Filed December 20, 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
`U.S. Patent 10,702,195
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO REPLY
`
`
`
`
`
`
`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
`U.S. Patent 10,702,195
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO REPLY
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`II.
`
`INTRODUCTION ......................................................................................... 1
`
`ARGUMENT ................................................................................................. 3
`
`A. Ground 1 .............................................................................................. 3
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`A POSITA Would Have Understood That Ohsaki’s
`Board Is Longitudinal And Even Small Changes
`Result In Slippage ..................................................................... 3
`
`a)
`
`b)
`
`Ohsaki’s Board Is Longitudinal ...................................... 3
`
`Petitioner’s Additional Arguments Are
`Unpersuasive ................................................................... 8
`
`Petitioner Incorrectly Asserts That Ohsaki’s Board
`Prevents Slipping “On Either Side Of The User’s
`Wrist Or Forearm” .................................................................. 11
`
`A Convex Cover Does Not Enhance Aizawa’s
`Light-Gathering Ability .......................................................... 14
`
`a)
`
`b)
`
`c)
`
`Petitioner Contradicts Its Admissions .......................... 14
`
`The Principle Of Reversibility Is Irrelevant To
`Petitioner’s Proposed Combination .............................. 16
`
`Petitioner’s Other New Theories Are
`Similarly Misplaced ...................................................... 18
`
`A Convex Cover Would Be More Prone To
`Scratches ................................................................................. 22
`
`Two Sets of Parallel-Linked Detectors Would Not
`Have Been Obvious ................................................................ 23
`
`-i-
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`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`6.
`
`Claims 9 and 15 ....................................................................... 29
`
`B.
`
`Ground 2 ............................................................................................ 30
`
`III. CONCLUSION ............................................................................................ 30
`
`
`
`
`-ii-
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`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) .................................................................. 10, 14
`
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561(Fed. Cir. 1987) ........................................................................... 9
`
`
`TQ Delta, LLC v. CISCO Sys., Inc.,
`942 F.3d 1352(Fed. Cir. 2019) ........................................................................... 9
`
`
`
`
`-iii-
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`
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`I.
`
`INTRODUCTION
`
`Petitioner attempts to rewrite a flawed petition that misunderstood the cited
`
`references and basic optical principles.
`
` Petitioner’s new arguments are
`
`inconsistent with its prior positions, conflict with the cited references, and
`
`constitute a hindsight-driven reconstruction of Masimo’s claims.
`
`Petitioner asserts that Masimo did not respond to Petitioner’s three purported
`
`motivations to modify Aizawa’s “flat cover…to include a lens/protrusion…similar
`
`to Ohsaki’s translucent board.” Reply 8; Pet. 25. That is incorrect.
`
`Petitioner’s first motivation is to “improve adhesion.” Id. Masimo directly
`
`responded, pointing out that Aizawa discloses a palm-side sensor and that
`
`Petitioner’s proposed combination has a shape that would increase slipping at
`
`Aizawa’s measurement location. Patent Owner Response (“POR”) 23-32. Indeed,
`
`Aizawa teaches a flat surface improves adhesion on the wrist’s palm-side and
`
`Ohsaki teaches a convex surface tends to slip on the wrist’s palm-side. POR 32-
`
`44. Both references thus undermine Petitioner’s proposed motivation of improved
`
`adhesion. Rather than address these contrary teachings, Petitioner asserts that
`
`Ohsaki’s sensor has no particular shape and reduces slipping at any body location.
`
`Reply 12-20. That contradicts Ohsaki, which illustrates its sensor’s longitudinal
`
`shape and explains how even slightly changing the sensor’s orientation or
`
`-1-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
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`measurement location results in slipping. Ex. 1014 Figs. 1, 2, 3A-3B, ¶¶[0019],
`
`[0023]. Petitioner’s first motivation fails.
`
`Masimo also responded to Petitioner’s second motivation, a purported
`
`“improve[d] detection efficiency.” Reply 8. As Masimo explained, Petitioner
`
`admitted that adding a convex cover to Aizawa’s sensor would direct light away
`
`from the sensor’s peripherally located detectors. POR 44-52. Thus, Petitioner’s
`
`proposed combination decreases optical signal strength and detection efficiency—
`
`the opposite of Petitioner’s motivation to “improve detection efficiency.”
`
`Petitioner’s second motivation fails.
`
`Petitioner’s third motivation is to “protect the elements within the sensor
`
`housing.” Reply 8. As Masimo explained, a POSITA would have viewed a
`
`convex surface as inferior to a flat surface due to an increased risk of scratching.
`
`POR 52-53. Petitioner now concedes the disadvantage of scratching but argues
`
`“multiple advantages” would “outweigh any alleged possibility of scratching.”
`
`Reply 32. Petitioner establishes no advantages for a convex surface in the
`
`proposed combination, let alone multiple advantages. Regardless, Petitioner does
`
`not explain why a POSITA would have chosen a convex cover—the one
`
`alternative Petitioner admits suffers from scratching—from the many different
`
`alternatives for protection. Ex. 2009 394:18-396:17.
`
`-2-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
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`Accordingly, none of Petitioner’s asserted motivations demonstrate that a
`
`POSITA would have been led to Masimo’s innovative claimed technology. The
`
`Board should reject Petitioner’s proposed combination.
`
`II. ARGUMENT
`
`A. Ground 1
`1.
`A POSITA Would Have Understood That Ohsaki’s Board Is
`Longitudinal And Even Small Changes Result In Slippage
`a) Ohsaki’s Board Is Longitudinal
`The petition argued that a POSITA would have modified Aizawa’s flat cover
`
`“to include a lens/protrusion… similar to Ohsaki’s translucent board.” Pet. 25.1
`
`Ohsaki Fig. 1 (left) & Fig. 2 (right) (annotated, POR 12)
`
`
`
`
`1 All emphasis is added unless otherwise noted.
`
`-3-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
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`Petitioner’s proposed combination places the lens/protrusion over Aizawa’s
`
`circular sensor. Pet. 25 (below).
`
`
`
`
`
`
`
`Petitioner’s combination (Pet. 21, 26)
`
`Petitioner never explained how or why a POSITA would have been motivated to
`
`change Ohsaki’s longitudinal board into a circular cover. This change eliminates
`
`the shape that Ohsaki indicates prevents slipping. POR 11-18, 23-29.
`
`Lacking any credible basis to change the shape of Ohsaki’s board, Petitioner
`
`asserts that Ohsaki’s board has no particular shape. Reply 13-16. Petitioner thus
`
`embraces the vague testimony of its declarant, Dr. Kenny, who testified he did not
`
`know the shape of Ohsaki’s board and that the board could be “circular or square
`
`or rectangular.” Ex. 2008 68:21-70:1, 71:7-72:10; Ex. 2027 162:15-20. But
`
`Petitioner cannot allege that Ohsaki’s board has no geometry while also arguing
`
`Aizawa’s cover would be modified “to include a lens/protrusion…similar to
`
`Ohsaki’s translucent board.” Pet. 25.
`
`Regardless, Ohsaki itself refutes Petitioner’s position.
`
` As Masimo
`
`explained, Ohsaki describes its detecting element (2) as having one side (Figure 2,
`
`-4-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
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`below left in purple) longer than the other (Figure 1, below center in purple). POR
`
`16-18; Ex. 1014 ¶[0019].
`
`
`
`Ohsaki Fig. 2 (left) & Fig. 1 (center) (Ex. 1014 ¶[0019], color added)
`(showing long and short directions, respectively);
`Plan view illustrating board’s shape (right) (Ex. 2004 ¶¶35-39)
`
`
`Petitioner argues “an elliptical/circular sensor or board configuration can have a
`
`longitudinal structure/appearance under a cross-sectional view.” Reply 14. But
`
`Ohsaki shows the two cross-sections (Figs. 1-2), which eliminates any ambiguity.
`
`Ohsaki’s Figure 2 (above left) shows the “long” side of the detecting element (2)
`
`(purple) and illustrates the board (8) (blue) spanning most of that “long” side.
`
`Ohsaki’s Figure 1 (above center) shows the “short” side of the detecting element
`
`(2) (purple) and illustrates the board (8) (blue) as spanning only a small part of that
`
`“short” side. A POSITA would have concluded that Ohsaki’s board (8) and
`
`detecting element (2) both have a longitudinal shape (exemplified above right).
`
`POR 16-18; Ex. 2004 ¶¶36-39. Moreover, Ohsaki’s description (Ex. 1014
`
`¶[0019]) confirms Ohsaki’s board’s longitudinal shape. Ex. 2004 ¶¶35-39.
`
`-5-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
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`Petitioner argues that “Ohsaki never specifies that FIGS. 1-2 are different
`
`views of the same device.” Reply 15. But this argument is contrary to Dr.
`
`Kenny’s understanding during deposition. Ex. 2008 105:1-106:5. Ohsaki never
`
`describes Figures 1 and 2 as illustrating different devices and instead discusses
`
`them together. See Ex. 1014 ¶¶[0016]-[0027]. Even considered separately,
`
`Figures 1 and 2 illustrate a longitudinal board. Figure 1 shows a convex board that
`
`is much thinner than the “short” side of a detecting element. Figure 2 shows a
`
`convex board nearly the same length as the “long” side of a detecting element. Ex.
`
`2004 ¶¶35-39. Petitioner cannot maintain these figures illustrate no geometry for
`
`the board. Reply 13-16.
`
`Petitioner’s position also ignores Ohsaki’s teaching that even small changes
`
`in its sensor’s orientation or body location result in “a tendency to slip.” Ex. 1014
`
`¶¶[0019], [0023], Figs. 3A-3B. Masimo and its declarant, Dr. Madisetti, explained
`
`that Ohsaki’s shape and intended placement take advantage of the watch-side
`
`forearm/wrist area’s particular bone structure to prevent slipping. Ex. 2004 ¶¶55-
`
`57. Ohsaki’s longitudinal structure sits within the forearm/wrist area’s anatomy
`
`when properly oriented (below left) but tends to slip when rotated away from this
`
`orientation (below right). Id.; POR 25-29.
`
`-6-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
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`
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`Interaction of Ohsaki’s longitudinal structure with watch-side of
`wrist/forearm (Ex. 2004 ¶55)
`
`Ohsaki teaches that aligning its longitudinal shape across the wrist (above
`
`right)—instead of up-and-down the arm (above left)—results in “a tendency to
`
`slip.” Ex. 1014 ¶[0019]. As Dr. Madisetti explained, changing Ohsaki’s
`
`longitudinal shape to a circular structure, as Petitioner proposes, would result in
`
`slippage because a circular sensor would not fit into the anatomical opening in the
`
`wrist/forearm. Ex. 2004 ¶¶55-56; POR 25-29.
`
`Petitioner has no answer to these arguments. Instead, Petitioner argues in a
`
`footnote that Dr. Kenny’s declaration demonstrates that “the gap between the ulna
`
`and radius bones at the forearm is even greater than the gap between bones at the
`
`wrist, which is already wide enough to easily accommodate a range of sensor
`
`shapes.” Reply 17 n.3 (citing Ex. 1060 ¶25). But Dr. Kenny provided no evidence
`
`or analysis to support his assertions. In contrast, Dr. Madisetti explained that
`
`-7-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
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`Ohsaki positions its sensor at the junction between the wrist and forearm,
`
`supporting his opinion with anatomical drawings. Ex. 2004 ¶55.2
`
`b)
`Petitioner’s
`
`Petitioner’s Additional Arguments Are Unpersuasive
`additional
`arguments
`regarding Ohsaki’s
`shape
`
`are
`
`unpersuasive. First, Petitioner argues there is nothing “requiring” Ohsaki’s board
`
`to have a longitudinal shape. Reply 16. But the issue is not what Ohsaki
`
`requires—the issue is what Ohsaki teaches. Ohsaki teaches a longitudinal shape is
`
`necessary to prevent slipping, undermining Petitioner’s alleged motivation.
`
`Indeed, Ohsaki teaches that even small changes in sensor orientation or
`
`measurement location result in slippage. Ex. 1014 ¶¶[0019], [0023]; POR 23-29.
`
`Thus, Ohsaki would have taught a POSITA that Petitioner’s proposed circular
`
`convex cover would not improve adhesion.
`
`Second, Petitioner asserts that Ohsaki “nowhere describes ‘translucent board
`
`8’ and ‘detecting element 2’ as having the same shape.” Reply 13-14. But
`
`Masimo never argued that Ohsaki discloses that its “translucent board 8” and
`
`“detecting element 2” must have an identical shape. Masimo explained why a
`
`POSITA would understand Ohsaki’s board has a longitudinal shape and why a
`
`
`2 Dr. Kenny admitted a POSITA would have considered anatomical details,
`
`but cited no such evidence. Ex. 2027 248:18-249:6, 254:17-255:11; Ex. 1060 ¶25.
`
`-8-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
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`POSITA would not have been motivated to use a longitudinally shaped board in
`
`Petitioner’s proposed circular combination. POR 16-18, 21-32.
`
`Third, Petitioner retreats to generic “inferences and creative steps” to allege
`
`obviousness without identifying what those inferences and creative steps might be.
`
`Reply 11, 20. Unsupported and conclusory arguments “[u]ntethered to any
`
`supporting evidence, much less any contemporaneous evidence, … ‘fail[] to
`
`provide any meaningful explanation for why one of ordinary skill in the art would
`
`be motivated to combine these references at the time of this invention.’” TQ Delta,
`
`LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1362 (Fed. Cir. 2019) (emphasis omitted).
`
`Fourth, Petitioner argues a POSITA is “a person of ordinary creativity,” and
`
`“bodily incorporation” of Ohsaki’s features is not necessary. Reply 16. But
`
`Petitioner’s resulting combination eliminates the longitudinal directionality
`
`Ohsaki describes as important to avoid slipping. POR 21-29. Petitioner never
`
`explains how a POSITA’s “creativity” would prevent a circular convex surface
`
`from slipping. Reply 16. Petitioner ignores Ohsaki’s teachings and thus violates
`
`the fundamental rule that “a prior patent must be considered in its entirety, i.e., as a
`
`whole, including portions that would lead away from the invention in suit.”
`
`Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987).
`
`Fifth, Petitioner claims Masimo argued that adhesion is improved by “a
`
`supposed ‘longitudinal shape’ of ‘Ohsaki’s translucent board….’” Reply 13. In
`
`-9-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
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`reality, Masimo argued a POSITA would have understood Ohsaki’s convex board
`
`must also have a longitudinal shape oriented up-and-down the watch-side of the
`
`user’s wrist/forearm. POR 16-18, 21-29. Ohsaki explains that a sensor positioned
`
`across the user’s wrist “has a tendency to slip off.” Ex. 1014 ¶[0019]. Ohsaki also
`
`explains that a convex surface on the palm-side of the user’s wrist “has a tendency
`
`to slip.” Id. ¶[0023], Figs. 3A-3B.3 A “tendency to slip” is the opposite of
`
`Petitioner’s asserted motivation of improving adhesion. “An inference of
`
`nonobviousness is especially strong where the prior art’s teachings undermine the
`
`very reason being proffered as to why a person of ordinary skill would have
`
`combined the known elements.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`
`Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009).
`
`Sixth, Petitioner suggests Masimo’s arguments are limited to just the shape
`
`of Ohsaki’s board. Reply 13-16. That is also incorrect. Masimo additionally
`
`argued that the circular shape of Petitioner’s proposed combination leads to
`
`slipping. As illustrated below, Petitioner’s proposed circular sensor (and its
`
`convex surface) will negatively interact with the radius and ulna, resulting in
`
`slipping. POR 26-28; Ex. 2004 ¶¶56-58.
`
`3 Both declarants agree that Figures 3A-3B (discussed in Ohsaki ¶¶[0023]-
`
`[0024]) compare a convex surface’s slipping on the back- and palm-side of the
`
`wrist, respectively. See Ex. 2008 157:5-158:1, 158:15-20; Ex. 2004 ¶¶77-80.
`
`-10-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
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`Ohsaki teaches that its sensor helps prevent slipping when aligned with the user’s
`
`arm, but slips when positioned across the user’s wrist. Ex. 1014 ¶[0019]; see also
`
`id. ¶¶[0006], [0024]. Petitioner’s proposed circular sensor cannot avoid anatomical
`
`interactions that result in slipping. POR 26-28. Petitioner’s arguments do not
`
`overcome Ohsaki’s express disclosures.
`
`2.
`
`Petitioner Incorrectly Asserts That Ohsaki’s Board Prevents
`Slipping “On Either Side Of The User’s Wrist Or Forearm”
`Petitioner also fails to overcome Ohsaki’s express disclosure that Ohsaki’s
`
`convex board only prevents slipping on the wrist’s watch-side. Ex. 1014 ¶[0023],
`
`Figs. 3A-3B. Petitioner argues that Ohsaki’s benefits are not specific to a
`
`particular side of the wrist. Reply 16-20. But Ohsaki teaches the opposite: small
`
`changes in the measurement location, including from the wrist’s watch-side to the
`
`palm-side, cause “a tendency to slip.” Ex. 1014 ¶[0023]. Ohsaki illustrates this
`
`slipping in Figures 3A-3B, which the petition and reply both ignore. Ohsaki also
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`-11-
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`consistently emphasizes its “sensor is worn on the back side of a user’s wrist.” Id.
`
`Abstract; see also id. Title, ¶¶[0008], [0009], [0014], [0016], [0023]-[0024].
`
`In contrast to Ohsaki, Aizawa limits its sensor to measurements from the
`
`wrist’s palm-side close to the arteries. POR 11-14, 22-23, 32-38. Aizawa
`
`repeatedly teaches a flat surface improves adhesion on the wrist’s palm-side. POR
`
`32-38; Ex. 2004 ¶¶68-74. Petitioner never demonstrates that a POSITA would use
`
`Ohsaki’s convex board on Aizawa’s sensor when Ohsaki’s board tends to slip on
`
`the wrist’s palm-side—Aizawa’s required measurement site. POR 32-44; Ex. 2004
`
`¶¶68-85; Ex. 1014 ¶[0023], Figs. 3A-3B.4
`
`Indeed, Petitioner nonsensically argues that because Ohsaki’s board has a
`
`“tendency to slip” on the wrist’s palm-side, that “would have further motivated” a
`
`POSITA to change Aizawa’s flat adhesive cover to a convex surface. Reply 18.
`
`But a tendency to slip is the opposite of Petitioner’s “improved adhesion”
`
`motivation. POR 32-44. A POSITA would have credited both Aizawa’s and
`
`Ohsaki’s teachings and concluded that changing the flat adhesive plate in Aizawa’s
`
`palm-side sensor to a convex surface would detrimentally increase slipping. Id.
`
`
`4 Dr. Kenny provided no analysis of Ohsaki’s Figures 3A-3B. Instead, Dr.
`
`Kenny relied on portions of Ohsaki that do not address measurement location. Ex.
`
`2027 136:12-140:13.
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`Petitioner asserts “Ohsaki’s benefits are provided…on either side of the
`
`user’s wrist or forearm.” Reply 17-18. Petitioner first points to Ohsaki’s claim 1,
`
`which refers to the “back side of a user’s wrist or a user’s forearm.” Id. 17
`
`(emphasis in original). But Ohsaki discloses a “wristwatch-type” device (Ex. 1014
`
`Title), and thus the “forearm” refers to the same anatomical junction—not some
`
`other measurement location. POR 24-28, 41; Ex. 2004 ¶¶55-60, 81. Petitioner
`
`also asserts Ohsaki’s claim 5 does not mention “a backside of the wrist or
`
`forearm.” Reply 17 (emphasis omitted). But Ohsaki’s claim 5 likewise does not
`
`mention a convex surface. Indeed, Ohsaki’s claim 5 requires a sensor arranged “in
`
`a longitudinal direction of the user’s arm,” further supporting Masimo’s position.
`
`Moreover, as discussed above, Ohsaki’s overall disclosure undermines Petitioner’s
`
`proposed combination.
`
`Petitioner additionally cites Ohsaki’s disclosure of “intimate contact”
`
`between the convex surface and the user’s skin. Reply 19. Petitioner argues this
`
`“intimate contact” would necessarily improve Aizawa’s flat adhesive plate on the
`
`palm-side of the wrist. Id. 19-20. But, as discussed, Ohsaki teaches its convex
`
`board tends to slip on the wrist’s palm-side regardless of any intimate contact. Ex.
`
`1014 ¶[0023], Figs. 3A-3B. In contrast, Aizawa teaches a flat surface improves
`
`adhesion on the wrist’s palm-side. Ex. 1006 ¶[0013].
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
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`Finally, Petitioner cites generic “inferences and creative steps” and argues
`
`that a convex protrusion “would provide an additional adhesive effect by “digging
`
`into the skin.” Reply 20. Ohsaki, however, explains with text and data that
`
`“digging into the skin” does not prevent slipping on the palm-side of the wrist. See
`
`Ex. 1014 ¶[0023], Figs. 3A-3B. Ohsaki also teaches that one should avoid too
`
`much pressure because otherwise the user “feels uncomfortable,” which results in
`
`movement and a tendency to slip. Id. ¶¶[0018], [0006], [0024]. “Creative steps”
`
`would not lead a POSITA to ignore both Aizawa’s teaching that a flat plate
`
`improves adhesion on the wrist’s palm-side and Ohsaki’s teaching that a convex
`
`surface tends to slip on the wrist’s palm-side. DePuy, 567 F.3d at 1326.
`
`3.
`
`A Convex Cover Does Not Enhance Aizawa’s Light-Gathering
`Ability
`a)
`Petitioner Contradicts Its Admissions
`Petitioner’s proposed combination also makes no sense because it places a
`
`convex cover over Aizawa’s peripherally located detectors. As Masimo
`
`explained, a convex cover would direct light away from Aizawa’s peripheral
`
`detectors and decrease optical signal strength—the opposite of Petitioner’s asserted
`
`motivation of improving detection efficiency. POR 44-52. Petitioner and Dr.
`
`Kenny admitted that a convex cover condenses light towards the sensor’s center
`
`and away from the sensor’s periphery. Id. Petitioner illustrated this principle:
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
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`Petitioner’s Illustration, IPR2020-01520 (Ex. 2019 at 45)
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`Dr. Kenny confirmed that when light enters a convex surface, “the incoming light
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`is ‘condensed’ toward the center.” Ex. 2020 at 69-70. Dr. Kenny also confirmed
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`that the convex surface would cause “more light in the center than at the outer
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`edge in this example.” Ex. 2006 204:1-13. Dr. Kenny agreed, “that’s because
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`light’s being directed towards the center and away from the edge….” Id. 204:14-
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`20; Ex. 2004 ¶¶87-88.
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`None of Petitioner’s reply arguments overcome these admissions. Instead,
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`Petitioner argues that a “pattern of incoming light cannot be focused by a convex
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`lens towards any single location,” suggesting that Masimo’s position is that a
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`convex cover somehow focuses all light at a central point. Reply 29; see also id.
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`25, 30. But Masimo never argued that all incoming light condenses to a single
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`point. Instead, Masimo explained that a convex surface would direct relatively
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`-15-
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`Apple v. Masimo
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`more light towards the center and away from Aizawa’s peripheral detectors. POR
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`45-47; Ex. 2004 ¶¶90, 93.
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`b)
`
`The Principle Of Reversibility Is Irrelevant To Petitioner’s
`Proposed Combination
`Petitioner tries to avoid its admissions with a new theory based on the
`
`“principle of reversibility.” Reply 22. Petitioner asserts Aizawa “recognizes this
`
`reversibility” based on a stray statement that does not even discuss optics. Id. 25
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`(quoting Ex. 1006 ¶[0033]). Moreover, Petitioner points to nothing in its initial
`
`papers raising the principle of reversibility. Id. 22-25. Petitioner’s new theory is
`
`improper, denying Masimo the opportunity to respond with expert testimony.
`
`Petitioner’s new theory is also irrelevant. Petitioner argues the path of a
`
`reflected light ray would trace an identical route forward and backward. Reply 22-
`
`23. But Petitioner admits that tissue randomly scatters and absorbs light rays,
`
`which would cause forward and reverse light paths to be unpredictable and very
`
`likely different. See id. 25 (reflectance-type sensors measure “random” light that
`
`was “reflected, transmitted, absorbed, and scattered by the skin and other tissues
`
`and the blood before it reaches the detector”); Ex. 2027 188:6-17, 29:11-30:7,
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`31:8-32:3, 38:17-42:6. Petitioner never explains how the principle of reversibility
`
`could apply to such “random” scattered and absorbed light.
`
`Indeed, Dr. Kenny testified that “light backscattered from the tissue can go
`
`in a large number of possible directions, not any single precise direction.” Ex.
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`-16-
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`Apple v. Masimo
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`2027 17:12-18; see also id. 17:19-19:2 (reiterating random path and absorbance),
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`38:17-40:13, 40:14-42:6 (“Every photon tracing that particular path…would have a
`
`potentially different interaction with the tissue and it would be scattered,
`
`potentially, in a different direction than the photon arriving before and after it.”).
`
`In contrast, the principle of reversibility provides that “a ray going from P to S [in
`
`one direction] will trace the same route as one going from S to P [the opposite
`
`direction]” assuming there is no absorption or scattering. Ex. 1061 at 51
`
`(illustrating diffuse reflection), 53 (defining principle of reversibility), 207
`
`(principle of reversibility requires no absorption). Dr. Kenny also testified that the
`
`principle of reversibly applies to a light ray between two points and admitted it
`
`does not apply to randomly scattered light in bulk. Ex. 2027 207:9-208:22. In that
`
`circumstance, Dr. Kenny merely testified that light “can go” or “could go” along
`
`the same path. Id. 207:17-209:21, 210:8-211:6. That hardly supports Petitioner’s
`
`argument that light will necessarily travel the same paths regardless of whether the
`
`LEDs and detectors are reversed.
`
`Moreover, the principle of reversibility does not address the relevant issue:
`
`whether changing Aizawa’s flat surface to a convex surface results in more light on
`
`Aizawa’s peripherally located detectors. See Ex. 2027 212:3-14. Petitioner
`
`attempts to use the theory of reversibility to argue that one could simply reverse
`
`the LEDs and detectors and obtain the same benefit from a convex surface. Reply
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`-17-
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`Apple v. Masimo
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`22-23. Petitioner illustrates this argument with yet another new theory of
`
`“aggregate” reversibility, which stiches together different rays produced from
`
`different random scattering events. Id. 24. Petitioner’s aggregate ray theory does
`
`not address whether a change from a flat to convex surface would redirect more
`
`light towards the center and away from peripheral detectors. Petitioner previously
`
`illustrated, however, that a convex surface redirects incoming light towards the
`
`center as compared to a flat surface. Ex. 2019 at 45.
`
`
`Petitioner’s Illustration, IPR2020-01520 (Ex. 2019 at 45)
`
`The principle of reversibility does not indicate that one could reverse sensor
`
`components and still obtain the same benefit from a convex—as opposed to a
`
`flat—surface. As Dr. Kenny testified, the benefit of a convex surface would not be
`
`“obvious” if one moves the “LEDs and detectors around….” Ex. 2006 86:19-87:6.
`
`c)
`Petitioner’s Other New Theories Are Similarly Misplaced
`Petitioner next argues that Masimo “ignores the behavior of scattered light in
`
`a reflectance-type pulse sensor.” Reply 25. Not so. Masimo’s arguments directly
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`-18-
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`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
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`address a reflectance-type pulse sensor, and Masimo cited Petitioner’s and Dr.
`
`Kenny’s admissions about how a convex surface redirects incoming light. POR
`
`44-52. Petitioner then raises a series of new arguments against a position that
`
`Masimo never took—that a convex surface focuses all light to a single point.
`
`Reply 25-28. None of Petitioner’s arguments demonstrate a POSITA would have
`
`been motivated to change Aizawa’s flat surface to a convex surface to improve
`
`signal strength.
`
`First, Petitioner asserts that “Ohsaki’s convex cover provides a slight
`
`refracting effect, such that light rays that may have missed the detection area are
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`instead directed toward that area.” Reply 26. But that directly undermines
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`Petitioner’s provided motivation “to
`
`include a
`
`lens/protrusion…similar
`
`to
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`Ohsaki’s” to “improve detection efficiency.” Id. 8 (citing Ex. 1003 ¶¶80-85). This
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`new “slight refracting effect” argument trivializes Petitioner’s proposed motivation
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`and conflicts with its prior admissions that “the incoming light is ‘condensed’
`
`toward the center” (Ex. 2020 at 69-70).
`
`Even if the theory had merit, however, it would be unavailing because it fails
`
`to consider the greater decrease in light at the detectors due to light redirection to a
`
`more central location. See Ex. 2027 19:16-21:8. As Dr. Kenny confirmed, the
`
`circle of backscattered light’s intensity “decreases with the square of the distance”
`
`between the central emitter and peripheral detectors. Ex. 2027 49:17-50:13, 57:10-
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`-19-
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`Apple v. Masimo
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`22; see also Ex. 1015 at 2 (“The intensity of the backscattered light decreases in
`
`direct proportion to the square of the distance between the photodetector and the
`
`LEDs”.). Thus, any purported signal obtained from light redirected from the
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`sensor’s edge would be relatively weak and fail to make up for the much greater
`
`loss of signal strength when light is redirected away from the detectors and towards
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`a more central position. See id.
`
`Second, Petitioner attempts to distinguish Figure 14B in Masimo’s patent as
`
`showing the impact of a convex surface on collimated light instead of diffuse
`
`backscattered light. Reply 27-30. But Masimo’s patent makes no such distinction.
`
`See POR 45-47. Moreover, Dr. Kenny admitted “one of ordinary skill in the art
`
`would expect a diffuse light source encountering a convex lens of the sort that
`
`we’re contemplating today, would lead to convergence of the light on the opposite
`
`side of the lens, in general” and that there would be “a convergence of most of the
`
`light rays.” Ex. 2007 423:7-424:18.
`
`Third, Petitioner argues Inokawa and Ohsaki “demonstrate the use of
`
`covers/lenses featuring convex surfaces to direct light to non-centrally located
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`detectors.” Reply 30-31 (emphasis omitted). But Petitioner relies on Inokawa
`
`Figure 3, which shows data transferred directly to an opposing base station—not
`
`physiological measurements using attenuated light reflected from tissue. Id.
`
`Inokawa’s other data-transfer embodiments illustrate improved methods for data
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`-20-
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`Apple v. Masimo
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`transfer involving a “flush” fit. See Ex. 1008 ¶[0100], Figs. 15 (showing
`
`convex/concave arrangement), 17 (showing flat cover with lens above emitter).
`
`Ohsaki does not teach that its arrangement redirects light towards the detector, and
`
`instead discusses slipping. See Ex. 1014 ¶¶[0019], [0023]-[0025]. Moreover,
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`Ohsaki’s sensor includes only a single emitter and detector positioned side-by-side,
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`unlike Aizawa’s central emitter/peripheral detector arrangement. Ex. 1014 Fig. 2;
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`Ex. 1006 ¶[0009] (requiring “at least three photodetectors disposed around the
`
`light emitting diode and not linearly”).
`
`Moreover, Petitioner never explains why or how a POSITA would have
`
`known or considered its new and complex optical theories, much less arrived at
`
`Masimo’s claims. Petitioner never disputes that its level of skill (1) requires no
`
`coursework, training, or experience with optics or optical physiological monitors;
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`(2) requires no coursework, training, or experience in physiology; and (3) focuses
`
`on data processing and not sensor design. POR 9. Rather than consider
`
`Petitioner’s various complex theories, a POSITA would have understood and
`
`applied the straightforward understanding that a convex surface condenses light
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`toward the cent
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