throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No.: 50095-0027IP1
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`Poeze et al.
`In re Patent of:
`U.S. Patent No.: 10,709,366
`Issue Date:
`July 14, 2020
`Appl. Serial No.: 16/829,510
`Filing Date:
`Mar. 25, 2020
`Title:
` MULTI-STREAM DATA COLLECTION SYSTEM FOR
`NONINVASIVE MEASUREMENT OF BLOOD
`CONSTITUENTS
`
`SECOND DECLARATION OF DR. THOMAS W. KENNY
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`I hereby declare that all statements made of my own knowledge are true and
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`that all statements made on information and belief are believed to be true. I further
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`declare that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of the Title 18 of the United States Code.
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`Dated: November 10, 2021 By: _______________________
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`Thomas W. Kenny, Ph.D.
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`1
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`APPLE 1060
`Apple v. Masimo
`IPR2020-01737
`
`

`

` 
`
` 
`
`Table of Contents
`Introduction .................................................................................................................. 3 
`Ground 1 ...................................................................................................................... 5 
`A.  Ohsaki does not teach or require that its translucent board 8 is
`“rectangular” in shape ......................................................................................... 10 
`B.  A POSITA would have recognized the benefits of Ohsaki’s teachings
`when applied to Aizawa’s sensor ....................................................................... 13 
`C.  Modifying Aizawa’s sensor to include a convex cover as taught by
`Ohsaki enhances the sensor’s light-gathering ability ......................................... 17 
`D.  A POSITA would have been motivated to select a convex cover to
`protect the optical elements ................................................................................ 32 
`E.  Patent Owner mischaracterizes Aizawa’s principle of operation ....................... 33 
`F.  A POSITA would have been motivated to add a second ring of sensors
`to Aizawa ............................................................................................................ 35 
`G.  A POSITA would have been motivated to keep the first and second
`rings of detectors separate ................................................................................... 37 
`  Ground 2 Establishes Obviousness ........................................................................... 39 
`  CONCLUSION .......................................................................................................... 40 
`
`2
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`

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`
`Introduction
`I have been retained on behalf of Apple Inc. to offer technical opinions relating to
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`1.
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`U.S. Patent No. 10,709,366 (“the ’366 Patent”) in the present case (IPR2020-01737). In
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`this Second Declaration, I provide opinions related to Patent Owner’s Response (Paper 15)
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`and Dr. Madisetti’s supporting declaration (Ex. 2004).
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`2.
`
`In addition to the materials listed in my First Declaration (APPLE-1003), I have
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`reviewed several additional documents and references including:
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` Paper 7: Institution Decision;
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` Paper 15: Patent Owner’s Response (“POR”);
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` Ex. 2004: Declaration of Dr. Madisetti;
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` Ex. 2006-2009: Transcripts of my prior depositions;
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` APPLE-1061: Eugene Hecht, Optics (2nd Ed. 1990);
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` APPLE-1062: Eugene Hecht, Optics (4th Ed. 2002);
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` APPLE-1063: Design of Pulse Oximeters, J.G. Webster; Institution of
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`Physics Publishing, 1997 ("Webster");
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` APPLE-1053: Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
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`01536, IPR2020-01538 (August 3, 2021);
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` APPLE-1054: Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
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`01520, IPR2020-01537, IPR2020-01539, Day 1 (August 1, 2021);
`
` APPLE-1056: Deposition Transcript of Dr. Vijay Madisetti in IPR2020-
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`01520, IPR2020-01537, IPR2020-01539, Day 2 (August 2, 2021);
`
`
`
`3
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`

`

` APPLE-1057: “Refractive Indices of Human Skin Tissues at Eight
`
`Wavelengths and Estimated Dispersion Relations between 300 and 1600
`
`nm,” H. Ding, et al.; Phys. Med. Biol. 51 (2006); pp. 1479-1489
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`(“Ding”);
`
` APPLE-1058: “Analysis of the Dispersion of Optical Plastic
`
`Materials,” S. Kasarova, et al.; Optical Materials 29 (2007);
`
`pp. 1481-1490 (“Kararova”); and
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` APPLE-1059: Deposition Transcript of Dr. Thomas W. Kenny in
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`IPR2020-01520, IPR2020-01536, IPR2020-01537, IPR2020-01538,
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`IPR2020-01539, Day 2 (September 18, 2021).
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`3.
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`Counsel has informed me that I should consider these materials through the lens of a
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`person of ordinary skill in the art (POSITA) related to the ’366 Patent at the time of the
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`earliest possible priority date of the ’366 Patent (July 3, 2008, hereinafter the “Critical
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`Date”) and I have done so during my review of these materials. I have applied the same
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`level of ordinary skill in the art described in my prior declaration, which I have been
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`informed was also adopted by the Board in the Institution Decision. APPLE-1003, [0021]-
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`[0022]; Institution Decision, 12-13.
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`4.
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`I have no financial interest in the party or in the outcome of this proceeding. I am
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`being compensated for my work as an expert on an hourly basis. My compensation is not
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`dependent on the outcome of these proceedings or the content of my opinions.
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`5.
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`
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`In writing this declaration, I have considered the following: my own knowledge and
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`4
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`

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`experience, including my work experience in the fields of mechanical engineering,
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`computer science, biomedical engineering, and electrical engineer; my experience in
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`teaching those subjects; and my experience in working with others involved in those fields.
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`In addition, I have analyzed various publications and materials, in addition to other
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`materials I cite in my declaration.
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`6.
`
`My opinions, as explained below, are based on my education, experience, and
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`expertise in the fields relating to the ’366 Patent. Unless otherwise stated, my testimony
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`below refers to the knowledge of one of ordinary skill in the fields as of the Critical Date,
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`or before.
`
` Ground 1
`As I explained at length in my first declaration, a POSITA “would have found it
`
`7.
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`obvious to modify the [Aizawa] sensor’s flat cover…to include a lens/protrusion…similar
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`to Ohsaki’s translucent board 8, so as to [1] improve adhesion between the user’s wrist and
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`the sensor’s surface, [2] improve detection efficiency, [3] and protect the elements within
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`the sensor housing.” APPLE-1003, ¶¶79-84. Rather than attempting to rebut my testimony
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`on these points, Masimo and its witness, Dr. Madisetti, responded with arguments that are
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`technically and factually flawed.
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`8.
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`Specifically, Masimo contends that “Ohsaki and Aizawa employ different sensor
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`structures (rectangular versus circular) for different measurement locations (back side
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`versus palm side of the wrist), using different sensor surface shapes (convex versus flat)
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`that are tailored to those specific measurement locations” and from this concludes that “[a]
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`5
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`

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`POSITA would [not] have been motivated to combine the references and reasonably
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`expected such a combination to be successful.” IPR2020-01733, Pap. 15 (“POR”), 1-3.
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`9.
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`In this way and as I explain in further detail, the POR avoids addressing the merits
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`of the combinations advanced in Apple’s Petition, relies on mischaracterizing the prior art
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`combinations and my testimony, and ignores the inferences and creative steps that a
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`POSITA would have taken when modifying Aizawa’s sensor to achieve the benefits taught
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`by Ohsaki and Mendelson-2003, among others.
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`10.
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`Contrary to Masimo’s contentions, Ohsaki does not limit its benefits to a rectangular
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`sensor applied to a particular body location, and a POSITA would not have understood
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`those benefits as being so limited. For example, Ohsaki teaches that “the detecting element
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`and the sensor body 3 may be worn on the back side of the user’s forearm” or wrist.
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`Nowhere does Ohsaki teach that its sensor can only be worn on a particular body location.
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`APPLE-1014, [0030], [0008]-[0010], Abstract. In its summary of invention and claim
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`preambles, Ohsaki explains that the object of its invention is “to provide a human pulse
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`wave sensor which is capable of detecting the pulse wave of a human body stably and has
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`high detection probability.” APPLE-1014, [0007], claims 1-8. Thus, Ohsaki’s disclosure
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`should not be narrowly understood as applying to a single location or a single embodiment.
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`Aizawa similarly reveals an embodiment in which its sensor is located on the palm side of
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`the wrist (see APPLE-1006, FIG. 2, [0002], [0009]), but does not limit its sensor to being
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`applied to just the palm side of the wrist. A POSITA, based on Aizawa and Ohsaki’s
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`disclosure, would have understood that the sensors in Aizawa and Ohsaki, when combined
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`6
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`in the manner explained in my earlier declaration, would have been applicable to various
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`locations on a human body and would have improved the performance of the sensor by
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`providing the benefits described in these disclosures. Indeed, a POSITA would understand
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`that the claimed benefits of the detector arrangement and the convex cover would have
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`been useful and beneficial for measurements on many other locations.
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`11.
`
`In addition to the above, as shown in Ohsaki’s FIG. 2 (reproduced below), Ohsaki
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`attributes the reduction of slippage afforded by use of translucent board 8 (and additional
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`related improvements in signal quality) to the fact that “the convex surface of the
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`translucent board…is in intimate contact with the surface of the user’s skin”1 when the
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`sensor is worn. APPLE-1003, ¶77; APPLE-1014, [0015], [0017], [0025], FIGS. 1, 2, 4A,
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`4B.
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`APPLE-1014, FIG. 2 (annotated).
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`1 Unless otherwise noted, emphases in quotations throughout my declaration are added.
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`7
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`12.
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`Notably absent from Ohsaki’s discussion of these benefits is any mention or
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`suggestion that they relate to the shape of the perimeter of translucent board 8 (whether
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`circular, rectangular, ovoid, or other). Rather, when describing the advantages associated
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`with translucent board 8, Ohsaki contrasts a “convex detecting surface” from a “flat
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`detecting surface,” and explains that “if the translucent board 8 has a flat surface, the
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`detected pulse wave is adversely affected by the movement of the user’s wrist,” but that if
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`the board “has a convex surface…variation of the amount of the reflected light…that
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`reaches the light receiving element 7 is suppressed.” APPLE-1003, ¶78; APPLE-1014,
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`[0015], [0025].
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`13.
`
`From this and related description, a POSITA would have understood that a
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`protruding convex cover would reduce the adverse effects of user movement on signals
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`obtainable by photodetectors which are positioned to detect light reflected from user tissue.
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`APPLE-1003, ¶¶78-80; APPLE-1014, [0015], [0017], [0025], FIGS. 1, 2, 4A, 4B; see also
`
`APPLE-1006, [0012], [0013], [0023], [0024], [0026], [0030], [0034], FIGS. 1(a), 1(b). A
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`POSITA would expect that these benefits would apply to the pulse wave sensor of Aizawa,
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`as well as to other wearable physiological monitors.
`
`14.
`
`In addition, as I explain with respect to the prior art figures reproduced below, the
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`POSITA would have found it obvious to improve Aizawa’s sensor based on Ohsaki’s
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`teachings, and would have been fully capable of making any inferences and creative steps
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`necessary to achieve the benefits obtainable by modifying Aizawa’s cover to feature a
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`
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`8
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`

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`convex detecting surface.2 See also APPLE-1008, ¶¶14-15, FIG. 1. The following
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`annotated FIG. 1(b) from Aizawa shows the results of the proposed combination:
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`APPLE-1006, FIG. 1(b)(annotated)
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`
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`15.
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`And, contrary to Masimo’s contentions, the POSITA would have in no way been
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`dissuaded from achieving those benefits by a specific body location associated with
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`Ohsaki’s sensor. POR, 33-39. Indeed, a POSITA would have understood that a light
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`permeable convex cover would have provided improved adhesion as described by Ohsaki
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`in a sensor placed, for example, on the palm side of the wrist or other locations on the body.
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`APPLE-1014, [0025], Claim 3 (stating that “the detecting element is constructed to be worn
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`on a user’s wrist or a user’s forearm” without specifying a back or front of the wrist or
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`forearm), FIGS 4A, 4B; see also APPLE-1063, 91.
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`16.
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`A POSITA would also have understood that certain locations present anatomical
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`2 Nowhere in Ohsaki is the cover depicted or described as rectangular. APPLE-1014,
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`[0001]-[0030]; FIGS. 1, 2, 3A, 3B, 4A, 4B.
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`9
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`features that provide for easy measurement of large reflected light signals and other
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`locations present anatomical features that reduce the amplitude of the reflected light signals.
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`Because of this, a POSITA would be motivated to search for features from other references
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`that can provide improved adhesion, improved light gathering, reduced leakage of light
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`from external sources, and protection of the elements within the system in order to
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`successfully detect a pulse wave signal from many locations.
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`17.
`
`For these and other reasons explained below, Masimo’s arguments should be
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`rejected. The sections below address the arguments with respect to Ground 1 presented in
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`Masimo’s POR and explain, in more detail, why those arguments fail.
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`A. Ohsaki does not teach or require that its translucent board 8 is
`“rectangular” in shape
`In my first declaration, I explained that a POSITA would have modified Aizawa in
`
`18.
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`view of Ohsaki such that Aizawa’s cover “would include a convex surface, improving
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`adhesion between a subject’s wrist and a surface of the sensor.” APPLE-1003, ¶¶76-82
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`(citing APPLE 1009, [0025] Ohsaki explains that the “convex surface of the translucent
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`board 8” is responsible for this improved adhesion). Masimo argues that it is not the
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`“convex surface” that improves adhesion in Ohsaki, but instead the “longitudinal shape” of
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`“Ohsaki’s translucent board [8].” See POR, 12, 24-30 (citing APPLE-1014, [0019]).
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`However, the portion of Ohsaki cited does not include any reference to board 8. See
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`APPLE-1014, [0019]. Ohsaki does ascribe a “longitudinal” shape to a different
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`component: “detecting element 2.” See id. Ohsaki never describes the “translucent board
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`8” as “longitudinal,” and nowhere describes “translucent board 8” and “detecting element
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`10
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`2” as having the same shape. See generally APPLE-1014. In fact, as illustrated in Ohsaki’s
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`FIG. 2 (reproduced below), translucent board 8 (annotated yellow) is not coextensive with
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`the entire tissue-facing side of detecting element 2 (annotated green).
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`
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`APPLE-1014, FIG. 2 (annotated)
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`Based on the unsupported contention that translucent board 8 has a “very
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`19.
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`pronounced longitudinal directionality,” Masimo concludes that the translucent board 8 has
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`a “rectangular” shape that is allegedly incompatible with Aizawa. But Ohsaki never
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`describes translucent board 8, or any other component, as “rectangular”; in fact, the words
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`“rectangular” and “rectangle” do not appear in Ohsaki’s disclosure. See generally APPLE-
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`1014.
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`20.
`
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`Indeed, the POR incorrectly assumes that because Ohsaki’s light emitting element
`11
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`and the light receiving element are arranged in a longitudinal structure, Ohsaki’s translucent
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`board must have a rectangular structure. APPLE-1014, [0009], [0019]; POR, 16-17. Yet a
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`POSITA would have known and understood that an elliptical or circular sensor or board
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`configuration can also have a longitudinal structure or appearance under a cross-sectional
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`view. An example illustrating such an understanding, contrary to POR’s flawed
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`assumption, is shown below in US Patent No. 6,198,951 (“Kosuda”)’s FIGS. 3 and 4.
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`APPLE-1010, 8:42-56.
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`APPLE-1010, FIGS 3 and 4
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`
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`21.
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`Attempting to confirm its false conclusion, Masimo asserts that “Ohsaki illustrates
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`two cross-sectional views of its board that confirm it is rectangular.” POR, 16 (citing Ex.
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`2004, [36]-[39]). Masimo identifies these “two cross-sectional views” as FIGS. 1 and 2,
`12
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`

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`and infers the supposed “rectangular shape” of the translucent board 8 based on FIG. 1
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`showing the “short” side of the device, and FIG. 2 showing the “long” side of the same
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`device. See POR, 16-18. But, according to Ohsaki, FIG. 2 is “a schematic diagram,” not a
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`cross-sectional view, and Ohsaki never specifies that FIGS. 1 and 2 are different views of
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`the same device. APPLE-1014, [0013]. Accordingly, nothing in Ohsaki supports Masimo’s
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`inference that the “translucent board 8” must be “rectangular” in shape. See, e.g., APPLE-
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`1014, [0013], [0019], [0025], FIG. 2. Further, even if it is possible for the translucent board
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`8 to be “rectangular,” Ohsaki certainly does not teach nor include any disclosure
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`“requiring” this particular shape. Id.
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`22.
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`The POR presents multiple arguments with respect to Ground 1 that are premised on
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`Ohsaki requiring the translucent board 8 to be “rectangular.” Because Ohsaki discloses no
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`such shape for the translucent board 8, these arguments fail.
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`23.
`
`In addition, as discussed above, even if Ohsaki’s translucent board 8 were somehow
`
`understood to be rectangular, a POSITA would have been fully capable of modifying
`
`Aizawa to feature a light permeable protruding convex cover to obtain the benefits
`
`attributed to such a cover by Ohsaki. For example, a POSITA would have found it obvious
`
`to include a circular light-permeable convex cover based on the teachings of Ohsaki, and
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`take reasonable steps to make sure that the combination of a circular protruding convex
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`cover would function with the other features present in Aizawa so as to provide the benefits
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`discussed above.
`
`B. A POSITA would have recognized the benefits of Ohsaki’s
`teachings when applied to Aizawa’s sensor
`13
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`

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`24. Masimo contends that “Ohsaki indicates that its sensor’s convex board only
`
`improves adhesion when used on the back (i.e., watch) side of the wrist,” and that “Aizawa
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`requires its sensor be positioned on the palm side of the wrist,” and therefore reaches a
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`conclusion that “[a] POSITA seeking to improve adhesion of Aizawa’s sensor would not
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`incorporate a feature that only improves adhesion at a different and unsuitable measurement
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`location.” POR, 33. But Ohsaki does not describe that its sensor can only be used at a
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`backside of the wrist, and Aizawa never requires that its sensor be positioned on the palm
`
`side of the wrist. Instead, at most, these disclosures simply describe these arrangements
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`with respect to a preferred embodiment. APPLE-1014, [0019].
`
`25.
`
`Indeed, Ohsaki’s specification and claim language reinforce that Ohsaki’s
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`description would not have been understood as limited to one side of the wrist. For
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`example, Ohsaki explains that “the detecting element 2…may be worn on the back side of
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`the user's forearm” as one form of modification. See APPLE-1014, [0030], [0028]
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`(providing a section titled “[m]odifications”). The gap between the ulna and radius bones
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`at the forearm is even greater than the gap between bones at the wrist, which is already
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`wide enough to easily accommodate a range of sensor sizes and shapes, including circular
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`shapes. In addition, Ohsaki’s claim 1 states that “the detecting element is constructed to be
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`worn on a back side of a user’s wrist or a user’s forearm.” See also APPLE-1014, claims
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`1-2. As another example, Ohsaki’s independent claim 5 and dependent claim 6 state that
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`“the detecting element is constructed to be worn on a user’s wrist or a user’s forearm,”
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`without even mentioning a backside of the wrist or forearm. See also APPLE-1014,
`
`
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`14
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`

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`Claims 6-8. A POSITA would have understood this language to directly contradict
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`Masimo’s assertion that “[t]o obtain any benefit from Ohsaki’s board, the sensor must be
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`positioned on the backhand side of the wrist.” POR, 23. A POSITA would have
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`understood that Ohsaki’s benefits provide improvements when the sensor is placed on
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`either side of the user’s wrist or forearm. APPLE-1014, [0025], FIGS. 4A, 4B. And while
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`Masimo contends that Ohsaki teaches that a convex cover at the front (palm) side of the
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`wrist somehow increases the tendency to slip, this is an argument that is nowhere supported
`
`by Ohsaki. For instance, paragraph 23 and FIGS. 3A-3B of Ohsaki that Masimo points to
`
`as allegedly providing support for this incorrect argument mentions nothing about the
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`flat/convex nature of the cover and is instead merely demonstrating that pulse detection is
`
`generally less reliable when the user is in motion (and thus would benefit from changes
`
`such as adding a convex cover). APPLE-1014, [0024], FIGS. 4A, 4B.
`
`26.
`
`POR presents several arguments with respect to Ground 1 that are premised on
`
`Ohsaki requiring the detecting element to be worn on a back side of a user’s wrist or a
`
`user’s forearm. Because Ohsaki requires no such location for the translucent board 8, these
`
`arguments fail.
`
`27. Moreover, even assuming, for the sake of argument, that a POSITA would have
`
`understood Aizawa’s sensor as being limited to placement on the backside of the wrist, and
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`would have understood Ohsaki’s sensor’s “tendency to slip” when arranged on the front
`
`side as informing consideration of Ohsaki’s teachings with respect to Aizawa, that would
`
`have further motivated the POSITA to implement a light permeable convex cover in
`
`
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`15
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`

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`Aizawa’s sensor, to improve detection efficiency of that sensor when placed on the palm
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`side. APPLE-1014, [0015], [0017], [0023], [0025], FIGS. 1, 2, 3A, 3B, 4A, 4B.
`
`28. When describing advantages associated with its translucent board, Ohsaki explains
`
`with reference to FIGS. 4A and 4B (reproduced below) that “if the translucent board 8 has a
`
`flat surface, the detected pulse wave is adversely affected by the movement of the user’s
`
`wrist,” but that if the board “has a convex surface…variation of the amount of the reflected
`
`light…that reaches the light receiving element 7 is suppressed.” APPLE-1003, ¶¶78-79;
`
`APPLE-1014, [0015], [0017], [0025].
`
`APPLE-1014, FIGS. 4A, 4B
`
`
`
`29.
`
`Contrary to Masimo’s contentions, a POSITA would not have understood these
`
`benefits of a convex surface over a flat surface to be limited to one side or the other of the
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`user’s wrist, or to any particular location. APPLE-1014, [0023]-[0025]. Rather, a POSITA
`
`would have understood that, by promoting “intimate contact with the surface of the user’s
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`16
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`skin,” a light permeable convex cover would have increased adhesion and reduced slippage
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`of Aizawa’s sensor when placed on either side of a user’s wrist or forearm, and additionally
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`would have provided associated improvements in signal quality. APPLE-1014, [0015],
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`[0017], [0025]; FIGS. 1, 2, 4A, 4B, claims 3-8; see also APPLE-1063, 87, 91. Indeed, a
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`POSITA would have recognized that modifying Aizawa’s flat plate to feature a convex
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`protruding surface, as taught by Ohsaki, would have furthered Aizawa’s stated goal of
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`“improv[ing] adhesion between the sensor and the wrist” to “thereby further improve the
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`detection efficiency.” APPLE-1006, [0013], [0026], [0030], [0034].
`
`30.
`
`Further, the POSITA would have been fully capable of employing inferences and
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`creative steps when improving Aizawa based on Ohsaki’s teachings, and would have
`
`expected success when applying those teachings. Indeed, a POSITA would have
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`understood that adding a convex protrusion to Aizawa’s flat plate would have provided an
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`additional adhesive effect that would have reduced the tendency of that plate to slip.
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`Among other things, it is well understood that physically extending into the tissue and
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`displacing the tissue with a protrusion will provide an additional adhesive/gripping effect.
`
`C. Modifying Aizawa’s sensor to include a convex cover as taught by
`Ohsaki enhances the sensor’s light-gathering ability
`31. Masimo argues that the combined sensor “would direct light away from the
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`detectors and thus decrease light collection and optical signal strength.” See, e.g., POR, 46-
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`53. As explained below, a POSITA would have understood the opposite to be true—that a
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`cover featuring a convex protrusion would improve Aizawa’s signal-to-noise ratio by
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`causing more light backscattered from tissue to strike Aizawa’s photodetectors than would
`
`
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`17
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`have with a flat cover. APPLE-1063, 52, 86, 90; APPLE-1061, 84, 87-92, 135-141;
`
`APPLE-1017, 803-805; APPLE-1006, FIGS. 1(a)-1(b). The convex cover enhances the
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`light-gathering ability of Aizawa’s sensor.
`
`32. Masimo and its witness, Dr. Madisetti, assert that “a POSITA would have believed
`
`that a convex surface would…direct[] light away from the periphery and towards the center
`
`of the sensor.” In so doing, POR and Dr. Madisetti fail to articulate a coherent position—
`
`e.g., whether Masimo’s position is that “all” light or only “some” light is directed “to” or
`
`“towards the center.” POR, 24, 46-53, Ex. 2004, ¶¶86-97.
`
`33. For example, Dr. Madisetti testified during deposition in one of the various
`
`related cases to this patent that “as I describe in my Declaration...if you have a
`
`convex surface...all light reflected or otherwise would be condensed or directed
`
`towards the center.” APPLE-1054, 40:4-11; see also id., 127:22-128:18; Ex.
`
`2004, ¶87 (“A POSITA Would Have Understood That a Convex Cover Directs
`
`Light To The Center Of The Sensor”). However, during the same deposition, Dr.
`
`Madisetti further stated that that a convex cover would redirect light “towards the
`
`center,” which could be “a general area at which the convex surface would be
`
`redirecting…light” or “a point,” while contrasting the phrase “to the center” from
`
`“towards the center.” APPLE-1054, 105:12-107:1, 133:19-135:11.
`
`34.
`
`In contrast, and as explained in more detail below, I have consistently testified that a
`
`POSITA would have understood that a convex cover improves “light concentration at
`
`pretty much all of the locations under the curvature of the lens,” and for at least that
`
`
`
`18
`
`

`

`reason would have been motivated to modify Aizawa’s sensor to include a convex cover as
`
`taught by Ohsaki. Ex. 2006, 164:8-16.
`
`i. Masimo ignores the well-known principle of
`reversibility
`The well-known optical principle of reversibility dispels Masimo’s claim that “a
`
`35.
`
`convex cover condenses light towards the center of the sensor and away from the
`
`periphery,” when applied to Aizawa. POR, 46; APPLE-1061, 87-92; APPLE-1062, 106-
`
`111. According to the principle of reversibility, “a ray going from P to S will trace the
`
`same route as one from S to P.” APPLE-1061, 92, 84; APPLE-1062, 101, 110; APPLE-
`
`1053, 80:20-82:20. Importantly, the principle dictates that rays that are not completely
`
`absorbed by user tissue will propagate in a reversible manner. In other words, every ray
`
`that completes a path through tissue from an LED to a detector would trace an identical
`
`path through that tissue in reverse, if the positions of the LED emitting the ray and the
`
`receiving detector were swapped. APPLE-1061, 92. To help explain, I have annotated
`
`Inokawa’s FIG. 2 (presented below) to illustrate the principle of reversibility applied in the
`
`context of a reflective optical physiological monitor. As shown, Inokawa’s FIG. 2,
`
`illustrates two example ray paths from surrounding LEDs (green) to a central detector (red):
`
`
`APPLE-1008, FIG. 2 (annotated)
`
`As a consequence of the principle of reversibility, a POSITA would have
`
`19
`
`36.
`
`
`
`

`

`understood that if the LED/detector configuration were swapped, as in Aizawa, the two
`
`example rays would travel identical paths in reverse, from a central LED (red) to
`
`surrounding detectors (green). A POSITA would have understood that, for these rays, any
`
`condensing/directing/focusing benefit achieved by Inokawa’s cover (blue) under the
`
`original configuration would be identically achieved under the reversed configuration:
`
`
`APPLE-1008, FIG. 2 (annotated)
`
`
`37. When factoring in additional scattering that may occur when light is reflected within
`
`human tissue, reversibility holds for each of the rays that are not completely absorbed;
`
`consequently, “if we’re concerned with the impact of the lens on the system, it’s absolutely
`
`reversible.” APPLE-1059, 209:19-21, 207:9-209:21 (“one could look at any particular
`
`randomly scattered path…and the reversibility principle applies to all of the pieces [of that
`
`path] and, therefore, applies to the aggregate”).
`
`
`
`38.
`
`An example of reversibility in a situation with diffuse light, such as is present when
`
`LEDs illuminate tissue, is shown below from Hecht’s Figure 4.12.
`
`
`
`20
`
`

`

`
`
`39.
`
`In this figure 4.12a, collimated light is incident on a smooth surface, and exhibits
`
`specular reflection, in which parallel light rays encounter and are reflected from the surface
`
`and remain parallel. A POSITA would certainly understand specular reflection. In the case
`
`of the reflection as shown in Figure 4.12b, the random roughness of the surface scatters the
`
`incoming rays into many directions, and the resulting light would appear to be diffuse.
`
`However, even in this circumstance, the principle of reversibility applies–each individual
`
`ray can be reversed such that a ray travelling to the surface and scattered in a random
`
`direction can be followed backwards along exactly the same path.
`
`40.
`
`In more detail, and as shown with respect to the example paths illustrated below
`
`(which include scattering within tissue), each of the countless photons travelling through
`
`the system must abide by Fermat’s principle. APPLE-1062, 106-111. Consequently, even
`
`when accounting for various random redirections and partial absorptions, each photon
`
`traveling between a detector and an LED would take the quickest (and identical) path along
`
`the segments between each scattering event, even if the positions of the detector and LED
`
`were swapped.
`
`
`
`
`
`21
`
`

`

`
`
`
`
`To better understand the effect of a convex lens on the propagation of light rays
`
`41.
`
`towards or away from the different LEDs or detectors, the first and last segment of the light
`
`path may be representative of the light propagation of the various light rays. In the figures
`
`above, starting at the upper left, there is a pink-colored light ray emerging from the green
`
`LED and passing through the convex lens and entering the tissue. On the lower left, there
`
`is a pink-colored light ray leaving the tissue and entering the convex lens. As drawn, these
`
`rays are the same in position and orientation, except that the direction is exactly reversed.
`
`This illustration is consistent with the Principle of Reversibility as applied to this pair of
`
`possible light rays. According to the principle of reversibility, the upper light path from the
`
`LED to the first interaction with a corpuscle is exactly reversed. This same behavioral
`
`pattern applies to all of the segments of the many light paths that cross the interface at the
`
`surface of the convex lens. Importantly, in this example, the convex lens does not refract
`
`the incoming ray in a different direction from the outgoing ray, e.g., in a direction towards
`
`the center different from the outgoing ray. As required by the principle of reversibility, this
`
`incoming ray follows the same path as the outgoing ray, except in the reverse direction.
`
`
`
`22
`
`

`

`This statement is true for every segment of these light paths that crosses the interface
`
`between the tissue and the convex lens. Any ray of light that successfully traverses a path
`
`from the LED to the detector, that path already accounts for the random scattering as that
`
`scattering is what allowed the ray to go from the LED to a detector along the path to
`
`thereby be subsequently detected by the detector. A POSITA would have understood that
`
`the path is an aggregation of multiple segments and that the path is reversible as each of its
`
`segments would be reversible, consistent with Fermat’s principle.
`
`42.
`
`The statement about the reversibility of the segments of the light path which cross
`
`the interface between tissue and convex lens is co

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