Filed August 10, 2021
`
`By:
`
`
`On behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (949) 760-9502
`Tel.: (949) 760-0404
`E-mail: AppleIPR2020-1733-195@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01733
`Patent 10,702,195
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`By:
`
`
`On behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (949) 760-9502
`Tel.: (949) 760-0404
`E-mail: AppleIPR2020-1733-195@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01733
`Patent 10,702,195
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. MASIMO’S PIONEERING TECHNOLOGY .............................................. 4
`
`A.
`
`B.
`
`C.
`
`The ’195 Patent ................................................................................... 4
`
`Introduction To Independent Claims .................................................. 6
`
`The ’195 Patent Prosecution ............................................................... 8
`
`III. THE PETITION’S PROPOSED COMBINATIONS .................................... 8
`
`IV. CLAIM CONSTRUCTION .......................................................................... 9
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 9
`
`VI. LEGAL STANDARD ................................................................................. 10
`
`VII. GROUND 1 DOES NOT ESTABLISH OBVIOUSNESS ......................... 11
`
`A. Ground 1’s Cited Art And Asserted Combination ............................ 11
`
`1.
`
`2.
`
`3.
`
`4.
`
`Petitioner’s Combination Of Ohsaki And Aizawa ................. 11
`
`Dr. Kenny’s Erroneous Characterization Of Ohsaki .............. 16
`
`Petitioner’s Addition Of Mendelson 2003 To The
`Combination Of Ohsaki And Aizawa ..................................... 18
`
`Petitioner’s Addition Of Goldsmith To The
`Combination Of Ohsaki, Aizawa, And Mendelson
`2003 ......................................................................................... 21
`
`B.
`
`A POSITA Would Not Have Been Motivated To
`Combine Ohsaki’s Board With Aizawa’s Sensor ............................. 21
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`1.
`
`A POSITA Would Have Understood That
`Ohsaki’s Rectangular Board Is Incompatible With
`Aizawa’s Radially Symmetric Sensor Arrangement .............. 23
`
`a) Modifying Ohsaki’s Rectangular Board
`Would Eliminate Ohsaki’s Already Limited
`Advantages ................................................................... 23
`
`b)
`
`A POSITA Would Not Have Been
`Motivated To Add A Rectangular Board To
`Aizawa’s Circular Sensor ............................................. 29
`
`2.
`
`A POSITA Would Have Understood That
`Ohsaki’s Board “Has A Tendency To Slip” At
`Aizawa’s Required Measurement Location On The
`Palm Side Of The Wrist, Near The Artery ............................. 32
`
`a)
`
`b)
`
`c)
`
`Aizawa’s Flat Acrylic Plate Improves
`Adhesion On The Palm Side Of The Wrist .................. 32
`
`Ohsaki’s Convex Board Has “A Tendency
`To Slip” When Positioned On The Palm
`Side Of The Wrist ......................................................... 38
`
`A POSITA Would Not Have Been
`Motivated To Eliminate The Benefits Of
`Aizawa’s Flat Adhesive Acrylic Plate By
`Including A Lens/Protrusion Similar To
`Ohsaki’s Board ............................................................. 41
`
`3.
`
`A POSITA Would Not Have Been Motivated To
`Add A Convex Lens/Protrusion To Aizawa’s
`Sensor Because It Would Have Been Expected To
`Reduce The Optical Signal ..................................................... 44
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`a)
`
`b)
`
`A POSITA Would Have Understood That A
`Convex Cover Directs Light To The Center
`Of The Sensor ............................................................... 45
`
`A POSITA Would Not Have Been
`Motivated To Direct Light Away From
`Aizawa’s Detectors ....................................................... 47
`
`4.
`
`A POSITA Would Not Have Selected A Convex
`Cover To Protect The Optical Elements ................................. 52
`
`C.
`
`Petitioner’s Modification Of Aizawa’s Detector
`Arrangement Changes Its Principle Of Operation And
`Produces An Inferior Sensor ............................................................. 54
`
`1.
`
`2.
`
`Petitioner’s Proposed Combination Changes
`Aizawa’s Principle Of Operation And Eliminates
`A Feature Aizawa Repeatedly Identifies As
`Important ................................................................................. 55
`
`Petitioner’s Proposed Modification Would Result
`In Increased Power Consumption Compared To
`Aizawa’s Existing Embodiment ............................................. 57
`
`3. Mendelson 2003 Teaches Against Using Its
`Particular Detector Arrangement That Was
`Designed For Performing Experiments .................................. 60
`
`D. Goldsmith Does Not Cure The Deficiencies In
`Petitioner’s Proposed Combination Of Aizawa, Ohsaki,
`and Mendelson 2003 ......................................................................... 65
`
`E.
`
`The Challenged Dependent Claims Are Nonobvious ....................... 65
`
`-iii-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`1.
`
`2.
`
`The Challenged Dependent Claims Are
`Nonobvious For The Same Reasons As Claims 1
`And 16 ..................................................................................... 65
`
`Claims 9 and 15 Are Nonobvious For Additional
`Reasons ................................................................................... 66
`
`VIII. GROUND 2 FAILS FOR THE SAME REASONS AS
`GROUND 1 ................................................................................................. 69
`
`IX. CONCLUSION ............................................................................................ 70
`
`
`
`
`-iv-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 10
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .......................................................................... 10
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) .......................................................................... 44
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .......................................................................... 65
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 10
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) .......................................................................... 10
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 11
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) .......................................................................... 10
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 9
`
`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG,
`600 Fed. Appx. 755 (Fed. Cir. 2015) .................................................................. 57
`
`In re Ratti,
`270 F.2d 810 (C.C.P.A. 1959) ............................................................................ 57
`
`In re Royka
` 490 F.2d 981 (C.C.P.A. 1974) ........................................................................... 10
`
`-v-
`
`
`
`TABLE OF AUTHORITIES
`(cont’d)
`
`Page No(s).
`
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) .......................................................................... 10
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100 ..................................................................................................... 9
`
`
`
`
`-vi-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`I.
`
`INTRODUCTION
`
`Petitioner’s proposed combinations all suffer from the same underlying flaws.
`
`Petitioner’s four reference combination relies on Aizawa, Ohsaki, Mendelson 2003,
`
`and Goldsmith. Petitioner’s alternative five reference combination adds Ali to
`
`Petitioner’s four reference combination. Petitioner, however, ignores critical
`
`differences between these references that make them incompatible.
`
`First, Ohsaki discloses a sensor with a convex board that must be used on the
`
`back side (i.e., watch side) of the wrist to provide its asserted benefit of improved
`
`adhesion, taking advantage of the user’s bone structure. In contrast, Aizawa
`
`expressly states that its sensor is used on the palm side of the wrist, where it is
`
`positioned over the user’s artery. Petitioner argues a POSITA would have been
`
`motivated to combine Ohsaki’s convex board with Aizawa’s sensor “so as to
`
`improve adhesion between the user’s wrist and the sensor’s surface.” Pet. 25-26.
`
`But Ohsaki discloses its board “has a tendency to slip off” the palm side of the wrist.
`
`Ex. 1014 ¶[0023]. Accordingly, a POSITA seeking to improve Aizawa’s palm-side
`
`sensor would not have been motivated to add Ohsaki’s convex board, designed for
`
`the back side of the wrist. Instead, a POSITA would have affirmatively avoided
`
`making that change.
`
`Second, Ohsaki’s sensor uses a longitudinal structure in a specific orientation
`
`between bones on the back side of the wrist to reduce sensor slippage and motion.
`
`-1-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Aizawa, however, discloses a circular sensor that provides more consistent
`
`measurements when measuring signals from the arteries on the palm side of the
`
`wrist. Transforming Ohsaki’s longitudinal structure into a circular shape to fit
`
`Aizawa’s sensor would eliminate Ohsaki’s benefit of reduced slippage and
`
`movement. Conversely, changing Aizawa’s circular sensor to accommodate
`
`Ohsaki’s longitudinal structure would result in less consistent measurements. The
`
`combination of Aizawa and Ohsaki would either disrupt Aizawa’s circular
`
`symmetry, Ohsaki’s longitudinal structure, or both. Petitioner attempts to combine
`
`references that are simply incompatible.
`
`Third, Petitioner’s combination detrimentally places a convex-shaped cover
`
`over Aizawa’s peripherally located detectors. A POSITA would have believed that
`
`such a cover would undesirably direct light away from the peripheral detectors and
`
`toward the sensor’s center, thereby reducing light collection and signal strength. A
`
`POSITA would not have been motivated to decrease signal strength as results from
`
`Petitioner’s combination.
`
`In short, 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) tailored to those
`
`specific measurement locations. Petitioner does not even acknowledge these
`
`-2-
`
`
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`differences, much less show a POSITA would have been motivated to combine these
`
`references and reasonably expected such a combination to be successful.
`
`Petitioner also adds a third reference, Mendelson 2003, in an attempt to satisfy
`
`the claim requirements of a first set of photodiodes connected in parallel to provide
`
`a first signal stream, and a second set of photodiodes connected in parallel to provide
`
`a second signal stream. Petitioner admits that Aizawa already teaches “various ways
`
`of using a single ring of multiple detectors to improve detection efficiency,” and
`
`does not disclose multiple sets of parallel-connected photodiodes producing signal
`
`streams. Pet. 18. Although Aizawa already explains how to improve detection
`
`efficiency, Petitioner nevertheless argues a POSITA would have been motivated by
`
`detection efficiency to use Mendelson 2003’s dual ring arrangement. But
`
`Mendelson 2003’s approach, which connects multiple detectors to simulate one
`
`large detector, undermines Aizawa’s measurement approach, which monitors
`
`individual signals from individual detectors to avoid sensor displacement problems.
`
`Moreover, Petitioner’s proposed dual ring arrangement positions a second ring of
`
`detectors connected in parallel farther away from a central light source. This
`
`arrangement yields a decreased signal compared to Aizawa’s approach of improving
`
`detection efficiency by simply adding additional detectors to the existing ring.
`
`Petitioner does not account for these undesirable results from its proposed
`
`combination.
`
`-3-
`
`
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`For at least these reasons, Petitioner fails to demonstrate the asserted
`
`references render the claims obvious. The Board should affirm the patentability of
`
`the ’195 Patent’s challenged claims.
`
`II. MASIMO’S PIONEERING TECHNOLOGY
`
`Masimo is a global medical device technology company that develops and
`
`manufactures innovative patient monitoring technologies, medical devices, and a
`
`wide array of sensors. Inventor Joe Kiani founded Masimo in 1989 as a garage start-
`
`up that revolutionized noninvasive patient monitoring. Today, Masimo is publicly
`
`traded and employs over 6,300 people worldwide, with annual revenues of over $1.1
`
`billion. A host of manufacturers use Masimo’s technology, including Philips, Atom,
`
`Mindray North America, GE Medical, Spacelabs, and Zoll.
`
`A. The ’195 Patent
`
`Masimo’s U.S. Patent No. 10,702,195 (the “’195 Patent”) discloses and
`
`claims an optical physiological measurement device that uses a novel design to
`
`improve detection efficiency. Masimo’s claimed physiological measurement device
`
`uses multiple photodiodes, multiple signal streams, and a cover with a single
`
`protruding convex surface that dramatically enhance the effectiveness of the
`
`physiological sensor device. For example, the protruding surface thins out the
`
`measurement site, resulting in less light attenuation by the measured tissue. Ex. 1001
`
`7:58-61. The protruding surface further increases the area from which attenuated
`
`-4-
`
`
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`light can be measured. Id. 7:61-63. Windows can, inter alia, direct light from the
`
`measurement site to the photodetectors. See, e.g., id. 19:38-48. The multiple
`
`detectors allow for an averaging of measurements that can reduce errors due to
`
`variations in the path of light passing through the tissue. Id. 9:18-25; see also id.
`
`3:12-20, 4:26-36. Using multiple detectors and multiple signal streams improves
`
`the signal-to-noise ratio. Id. 34:33-38. The inventors discovered that these different
`
`components work together to provide greater noise cancellation and an order of
`
`magnitude increase in signal strength. Id. 9:18-25, 20:25-42; see also id. 3:6-34,
`
`4:26-36.
`
`The Examiner agreed during prosecution that the claimed combination of
`
`features—including multiple sets of parallel-connected photodiodes in conjunction
`
`with a cover comprising a single protruding convex surface—provided a patentable
`
`advance unique in the field. Ex. 1002 at 320-325. Petitioner’s references do not
`
`differ significantly from the prior art the Examiner already considered and found
`
`does not teach or suggest the claimed inventions. None of Petitioner’s references
`
`disclose a cover with a single protruding convex surface configured to be located
`
`between tissue of a user and the multiple photodiodes (let alone combined with the
`
`other claimed features).
`
`-5-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`B.
`
`Introduction To Independent Claims
`
`The ’195 Patent has two independent claims: claims 1 and 16.1 Each claims
`
`a physiological measurement device that includes, among other things, (1) one or
`
`more emitters configured to emit light into tissue of a user, (2) a first set of at least
`
`four photodiodes that are connected in parallel to provide a first signal stream; (3) a
`
`second set of at least four photodiodes that are connected in parallel to provide a
`
`second signal stream; and (4) a cover with a single protruding convex surface.
`
`Claim 1 illustrates the many interacting features described in the ’195 Patent.
`
`Claim 1 reads:
`
`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;
`
`
`1 Appendix A reproduces the challenged claims with bracketed labels for
`
`convenience.
`
`-6-
`
`
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`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,
`
`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
`
`-7-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`optical paths and after attenuation of the light by tissue of the
`
`user.2
`
`C. The ’195 Patent Prosecution
`
`During prosecution, the Examiner agreed the claimed combination of
`
`features—including multiple sets of parallel-connected photodiodes in conjunction
`
`with a cover comprising a single protruding convex surface—provided a patentable
`
`advance unique in the field. Ex. 1002 at 320-325. The Examiner concluded that the
`
`prior art did not suggest creating a physiological measurement device using a first
`
`set of photodiodes connected in parallel, a second set of photodiodes connected in
`
`parallel, and a cover with a single protruding convex surface in combination with
`
`the other claimed elements. Id. The Examiner recognized the technological advance
`
`of the claimed inventions and correctly allowed the claims.
`
`III. THE PETITION’S PROPOSED COMBINATIONS
`
`Petitioner presents two grounds. Ground 1 combines four references: Aizawa
`
`(Ex. 1006), Mendelson 2003 (Ex. 1024), Ohsaki (Ex. 1014), and Goldsmith (Ex.
`
`1027). Pet. 1-2. Ground 1 challenges claims 1-17. Ground 2 is an alternative five
`
`reference combination that also challenges claims 1-17, adding Ali (Ex. 1046), to
`
`the combination of Aizawa, Mendelson 2003, Ohsaki, and Goldsmith. Pet. 1-2.
`
`
`2 Emphasis supplied unless otherwise noted.
`
`-8-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`IV. CLAIM CONSTRUCTION
`
`Petitioner identifies no terms for construction. The Board should give the
`
`claim terms their ordinary and customary meaning, consistent with the specification,
`
`as a POSITA would understand them. 37 C.F.R. § 42.100(b); Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner asserts a POSITA “would have been a person 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.”
`
`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.” Id.
`
`Masimo notes that Petitioner’s asserted level of skill (1) requires no
`
`coursework, training or experience with optics or optical physiological monitors; (2)
`
`requires no coursework, training or experience in physiology; and (3) focuses on
`
`data processing and not sensor design. Id. For this proceeding, Masimo nonetheless
`
`applies Petitioner’s asserted level of skill. Ex. 2004 ¶¶30-32.
`
`-9-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`VI. LEGAL STANDARD
`
`A petition based on “obviousness requires a suggestion of all limitations in a
`
`claim.” CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
`
`(citing In re Royka, 490 F.2d 981, 985 (C.C.P.A. 1974)). A patent claim is not
`
`obvious unless “a skilled artisan would have been motivated to combine the
`
`teachings of the prior art references to achieve the claimed invention, and that the
`
`skilled artisan would have had a reasonable expectation of success in doing so.”
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed.
`
`Cir. 2012).
`
`To prevail on any obviousness ground, a petitioner may not simply identify
`
`individual claim components—it must show why a “skilled artisan, with no
`
`knowledge of the claimed invention, would have selected these components for
`
`combination in the manner claimed.” In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir.
`
`2000). The petitioner must support even simple modifications with some motivation
`
`to make the change. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
`
`An appropriate obviousness inquiry cannot involve even a “hint of hindsight.”
`
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir. 2011).
`
`A petitioner may not “simply retrace[] the path of the inventor with hindsight,
`
`discount[] the number and complexity of the alternatives, and conclude[] that the
`
`invention ... was obvious.” Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520
`
`-10-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`F.3d 1358, 1364 (Fed. Cir. 2008). Likewise, “[c]are must be taken to avoid hindsight
`
`reconstruction by using the patent in suit as a guide through the maze of prior art
`
`references, combining the right references in the right way so as to achieve the result
`
`of the claims in suit.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (internal
`
`quotations omitted).
`
`VII. GROUND 1 DOES NOT ESTABLISH OBVIOUSNESS
`
`A. Ground 1’s Cited Art And Asserted Combination
`
`Ground 1, like both of Petitioner’s grounds, combines Aizawa, Ohsaki,
`
`Mendelson 2003, and Goldsmith. These references each disclose different
`
`physiological sensor designs, with distinct shapes, features, and detector-emitter
`
`configurations. This section introduces Petitioner’s proposed combination of
`
`Ohsaki and Aizawa, discusses Dr. Kenny’s erroneous characterization of Ohsaki,
`
`discusses Petitioner’s conflicting proposed addition of Mendelson 2003 to the
`
`combination of Ohsaki and Aizawa, and then discusses how Goldsmith does not
`
`address the deficiencies in Petitioner’s proposed combination of Aizawa, Ohsaki,
`
`and Mendelson 2003.
`
`1.
`
`Petitioner’s Combination Of Ohsaki And Aizawa
`
`Ohsaki discloses a pulse rate sensor with a single emitter (e.g., an LED) and
`
`a single detector disposed linearly, side-by-side, under a translucent board. See, e.g.,
`
`Ex. 1014 Abstract, Fig. 2, ¶[0019]; Ex. 2004 ¶35.
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`Ohsaki (Ex. 1014) Figs. 1 and 2 (annotated, color added)
`
`Ohsaki’s linearly arranged detector and emitter (above) result in a longitudinal
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`shape and direction that Ohsaki explains is important to reduce slipping when placed
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`against the backhand side of the wrist. See Ex. 1014 ¶[0019] (if the longitudinal
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`direction of Ohsaki’s detecting element 2 “agrees with the circumferential direction
`
`of the user’s wrist 4, it has a tendency to slip off. Therefore it is desirable that the
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`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” that
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`“fix[es] the detecting element 2 on the user’s wrist 4 in this way.” Id. ¶[0019].
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`Ohsaki repeatedly states that its sensor “is worn on the back side of a user’s wrist
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`corresponding to the back of the user’s hand.” Ex. 1014 Abstract; see also id. Title,
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`¶¶ [0008], [0009], [0016], [0024]; Ex. 2004 ¶35.
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`In contrast, Aizawa discloses a sensor with four periphery-located
`
`photodetectors (22) around a single centrally located LED (21). Ex. 1006 Abstract,
`
`Fig. 1B.; Ex. 2004 ¶¶40-41.
`
`DETECTOR
`
`LED
`
`DETECTOR
`
`Aizawa Fig. 1B (cross-sectional view, color added)
`
`
`
`Aizawa’s Features
` Green: central LED
`(21)
` Red: peripheral
`detectors (22)
`
`
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`
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`Aizawa Fig. 1A (top-down view, color added)
`
`Aizawa uses this specific configuration of multiple detectors arrayed around a single
`
`LED to ensure that at least one detector is near the measurement site, which Aizawa
`
`indicates improves measurement consistency. Ex. 1006 ¶[0027]. Aizawa detects
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`signals on the palm side of the wrist and explains that as long as “one of the
`
`photodetectors 22 is located near the artery 11,” it is “possible to detect a pulse wave
`
`accurately.” Id. ¶¶[0026]-[0027], Fig. 2. Aizawa includes a flat transparent plate
`
`(6) that improves adhesion between the detector and the wrist, which Aizawa states
`
`improves the detection efficiency. Id. ¶[0030]. Aizawa’s sensor does not use a lens.
`
`Ex. 2004 ¶¶40-41.
`
`Petitioner argues a POSITA would have added Ohsaki’s translucent board,
`
`designed for a linear pulse sensor, to Aizawa’s circular sensor. Pet. 22-29. But
`
`Petitioner never identifies with specificity the resulting structure. Petitioner asserts:
`
`“[a]s shown below, a POSITA would have found it obvious to modify the sensor’s
`
`flat cover (left) to include a lens/protrusion (right), similar to Ohsaki’s translucent
`
`board 8” (Pet. 25-26):
`
`Petitioner’s Illustration (Pet. 26)
`
`
`
`Petitioner never identifies whether Ohsaki’s longitudinal board is simply placed over
`
`Aizawa, or whether its shape is changed to be circular to match Aizawa’s shape and
`
`detector arrangement. Ex. 2004 ¶¶42-43.
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`Petitioner also relies on an additional reference, Inokawa (Ex. 1007,
`
`translation Ex. 1008), that is not included in any ground. Pet. 27-29. Petitioner
`
`asserts that Inokawa “provides an additional motivation and rationale for a POSITA
`
`to modify Aizawa to include a cover comprising a protruding convex surface.” Pet.
`
`27. In contrast to Aizawa, which has multiple peripheral detectors and a central
`
`emitter, Inokawa uses a convex lens (27) to focus light from LEDs (21, 23) on the
`
`periphery of a sensor to a single detector (25) in the center. Ex. 1008 ¶[0058], Fig.
`
`2; Ex. 2004 ¶¶44-45.
`
`Inokawa’s Features
` Green: peripheral emitters
`(21, 23)
` Red: central detector (25)
` Blue: convex lens (27)
` Arrows showing direction of
`light in original, highlighted
`in yellow added
`
`
`
`
`
`Inokawa Fig. 2 (color added)
`
`As illustrated above, Inokawa discloses light reflecting off the body and
`
`passing through the lens, which directs incoming light to the centrally located
`
`detector. Ex. 1008 ¶[0058]. Thus, Inokawa’s convex lens focuses incoming light
`
`away from the periphery and towards the sensor’s center, where the detector is
`
`located. Ex. 2004 ¶¶44-45. Despite the different emitter/detector positioning in
`
`-15-
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`Inokawa’s sensor as compared to Aizawa’s sensor, Petitioner argues “a POSITA
`
`would have understood that adding a protruded convex surface to Aizawa would
`
`have the additional benefit of increasing light collection efficiency” and asserts that
`
`“[t]he lens of Inokawa provides precisely such an additional benefit to Aizawa’s
`
`device by refracting/concentrating incoming light signals reflected by the blood.”
`
`Pet. 27-28.
`
`2.
`
`Dr. Kenny’s Erroneous Characterization Of Ohsaki
`
`At his deposition in a related IPR proceeding, Dr. Kenny injected even more
`
`confusion into Petitioner’s combinations. Dr. Kenny testified he did not know the
`
`shape of Ohsaki’s board and that Ohsaki’s board could be “circular or square or
`
`rectangular.” Ex. 2008 68:21-70:1, 71:7-72:10; see also Ex. 2026 66:6-67:6 (Ohsaki
`
`“could be square. It could be rectangular. It could be circular.”).3 Dr. Kenny is
`
`incorrect. Ohsaki illustrates two cross-sectional views of its board that confirm the
`
`board is rectangular (and not circular or square). Ex. 2004 ¶¶36-39.
`
`
`3 Masimo includes citations to Dr. Kenny’s testimony regarding the same cited
`
`references and related patents (Exs. 2006-2009). Dr. Kenny confirmed his
`
`understanding of the cited art, physics, optics, or knowledge of a person skilled in
`
`the art did not change between depositions or declarations. Ex. 2026 12:12-19,
`
`14:6-18:3.
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`-16-
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`Specifically, Ohsaki Figure 2 (below left) illustrates the “long” side of
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`Ohsaki’s detector element (2) that extends from left to right in Figure 2 and in the
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`longitudinal direction (up-and-down the arm) on a user’s wrist. Ex. 1014 ¶[0019];
`
`Ex. 2004 ¶¶36-39.
`
`
`
`Ohsaki Ex. 1014 Fig. 2 (left) & Fig. 1 (right) showing different cross-sections
`(color added: Purple: detecting element 2/package 5; Blue: translucent board 8)
`
`
`Figure 2 (above left) shows that the board (8) spans nearly the entire length of the
`
`detecting element’s (2) “long” side. Ohsaki Figure 1 (above right) shows the “short”
`
`side of Ohsaki’s detecting element (2) that extends from left to right in Figure 1 and
`
`in the circumferential direction (around) of the user’s wrist. Ex. 1014 ¶¶[0012],
`
`[0019]; see also Ex. 2008 118:3-119:7, 120:5-13, 121:3-15 (Dr. Kenny confirming
`
`longitudinal directionality); Ex. 2004 ¶¶36-39. As shown in Figure 1 above, the
`
`board’s length (8, blue) is much shorter than the detecting element’s length (2,
`
`purple) in the circumferential direction. Ex. 1014 ¶¶[0012], [0019], Figs. 1, 2; see
`
`also Ex. 2008 118:3-119:7, 120:5-13, 121:3-15; Ex. 2004 ¶¶36-39.
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`Taken together, a POSITA would have understood that Ohsaki’s figures and
`
`description show that both Ohsaki’s detecting element (2) and board (8) have a very
`
`pronounced longitudinal directionality and are much longer than they are wide. Ex.
`
`2004 ¶¶36-39; Ex. 1014 Figs. 1, 2, ¶¶[0012], [0017], [0019]. A POSITA would have
`
`understood that the top-down view of Ohsaki’s sensor—including the package,
`
`board, and emitter and detector—would look approximately like the figure below:
`
`
`
`Drawing based on Ohsaki, illustrating the sensor’s rectangular shape
`Ex. 2004 ¶38
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`This is consistent with the remainder of Ohsaki, which emphasizes that the
`
`sensor has a longitudinal direction that must be aligned with the longitudinal
`
`direction of the user’s arm to prevent slippage. Ex. 1014 ¶[0019]; Ex. 2004 ¶¶38-39.
`
`3.
`
`Petitioner’s Addition Of Mendelson 2003 To The Combination Of
`Ohsaki And Aizawa
`
`In an attempt to satisfy the claims’ requirement of a first set of at least four
`
`photodiodes that are connected to one another in parallel to provide a first signal
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`-18-
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`stream, and a second set of at least four photodiodes that are connected to one
`
`another in parallel to provide a second signal stream, Petitioner adds a third reference
`
`to
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