Filed August 27, 2021
`
`
`On behalf of Patent Owner Masimo Corporation
`By:
`Joseph R. Re (Reg. No. 31,291)
`Jarom D. Kesler (Reg. No. 57,046)
`Stephen W. Larson (Reg. No. 69,133)
`Jacob L. Peterson (Reg. No. 65,096)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (949) 760-9502
`Ph.: (949) 760-0404
`E-mail: AppleIPR2021-0193-708@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`IPR2021-00193
`Patent 10,299,708
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`On behalf of Patent Owner Masimo Corporation
`By:
`Joseph R. Re (Reg. No. 31,291)
`Jarom D. Kesler (Reg. No. 57,046)
`Stephen W. Larson (Reg. No. 69,133)
`Jacob L. Peterson (Reg. No. 65,096)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (949) 760-9502
`Ph.: (949) 760-0404
`E-mail: AppleIPR2021-0193-708@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`IPR2021-00193
`Patent 10,299,708
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION .................................................................................... 1
`
`II. MASIMO’S PIONEERING TECHNOLOGY ......................................... 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`The ’708 Patent .............................................................................. 4
`
`Introduction To Independent Claims ............................................. 6
`
`The ’708 Patent Prosecution .......................................................... 7
`
`Petitioner’s Challenge To Priority Date Of Claimed
`Subject Matter ................................................................................ 7
`
`III. THE PETITION’S PROPOSED COMBINATIONS ............................... 8
`
`IV. CLAIM CONSTRUCTION ..................................................................... 9
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 9
`
`VI. LEGAL STANDARD ............................................................................ 10
`
`VII. GROUNDS 1A-1F DO NOT ESTABLISH OBVIOUSNESS .............. 11
`
`A.
`
`Introduction To Ground 1A .......................................................... 11
`
`1.
`
`2.
`
`3.
`
`Aizawa Uses Peripheral Detectors Around A Single
`Centrally Located LED ...................................................... 11
`
`Inokawa Uses Peripheral LEDs Around A Single
`Centrally Located Detector ................................................ 12
`
`Petitioner’s Proposed Combination Of Aizawa
`And Inokawa ...................................................................... 13
`
`B. Ground 1A Does Not Establish Obviousness Because A
`POSITA Would Not Have Been Motivated To Combine
`Inokawa’s Lens With Aizawa’s Sensor As Proposed In
`Ground 1A .................................................................................... 15
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`1.
`
`2.
`
`3.
`
`4.
`
`Petitioner Admits Inokawa’s Lens Directs Light To
`The Center Of The Sensor ................................................. 15
`
`A POSITA Would Not Have Been Motivated To
`Direct Light Away From Aizawa’s Detectors And
`Would Have No Reasonable Expectation Of Success
`When Doing So .................................................................. 19
`
`Dr. Kenny’s New Opinions Are Improper, Contradict
`His Declaration And Undermine Petitioner’s
`Obviousness Challenge ...................................................... 22
`
`Petitioner’s Obviousness Challenge Also Improperly
`Relies On References Not Identified As Part Of
`Ground 1A Without An Articulated Motivation To
`Combine Or Expectation Of Success ................................. 32
`
`C.
`
`The Remaining Challenged Dependent Claims Are
`Nonobvious Over Ground 1A ...................................................... 35
`
`D. Ground 1B Fails For The Same Reason As Ground 1A And
`For Additional Reasons ................................................................ 35
`
`1.
`
`2.
`
`Ohsaki Does Not Fix The Problems With Petitioner’s
`Proposed Combination ....................................................... 36
`
`A POSITA Would Have Understood That Ohsaki’s
`Board Would Not Prevent Slippage With Aizawa’s
`Sensor ................................................................................. 37
`
`E.
`
`The Challenged Dependent Claims Are Nonobvious Over
`Ground 1B .................................................................................... 39
`
`F.
`
`Grounds 1C-1F Fail For The Same Reasons As Ground 1A ....... 39
`
`
`
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`VIII. GROUNDS 2A-2C DO NOT ESTABLISH OBVIOUSNESS .............. 39
`
`A.
`
`Introduction To Ground 2A .......................................................... 39
`
`1. Mendelson-1988 Uses Detectors Around Centrally
`Located LEDs .................................................................... 40
`
`2.
`
`Petitioner’s Proposed Combination Of Mendelson-
`1988 And Inokawa ............................................................. 40
`
`B. Ground 2A Does Not Establish Obviousness .............................. 42
`
`1.
`
`2.
`
`There Would Have Been No Motivation To Combine
`And No Reasonable Expectation Of Success .................... 42
`
`Petitioner’s Proposed Ground 2A Combination Does
`Not Include The Claimed Cover ........................................ 45
`
`3. Mendelson-1988 And Inokawa Do Not Have A
`“Cylindrical Housing” With A “Light Permeable
`Cover” (Claim 3) ................................................................ 48
`
`4.
`
`The Petition Improperly Relies On References Not
`Identified As Part Of Ground 2A With No Analysis
`Of Any Motivation To Combine........................................ 50
`
`C.
`
`The Challenged Dependent Claims Are Nonobvious Over
`Ground 2A .................................................................................... 52
`
`D. Grounds 2B-2C Fail For The Same Reason As Ground 2A ........ 52
`
`IX. CONCLUSION ....................................................................................... 53
`
`
`
`
`
`-iii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ................................................................... 10
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ................................................................... 10
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ....................................................... 35, 39, 52
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ..................................................................... 10
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ................................................................... 33
`
`InTouch Techs., Inc. v. VGo Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ................................................................... 49
`
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ................................................................... 51
`
`Kennametal, Inc. v. Ingersoll Cutting Tool Co.,
`780 F.3d 1376 (Fed. Cir. 2015) ................................................................... 39
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ................................................................... 10
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ................................................................... 11
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ................................................................... 11
`
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ......................................................... 27, 28, 29
`
`-iv-
`
`
`
`TABLE OF AUTHORITIES
`(Cont’d)
`
`Page No(s).
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..................................................... 9
`
`In re Royka,
`490 F.2d 981 (C.C.P.A. 1974) ..................................................................... 10
`
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ................................................................... 10
`
`In re Stepan Co.
`868 F.3d 1342 (Fed. Cir. 2017) ................................................................... 31
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 312 ........................................................................................... 34, 36
`
`37 C.F.R. § 42.100 .............................................................................................. 9
`
`37 C.F.R. §42.104 ............................................................................................. 36
`
`
`
`
`
`
`
`
`
`-v-
`
`
`
`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
`
`I.
`
`INTRODUCTION
`
`Petitioner’s combinations suffer from the same fundamental flaw. Petitioner
`
`seeks to add a convex lens taught by Inokawa to sensor configurations taught by
`
`either Aizawa or Mendeslson-1988 to improve “light collection efficiency.” But
`
`Inokawa increases light collection efficiency by using a convex lens to condense
`
`light to a centrally located detector:
`
`Emitter
`
`Detector
`
`Emitter
`
`Lens
`Inokawa Fig. 2 (color added)
`
`
`
`In contrast, both Aizawa and Mendelson-1988 have peripherally located detectors:
`
`Emitter
`
`
`
`Plate
`
`
`
`
`
`
`
`Detector
`Detector
` Aizawa Fig. 1B
`
` (color added)
`
`
`
`
`
`
`
`
`Detector
`Emitters
`Detector
`
` Mendelson-1988 Fig. 2B
` (color added)
`
`Adding Inokawa’s convex lens to Aizawa and Mendelson-1988 as proposed by
`
`Petitioner would direct light away from the detectors. That would decrease light
`
`collection efficiency and seriously undermine the operation of Aizawa and
`
`1
`
`
`
`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
`
`Mendelson-1988’s sensors. A person of ordinary skill in the art (POSITA) would
`
`not be motivated to make Petitioner’s erroneous combinations:
`
`
` Ground One Combination Ground Two Combination
`
`
`
`
`
`Petitioner overlooks this fundamental deficiency. Nowhere does Petitioner explain
`
`why a POSITA would diminish the performance of the Aizawa and Mendelson-
`
`1988 sensors by directing light away from their detectors.
`
`Petitioner’s declarant, Dr. Kenny, confirmed at his deposition for related IPRs
`
`that Inokawa’s convex lens would indeed direct light toward the center of the
`
`underlying structure. See, e.g., Ex. 2006 202:11-204:20. Confronted with this
`
`critical flaw, Dr. Kenny resorted to contradicting his previous opinions and
`
`improperly asserting new opinions. For example, Dr. Kenny attempted to downplay
`
`the importance of light collection, identifying it as merely one consideration. Ex.
`
`2006 108:21-109:14. Dr. Kenny even argued a POSITA might want to decrease
`
`light collection. Id. But that contradicts Dr. Kenny’s declaration and the Petition’s
`
`only stated motivation to combine. Id; Ex. 1003 ¶87. Dr. Kenny also jettisoned his
`
`own illustration of the proposed combinations, claiming he had not intended to
`
`illustrate a particular structure in any detail. Ex. 2006 51:14-52:16. Dr. Kenny
`
`2
`
`
`
`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
`
`instead argued the optics of a sensor are complicated and that a POSITA would
`
`arrive at a particular design through “trial and error [by] trying out different shapes,
`
`different detector positions, different spacings and so on.”1 Ex. 2006 189:11-190:13.
`
`None of Dr. Kenny’s new and improper opinions can fix the fundamental flaw
`
`in Petitioner’s combinations. Indeed, if anything, Dr. Kenny’s new arguments
`
`underscore the complexity of combining different physiological sensor designs.
`
`Such complexity alone undermines Petitioner’s obviousness arguments. In fact, Dr.
`
`Kenny testified Inokawa’s purported benefit would not be clear when used with a
`
`different configuration of emitters and detectors:
`
`I think one of ordinary skill in the art would understand
`that in Inokawa[,] the objective is to concentrate light at
`the detector, which is in the center axis of the drawing
`and that the lens is capable of providing that benefit. If
`we're going to move the lenses and the LEDs and detectors
`around and ask different questions, it’s -- it isn’t so obvious
`that Inokawa is specifically considering those scenarios.
`It’s a little more hypothetical.
`
`Ex. 2006 86:19-87:6. Dr. Kenny is correct. “[I]t isn’t so obvious” that Inokawa’s
`
`convex lens would improve “light collection efficiency” of the peripheral detector
`
`arrangement of Aizawa or Mendelson-1988. To the contrary, a POSITA would have
`
`
`1 Emphasis supplied unless otherwise noted.
`
`3
`
`
`
`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
`
`believed that Inokawa’s convex lens would direct light away from such peripherally
`
`located detectors.
`
`Petitioner’s obviousness challenge also suffers from many additional flaws,
`
`as explained in detail below. The Board should affirm the patentability of all the
`
`challenged claims.
`
`II. MASIMO’S PIONEERING TECHNOLOGY
`
`Masimo is a global medical device technology company that develops and
`
`manufactures innovative patient monitoring technologies, medical devices, and a
`
`wide array of sensors. Inventor Joe Kiani founded Masimo in 1989 as a garage start-
`
`up that revolutionized noninvasive monitoring. Today, Masimo is publicly traded
`
`and employs over 6,300 people worldwide, with annual revenues of over $1.1
`
`billion. A host of manufacturers use Masimo’s technology in their devices,
`
`including Philips, Atom, Mindray North America, GE Medical, Spacelabs, and Zoll.
`
`A. The ’708 Patent
`
`Masimo’s U.S. Patent No. 10,299,708 (the “’708 Patent”) discloses and
`
`claims a noninvasive optical physiological sensing system that uses a novel design
`
`to improve detection efficiency. Masimo’s claimed physiological sensing system
`
`uses multiple detectors and a light permeable cover that together dramatically
`
`enhance the sensor’s or device’s effectiveness. For example, a protruding surface
`
`of the light permeable cover thins out the measurement site, resulting in less light
`
`4
`
`
`
`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
`
`attenuation by the measured tissue. Ex. 1001 7:38-41. The protruding surface
`
`further increases the area from which attenuated light can be measured. Ex. 1001
`
`7:41-43. The multiple detectors allow for an averaging of measurements that can
`
`reduce errors due to variations in the path of light passing through the tissue. Ex.
`
`1001 9:7-12; see also id. 3:6-16, 4:8-18. The inventors discovered that these
`
`different components work together to provide greater noise cancellation and an
`
`order of magnitude increase in signal strength. Ex. 1001 9:7-12, 20:4-20; see also
`
`id. 3:6-16, 4:8-18.
`
`The Examiner agreed during prosecution that the claimed combination of
`
`features—including multiple detectors in conjunction with the claimed light
`
`permeable cover—provided a patentable advance unique in the field. Ex. 1002 at
`
`258-259. Petitioner’s references do not differ significantly from the prior art the
`
`Examiner already considered and found does not teach or suggest the claimed
`
`invention. None of Petitioner’s references disclose a protruding light permeable
`
`cover positioned over multiple detectors as claimed (let alone combined with the
`
`other claimed features).
`
`5
`
`
`
`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
`
`B.
`
`Introduction To Independent Claims
`
`The ’708 Patent has two independent claims: claims 1 and 19.2 Each claims
`
`a noninvasive optical physiological sensing system that includes, among other
`
`things, (1) at least four detectors and (2) either a protruding light permeable cover or
`
`a light permeable cover protruding above a raised wall of a housing.
`
`Claim 1 illustrates the many interacting features described in the ’708 Patent.
`
`Claim 1 reads:
`
`1. A noninvasive optical physiological sensing system
`
`comprising:
`
`a platform including a planar surface;
`
`a housing including a raised edge portion extending from and
`
`enclosing at least a portion of the planar surface;
`
`at least four detectors arranged on the planar surface of the
`
`platform and within the housing, wherein the at least four detectors
`
`are arranged in a grid pattern such that a first detector and a second
`
`detector are arranged across from each other on opposite sides of a
`
`central point along a first axis, and a third detector and a fourth detector
`
`
`2 Appendix A reproduces the challenged claims with bracketed labels for
`
`convenience.
`
`6
`
`
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`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
`
`are arranged across from each other on opposite sides of the central
`
`point along a second axis which is perpendicular to the first axis; and
`
`the housing including a protruding light permeable cover.
`
`C. The ’708 Patent Prosecution
`
`During prosecution, the Examiner agreed that the claimed combination of
`
`features—including multiple detectors in conjunction with the claimed light
`
`permeable cover—provided a patentable advance unique in the field. Ex. 1002 at
`
`258-259. The Examiner understood that the prior art included physiological sensors
`
`with multiple detectors. Id. The Examiner also understood that the prior art included
`
`physiological sensors with a single detector under a protrusion. Id. However, the
`
`Examiner concluded that the prior art did not suggest creating a physiological sensor
`
`using multiple detectors positioned under a light permeable cover as claimed, in
`
`combination with the other claimed elements. Id. The Examiner recognized the
`
`technological advance of the claimed invention and correctly allowed the claims.
`
`D.
`
`Petitioner’s Challenge To Priority Date Of Claimed Subject Matter
`
`The ’708 Patent claims priority to multiple provisional applications, including
`
`two provisional applications filed on July 3, 2008. Ex. 1001 at 2, Item (60) Related
`
`U.S. Application Data. Petitioner asserts that “the Challenged Claims are not
`
`entitled to the 07/03/2008 priority date” and that “the earliest effective priority date
`
`for the Challenged Claims cannot be before 07/02/2009.” Pet. 2.
`
`7
`
`
`
`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
`
`Petitioner’s assertion is irrelevant and incorrect. First, Apple has identified
`
`no relevant reference that would be disqualified based on the priority date for the
`
`claim subject matter. Second, Petitioner provides no expert testimony on the issue
`
`of priority or corresponding support under 35 U.S.C. § 112. Ex. 1003 ¶16. Third,
`
`at least U.S. Patent Application No. 61/078207, to which the ’708 Patent claims
`
`priority, provides support for Petitioner’s identified claim features. Ex. 1001 at 2,
`
`Item (60) Related U.S. Application Data. For instance, Figures 1, 2A-2D, and 3A-
`
`3D and the corresponding disclosure (e.g., ¶¶30-31, 44, 61, 63-64, 68) of U.S. Patent
`
`Application No. 61/078207 provide such support. Thus, the challenged claims are
`
`entitled to a priority date of at least July 3, 2008.
`
`III. THE PETITION’S PROPOSED COMBINATIONS
`
`Petitioner presents nine grounds. Grounds 1A-1F (the “Aizawa grounds”)
`
`combine at least Aizawa (Ex. 1006) and Inokawa (Ex. 1007, translation at Ex. 1008).
`
`Pet. 1-2. Grounds 2A-2C (the “Mendelson grounds”) combine at least Mendelson-
`
`1988 (Ex. 1015) and the same Inokawa reference. Pet. 2.
`
`Aizawa and Mendelson-1988 share the same general arrangement of
`
`peripheral detectors positioned around a central light source. Ex. 1006 Figs. 1A-1B;
`
`Ex. 1015 Figs. 2A-2B. In contrast, Inokawa arranges two LEDs on the periphery of
`
`its sensor and one detector in the center. Ex. 1008 Fig. 2. Petitioner nevertheless
`
`asserts a POSITA would have incorporated Inokawa’s lens into Aizawa and
`
`8
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`
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`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
`
`Mendelson-1988’s sensor, which both have periphery-located detectors, to “increase
`
`the light-gathering ability.” Pet. 13-14, 65.
`
`IV. CLAIM CONSTRUCTION
`
`Petitioner identifies no terms for construction. The Board should give the
`
`claim terms their ordinary and customary meaning, consistent with the specification,
`
`as a POSITA would understand them. 37 C.F.R. § 42.100(b); Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner asserts a POSITA “would have been a person with a working
`
`knowledge of physiological monitoring technologies. The person would have had a
`
`Bachelor of Science degree in an academic discipline emphasizing the design of
`
`electrical, computer, or software technologies, in combination with training or at
`
`least one to two years of related work experience with capture and processing of data
`
`or information, including but not limited to physiological monitoring technologies.”
`
`Pet. 4-5. Alternatively, Petitioner asserts a POSITA could have “a Master of Science
`
`degree in a relevant academic discipline with less than a year of related work
`
`experience in the same discipline.” Id. 5.
`
`Masimo notes that Petitioner’s asserted level of skill (1) requires no
`
`coursework, training or experience with optics or optical physiological monitors; (2)
`
`requires no coursework, training or experience in physiology; and (3) focuses on
`
`9
`
`
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`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
`
`data processing and not sensor design. Id. 4-5. For this proceeding, Masimo
`
`nonetheless applies Petitioner’s asserted level of skill. Ex. 2004 ¶¶35-38.
`
`VI. LEGAL STANDARD
`
`A petition based on “obviousness requires a suggestion of all limitations in a
`
`claim.” CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
`
`(citing In re Royka, 490 F.2d 981, 985 (C.C.P.A. 1974)). A patent claim is not
`
`obvious unless “a skilled artisan would have been motivated to combine the
`
`teachings of the prior art references to achieve the claimed invention, and that the
`
`skilled artisan would have had a reasonable expectation of success in doing so.”
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed.
`
`Cir. 2012) (citations omitted). To prevail on any obviousness ground, a petitioner
`
`may not simply identify individual claim components—it must show why a “skilled
`
`artisan, with no knowledge of the claimed invention, would have selected these
`
`components for combination in the manner claimed.” In re Kotzab, 217 F.3d 1365,
`
`1371 (Fed. Cir. 2000). The petitioner must support even simple modifications with
`
`some motivation to make the change. See In re Gordon, 733 F.2d 900, 902 (Fed.
`
`Cir. 1984).
`
`An appropriate obviousness inquiry cannot involve even a “hint of hindsight.”
`
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir. 2011).
`
`A petitioner may not “simply retrace[] the path of the inventor with hindsight,
`
`10
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`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
`
`discount[] the number and complexity of the alternatives, and conclude[] that the
`
`invention ... was obvious.” Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520
`
`F.3d 1358, 1364 (Fed. Cir. 2008). Likewise, “[c]are must be taken to avoid hindsight
`
`reconstruction by using the patent in suit as a guide through the maze of prior art
`
`references, combining the right references in the right way so as to achieve the result
`
`of the claims in suit.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (internal
`
`quotations and citations omitted).
`
`VII. GROUNDS 1A-1F DO NOT ESTABLISH OBVIOUSNESS
`
`A.
`
`Introduction To Ground 1A
`
`Ground 1A combines two references: Aizawa and Inokawa.
`
`1.
`
`Aizawa Uses Peripheral Detectors Around A Single Centrally
`Located LED
`
`Aizawa discloses a sensor with four periphery-located photodetectors (22)
`
`around a single centrally located LED (21). Ex. 1006 Abstract, Fig. 1A.
`
`DETECTOR
`
`LED
`
`DETECTOR
`
`Aizawa Fig. 1B (cross-sectional view, color added)
`
`
`
`11
`
`
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`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
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`Aizawa’s Features
` Green: central emitter
`(21)
` Red: peripheral
`detectors (22)
`
`
`
`
`
`Aizawa Fig. 1A (top-down view, color added)
`
`Aizawa uses this specific configuration of multiple detectors arrayed around a single
`
`LED to ensure that at least one detector is near the measurement site, which Aizawa
`
`indicates improves measurement consistency. Id. ¶[0027]. Aizawa detects signals
`
`on the palm side of the wrist and explains that as long as “one of the photodetectors
`
`22 is located near the artery 11,” it is “possible to detect a pulse wave accurately.”
`
`Id. ¶¶[0026]-[0027], Fig. 2. Aizawa includes a flat transparent plate (6) that
`
`improves adhesion between the detector and the wrist, which Aizawa states
`
`improves the detection efficiency. Id. [0030]. Aizawa’s sensor does not use a lens.
`
`Ex. 2004 ¶¶40-41.
`
`2.
`
`Inokawa Uses Peripheral LEDs Around A Single Centrally
`Located Detector
`
`In contrast to Aizawa, Inokawa uses a convex lens (27) to focus light from
`
`LEDs (21, 23) on the periphery of a sensor to a single detector (25) in the center.
`
`Ex. 1008 ¶[0058], Fig. 2.
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`12
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`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
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`Inokawa’s Features
` Green: peripheral emitters
`(21, 23)
` Red: central detector (25)
` Blue: convex lens (27)
` Arrows showing direction of
`light in original, highlighted
`in yellow added
`
`
`
`
`
`Inokawa Fig. 2 (color added)
`
`As illustrated above, Inokawa discloses light reflecting off the body and passing
`
`through the lens, which directs incoming light to the centrally located detector. Ex.
`
`1008 ¶[0058]. Thus, Inokawa’s convex lens focuses incoming light away from the
`
`periphery and towards the sensor’s center, where the detector is located. Ex. 2004
`
`¶¶42-43.
`
`3.
`
`Petitioner’s Proposed Combination Of Aizawa And Inokawa
`
`Claim 1 of the ’708 Patent requires “the housing including a protruding light
`
`permeable cover.” Ex. 1001 Claim 1. Claim 19 requires “a light permeable cover
`
`arranged above at least a portion of the platform, the light permeable cover
`
`protruding above the raised wall.” Id. Claim 19.
`
`Petitioner thus argues a POSITA would have replaced Aizawa’s flat plate for
`
`adhesion with Inokawa’s convex lens “to enhance light collection efficiency,
`
`specifically by modifying the light permeable cover of Aizawa to include a convex
`
`13
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`IPR2021-00193, Patent 10,299,708
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`protrusion that acts as a lens.” Id. 13. Petitioner argues: “[t]he lens of Inokawa
`
`would provide precisely
`
`such
`
`a benefit
`
`to Aizawa’s device by
`
`refracting/concentrating the incoming light signals reflected by the blood.” Pet. 14.
`
`Thus, Petitioner’s motivation for this alteration is increasing the amount of light
`
`reaching the detectors. Petitioner illustrates its proposed combination as follows:
`
`
`Petitioner’s Proposed Combination (Pet. 14)
`
`
`
`But neither Petitioner nor Dr. Kenny explains why a POSITA would have believed
`
`that Inokawa’s convex lens, which concentrates light to a central detector, would
`
`enhance light collection in Aizawa’s sensor (and the illustrated combination) with
`
`peripheral detectors. Id. 14-15 (citing Ex. 1003 ¶¶88-89); Ex. 2004 ¶¶44-47.
`
`Petitioner also briefly argues Aizawa alone satisfies the requirement of “the
`
`housing including a protruding light permeable cover” in claim 1 because “the
`
`cover/plate of Aizawa protrudes from the housing toward the user’s skin.” Pet. 22-
`
`23. But Petitioner’s argument depends on arbitrarily changing Petitioner’s
`
`identification of the “housing” from (1) merely the holder (23) (see bottom left) to
`
`(2) the holder (23) and the transparent plate (6) (see bottom right). Ex. 2004 ¶48.
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`14
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`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
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`Petitioner’s Annotated Illustration for
`Limitation 1[b] (Pet. 19; see also id. 21,
`26, 35, 36)
`
`
`
`
`Petitioner’s Annotated Illustration
`for Limitation 1[d] (Pet. 23)
`
`
`Petitioner never explains this arbitrary change, which is contrary to Petitioner’s
`
`admission that Aizawa’s transparent plate (6) (above right blue) “is mounted at the
`
`detection face 23a” of the holder (23). Pet. 9; Ex. 2004 ¶49. Under Petitioner’s first
`
`interpretation (top left), the holder (23) does not “includ[e] a protruding light
`
`permeable cover,” as required by claim 1. Under Petitioner’s second interpretation
`
`(top right), where the transparent plate (6) is allegedly part of the “housing,”
`
`Petitioner is incorrect that “the cover/plate of Aizawa protrudes from the housing”—
`
`there is no protrusion, as required by claim 1—the transparent plate (6) merely forms
`
`a flat face on the “housing.” Id.
`
`B. Ground 1A Does Not Establish Obviousness Because A POSITA Would
`Not Have Been Motivated To Combine Inokawa’s Lens With Aizawa’s
`Sensor As Proposed In Ground 1A
`
`1.
`
`Petitioner Admits Inokawa’s Lens Directs Light To The Center
`Of The Sensor
`
`Petitioner and Dr. Kenny both admit a convex cover condenses light towards
`
`the center of the sensor and away from the periphery. Petitioner admits in its Petition
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`15
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`IPR2021-00193, Patent 10,299,708
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`in IPR2020-01520 (Ex. 2019) filed against related patent U.S. Pat. No. 10,258,265
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`(Ex. 2025) that “the lens/protrusion of Inokawa ... serves a condensing function and
`
`thus, as with any other lens, refracts light passing through it.” Ex. 2019 at 44; see
`
`also Ex. 2025. Petitioner illustrates this condensing function using “the drawing
`
`below which compares the length of non-refracted light ... bouncing off an artery
`
`with that of refracted light.” Ex. 2019 at 44-45. Petitioner’s figure (below)
`
`illustrates a POSITA’s understanding that Inokawa’s convex lens, as implemented
`
`in Aizawa’s sensor, would direct light toward the center of the sensor. Id.
`
`
`
`Petitioner’s Illustration (Ex. 2019 at 45)
`
`Dr. Kenny similarly included the above illustration in his declaration in IPR2020-
`
`01520 (Ex. 2020) and explained that, when using a protruding surface such as
`
`Inokawa’s lens, “the incoming light is ‘condensed’ toward the center.” Ex. 2020 at
`
`69-70; Ex. 2004 ¶¶50-52. Dr. Kenny confirmed at his deposition for IPR2020-01520
`
`that the protruding surface in his proposed combination would cause “more light in
`
`the center than at the outer edge in this example.” Ex. 2006 204:1-13. Dr. Kenny
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`16
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`IPR2021-00193, Patent 10,299,708
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`agreed “that’s because light’s being directed towards the center and away from the
`
`edge….” Id. 204:14-20.
`
`Petitioner’s and Dr. Kenny’s admissions are consistent with Inokawa’s
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`disclosure. Ex. 2004 ¶53. As shown in Figure 2 (below), Inokawa illustrates that
`
`the protruding surface condenses light towards the central detector 25. Ex. 1008
`
`¶[0058], Fig. 2. The protruding surface in Inokawa works with the particular
`
`configuration of emitters and detectors: Inokawa increases light collection by
`
`increasing the amount of light that reaches the centrally located detector. Id.; Ex.
`
`2004 ¶54.
`
`Inokawa’s Features
` Green: peripheral emitters
`(21, 23)
` Red: central detector (25)
` Blue: convex lens (27)
` Arrows showing direction of
`light in original, highlighted
`in yellow
`
`
`Inokawa Fig. 2 (color added)
`
`
`
`Dr. Kenny agreed that Inokawa “provides this benefit by concentrating light
`
`towards the detector in the center….” Ex. 2006 83:15-84:2. Dr. Kenny explained
`
`that “one of ordinary skill in the art would understand that in Inokawa[,] the objective
`
`is to concentrate light at the detector, which is in the center axis of the drawing and
`
`that the lens is capable of providing that benefit.” Ex. 2006 86:19-87:1. Indeed,
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`17
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`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
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`Petitioner admits the lens of Inokawa “refract[s]/concentrat[es] the incoming light
`
`signals reflected by the blood.” Pet. 14; see also Ex. 1003 ¶86 (“The lens of Inokawa
`
`can provide this benefit by refracting and concentrating the light coming in through
`
`Aizawa’s acrylic plate after being reflected by the blood.”). Petitioner (Ex. 2019 at
`
`44-45) and Dr. Kenny (Ex. 2020 at 69-71, 115-117) thus repeatedly admit that a
`
`convex surface used with peripheral detectors, as
`
`in Aizawa, redirects
`
`(“concentrates”) incoming light towards the center as compared to a flat surface. Ex.
`
`2004 ¶54.
`
`The ’708 Patent further confirms that a POSITA would have this
`
`understanding. Figure 14B (below) “illustrates how light from emitters (not shown)
`
`can be focused by the protrusion 605 onto detectors.” Ex. 1001 35:57-60.
`
`
`’708 Patent (Ex. 1001) Fig. 14B (highlighting added to show direction of light)
`
`The ’708 Patent explains that “[w]hen the light rays 1420 enter the protrusion 605,
`
`the protrusion 605 acts as a lens to refract the rays into rays 1422.” Id. 35:67-36:2.
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`18
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`IPR2021-00193, Patent 10,299,708
`Apple v. Masimo
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