSI Signal processing, pp. 33-42, 1994.
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`-5-
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`
`
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`14. Deconvolution of symmetric (seismic) and asymmetric (pulse
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`oximetry) signals has gained much importance in the past two decades, and some
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`of my early work on “Homomorphic Deconvolution of Bandpass Signals” in IEEE
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`Transactions on Signal Processing, October 1997, established several new methods
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`for deconvolution of such signals that had several advantages of robustness,
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`increased accuracy, and simplicity.
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`15.
`
`In the past decade I have authored several peer-reviewed papers in the
`
`area of computer systems, instruments, and software design, and these include:
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`
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`
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`
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`
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`V. Madisetti, et al., “The Georgia Tech Digital Signal Multiprocessor,
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`IEEE Transactions on Signal Processing, Vol. 41, No. 7, July 1993.
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`V. Madisetti et al., “Rapid Prototyping on the Georgia Tech Digital
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`Signal Multiprocessor”, IEEE Transactions on Signal Processing, Vol.
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`42, March 1994.
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`V. Madisetti, “Reengineering legacy embedded systems”, IEEE
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`Design & Test of Computers, Vol. 16, Vol. 2, 1999.
`
`V. Madisetti
`
`et
`
`al.,
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`“Virtual Prototyping of Embedded
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`Microcontroller-based DSP Systems”, IEEE Micro, Vol. 15, Issue 5,
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`1995.
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`-6-
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`
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`V. Madisetti, et al., “Incorporating Cost Modeling in Embedded-
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`System Design”, IEEE Design & Test of Computers, Vol. 14, Issue 3,
`
`1997.
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`
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`V. Madisetti, et al., “Conceptual Prototyping of Scalable Embedded
`
`DSP Systems”, IEEE Design & Test of Computers, Vol. 13, Issue 3,
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`1996.
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`
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`
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`V. Madisetti, Electronic System, Platform & Package Codesign,”
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`IEEE Design & Test of Computers, Vol. 23, Issue 3, June 2006.
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`V. Madisetti, et al., “A Dynamic Resource Management and
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`Scheduling Environment
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`for Embedded Multimedia
`
`and
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`Communications Platforms”, IEEE Embedded Systems Letters, Vol.
`
`3, Issue 1, 2011.
`
`16.
`
`I have been active in the areas of signal processing systems and
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`mobile device communication systems for several years, and some of my
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`publications in this area include “Frequency Dependent Space-Interleaving of
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`MIMO OFDM Systems” Proc. of IEEE Radio and Wireless Conference
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`(RAWCON ’03), 2003, “Embedded Alamouti Space Time Codes for High Rate
`
`and Low Decoding Complexity”, Proc. IEEE Asilomar Conf. on Signals, Systems,
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`and Computers, 2008; and “Asymmetric Golden Codes for Fast Decoding in Time
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`Varying Channels”, Wireless Personal Communications (2011).
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`-7-
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`
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`II. MATERIALS CONSIDERED
`17. Below is a listing of documents and materials that I considered and
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`reviewed in connection with providing this declaration. In forming my opinions, I
`
`considered those materials as well as anything cited or discussed in this
`
`declaration.
`
`Exhibit
`
`Description
`
`1001
`1002
`1003
`1004
`1006
`1007
`1008
`
`1009
`1010
`1014
`1015
`
`1016
`
`1017
`
`U.S. Patent No. 10,702,195 (“’195 Patent”)
`File History for the ’195 Patent
`Declaration of Dr. Thomas W. Kenny
`Curriculum Vitae of Dr. Thomas W. Kenny
`U.S. Pub. No. 2002/0188210 (“Aizawa”)
`JP 2006-296564 (“Inokawa”)
`Certified English Translation of Inokawa and Translator’s
`Declaration
`U.S. Pat. No. 7,088,040 (“Ducharme”)
`U.S. Pat. No. 6,198,951 (“Kosuda”)
`U.S. Pub. No. 2001/0056243 (“Ohsaki”)
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson et al., Medical Instrumentation, Vol. 22,
`No. 4, 1988; pp. 167-173 (“Mendelson 1988”)
`“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”)
`“Noninvasive Pulse Oximetry Utilizing Skin Reflectance
`Photoplethysmography,” Y. Mendelson, et al.; IEEE
`Transactions on Biomedical Engineering, Vol. 35, No. 10,
`October 1988; pp. 798-805 (“Mendelson-IEEE-1988”)
`
`-8-
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`
`
`
`
`Exhibit
`
`Description
`
`1018
`
`1019
`1020
`1021
`1023
`1024
`
`1025
`1027
`1028
`1029
`
`1030
`1041
`1042
`1044
`1045
`1046
`2006
`
`“Acrylic: Strong, stiff, clear plastic available in a variety of
`brilliant colors,” available at
`https://www.curbellplastics.com/Research-
`Solutions/Materials/Acrylic
`U.S. Pat. No. 7,031,728 (“Beyer”)
`U.S. Pat. No. 7,092,735 (“Osann, Jr.”)
`U.S. Pat. No. 6,415,166 (“Van Hoy”)
`U.S. Pub. No. 2005/0276164 (“Amron”)
`“Measurement Site and Photodetector Size Considerations in
`Optimizing Power Consumption of a Wearable Reflectance
`Pulse Oximeter,” Y. Mendelson, et al.; Proceedings of the 25th
`IEEE EMBS Annual International Conference, 2003; pp. 3016-
`3019 (“Mendelson 2003”)
`U.S. Pat. No. 6,801,799 (“Mendelson ’799”)
`U.S. Pub. No. 2007/0093786 (“Goldsmith”)
`U.S. Pat. No. 7,251,513 (“Kondoh”)
`Wikipedia: The Free Encyclopedia, “Universal asynchronous
`receiver-transmitter” at
`https://en.wikipedia.org/wiki/Universal_asynchronous_receiver-
`transmitter, last accessed 08/27/2020
`U.S. Pat. No. 6,081,735 (“Diab”)
`U.S. Pat. No. 5,355,242 (“Eastmond”)
`U.S. Pat. No. 7,230,227 (“Wilcken”)
`U.S. Pat. No. 8,040,758 (“Dickinson”)
`U.S. Pat. No. 7,656,393 (“King”)
`U.S. Pat. No. 6,584,336 (“Ali”)
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01520, IPR2020-01537, IPR2020-
`01539 (April 22, 2021)
`
`-9-
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`
`
`Exhibit
`
`Description
`
`2007
`
`2010
`
`2019
`
`2020
`
`2026
`
`Paper 2
`Paper 7
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01520, IPR2020-01537, IPR2020-
`01539 (April 23, 2021)
`Frank H. Netter, M.D., Section VI Upper Limb, Atlas of
`Human Anatomy (2003), Third Edition (“Netter”)
`Petition for Inter Partes Review IPR2020-01520
`Declaration of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01520
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01716, IPR2020-01733, IPR2020-
`01737 (July 16, 2021)
`Petition for Inter Partes Review IPR2020-01733
`Decision Granting Institution of Inter Partes Review
`IPR2020-01733
`
`III. UNDERSTANDING OF PATENT LAW
`I am not an attorney and will not be offering legal conclusions.
`
`18.
`
`However, I have been informed of several principles concerning the legal issues
`
`relevant to analyzing the challenges to the claims of the ’195 Patent, and I used
`
`these principles in arriving at my conclusions.
`
`A. Level Of Ordinary Skill In The Art
`19.
`I understand that certain issues in an IPR, such as claim construction
`
`and whether a claim is invalid as obvious, are assessed from the view of a
`
`hypothetical person of ordinary skill in the relevant art at the time of the
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`invention. I understand there are multiple factors relevant to determining the level
`
`of ordinary skill in the art, including (1) the level of education and experience of
`
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`
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`persons working in the field at the time of the invention; (2) the sophistication of
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`the technology; (3) the types of problems encountered in the field; and (4) the
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`prior art solutions to those problems. I understand that this hypothetical person of
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`ordinary skill is presumed to have had knowledge from the teachings of the prior
`
`art.
`
`20.
`
`I understand that Apple Inc. (“Apple” or “Petitioner”) and its
`
`Declarant Dr. Kenny have set forth the following definition for a person of
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`ordinary skill in the art (“POSITA”): “someone with a working knowledge of
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`physiological monitoring technologies. The person would have had a Bachelor of
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`Science degree in an academic discipline emphasizing the design of electrical,
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`computer, or software technologies, in combination with training or at least one to
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`two years of related work experience with capture and processing of data or
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`information, including but not limited to physiological monitoring technologies.
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`Alternatively, the person could have also had a Master of Science degree in a
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`relevant academic discipline with less than a year of related work experience in
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`the same discipline.” Ex. 1003 ¶21. I discuss the asserted level of skill further
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`below, in Section VI of this declaration.
`
`B. Claim Construction
`21.
`I understand that claim construction in an IPR is a legal question for
`
`the Board to decide. I also understand, however, that in construing claim terms,
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`-11-
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`
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`the Board asks what the terms would mean to a person of ordinary skill in the
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`relevant art in view of the disclosures in the patent and the prosecution history of
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`the patent. I understand that the Board may also consider external evidence, such
`
`as dictionaries. In general, however, I understand that claim terms are given the
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`ordinary and customary meaning one of ordinary skill in the relevant art would
`
`apply to them in the context of the patent at the time the patent was filed.
`
`22.
`
`I understand that Apple did not identify any terms for construction. I
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`have given the claim terms their plain and ordinary meaning in my analysis.
`
`C. Obviousness
`23.
`I understand that a patent claim is invalid under the patent law, 35
`
`U.S.C. § 103, if, at the time the claimed invention was made, the differences
`
`between the prior art and the claimed invention as a whole would have been
`
`obvious to a person of ordinary skill in the art. I understand that the following
`
`facts are considered in determining whether a claimed invention is invalid as
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`obvious in view of the prior art: (1) the scope and content of the prior art; (2) the
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`level of ordinary skill in the art; and (3) the differences, if any, between the
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`claimed invention and the prior art.
`
`24.
`
`I also understand there are additional considerations that may be used
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`in evaluating whether a claimed invention is obvious. These include whether the
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`claimed invention was the result of (a) a teaching, suggestion, or motivation in the
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`
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`prior art that would have led one of ordinary skill to modify the prior art to arrive
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`at the claimed invention; (b) a combination of prior art elements combined
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`according to known methods to yield predictable results; (c) a simple substitution
`
`of one known element for another to obtain a predicable result; (d) the use of a
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`known technique to improve similar things in the same way; (e) applying a known
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`technique to a known thing ready for improvement to yield predictable results; (f)
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`choosing from a finite number of identified, predictable solutions, with a
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`reasonable expectation of success; (g) known work in one field of endeavor
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`prompting variations of it for use in either the same filed or a different one based
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`on design incentives or other market forces if the variations are predictable to one
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`of ordinary skill in the art.
`
`25.
`
`26.
`
`I have applied this understanding in my analysis.
`
`I understand that Dr. Kenny carried out his analysis of patentability as
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`of July 3, 2008. Ex. 1003 ¶¶16, 23. I likewise carry out my analysis of
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`patentability as of July 3, 2008. I do not offer any opinions regarding priority in
`
`this declaration.
`
`IV.
`INTRODUCTION TO MASIMO’S ’195 PATENT
`A. The ’195 Patent
`27. Masimo’s U.S. Patent No. 10,702,195 (“’195 Patent”) is generally
`
`directed to optical physiological measurement devices that use a combination of
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`-13-
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`
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`different design elements and improve optical detection efficiency. Masimo’s
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`claims are directed, in part, to physiological measurement devices with multiple
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`photodiodes, multiple data streams, and a cover with a single protruding convex
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`surface that together dramatically enhance the effectiveness of the physiological
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`sensor device. These different pieces work together. For example, the protruding
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`surface can thin out the measurement site, which results in less light attenuation
`
`by the measured tissue. Ex. 1001 7:58-61. The protruding surface can also
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`increase the area from which attenuated light can be measured. Ex. 1001 7:61-63.
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`Windows can, among other things, direct light from the measurement site to the
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`photodetectors.
`
` Ex. 1001 19:38-48.
`
` The multiple detectors allow for
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`measurement averaging, which can reduce errors due to variations in the path of
`
`the light passing through the tissue. Ex. 1001 9:18-25; see also 3:12-20, 4:26-36.
`
`The ’195 Patent explains that using multiple detectors and multiple data streams
`
`will improve the signal-to-noise ratio. Ex. 1001 34:33-38. These different
`
`components work together and provide greater noise cancellation and an order of
`
`magnitude increase in signal strength. Ex. 1001 9:18-25, 20:25-42; see also 3:6-
`
`34, 4:26-36.
`
`B.
`
`Introduction To The Independent Claims Of The ’195 Patent
`28. The ’195 Patent has two independent claims: claims 1 and 16. Claim
`
`1 generally illustrates the claimed features. Claim 1 reads as follows:
`
`-14-
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`
`
`
`
`1. A user-worn physiological measurement device that defines a plurality of
`
`optical paths, the physiological measurement device comprising:
`
`one or more emitters configured to emit light into tissue of a user;
`
`a first set of photodiodes positioned on a first surface and surrounded
`
`by a wall that is operably connected to the first surface, wherein:
`
`the first set of photodiodes comprises at least four photodiodes,
`
`and
`
`the photodiodes of the first set of photodiodes are connected to
`
`one another in parallel to provide a first signal stream;
`
`a second set of photodiodes positioned on the first surface and
`
`surrounded by the wall, wherein:
`
`the second set of photodiodes comprises at
`
`least four
`
`photodiodes, and
`
`the photodiodes of the second set of photodiodes are connected
`
`to one another in parallel to provide a second signal stream; and
`
`a cover located above the wall and comprising a single protruding
`
`convex surface configured to be located between tissue of the user and the
`
`first and second sets of photodiodes when the physiological measurement
`
`device is worn by the user,
`
`-15-
`
`
`
`
`
`wherein the physiological measurement device provides a plurality of
`
`optical paths, wherein each of the optical paths:
`
`exits an emitter of the one or more emitters,
`
`passes through tissue of the user,
`
`passes through the single protruding convex surface, and
`
`arrives at a corresponding photodiode of the at least one of the
`
`first or second sets of photodiodes, the corresponding photodiode
`
`configured to receive light emitted by the emitter after traversal by the
`
`light of a corresponding optical path of the plurality of optical paths
`
`and after attenuation of the light by tissue of the user.
`
`V. THE PETITION’S PROPOSED COMBINATIONS
`29. Petitioner presents two grounds. Ground 1 combines Aizawa (Ex.
`
`1006), Ohsaki (Ex. 1014), Mendelson 2003 (Ex. 1024), and Goldsmith (Ex. 1027).
`
`Pet. 1-2. Ground 1 challenges claims 1-17. Ground 2 is an alternative
`
`combination of five references that challenges claims 1-17. Ground 2 adds Ali
`
`(Ex. 1046) to the combination of Aizawa, Ohsaki, Mendelson 2003, and
`
`Goldsmith. Pet. 1-2.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`30. Petitioner asserts that a POSITA “would have been a person with a
`
`working knowledge of physiological monitoring technologies. The person would
`
`-16-
`
`
`
`
`
`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. 3. Alternatively, Petitioner asserts a POSITA
`
`could have “a Master of Science degree in a relevant academic discipline with less
`
`than a year of related work experience in the same discipline.” Pet. 3.
`
`31. Dr. Kenny states that he applies a similar level of skill in his analysis
`
`stating that “one of ordinary skill in the art relating to, and at the time of, the
`
`invention of the ’195 patent would have been someone 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.
`
`Alternatively, 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.” Ex. 1003 ¶21.
`
`32.
`
`I note that the asserted level of skill (1) requires no coursework,
`
`training or experience with optics or optical physiological monitors; (2) requires
`
`-17-
`
`
`
`
`
`no coursework, training or experience in physiology; and (3) focuses on data
`
`processing and not sensor design. In responding to Dr. Kenny’s opinions in this
`
`proceeding, I apply Dr. Kenny’s and Petitioner’s asserted level of skill.
`
`33.
`
`In addition, as noted above, I understand that Dr. Kenny carried out
`
`his analysis of patentability as of July 3, 2008. Ex. 1003 ¶¶16, 23. In responding
`
`to Dr. Kenny’s opinions, I also apply the July 3, 2008 date in my analysis. I do
`
`not offer any opinions regarding priority in this declaration.
`
`A.
`
`VII. GROUNDS 1-2 DO NOT ESTABLISH OBVIOUSNESS
`Introduction To Ground 1
`34. Dr. Kenny’s combination for Ground 1 combines four references:
`
`Ohsaki, Aizawa, Mendelson 2003, and Goldsmith. Ex. 1003 ¶¶67-186.
`
`1. Ohsaki Discloses A Pulse Rate Sensor With A Single Emitter And
`A Single Detector That Must Be Arranged Linearly On The Back
`Side Of The Wrist
`35. Ohsaki is directed to a pulse rate sensor with a single emitter (e.g., an
`
`LED) and a single detector that are positioned linearly, side-by-side, under a
`
`translucent “board.” See, e.g., Ex. 1014 Abstract, Fig. 2, ¶[0019]. Ohsaki
`
`explains that the linearly arranged detector and emitter (shown in the figures
`
`below) likewise results in a longitudinal rectangular shape and directionality,
`
`which Ohsaki explains is important for its benefit of reducing slipping when
`
`placed against the backhand side of the wrist. See Ex. 1014 ¶[0019] (If
`
`longitudinal direction “agrees with the circumferential direction of the user’s wrist
`
`-18-
`
`
`
`
`
`4, it has a tendency to slip off. Therefore it is desirable that the detecting element
`
`2 is arranged so that its longitudinal direction agrees with the longitudinal
`
`direction of the user's arm.”). Ohsaki includes a “dedicated belt” 10 that “fix[es]
`
`the detecting element 2 on the user’s wrist 4 in this way”—in a longitudinal
`
`direction up-and-down the user’s wrist. Ex. 1014 ¶[0019]. Ohsaki consistently
`
`states that its sensor “is worn on the back side of a user’s wrist corresponding to
`
`the back of the user’s hand.” Ex. 1014 Abstract; see also id. Title, ¶¶ [0008],
`
`[0009], [0016], [0024]. Figure 1 of Ohsaki (below left) is a cross section of the
`
`device when “worn on the back side of the user’s wrist 4 corresponding to the
`
`back of the user’s hand in the similar manner as a wristwatch is normally worn.”
`
`Ex. 1014 ¶[0016], Fig. 1.
`
`-19-
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`
`
`
`
`
`
`
`
`Ohsaki Fig. 1 (left), showing the cross-sectional view of Ohsaki’s sensor in the
`circumferential direction (across the wrist) and Fig. 2 (right) showing the cross-
`sectional view of Ohsaki’s sensor in the longitudinal direction (up-and-down arm)
`
`2.
`The Shape Of Ohsaki’s Board
`36. Ohsaki shows two cross-sectional views of its board that a POSITA
`
`would have considered together to confirm that the board is rectangular. Ohsaki
`
`Figure 2 (below left) illustrates the “long” side of Ohsaki’s detector element (2)
`
`that extends from left to right in Ohskai’s Figure 2, and is shown in the cross
`
`section as positioned in the longitudinal direction (up-and-down the arm) on a
`
`user’s wrist. Ex. 1014 ¶[0019].
`
`-20-
`
`
`
`
`
`
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`Ohsaki (Ex. 1014) Fig. 2 (left, showing long direction of the detecting element (2),
`pointing up-and-down the arm) & Fig. 1 (right, showing short direction of the
`detecting element (2), in the circumferential direction of the wrist) depict different
`cross-sections (color added)
`(Purple: detecting element (2)/package (5); Blue: translucent board (8))
`
`
`
`37. Figure 2 (shown above left) illustrates that Ohsaki’s board (8, in b
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