throbber
7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
` APPLE, INC., )
` )
` Petitioner, )
` ) IPR 2020-01716
` -against- ) IPR 2020-01733
` ) IPR 2020-01737
` MASIMO CORPORATION, )
` )
` Patent Owner. )
`___________________________________)
`
` VIDEO-RECORDED DEPOSITION OF
` THOMAS WILLIAM KENNY, JR. PH.D.
` Zoom Recorded Videoconference
` 07/16/2021
` 9:03 a.m. (PDT)
`
`REPORTED BY: AMANDA GORRONO, CLR
`CLR NO. 052005-01
`
`______________________________________________________
` DIGITAL EVIDENCE GROUP
` 1730 M Street, NW, Suite 812
` Washington, D.C. 20036
` (202) 232-0646
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`Masimo Ex. 2026
`Apple v. Masimo, IPR2020-01737
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
` 07/16/2021
` 9:03 a.m. (PDT)
`
`Page 2
`
` VIDEO-RECORDED DEPOSITION OF THOMAS WILLIAM
`KENNY, JR. Ph.D., held virtually via Zoom
`Videoconferencing, before Amanda Gorrono, Certified
`Live Note Reporter, and Notary Public of the State of
`New York.
`
`1
`2
`
`3 4
`
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 3
`
`A P P E A R A N C E S
`(Via Zoom Videoconferencing):
`ON BEHALF OF PETITIONER APPLE, INC.:
` Hyun Jin In, Ph.D., Esquire
` Fish & Richardson
` 1000 Maine Avenue NW
` Washington D.C. 20024
` PHONE: 202-626-7765
` E-MAIL: In@fr.com
`
`ON BEHALF OF PATENT OWNER MASIMO CORPORATION:
` Stephen W. Larson, Esquire
` Knobbe Martens
` 2040 Main Street
` Irvine, CA 92614
` PHONE: 949-721-5301
` E-MAIL: Stephen.larson@knobbe.com
` -AND-
` Jeremiah S. Helm, Ph.D., Esquire
` Knobbe Martens
` 1717 Pennsylvania Avenue N.W.
` Washington, DC 20006
` PHONE: 202-640-6400
` E-MAIL: Jeremiah.helm@knobbe.com
` -AND-
` Jacob Peterson, Esquire
` Knobbe Martens
` 925 4th Ave #2500
` Seattle, WA 98104
` PHONE: 206-405-2000
` E-MAIL: Jacob.peterson@knobbe.com
`
`ALSO PRESENT:
`Jason Snyder, Legal Videographer - Digital Evidence
`Group
`Brian Sparks, Exhibit Technician - Digital Evidence
`Group
`
`1
`
`2
`
`3
`
`4
`
`5
`
`67
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`18
`19
`
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
` I N D E X
` WITNESS EXAMINATION BY PAGE
` THOMAS WILLIAM MR. LARSON 6
` KENNY, JR. Ph.D.
`
`Page 4
`
` E X H I B I T S
` EXHIBIT DESCRIPTION PAGE
` Exhibit 2006 Kenny Depo Transcript 1..... 14
` Exhibit 2007 Kenny Depo Transcript 2..... 14
` Exhibit 2008 Kenny Depo Transcript 3..... 15
` Exhibit 2009 Kenny Depo Transcript 4..... 15
`
` PREVIOUSLY MARKED EXHIBITS IDENTIFIED
` EXHIBIT DESCRIPTION PAGE
` Exhibit 1003 Dr. Kenny Declaration in ... 8
` IPR 1716
` Exhibit 1006 U.S. Patent Application .... 67
` Publication 2002/0188210
` A1
` Exhibit 1025 U.S. Patent 6.802,799 B2.... 115
` Exhibit 1003 Dr. Kenny Declaration in ... 139
` IPR 1737
`
` R E Q U E S T S
` DESCRIPTION PAGE
` Witness retain documents...................... 22
`
`1
`2
`3
`
`45
`
`6
`7
`8
`9
`10
`11
`12
`13
`14
`
`15
`
`16
`17
`18
`
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 5
` THE VIDEOGRAPHER: This is Videotape
`No. 1 in the videotaped deposition of Thomas W.
`Kenny, Ph.D., taken by the Petitioner and patent
`owner in the matter of Apple, Inc. versus Masimo
`Corporation, IPR 2020-01716, IPR 2020-01733, and IPR
`2020-01737.
` This deposition being held remotely
`via Zoom on July 16, 2021. The time on the screen is
`9:03 a.m.
` My name is Jason Snyder. I'm the
`legal videographer for Digital Evidence Group.
` The court reporter is Amanda Gorrono
`in association with Digital Evidence Group.
` Will counsel please introduce
`themselves for the record, after which the court
`reporter will please swear in the witness.
` MR. LARSON: This is Steve Larson of
`Knobbe Martens for patent owner Masimo.
` With me are my partners Jeremiah Helm
`and Jacob Peterson.
` MR. IN: And this is Hyun Jin In from
`Fish & Richardson representing Petitioner, Apple.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 6
`THOMAS WILLIAM KENNY, JR. Ph.D., called as a witness,
`having been first duly sworn by a Notary Public of
`the State of New York, was examined and testified as
`follows:
`EXAMINATION
`BY MR. LARSON:
` Q. Good morning, Dr. Kenny.
` A. Good morning.
` Q. Nice to see you again.
` A. Uh-huh.
` Q. Will you please --
` A. It's been a while.
` Q. -- state your full name for the
`record?
` A. Thomas William Kenny.
` Q. Thank you.
` I know that you've been deposed
`before, but I'll do a brief reminder --
` A. Uh-huh.
` Q. -- and just confirm you understand
`you're under oath today as if you were in a
`courtroom, correct?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 7
`
` A. Yes.
` Q. Is there any reason you'd be unable
`to give truthful and accurate testimony today?
` A. No.
` Q. Are you on any medications that might
`affect your testimony today?
` A. No.
` Q. Okay. As a reminder, the court
`reporter is here to take down questions. Please give
`verbal responses. And please wait until I have
`completed the question before answering.
` And if you don't understand a
`question, let me know.
` You can ask for a break at any time;
`however, if there's a pending question, please answer
`before taking a break.
` Understood?
` A. Understood.
` Q. All right. All right. We sent you a
`box of exhibits, which you just opened, and so let me
`direct you to that so you can take out the exhibits
`that we'll start with.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 8
` Let's start with Exhibit 1003 from
`IPR 2020-1716.
` (Whereupon, Exhibit 1003, Dr. Kenny
`Declaration in IPR 1716, was identified.)
` A. Okay. This would be my Declaration?
` Q. Yes. In IPR 1716.
` A. Yes.
` Q. Perfect. Do you recognize
`Exhibit 1003?
` A. I do.
` Q. What is it?
` A. It is my Declaration with respect to
`Patent 10,702,194.
` Q. And do you mind if I refer to that
`patent as the '194 patent?
` A. That's fine.
` Q. Now, you submitted this Declaration
`on behalf of Apple, correct?
` A. That's correct.
` Q. In your Declaration you offered
`opinions about certain references, correct?
` A. That's correct.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 9
` Q. Will you please turn to Paragraph 14
`of your Declaration. And let me just -- hold on.
`Let me make sure that we have the right -- I know
`you're looking at the hard copy.
` A. Uh-huh.
` Q. I want to make sure we have the right
`document on the screen. It looks like the document
`on the screen is for the '195 patent. I want to make
`sure we have the right exhibit.
` MR. LARSON: This should be
`Exhibit 1003 for IPR 1716 -- for the hot seat -- more
`a question for the hot seat person.
` THE WITNESS: Okay. There we go.
` MR. LARSON: There we go. Great.
` Q. Would you please turn to Paragraph 14
`of your Declaration?
` A. Okay.
` Q. And let's see here. And if you look
`below Paragraph 14, do you see a table entitled,
`"Prior Art Reference"?
` A. Yes.
` Q. And in Paragraph 14 you state you
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 10
`reviewed the references in the table entitled, "Prior
`Art Reference," correct?
` A. That's correct.
` Q. The first listed prior art -- and it
`is a true and correct statement that you reviewed
`those references, correct?
` A. That's correct.
` Q. Okay. And the first prior art
`reference that you analyzed is U.S. Patent
`publication number 2002/0188210, correct?
` A. That's correct.
` Q. And you there give it a short name of
`Aizawa, correct?
` A. That's correct.
` Q. Do you mind if I refer to that
`reference as "Aizawa" for this deposition?
` A. That's fine.
` Q. The same question for the next
`reference, it's entitled, "Measurement Site and
`Photodetector Size Considerations in Optimizing Power
`Consumption of a Reflectance Pulse Oximeter." It's
`Apple Exhibit 1024.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 11
` You provided a short form name of it
`of "Mendelson-2003," correct?
` A. That is correct.
` Q. Do you mind if I refer to that
`reference as "Mendelson-2003" during the deposition
`today?
` A. Sure.
` Q. And the next one was U.S. Publication
`No. 2001/0056243 to Ohsaki. Do you mind in I refer
`to that reference as "Ohsaki"?
` A. That would be fine.
` Q. And the next one entitled, "A
`Wearable Reflectance Pulse Oximeter For Remote
`Physiological Monitoring." It's Apple Exhibit 1016.
`You gave it the short form name "Mendelson-2006." Do
`you mind if I refer to that as "Mendelson-2006"?
` A. That would be okay.
` Q. And finally in that table you
`reference U.S. Patent No. 7,031,728. You gave it the
`short name of "Beyer." Do you mind if I refer to
`that patent as "Beyer"?
` A. That would be fine.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 12
` Q. Okay. And in our prior deposition we
`discussed some of these -- a couple of these same
`references.
` Do you recall that?
` A. I do.
` Q. And, in fact, you relied on some of
`these references in the declarations you submitted in
`IPR Nos. 1716, 1733, and 1737, correct?
` MR. IN: Objection; scope, relevance.
` A. I haven't memorized those exact
`numbers. I'll take your word for that.
` Q. Okay. And your understanding of the
`prior art hasn't changed from the time you previously
`gave testimony about these references, correct?
` A. That's correct.
` Q. All right. And to the best of your
`knowledge, did you apply the same understanding of
`the prior art across all of your Declarations?
` A. I believe so.
` Q. And to the best of your knowledge did
`you give your best understanding of the prior art
`references across all of the declarations?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 13
`
` MR. IN: Objection; form.
` A. I think that's the same -- is that
`different from the question you just asked me? I'm
`not -- maybe I'm just parsing.
` Q. I think the last one was about
`consistency and this one was about that you did your
`best.
` You provided your best understanding
`of those references across all of the declarations,
`correct?
` MR. IN: Objection.
` A. Yes.
` MR. IN: Sorry.
` Q. And specifically you previously
`testified about Aizawa, Ohsaki, and the Mendelson
`'799 patent.
` Do you recall that?
` A. I do.
` Q. And my last deposition with you, you
`provided some deposition testimony about those
`references, correct?
` A. Yes.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 14
` MR. IN: Objection; relevance, scope.
` MR. LARSON: So I'm going to mark our
`first exhibits. Just so you have them handy. I
`don't necessarily know that I'll ask questions about
`them or not.
` I want to mark your prior depo
`transcripts. And so these will be our first
`exhibits. These will be the depo transcripts from
`April 22nd, 23rd, 24th, and 25th.
` They were Masimo Exhibit 2006, 2007,
`2008, and 2009.
` Q. Do you want to just pull those out
`and have those handy?
` A. Sure. These are in the giant binder.
`Let's see here.
` Q. So you'll have those handy if you
`want to refer to them.
` MR. LARSON: Let's just formally mark
`them, authenticate them for the record.
` (Whereupon, Exhibit 2006, Kenny Depo
`Transcript 1, was marked for identification.)
` (Whereupon, Exhibit 2007, Kenny Depo
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 15
`
`Transcript 2, was marked for identification.)
` (Whereupon, Exhibit 2008, Kenny Depo
`Transcript 3, was marked for identification.)
` (Whereupon, Exhibit 2009, Kenny Depo
`Transcript 4, was marked for identification.)
` Q. Do you recognize those documents?
` A. I do.
` Q. Would you mind identifying them for
`the record?
` A. So it looks like there's four volumes
`of transcripts from the deposition taken on -- let's
`see -- the dates from April 22nd, 23rd, 24th, and
`25th. I'm just pulling them out and putting binder
`clips on them so I can get through them without
`having to deal with the giant binder all the time.
` Q. And so, for the record, on the bottom
`right-hand side you should see an exhibit number for
`this deposition, basically that it's marking the
`transcript. For example, the first one should say
`"Masimo 2006."
` Do you see that?
` A. Let's see here --
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 16
`
` Q. In the bottom right.
` A. Yes, that's correct. I see it.
` Q. Okay. So that Masimo Exhibit 2006 is
`your April 22, 2021, deposition in connection with
`IPRs 1520, 1537, and 1539, correct? You see it on
`the top right-hand side.
` A. Yes, that's correct.
` Q. Okay. And then turning now to Masimo
`Exhibit 2007.
` A. Yes.
` Q. That's your deposition transcript
`from April 23rd, in connection with IPRs 1520, 1537,
`and 1539, correct?
` A. That's correct.
` Q. Turning now to Masimo Exhibit 2008.
`Let me know when you have that handy.
` A. Yes.
` Q. That's your April 24th deposition in
`connection with IPRs 1536 and 1538, correct?
` A. That's correct.
` Q. And last but not least, somewhat
`shorter transcript, Masimo Exhibit 2009 is your
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 17
`deposition transcript from April 25th in connection
`with IPRs 1536 and 1538, correct?
` A. That is correct.
` Q. All right. Keep those handy.
` A few housekeeping questions. To the
`best of your knowledge, did you provide truthful and
`accurate testimony in those depositions?
` A. Yes.
` Q. And to the best of your knowledge did
`you provide your best understanding of the prior art
`in those depositions?
` A. Yes.
` Q. And your understanding of the prior
`art hasn't changed since you provided that testimony,
`correct?
` A. That's correct.
` Q. And you understanding of physics and
`optics hasn't changed since you provided testimony in
`those depositions, correct?
` A. Well, you know, I learn every day,
`but not in a fundamental or important way, no.
` Q. And your testimony regarding the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 18
`knowledge of a person of skill in the art hasn't
`changed since you provided testimony in those
`depositions, correct?
` A. That's correct.
` Q. Okay. Tell me everything you did to
`prepare for your deposition today.
` A. Everything. Well, I've reviewed the
`prior art references; I reviewed the declarations;
`I've reviewed the transcripts from the last
`depositions, that we've just opened up. I probably
`reviewed most of the materials in these binders.
` Q. Did you meet with anyone?
` A. We had a few Zoom conference calls
`with the attorneys from -- representing Apple.
` Q. Who did you meet with?
` A. So, HJ In was part of those calls;
`Andrew Patrick was part of those calls; Dan Smith
`participated in those calls.
` Q. Okay. Approximately how long did you
`meet with the attorneys?
` A. You know, probably around ten hours,
`give or take.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 19
` Q. Did you review any documents that
`refreshed your recollection?
` A. Of those meetings or... Sorry.
` Q. Of, of -- did you review any
`documents that refreshed your recollection of any
`facts that, you know, you considered as part of your
`expert analysis?
` A. I reviewed all of the documents that
`we've just described, you know, those -- I reviewed
`them all. Yes.
` Q. Anything else that you recall?
` A. I'm trying to sort out all the things
`I do in my -- over the last two months.
` So there are some new references
`associated with the new Declarations. So those would
`be additive to what was reviewed prior, of course.
`At least in the recent review.
` You know, I reviewed all of those
`documents. Maybe just leave it at that.
` Q. You say "these documents," you mean
`the documents you submitted in connection with your
`Declarations?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 20
`
` A. That's correct.
` Q. And sitting here today, you can't
`recall any other documents you reviewed that
`refreshed your recollections or any facts that you
`relied on as part of your analysis; is that correct?
` A. I'm really trying to separate -- I
`mean I review documents all day long for lots of
`reasons. I'm CEO for a start-up company, I have
`Ph.D. students I'm still advising, there's all kind
`of documents.
` I don't recall anything off the top
`of my head, but, you know, depending on where we go
`with questions they may remind me of something I
`looked at.
` Q. If the question reminds you of
`something you looked at, will you please let me know?
` A. Certainly.
` Q. After preparing for your deposition
`today, is there anything about the analysis in your
`Declarations that you want to change?
` A. Nothing that comes to mind.
` Q. Did you discover any errors in your
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 21
`
`Declarations?
` A. Let me -- there was one thing that I
`recall. See if I can find it quickly.
` Actually, I'm not sure which one it's
`in. It's just an instance of I think there is a
`place it says "Mendelson-2006" and it obviously
`should have said "Mendelson-2003." If we come across
`it, I'll point it out. I don't think you want me to
`spend 15 minutes leafing around trying to find that
`one thing for you right now.
` Q. But from your recollection the error
`is fairly obvious from the context that it was
`supposed to be Mendelson-2003?
` A. I think that's true.
` Q. Did you discover any errors in your
`analysis of the prior art?
` A. No.
` MR. IN: Objection; form.
` Q. Okay. So as we go through the
`deposition today, I'm going to refer to exhibits and
`documents. The exhibits we can pull up on the
`computer screen, but we have also provided you hard
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 22
`
`copies for you to refer to.
` Let me ask you, I think in our last
`deposition we made the request that you save the
`exhibits for a future possible deposition. Did you,
`by any chance, do that?
` A. Yes, I did. They are all in boxes in
`the hall.
` Q. In the hall. Okay. So accessible,
`if necessary?
` A. Yes. They could be. Yes. It will
`take some digging, but I think I can find everything
`we might need.
` MR. LARSON: Let me make the same
`request for these documents. I mean, I have no idea
`if it will be helpful in a future deposition. But it
`could be. If you don't mind keeping some boxes in
`your office there, we appreciate it.
` (Whereupon, a request for Witness
`retain documents, was made.)
` A. No problem.
` Q. All right. Let's dive in to
`Exhibit 1003 a little bit. That's your declaration
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 23
`
`from IPR 1716.
` And I want to start with Paragraph 78
`and the figures below Paragraph 78. Can you take a
`look at those figures?
` If you want to take a moment to read
`them to get context, go ahead.
` A. Okay.
` Q. All right. Can you explain to me
`what you're illustrating with the figures below
`Paragraph 78?
` MR. IN: Objection; form.
` A. The illustration on the left is
`adapted from the Aizawa reference, with some
`modifications of what I think one of ordinary skill
`in the art would consider in context of
`Mendelson-2003.
` Q. And so these drawings are intended to
`illustrate the changes a person of skill in the art
`would make to -- was it Aizawa in view of
`Mendelson-2003?
` MR. IN: Objection; form,
`argumentative.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 24
` A. So could you repeat that question?
`Sorry.
` Q. Sure.
` Are these figures intended to
`illustrate the modifications a person of skill in the
`art would make to Aizawa based on Mendelson-2003?
` A. And also -- yes. And also based on
`Ohsaki.
` Q. So the figures below Paragraph 78 are
`intended to illustrate the modifications you believe
`a person of skill in the art would make to Aizawa in
`view of Mendelson-2003 and Ohsaki, correct?
` MR. IN: Objection; argumentative.
` A. Yes, that's correct.
` Q. So in your opinion that combination
`would include two LEDs, which you've labeled LED A
`and LED B; is that correct?
` A. That's what is shown here, yes.
` Q. And can you explain to me why a
`person of skill in the art would have made the
`modification from one LED to two LEDs?
` MR. IN: Objection; form.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 25
`
` Q. Let me start with a little
`foundation. In Aizawa there's one LED, correct, in
`the center?
` A. In that illustration in Aizawa, yes,
`that's correct.
` Q. Okay. And then your combination here
`in the figure, you have two LEDs, correct?
` A. That's correct.
` Q. My question is just: Can you explain
`why a person of skill in the art would have been led
`to modify Aizawa from one LED to two LEDs?
` MR. IN: Objection; form.
` A. There's many reasons described in
`several of the references, but maybe just to focus,
`the Mendelson-2003 reference includes a red LED and
`an infrared LED.
` Q. But you don't provide any
`testimony -- sorry.
` You don't provide any analysis in
`your Declaration regarding why a person of skill in
`the art would have modified Aizawa's single LED to be
`two LEDs, correct?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 26
` A. Sorry about that. I was looking all
`around. Could you repeat the question?
` Q. Sure. You don't provide any analysis
`in your Declaration regarding why a person of skill
`in the art would have modified Aizawa's single LED to
`be two LEDs, correct?
` A. So I think one of ordinary skill in
`the art would have understood that having two
`different wavelengths provides the benefits that are
`described in the Mendelson references and in other
`art that we've referred to, but as I review this
`document to the best of my ability, flipping pages
`here, I don't believe there's an explicit analysis
`describing the use of the second LED.
` Q. Right. You don't -- having reviewed
`your Declaration, you don't see any analysis
`discussing why a person of skill in the art would
`have modified Aizawa's single LED to be two LEDs,
`correct?
` A. As I said, I think one of ordinary
`skill in the art in view of the references would
`consider a second LED, but I don't explicitly analyze
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 27
`
`that inclusion as far as I can tell in the
`15 minutes, 10 minutes or so I spent flipping around.
`I'm not finding an explicit analysis of the addition
`of the second LED.
` Q. In your view, a person of skill in
`the art, reviewing the prior art you analyzed in this
`Declaration, would have been led to include a second
`LED; is that correct?
` A. They would have been led to consider
`including the second LED.
` Q. Would they have included a second
`LED?
` A. I think it depends on exactly which
`physiological parameters they were intending to
`measure.
` Q. Well, I guess in the combination that
`you're proposing and that you're analyzing in your
`Declaration, would that combination have two LEDs or
`one LED?
` MR. IN: Objection; relevance, form.
` A. So the combination that's described
`throughout the section of my Declaration is analyzing
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 28
`the claims has a single LED, as far as I can tell.
` Q. So in the combination that you put
`forward as part of your Declaration, there's one LED;
`is that right?
` MR. IN: Objection; form.
` Q. While you're looking at that, let me
`restate the question. So the combination that you
`proposed and analyzed as allegedly satisfying the
`claims, in your Declaration, has one LED, correct?
` MR. IN: Objection; argumentative.
` A. Almost there sorry. Okay. So can I
`have that question again? I think I'm ready.
` Q. Sure. You've had a chance to review
`your Declaration. My question is: The combination
`that you proposed and analyzed as allegedly
`satisfying the claims in your Declaration has one
`LED, correct?
` MR. IN: Same objection.
` A. So the combination of these
`references that's described and referred to,
`throughout all of the portions of the Declaration
`that are analyzing the claims, so this begins on --
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 29
`this begins with Paragraph 87 and then it refers back
`to some earlier sections, but the details are in that
`section are all with respect to combinations with a
`single LED.
` Q. And it's the earlier section, for
`example, Paragraph 78 where you're discussing the
`combination before you provide a specific analysis of
`the claims, in that, in that discussion of the
`combination, you include two LEDs, correct?
` A. There are two LEDs in that figure
`below Paragraph 78, that's correct.
` Q. And you said or you testified earlier
`that whether a person of skill in the art would have
`included one LED or two LEDs would depend exactly on
`which physiological parameters they were intending to
`measure, correct?
` MR. IN: Objection; argumentative,
`form.
` A. You know, so there is a long list of
`possible physiological parameters that one might be
`interested in measuring and some of them require
`multiple wavelengths in order to perform an accurate
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`7/16/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr., Ph.D.
`
`Page 30
`measurement. The Mendelson 1999 patent -- actually,
`am I getting that right, actually? Yeah, the '799
`Mendelson patent has three LEDs, three different
`wavelengths in order to provide an even better
`measurement method for improving the accuracy, so it
`would depend on the objectives and the needs of the
`situation.
` Q. And you said there is a long list of
`physiological parameters that might impact whether to
`use one LED or more than one LED. Could you provide
`so

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket