UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`MASIMO CORPORATION,
`Patent Owners
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00193
`Patent 10,299,708
`
`
`
`
`
`
`
`PETITIONER’S REPLY TO
`PATENT OWNERS’ RESPONSE TO PETITION
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`MASIMO CORPORATION,
`Patent Owners
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00193
`Patent 10,299,708
`
`
`
`
`
`
`
`PETITIONER’S REPLY TO
`PATENT OWNERS’ RESPONSE TO PETITION
`
`
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`
`
`TABLE OF CONTENTS
`I. INTRODUCTION ................................................................................................. 1
`
`II. GROUNDS 1A-1F RENDER OBVIOUS THE CHALLENGED CLAIMS ........ 2
`
`A.
`
`Inokawa’s lens enhances the light-gathering ability of Aizawa ........... 2
`
`1. Masimo ignores the well-known principle of reversibility ........ 4
`
`2. Masimo ignores the behavior of scattered light in a reflectance-
`
`type pulse sensor ......................................................................... 9
`
`B. A POSITA would have been motivated to modify Aizawa in view of
`
`Ohsaki to include a convex protrusion ................................................ 15
`
`III. GROUNDS 2A-2B RENDER OBVIOUS THE CHALLENGED CLAIMS ... 19
`
`A. A POSITA would have been motivated to modify Mendelson-1988
`
`with Inokawa to add a lens .................................................................. 19
`
`B. Mendelson-1988 in view of Inokawa includes the claimed cover ...... 20
`
`C. Mendelson-1988 in view of Inokawa renders obvious a “cylindrical
`
`housing” ............................................................................................... 23
`
`D. Nishikawa is a supporting reference ................................................... 24
`
`IV. CONCLUSION .................................................................................................. 25
`
`
`
`i
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`
`LIST OF EXHIBITS
`
`Description
`Exhibit No.
`APPLE-1001 U.S. Patent No. 10,299,708 to Poeze, et al. (“the ’708 patent”)
`APPLE-1002 Excerpts from the Prosecution History of the ’708 Patent (“the
`Prosecution History”)
`APPLE-1003 Declaration of Dr. Thomas W. Kenny
`APPLE-1004 Curriculum Vitae of Dr. Thomas W. Kenny
`APPLE-1005 Masimo Corporation, et al. v. Apple Inc., Complaint, Civil Action
`No. 8:20-cv-00048 (C.D. Cal.)
`APPLE-1006 U.S. Pub. No. 2002/0188210 (“Aizawa”)
`APPLE-1007
`JP 2006-296564 (“Inokawa”)
`APPLE-1008 Certified English Translation of Inokawa and Translator’s
`Declaration
`APPLE-1009 U.S. Pat. No. 7,088,040 (“Ducharme”)
`APPLE-1010 U.S. Pat. No. 8,177,720 (“Nanba”)
`APPLE-1011 RESERVED
`APPLE-1012 U.S. Pat. No. 6,853,304 (“Reisman”)
`APPLE-1013 U.S. Pub. No. 2004/0220738 (“Nissila”)
`APPLE-1014 U.S. Pub. No. 2001/0056243 (“Ohsaki”)
`APPLE-1015 Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic Institute,
`Biomedical Engineering Program, Worcester, MA 01609;
`Association for the Advancement of Medical Instrumentation,
`vol. 22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`“A Wearable Reflectance Pulse Oximeter for Remote
`Physiological Monitoring,” Y. Mendelson, et al.; Proceedings of
`the 28th IEEE EMBS Annual International Conference, 2006; pp.
`912-915 (“Mendelson-2006”)
`
`APPLE-1016
`
`
`
`ii
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`APPLE-1017 Excerpt from Merriam-Webster Dictionary
`APPLE-1018
`“Acrylic: Strong, stiff, clear plastic available in a variety of
`brilliant colors,” available at
`https://www.curbellplastics.com/Research-
`Solutions/Materials/Acrylic
`APPLE-1019 U.S. Pat. No. 7,031,728 (“Beyer”)
`APPLE-1020 U.S. Pat. No. 7,092,735 (“Osann, Jr.”)
`APPLE-1021 U.S. Pat. No. 6,415,166 (“Van Hoy”)
`APPLE-1022 QuickSpecs; HP iPAQ Pocket PC h4150 Series
`APPLE-1023 U.S. Pat. App. Pub. No. 2007/0145255 (“Nishikawa”)
`APPLE-1024
`“Measurement Site and Photodetector Size Considerations in
`Optimizing Power Consumption of a Wearable Reflectance Pulse
`Oximeter,” Y. Mendelson, et al.; Proceedings of the 25th IEEE
`EMBS Annual International Conference, 2003; pp. 3016-3019
`(“Mendelson-2003”)
`APPLE-1025 U.S. Pat. No. 6,801,799 (“Mendelson-’799”)
`APPLE-1026 Declaration of Jacob Munford
`APPLE-1027 U.S. Pub. No. 2007/0093786 (“Goldsmith”)
`APPLE-1028 U.S. Pub. No. 2004/0138568 (“Lo”)
`APPLE-1029 Wikipedia: The Free Encyclopedia, “Universal asynchronous
`receiver-transmitter” at
`https://en.wikipedia.org/wiki/Universal_asynchronous_receiver-
`transmitter, last accessed 08/27/2020
`APPLE-1030 U.S. Pub. No. 2008/0242958 to Al-Ali et al. (“Al-Ali”)
`APPLE-1031 RESERVED
`APPLE-1032 RESERVED
`APPLE-1033 RESERVED
`APPLE-1034 Deposition Transcript of Dr. Vijay Madisetti in IPR2020-01520,
`
`
`
`iii
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`IPR2020-01537, IPR2020-01539, Day 1 (August 1, 2021)
`APPLE-1035 Deposition Transcript of Dr. Vijay Madisetti in IPR2020-01520,
`IPR2020-01537, IPR2020-01539, Day 2 (August 2, 2021)
`APPLE-1036 Deposition Transcript of Dr. Vijay Madisetti in IPR2020-01536,
`IPR2020-01538 (August 3, 2021)
`APPLE-1037 Masimo Corporation, et al. v. Apple Inc., Second Amended
`Complaint, Civil Action No. 8:20-cv-00048 (C.D. Cal.)
`(Redacted)
`APPLE-1038 U.S. Patent No. 8,577,431 to Lamego et al. (“CIP Patent”)
`APPLE-1039 Order Re Motion to Stay in Masimo Corporation et al. v. Apple
`Inc., Case 8:20-cv-00048-JVS-JDE, October 13, 2020
`Second Declaration of Jacob Robert Munford
`APPLE-1040
`APPLE-1041 Declaration of Gordon MacPherson: Mendelson-2003
`APPLE-1042 Declaration of Gordon MacPherson: Mendelson-2006
`APPLE-1043 RESERVED
`APPLE-1044
`“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
`“Analysis of the Dispersion of Optical Plastic Materials,” S.
`Kasarova, et al.; Optical Materials 29 (2007); pp. 1481-1490
`“Noninvasive Pulse Oximetry Utilizing Skin Reflectance
`Photoplethysmography,” Y. Mendelson, et al.; IEEE Trans-
`actions on Biomedical Engineering, Vol. 35, No. 10, October
`1988; pp. 798-805 (“Mendelson-IEEE-1988”)
`Second Declaration of Dr. Thomas W. Kenny
`APPLE-1047
`APPLE-1048 Declaration of Dr. Thomas W. Kenny from IPR2020-01539
`APPLE-1049 Eugene Hecht, Optics (4th Ed. 2002)
`APPLE-1050 Excerpt from Merriam-Webster Dictionary
`
`APPLE-1045
`
`APPLE-1046
`
`
`
`iv
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`APPLE-1051 Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`APPLE-1052 Eugene Hecht, Optics (2nd Ed. 1990)
`
`
`
`v
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`
`
`I.
`
`INTRODUCTION
`Apple Inc. (“Petitioner”) submits this Reply to Patent Owner’s Response
`
`(“POR”) to the Petition for Inter Partes Review (“IPR”) of U.S. Patent No.
`
`10,299,708 (“the ’708 patent”) filed by Masimo Corporation (“Patent Owner” or
`
`“Masimo”).
`
`
`
`Patent Owner and their expert Dr. Madisetti—who acknowledges his lack of
`
`knowledge in the most fundamental concepts of optics applicable to an “optical
`
`physiological sensor”—criticize Petitioner’s reliance on Inokawa by pursuing a
`
`technically flawed interpretation of Inokawa’s lens that violates basic principles of
`
`optics and sensor design.1 APPLE-1001, Claim 1; APPLE-1034, 89:12-19.
`
`Unable to provide rational support for their theories, Masimo resorts to
`
`mischaracterizing cherry-picked testimony from Petitioner’s expert in an attempt to
`
`obfuscate Inokawa’s plain teaching that, for pulse detectors, a “lens makes it
`
`possible to increase the light-gathering ability of the LED.” APPLE-1008, [0015].
`
`In addition, as detailed below, Masimo misunderstands the teachings of Ohsaki and
`
`Petitioner’s reliance on the same for providing a second and independent reason
`
`for adding a protrusion to Aizawa.
`
`
`
` 1
`
` All emphasis added unless otherwise noted.
`
`
`
`1
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`In its Institution Decision, the Board found that Petitioner established a
`
`reasonable likelihood that the Challenged Claims of the ’708 patent are
`
`unpatentable. As explained herein, POR arguments fail to rebut the positions
`
`advanced in the Petition. See APPLE-1047, ¶¶1-49. Accordingly, the Board
`
`should echo the reasoning and holding from its Institution Decision in its Final
`
`Written Decision, and find the Challenged Claims unpatentable.
`
`
`II. GROUNDS 1A-1F RENDER OBVIOUS THE CHALLENGED
`CLAIMS
`As shown in the Petition and further clarified below in response to Masimo’s
`
`arguments, claims 1-9, 11, 13-15, 19-22, and 24-27 are rendered obvious by the
`
`combination of Aizawa and Inokawa (Ground 1A). For additional reasons as
`
`explained in the Petition and below, those same claims are further rendered
`
`obvious by the combination of Aizawa, Inokawa, and Ohsaki (Ground 1B).
`
`Masimo has not provided additional rebuttals to Grounds 1C-1F directed to claims
`
`10, 16-18, and 27-29. POR, 39.
`
`A.
`Inokawa’s lens enhances the light-gathering ability of Aizawa
`Inokawa generally discloses a “lens [that] makes it possible to increase the
`
`light-gathering ability” of a reflectance-type pulse sensor, APPLE-1008, [0015],
`
`[0058], FIG. 2, and, based on this disclosure, a POSITA would have been
`
`motivated to incorporate “an Inokawa-like lens into the cover of Aizawa to
`
`
`
`2
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`increase the light collection efficiency....” Petition, 12-14; APPLE-1003, ¶¶82-87.
`
`Yet Masimo contends that Inokawa’s lens is somehow designed specifically to
`
`direct all light “to the center of the sensor” and that, as a result, it would “direct
`
`light away from the periphery-located detectors” as in Aizawa, thereby
`
`discouraging the above-noted motivation to combine. POR, 15, 20; see also
`
`APPLE-1034, 40:4-11 (“...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.”).
`
`Masimo’s misinformed understanding of Inokawa’s lens—not to mention
`
`lenses in general—is demonstrated by their description of Inokawa’s lens 27 as
`
`“focus[ing] light from LEDs...to a single detector (25) in the center” and
`
`“direct[ing] incoming light to the centrally located detector.” POR, 12.
`
`A correct understanding of Inokawa’s lens as well as of reflectance-type
`
`pulse sensors in general (like those disclosed by Aizawa, Inokawa, and Mendelson-
`
`1988) readily exposes Masimo’s flawed rationale. Indeed, a POSITA would
`
`understand that Inokawa’s lens generally improves “light concentration at pretty
`
`much all of the locations under the curvature of the lens,” as opposed to only at a
`
`single point at the center as asserted by Masimo. Ex. 2006, 164:8-16; see also
`
`APPLE-1010, FIG. 1B, 8:45-50; APPLE-1011, FIG. 2, 3:35-41; APPLE-1047,
`
`¶¶7-9. That is, a POSITA would have understood that a cover featuring a convex
`
`
`
`3
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`protrusion would improve Aizawa’s signal-to-noise ratio, and consequently
`
`performance, by causing more light backscattered from tissue to strike Aizawa’s
`
`photodetectors than would have with a flat cover. APPLE-1047, ¶9; APPLE-1052,
`
`52, 86, 90; APPLE-1052, 84, 87-92, 135-141; APPLE-1046, 803-805.
`
`1. Masimo ignores the well-known principle of reversibility
`
`The well-known optical principle of reversibility dispels Masimo’s claim
`
`that “a convex cover condenses light towards the center of the sensor and away
`
`from the periphery” when applied to Aizawa. POR, 15; APPLE-1052, 87-92;
`
`APPLE-1049, 106-111; APPLE-1047, ¶10. According to this principle, “a ray
`
`going from P to S will trace the same route as one from S to P.” APPLE-1052, 92,
`
`84; APPLE-1049, 101, 110; APPLE-1036, 80:20-82:20. Importantly, the principle
`
`dictates that rays that are not completely absorbed by user tissue will propagate in
`
`a reversible manner. APPLE-1047, ¶10. 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. Id.; APPLE-1052, 92.
`
`The annotated versions of Inokawa’s FIG. 2 presented below together
`
`illustrate the principle of reversibility applied in context. As shown, Inokawa’s
`
`FIG. 2, illustrates two example ray paths from surrounding LEDs (green) to a
`
`central detector (red):
`
`
`
`4
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`
`POR, 13; APPLE-1047, ¶10.
`
`
`
`As a consequence of the principle of reversibility, a POSITA would have
`
`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). APPLE-1047, ¶11. 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:
`
`POR, 13; APPLE-1047, ¶11.
`
`
`
`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.” Ex. 2006, 209:19-21, 207:9-209:21;
`
`APPLE-1047, ¶12.
`
`
`
`5
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`As shown with respect to the example paths illustrated below (which include
`
`additional scattering within tissue), each of the countless photons travelling
`
`through the system must abide by Fermat’s principle. APPLE-1047, ¶¶13-18;
`
`APPLE-1052, 87-92; APPLE-1049, 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 between those points, even if the positions of the detector and LED were
`
`swapped. APPLE-1047, ¶¶13-18; Ex. 2006, 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”).
`
`
`
`
`
`
`
` APPLE-1047, ¶15.
`
`
`
`When confronted with this basic principle of reversibility during deposition,
`
`Dr. Madisetti refused to acknowledge it, even going so far as to express ignorance
`
`of “Fermat’s principle, whatever that is.” APPLE-1034, 89:12-19. Yet Fermat’s
`
`
`
`6
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`principle, which states that a path taken by a light ray between two points is one
`
`that can be traveled in the least time, is one of the most fundamental concepts in
`
`optics/physics and plainly explains the principle of reversibility. APPLE-1052, 87-
`
`92; APPLE-1049, 106-111; APPLE-1047, ¶19. This core concept forms the basis
`
`of all Aizawa-based combinations and was explained by Dr. Kenny in his
`
`declaration: “[B]ecause the path of light is reversible, the light collection function
`
`of Inokawa’s lens would work the same way regardless of whether light is emitted
`
`toward the center (and detected by a centrally located photodiode) or emitted away
`
`from the center (and detected by a peripherally located photodiode).” APPLE-
`
`1003, ¶86; see also APPLE-1003, ¶55 (explaining that Aizawa would operate in
`
`the same manner even with “a centrally located detector [surrounded] by a
`
`plurality of emitters.”); APPLE-1048, ¶79 (“Indeed, Aizawa itself recognizes this
`
`reversibility, stating that while the configurations depicted include a central emitter
`
`surrounded by detectors, the ‘same effect can be obtained when…a plurality of
`
`light emitting diodes 21 are disposed around the photodetector 22.’”); APPLE-
`
`1047, ¶19.
`
`Consistent with that understanding, contrary to Masimo’s assertions and as
`
`shown below, prior art including Ohsaki and Inokawa demonstrate the use of
`
`covers/lenses featuring convex surfaces to direct light to non-centrally located
`
`detectors. APPLE-1014, FIG. 2; APPLE-1008, FIG. 3; APPLE-1047, ¶¶20-21.
`
`
`
`7
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`
`
`
`
`
`APPLE-1014, FIG. 2
`
`8
`
`
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`In short, based at least on the principle of reversibility, a POSITA would
`
`
`
`have understood that both configurations of LEDs and detectors—i.e., with the
`
`LED at the center as in Aizawa or with the detector at the center as in Inokawa—
`
`would similarly benefit from the enhanced light-gathering ability of an Inokawa-
`
`like lens. APPLE-1047, ¶22.
`
`2. Masimo ignores the behavior of scattered light in a reflectance-
`type pulse sensor
`Because both Aizawa and Inokawa (as well as Ohsaki and Mendelson-1988)
`
`are reflectance-type pulse sensors that receive diffuse/backscattered light, its
`
`cover/lens cannot focus all incoming light toward the sensor’s center. APPLE-
`
`1047, ¶23; Ex. 2006, 163:12-164:2 (“A lens in general…doesn’t produce a single
`
`focal point”). Indeed, reflectance-type sensors work by detecting light that has
`
`been “partially reflected, transmitted, absorbed, and scattered by the skin and other
`
`tissues and the blood before it reaches the detector.” APPLE-1051, 86. A
`
`POSITA would have understood that light that backscatters from the measurement
`
`site after diffusing through tissue reaches the active detection area from random
`
`directions and angles. APPLE-1047, ¶23; APPLE-1046, 803; APPLE-1051, 90,
`
`52.
`
`Basic laws of refraction, specifically Snell’s law, dictate this behavior of
`
`light. APPLE-1052, 84; APPLE-1049, 101; APPLE-1036, 80:20-82:20; APPLE-
`
`
`
`9
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`1051, 52, 86, 90; APPLE-1047, ¶24. For example, referring to Masimo’s version
`
`of Inokawa’s FIG. 2, further annotated below to show additional rays of light
`
`emitted from LED 21, it can be seen how some of the reflected/scattered light from
`
`the measurement site does not reach Inokawa’s centrally located detector:
`
`
`
`POR, 13; APPLE-1047, ¶24.
`
`Indeed, far from focusing light to the center as Masimo contends, Ohsaki’s
`
`convex cover provides a slight refracting effect, such that light rays that may have
`
`missed the detection area are instead directed toward that area. APPLE-1047,
`
`¶¶25-26. This is particularly true in configurations like Aizawa’s where light
`
`detectors are arranged symmetrically about a central light source to enable
`
`backscattered light to be detected within a circular active detection area
`
`surrounding that source. APPLE-1051, 86, 90. The slight refracting effect is a
`
`
`
`10
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`consequence of similar indices of refraction between human tissue and a typical
`
`cover material (e.g., acrylic). APPLE-1047, ¶26 (citing APPLE-1044, 1486;
`
`APPLE-1045, 1484).
`
`Attempting to support its argument that a convex cover focuses all incoming
`
`light at the center, Masimo relies on the ’708 Patent’s FIG. 14B:
`
`
`
`
`APPLE-1001, FIG. 14B; POR, 24; APPLE-1047, ¶27.
`
`
`
`Masimo treats this figure as an illustration of the behavior of all convex
`
`surfaces with respect to all types of light, and conclude that “a convex surface
`
`
`
`11
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`condenses light away from the periphery and towards the sensor’s center.” POR,
`
`24; APPLE-1034, 127:22-128:18 (“…a POSA viewing [FIG. 14B]…would
`
`understand that light, all light, light from the measurement site is being focused
`
`towards the center”). APPLE-1047, ¶28.
`
`But FIG. 14B is not a representation of light that has been reflected from a
`
`tissue measurement site. The light rays (1420) shown in FIG. 14B are collimated
`
`(i.e., parallel to one another), and each light ray’s path is perpendicular to the
`
`detecting surface. APPLE-1047, ¶29. This is because FIG. 14B shows a
`
`transmittance-type configuration where light is “attenuated by body tissue,” not
`
`backscattered. APPLE-1001, 35:65-67; APPLE-1047, ¶30. Indeed, FIG. 14I of
`
`the ’708 patent puts FIG. 14B in proper context, showing how light from the
`
`emitters is transmitted through the entire finger/tissue before being received by the
`
`detectors on the other side:
`
`
`
`12
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`
`
`
`APPLE-1047, ¶30 (showing APPLE-1001, FIG.14I).
`
`By contrast, the detector(s) of reflectance type pulse detectors detect light
`
`that has been “partially reflected, transmitted, absorbed, and scattered by the skin
`
`and other tissues and the blood before it reaches the detector.” APPLE-1051, 86.
`
`For example, a POSITA would have understood from Aizawa’s FIG. 1(a) that light
`
`that backscatters from the measurement site after diffusing through tissue reaches
`
`the circular active detection area provided by Aizawa’s detectors from various
`
`random directions and angles, as opposed to all light entering from the same
`
`direction and at the same angle as shown in FIG. 14B. APPLE-1047, ¶31; APPLE-
`
`1051, 52, 86, 90; APPLE-1046, 803-805.
`
`
`
`13
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`The example figure below illustrates light rays backscattered by tissue
`
`toward a convex board/lens; as consequence of this backscattering, a POSITA
`
`would have understood that the backscattered light will encounter the interface
`
`provided by the convex board/lens at all locations from a wide range of angles.
`
`APPLE-1047, ¶32. This pattern of incoming light cannot be focused by a convex
`
`lens towards any single location:
`
`APPLE-1047, ¶32.
`
`
`
`To the extent Masimo contends that only some light is directed “towards the
`
`center” and away from Aizawa’s detectors in a way that discourages combination,
`
`such arguments fail. Indeed, far from focusing light to a single central point, a
`
`POSITA would have understood that Ohsaki’s cover provides a slight refracting
`
`effect, such that light rays that otherwise would have missed the active detection
`
`
`
`14
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`area are instead directed toward that area. APPLE-1047, ¶33; APPLE-1051, 52;
`
`APPLE-1052, 87-92, 135-141; APPLE-1034, 60:7-61:6, 70:8-18.
`
`
`
`Masimo and Dr. Madisetti’s reliance on Petitioner’s drawings provided in
`
`the Petition filed in IPR2020-01520 (Ex. 2019) at page 39 and in the
`
`accompanying Kenny Declaration (Ex. 2020) in paragraphs 119-120 for
`
`justification of their understanding of Inokawa’s lens is similarly misplaced. POR,
`
`15-17. Far from demonstrating the false notion that a convex lens directs all light
`
`to the center, these drawings provided by Dr. Kenny are merely simplified
`
`diagrams included to illustrate, for claim 12 of the ’265 patent, one example
`
`scenario (based on just one ray and one corpuscle) where a light permeable cover
`
`can “reduce a mean path length of light traveling to the at least four detectors.”
`
`Ex. 2019, 39; Ex. 2020, ¶¶119-120; APPLE-1047, ¶34.
`
`B. A POSITA would have been motivated to modify Aizawa in view
`of Ohsaki to include a convex protrusion
`As Dr. Kenny explained at length in his first declaration, “Ohsaki teaches
`
`that adding a convex surface...can help prevent the device from slipping on the
`
`tissue of the wearer compared to using a flat cover without such protrusion” and
`
`that “a POSITA seeking to achieve improved adhesion between the detector and
`
`the skin, as expressly recognized in Aizawa, would have been motivated and
`
`readily able to modify Aizawa’s acrylic plate to have a convex shape as in
`
`
`
`15
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`Ohsaki.” APPLE-1003, ¶¶125-126 (citing to APPLE-1014, [0025]; APPLE-1006,
`
`[0026], [0030]); APPLE-1047, ¶35.
`
`Masimo, rather than attempting to directly rebut Dr. Kenny’s testimony on
`
`this point, focuses on arguments that are factually flawed and legally irrelevant.
`
`Specifically, Masimo contends that Ohsaki’s “convex surface must have
`
`longitudinal directionality,” and that “Ohsaki indicates that its convex surface
`
`only prevents slipping on the backhand side (i.e., watch-side) of the user’s wrist.”
`
`POR, 37. Notably absent is how Ohsaki actually describes the benefits associated
`
`with its convex surface. APPLE-1047, ¶¶36-37.
`
`For example, Ohsaki contrasts a “convex detecting surface” from a “flat
`
`detecting surface,” and explains 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 translucent board 8 has a convex surface…variation of the amount
`
`of the reflected light…that reaches the light receiving element 7 is suppressed.”
`
`APPLE-1014, ¶[0025]; APPLE-1047, ¶37. As Dr. Kenny explains, the POSITA
`
`would have understood from such teachings of Ohsaki that the advantages of a
`
`light permeable protruding convex cover would apply regardless of any alleged
`
`longitudinal directionality of Ohsaki’s cover and regardless of where on the body
`
`such a convex cover was placed. APPLE-1047, ¶37; APPLE-1014, ¶¶[0015],
`
`[0017], [0025], FIGS. 1, 2, 4A, 4B.
`
`
`
`16
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`For one, Ohsaki’s specification and claim language reinforce that Ohsaki’s
`
`description is not so limited. APPLE-1047, ¶¶37-38. For example, Ohsaki
`
`explains that “the detecting element 2…may be worn on the back side of the user's
`
`forearm.” APPLE-1014, [0030], [0028]. Similarly, Ohsaki’s claim 1 states that
`
`“the detecting element is constructed to be worn on a back side of a user’s wrist or
`
`a user’s forearm.” As another example, Ohsaki’s independent claim 5 states that
`
`“the detecting element is constructed to be worn on a user’s wrist or a user’s
`
`forearm,” without even mentioning a backside of the wrist or forearm. A POSITA
`
`would have understood this language to contradict Masimo’s assertion that Ohsaki
`
`must be positioned on the backhand side of the wrist. POR, 37; APPLE-1047, ¶38.
`
`Yet, as explained above, a POSITA would have understood that Ohsaki’s benefits
`
`are provided when the sensor is placed, for example, on either side of the user’s
`
`wrist or forearm. APPLE-1014, [0025], FIGS. 4A/B; APPLE-1047, ¶39. Thus,
`
`Masimo’s arguments 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 necessarily fail.
`
`APPLE-1047, ¶38.
`
`Moreover, “[t]he test for obviousness is not whether the features of a
`
`secondary reference may be bodily incorporated into the structure of the primary
`
`reference…[r]ather, the test is what the combined teachings of those references
`
`would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d
`
`
`
`17
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`413 (C.C.P.A. 1981); see also Allied Erecting v. Genesis Attachments, 825 F.3d
`
`1373, 1381 (Fed. Cir. 2016) (rejecting argument that combination would “result
`
`[in] substantial redesign” because “[t]he test for obviousness is not whether the
`
`features of a secondary reference may be bodily incorporated into the structure of
`
`the primary reference”). Indeed, Ohsaki was relied upon not for its exact cover
`
`configuration but rather for the rather obvious concept that a convex surface
`
`protruding into a user’s skin will prevent slippage, regardless of any directionality
`
`that may or may not exist with respect to such convex surface and regardless of
`
`where on the human body it is located. APPLE-1047, ¶37; APPLE-1014,
`
`¶¶[0015], [0017], [0025], FIGS. 1, 2, 4A, 4B. And adding a convex surface to
`
`Aizawa’s flat plate will serve to increase its tendency to not slip off, not take away
`
`from it, since it is well-understood that physically digging into the skin with a
`
`protrusion provides an additional adhesive effect. Id.; APPLE-1047, ¶37.
`
`Lastly, Petitioner notes that even if a convex cover were to somehow reduce
`
`signal strength due to optical effects as Masimo falsely contends, a POSITA would
`
`have nonetheless recognized—as Ohsaki itself clearly recognized—that the
`
`additional benefit of a convex protrusion in reducing slippage is worth having. See
`
`Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)
`
`(“The fact that the motivating benefit comes at the expense of another
`
`benefit...should not nullify its use as a basis to modify the disclosure of one
`
`
`
`18
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`reference with the teachings of another.”); In re Urbanski, 809 F.3d 1237, 1244
`
`(Fed. Cir. 2016).
`
`Incidentally, as noted in the Petition, Aizawa discloses a “housing including
`
`a protruding light permeable cover” even without the addition of a convex
`
`protrusion as per Inokawa or Ohsaki. Petition, 22-23. While Masimo contends
`
`that the identification of the claimed “housing” is being arbitrarily changed from
`
`limitation 1[b] to limitation 1[d] (see POR, 14-15), Petitioner notes that the
`
`updated drawing for element 1[d] merely reflects the fact that this element is where
`
`the light permeable cover (which is claimed as being a part of the claimed housing)
`
`was introduced for the first time in claim 1. See APPLE-1001, Claim 1.
`
`
`III. GROUNDS 2A-2B RENDER OBVIOUS THE CHALLENGED
`CLAIMS
`As shown in the Petition and further clarified below in response to Masimo’s
`
`arguments, claims 1-9, 11-15, and 19-26 are rendered obvious by the combination
`
`of Mendelson-1988 and Inokawa (Ground 2A). Masimo has not provided
`
`additional rebuttals to Grounds 2B and 2C directed to claims 16-18 and 27-29.
`
`POR, 59; APPLE-1047, ¶40.
`
`A. A POSITA would have been motivated to modify Mendelson-1988
`with Inokawa to add a lens
`Similar to their rebuttal of the Aizawa-based grounds, Masimo contends that
`
`(1) “Inokawa’s convex lens focused light on a centrally located detector” and (2)
`
`
`
`19
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`as a result, incorporating such a lens to Mendelson-1988 would cause the “lens to
`
`direct light away from the detectors” based on Mendelson-1988’s use of centrally-
`
`located LEDs. POR, 40-44. For reasons discussed above in Section II.A, basic
`
`optical principles and a proper understanding of reflectance-type sensors as in
`
`Aizawa, Inokawa, and Mendelson-1988 would have led a POSITA to understand
`
`that adding an Inokawa-like lens to Mendelson-1988 would result in additional
`
`benefits such as enhanced light-gathering ability and improved signal-to-noise
`
`ratio. Petition, 64-67. Masimo’s characterization of Inokawa as “focusing [light]
`
`on a single central detector” runs contrary to basic principles of optics and how
`
`lenses work. APPLE-1047, ¶41.
`
`B. Mendelson-1988 in view of Inokawa includes the claimed cover
`As explained in the Petition, the Mendelson-1988-Inokawa combination
`
`provides protruded epoxy cover that acts as a lens and also covers the detectors.
`
`Petition, 74-75; APPLE-1003, ¶¶172-181; APPLE-1047, ¶42. Masimo argues,
`
`however, that “the ’708 Patent distinguishes a resin on a surface from a cover” and,
`
`as a result, the modified Mendelson-1988 device lacks a cover. POR, 45-46.
`
`Masimo further argues that the convex cover in the contemplated combination is
`
`somehow not a cover because “it is part of an undifferentiated mass of material.”
`
`Id.
`
`
`
`20
`
`
`
`Case No. IPR2021-00193
`Attorney Docket: 50095-0009IP1
`As an initial matter, there is nothing in the specification or the prosecution
`
`history that would lead a POSITA to conclude that “cover” should be interpreted
`
`based on anything other than its plain meaning. See Thorner v. Sony Computer
`
`Entertainment America LLC, 669 F. 3d 1362, 1368 (Fed. Cir. Feb. 1, 2012)
`
`(holding that terms should be given their ordinary/customary meaning unless
`
`“applicant has clearly disavowed claim scope or has acted as its own
`
`lexicographer”). And the plain meaning is clear: a cover is merely “something that
`
`protects, shelters, or guards.” APPLE-1050. Both instances of the “light
`
`permeable cover” as identified in the Petition are clearly covers that serve to
`
`protect. Petition, 74-75; APPLE-1047, ¶43.
`
`To support their narrow read of what the claimed cover entails, Masimo
`
`mischaracterizes Dr. Kenny’s deposition testimony to say he agreed that “sealing
`
`resin” is somehow distinguished from a
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
