`
`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
`Email: AppleIPR2020-1737-366@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01737
`U.S. Patent 10,709,366
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO REPLY
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION .................................................................................... 1
`
`II. ARGUMENT ............................................................................................ 3
`
`A. Ground 1 ......................................................................................... 3
`
`1.
`
`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 Regarding
`Ohsaki 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 ................................................................. 19
`
`A Convex Cover Would Be More Prone To Scratches ..... 22
`
`Two Sets of Parallel-Linked Detectors Would Not
`Have Been Obvious ........................................................... 23
`
`2.
`
`3.
`
`4.
`
`5.
`
`B. Ground 2 ....................................................................................... 29
`
`III. CONCLUSION ....................................................................................... 30
`
`-i-
`
`
`
`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
`
`
`
`
`
`-ii-
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`IPR2020-01737 – Patent 10,709,366
`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. 28-29. 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”) 22-32. 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 33-
`
`45. 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 13-20. 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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`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 45-53. 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 53-54. Petitioner now argues “multiple advantages” would “outweigh any
`
`alleged possibility of scratching.” Reply 31. 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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`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. 28-
`
`29.1
`
`Ohsaki Fig. 1 (left) & Fig. 2 (right) (annotated, POR 12)
`
`1 All emphasis is added unless otherwise noted.
`
`
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`-3-
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`Petitioner’s proposed combination places the lens/protrusion over Aizawa’s
`
`circular sensor. Pet. 29 (below).
`
`
`
`
`
`Petitioner’s combination (Pet. 24, 29); see also Pet. 60-61; Reply 11-12
`
`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, 24-30.
`
`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. 28.
`
`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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`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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`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]. Regardless, 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 conflicts with Ohsaki’s explanation of why its
`
`sensor’s longitudinal shape and placement are important. Ohsaki teaches 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. As illustrated below, 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 25-26.
`
`-6-
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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 25-28.
`
`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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`IPR2020-01737 – Patent 10,709,366
`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
`
`regarding Ohsaki’s
`
`Petitioner’s Additional Arguments Regarding Ohsaki Are
`Unpersuasive
`additional
`arguments
`
`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 to a POSITA. Ohsaki teaches that its
`
`longitudinal shape is necessary to prevent slipping, directly 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 24-30. 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 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 POSITA
`
`
`2 Dr. Kenny admitted a POSITA would have considered anatomical details.
`
`Ex. 2027 248:18-249:6, 254:17-255:11; Ex. 1060 ¶25.
`
`-8-
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`Apple v. Masimo
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`would not have been motivated to use a longitudinally shaped board in Petitioner’s
`
`proposed circular combination. POR 16-18, 24-32.
`
`Third, Petitioner retreats to generic “inferences and creative steps” to allege
`
`obviousness without identifying what those inferences and creative steps might be
`
`or how they would yield any benefit. Reply 11, 19-20. 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 24-30. Petitioner never
`
`explains how a POSITA’s “creativity” would prevent a circular convex surface
`
`from slipping on the wrist’s palm-side. 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).
`
`-9-
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`Apple v. Masimo
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`Fifth, Petitioner claims Masimo argued that adhesion is improved by “a
`
`supposed ‘longitudinal shape’ of ‘Ohsaki’s translucent board’.” Reply 13. In
`
`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, 24-30. 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
`
`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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`convex surface) will negatively interact with the radius and ulna, resulting in
`
`slipping. POR 26-28; Ex. 2004 ¶¶56-58.
`
`
`
`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 regarding
`
`the shape and orientation of Ohsaki’s board 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 16-19. But Ohsaki teaches the opposite: small
`
`changes in the measurement location, including from the wrist’s watch-side to the
`
`-11-
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`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
`
`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 13-14, 22-23, 33-39. Aizawa
`
`repeatedly teaches a flat surface improves adhesion on the wrist’s palm-side. POR
`
`33-39; 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 33-35; Ex. 2004
`
`¶¶68-85; Ex. 1014 ¶[0023], Figs. 3A-3B.4
`
`Indeed, Petitioner acknowledges Aizawa’s palm-side measurement
`
`requirement. Reply 18. But 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.
`
`Id. But a tendency to slip is the opposite of Petitioner’s “improved adhesion”
`
`motivation. POR 33-35. 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.
`
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`Petitioner asserts “a POSITA would have understood that 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, 42;
`
`Ex. 2004 ¶¶55-60, 81. Petitioner also points to Ohsaki’s claim 5 and states that the
`
`claim does not mention “a backside of the wrist or forearm.” Reply 17. 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.5 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 18-19. 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.
`
`5 Ohsaki’s other claims also support Masimo’s position. See Ex. 1014
`
`Claims 1, 2 (convex surface used on the back side of the wrist or forearm), 6
`
`(depending from claim 5) (longitudinal shape and orientation).
`
`-13-
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`1014 ¶[0023], Figs. 3A-3B. In contrast, Aizawa teaches a flat surface improves
`
`adhesion on the wrist’s palm-side. Ex. 1006 ¶[0013].
`
`Finally, Petitioner cites generic “inferences and creative steps” and argues
`
`that “adding a convex protrusion to Aizawa’s flat plate would provide an
`
`additional adhesive effect that would reduce the tendency of that plate to slip.”
`
`Reply 20. Petitioner again does not explain the “creative steps” a POSITA might
`
`take. “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 45-53. 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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`Petitioner’s Illustration, IPR2020-01520 (Ex. 2019 at 45)
`
`Dr. Kenny confirmed that when light enters a convex surface, “the incoming light
`
`is ‘condensed’ toward the center.” Ex. 2020 at 69-70. Dr. Kenny also confirmed
`
`that the convex surface would cause “more light in the center than at the outer
`
`edge in this example.” Ex. 2006 204:1-13. Dr. Kenny agreed, “that’s because
`
`light’s being directed towards the center and away from the edge….” Id. 204:14-
`
`20; Ex. 2004 ¶¶87-88.
`
`None of Petitioner’s reply arguments overcome these admissions. Instead,
`
`Petitioner argues that a “pattern of incoming light cannot be focused by a convex
`
`lens towards any single location,” suggesting that Masimo’s position is that a
`
`convex cover somehow focuses all light at a central point. Reply 29; see also id.
`
`(“focusing light to a single central point”), 25 (“cannot focus all incoming light
`
`toward the sensor’s center”). But Masimo never argued that all incoming light
`
`condenses to a single point. Instead, Masimo explained that a convex surface
`
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`would direct relatively more light towards the center and away from Aizawa’s
`
`peripheral detectors. POR 46-48; Ex. 2004 ¶¶90, 93.
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`b)
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`The Principle Of Reversibility Is Irrelevant To Petitioner’s
`Proposed Combination
`Petitioner tries to avoid its admissions with a new theory based on the
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`“principle of reversibility.” Reply 22. As support, Petitioner quotes a stray
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`statement from Aizawa that the “same effect can be obtained when…a plurality of
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`light emitting diodes 21 are disposed around the photodetector 22.” Id. 25 (quoting
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`Ex. 1006 ¶[0033]). However, Petitioner’s cited paragraph does not even discuss
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`optics. Moreover, Petitioner points to nothing in its initial papers raising the
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`principle of reversibility. Id. 22-25. Petitioner’s new theory is improper, denying
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`Masimo the opportunity to respond with expert testimony.
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`Petitioner’s new theory is also irrelevant. Petitioner argues the path of a
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`reflected light ray would trace an identical route forward and backward. Reply 22-
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`23. This argument assumes conditions that are not present when tissue scatters and
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`absorbs light. Even Petitioner admits that tissue randomly scatters and absorbs
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`light rays, which would cause forward and reverse light paths to be unpredictable
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`and very likely different. See id. 25 (reflectance-type sensors measure “random”
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`light that was “reflected, transmitted, absorbed, and scattered by the skin and other
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`tissues and the blood before it reaches the detector”); Ex. 2027 188:6-17, 29:11-
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`-16-
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`30:7, 31:8-32:3, 38:17-42:6. Petitioner never explains how the principle of
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`reversibility could apply to such “random” scattered and absorbed light.
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`Indeed, Dr. Kenny testified that “light backscattered from the tissue can go
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`in a large number of possible directions, not any single precise direction.” Ex.
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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
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`potentially different interaction with the tissue and it would be scattered,
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`potentially, in a different direction than the photon arriving before and after it.”).
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`In contrast, the principle of reversibility provides that “a ray going from P to S [in
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`one direction] will trace the same route as one going from S to P [the opposite
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`direction]” assuming there is no absorption or scattering. Ex. 1061 at 51
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`(illustrating diffuse reflection), 53 (defining principle of reversibility), 207
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`(principle of reversibility requires no absorption). Dr. Kenny also testified that the
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`principle of reversibly applies to a light ray between two points and admitted it
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`does not apply to randomly scattered light in bulk. Ex. 2027 207:9-208:22. In that
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`circumstance, Dr. Kenny merely testified that light “can go” or “could go” along
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`the same path. Id. 207:17-209:21, 210:8-211:6. That hardly supports Petitioner’s
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`argument that light will necessarily travel the same paths regardless of whether the
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`LEDs and detectors are reversed.
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`Apple v. Masimo
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`Petitioner accordingly misapplies the principle of reversibility to the
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`proposed combination. The principle of reversibility does not even address the
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`relevant issue: whether changing Aizawa’s flat surface to a convex surface results
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`in more light on Aizawa’s peripherally located detectors. See Ex. 2027 212:3-14.
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`Petitioner attempts to use the theory of reversibility to argue that one could simply
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`reverse the LEDs and detectors and obtain the same benefit from a convex surface.
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`Reply 22-23. Petitioner illustrates this argument with yet another new theory of
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`“aggregate” reversibility, which stiches together different rays produced from
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`different random scattering events. Id. 24. Petitioner’s aggregate ray theory does
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`not address the question of how a change from a flat to convex surface would
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`redirect more light towards the center and away from peripheral detectors. As
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`Petitioner previously illustrated, a convex surface redirects incoming light towards
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`the center as compared to a flat surface. Ex. 2019 at 45.
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`Petitioner’s Illustration, IPR2020-01520 (Ex. 2019 at 45)
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`The principle of reversibility does not indicate that one could reverse sensor
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`components and still obtain the same benefit from a convex—as opposed to a
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`flat—surface. As Dr. Kenny testified, the benefit of a convex surface would not be
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`“obvious” if one moves the “LEDs and detectors around….” Ex. 2006 86:19-87:6.
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`c)
`Petitioner’s Other New Theories Are Similarly Misplaced
`Petitioner next argues that Masimo “ignores the behavior of scattered light in
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`a reflectance-type pulse sensor.” Reply 25. Not so. Masimo’s arguments directly
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`address a reflectance-type pulse sensor, and Masimo cited Petitioner’s and Dr.
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`Kenny’s admissions about how a convex surface redirects incoming light. POR
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`45-53. Petitioner then raises a series of new arguments against a position that
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`Masimo never took—that a convex surface focuses all light to a single point.
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`Reply 25-29. None of Petitioner’s arguments demonstrate a POSITA would have
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`been motivated to change Aizawa’s flat surface to a convex surface to improve
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`signal strength.
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`First, Petitioner asserts that “Ohsaki’s convex cover provides a slight
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`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
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`include a
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`lens/protrusion…similar
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`to
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`Ohsaki’s” to “improve detection efficiency.” Id. 8 (citing Ex. 1003 ¶¶79-84). This
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`new “slight refracting effect” argument trivializes Petitioner’s proposed motivation
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`-19-
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`Apple v. Masimo
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`and conflicts with its prior admissions that “the incoming light is ‘condensed’
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`toward the center” (Ex. 2020 at 69-70).
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`Even if the theory had merit, however, it would be unavailing because it fails
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`to consider the greater decrease in light at the detectors due to light redirection to a
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`more central location. See Ex. 2027 19:16-21:8. As Dr. Kenny confirmed, the
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`circle of backscattered light’s intensity “decreases with the square of the distance”
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`between the central emitter and peripheral detectors. Ex. 2027 49:17-50:13, 57:10-
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`22; see also Ex. 1015 at 2 (“The intensity of the backscattered light decreases in
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`direct proportion to the square of the distance between the photodetector and the
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`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
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`loss of signal strength when light is redirected away from the detectors and towards
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`a more central position. See id.
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`Second, Petitioner attempts to distinguish Figure 14B in Masimo’s patent as
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`showing the impact of a convex surface on collimated light instead of diffuse
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`backscattered light. Reply 27-30. But Masimo’s patent makes no such distinction.
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`See POR 47-48. Moreover, Dr. Kenny admitted “one of ordinary skill in the art
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`would expect a diffuse light source encountering a convex lens of the sort that
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`we’re contemplating today, would lead to convergence of the light on the opposite
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`side of the lens, in general” and that there would be “a convergence of most of the
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`light rays.” Ex. 2007 423:7-424:18.
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`Third, Petitioner argues Inokawa and Ohsaki “demonstrate the use of
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`covers/lenses featuring convex surfaces to direct light to non-centrally located
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`detectors.” Reply 29-30 (emphasis omitted). But the Inokawa illustration cited by
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`Petitioner shows direct data transfer, not physiological measurements reflected
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`from tissue.
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` See Ex. 1008 ¶[0100], Figs. 15 (showing convex/concave
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`arrangement), 17 (showing flat cover with lens above emitter). Inokawa’s other
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`data-transfer embodiments illustrate improved methods for data transfer involving
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`a “flush” fit. Id. Ohsaki does not teach that its arrangement redirects light towards
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`the detector, and instead discusses slipping. See Ex. 1014 ¶¶[0019], [0023]-[0025].
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`Moreover, Ohsaki’s sensor includes only a single emitter and detector positioned
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`side-by-side, unlike Aizawa’s central emitter/peripheral detector arrangement. Ex.
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`1014 Fig. 2; Ex. 1006 ¶[0009] (requiring “at least three photodetectors disposed
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`around the light emitting diode and not linearly”).
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`Moreover, while Petitioner asserts numerous new and complex optical
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`theories, Petitioner never explains why or how a POSITA would have known or
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`considered those theories, much less arrived at Masimo’s claims. Petitioner never
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`disputes that its level of skill (1) requires no coursework, training, or experience
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`with optics or