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`Apple, Inc. v. Masimo Corp.
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`Thomas Kenny Jr., Ph.D.
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`Page 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - - - - - - - - - - - - -x
`APPLE, INC.,
`
`Case IPR2020-01520
`U.S. Patent 10,258,265
`
`Case IPR2020-01539
`U.S. Patent 10,588,554
`
`Case IPR2020-01537
`U.S. Patent 10,588,553
`Case IPR2020-01536
`U.S. Patent 10,588,553
`
`Petitioner,
`
`-against-
`
` MASIMO CORPORATION,
`
`Patent Owner.
`
`Case IPR2020-01538
`U.S. Patent 10,588,554
`
`- - - - - - - - - - - - - - - - -x
`VIDEO-RECORDED DEPOSITION OF
`THOMAS WILLIAM KENNY JR., PH.D.
`Zoom Recorded Videoconference
`09/18/2021
`9:03 a.m. Pacific Daylight Time
`
`REPORTED BY: AMANDA GORRONO, CLR
`CLR NO. 052005-01
`
`______________________________________________________
`DIGITAL EVIDENCE GROUP
`1730 M Street, NW, Suite 812
`Washington, D.C. 20036
`(202) 232-0646
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`Masimo Ex. 2027
`Apple v. Masimo
`IPR2021-00208
`
`
`
`9/18/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny Jr., Ph.D.
`
` 09/18/2021
` 9:03 a.m. (PDT)
`
`Page 2
`
` VIDEO-RECORDED DEPOSITION OF THOMAS WILLIAM
`KENNY, JR. Ph.D., held virtually via Zoom
`Videoconferencing, before Amanda Gorrono, Certified
`Live Note Reporter, and Notary Public of the State of
`New York.
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`Apple, Inc. v. Masimo Corp.
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`Thomas Kenny Jr., Ph.D.
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`Page 3
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`A P P E A R A N C E S
`(Via Zoom Videoconferencing):
`ON BEHALF OF PETITIONER APPLE, INC.:
` Dan Smith, Esquire
` Fish & Richardson
` 1717 Main Street - Suite 5000
` Dallas, Texas 75201
` PHONE: 214-292-4071
` E-MAIL: Dsmith@fr.com
` -AND-
` Andrew B. Patrick, Esquire
` Fish & Richardson
` 1000 Maine Avenue SW
` Washington, D.C. 20024
` PHONE: 202-626-7735
` E-MAIL: Patrick@fr.com
`ON BEHALF OF PATENT OWNER MASIMO CORPORATION:
` Stephen W. Larson, Esquire
` Knobbe Martens
` 2040 Main Street
` Irvine, CA 92614
` PHONE: 949-721-5301
` E-MAIL: Stephen.larson@knobbe.com
` -AND-
` Jeremiah S. Helm, Ph.D., Esquire
` Knobbe Martens
` 1717 Pennsylvania Avenue N.W.
` Washington, DC 20006
` PHONE: 202-640-6400
` E-MAIL: Jeremiah.helm@knobbe.com
` -AND-
` Jacob Peterson, Esquire
` Knobbe Martens
` 925 4th Ave #2500
` Seattle, WA 98104
` PHONE: 206-405-2000
` E-MAIL: Jacob.peterson@knobbe.com
`ALSO PRESENT:
`Billy Fahnert, Legal Videographer/Exhibit Technician,
`Digital Evidence Group
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`Apple, Inc. v. Masimo Corp.
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`Thomas Kenny Jr., Ph.D.
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`Page 4
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` I N D E X
`
` WITNESS EXAMINATION BY Page
` THOMAS WILLIAM MR. HELM 6
` KENNY, JR. Ph.D.
`
` EXHIBITS IDENTIFIED
` EXHIBIT DESCRIPTION PAGE
` Exhibit 1047 Second Declaration of Dr. ... 8
` Thomas W. Kenny - IPR1520
` Exhibit 1040 Eugene Hecht Optics, Second.. 33
` Edition Bates No.
` IPR2020-01520
` Exhibit 1015 Mendelson Design and ........ 46
` Evaluation of a New
` Reflectance Pulse Oximeter
` Sensor
` Exhibit 1014 Ohsaki US Patent ............ 127
` Application Pub. No.
` 2001/0056243A1
` Exhibit 2012 Webster Design of Pulse ..... 185
` Oximeters
` Exhibit 1001 United States Patent Poeze .. 201
` Patent No. 10,258,265
` Exhibit 1013 United States Patent ........ 228
` Application No. US
` 2004/0054291 A1, dated
` March 18, 2004
` Exhibit 1047 Second Declaration, IPR No... 228
` IPR2020-01536
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`Thomas Kenny Jr., Ph.D.
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` AUTOMATED MESSAGE: Recording in
`progress.
` THE TECH: We are on the record.
`This is the remote video deposition of Dr. Thomas W.
`Kenny regarding IPR numbers 2020-01520, 2020-01536,
`2020-01537, 2020-1538 -- 01538, and 2020-01539 in the
`matter of Apple, Inc. versus Masimo Corporation in
`the United States Patent and Trademark Office.
` My name is Billy Fahnert. I am the
`video technician today. The court reporter is Amanda
`Gorrono. We are here on behalf of Digital Evidence
`Group.
` Today's date is September 18th, 2021.
`The time is 9:03 a.m. Pacific Daylight Time. All
`parties have stipulated to the witness being recorded
`remotely.
` Will counsel please identify
`yourselves for the record and then the witness will
`be sworn in.
` MR. HELM: Jeremiah Helm, Knobbe
`Martens on behalf of the patent owner, Masimo, and
`with me on the line is Steve Larson and Jacob
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`Apple, Inc. v. Masimo Corp.
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`Thomas Kenny Jr., Ph.D.
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`Page 6
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`Peterson from Knobbe.
` MR. SMITH: Dan Smith for Petitioner
`Apple and also on the line also from -- also for
`Petitioner Apple is Andrew Patrick.
`THOMAS WILLIAM KENNY, JR. Ph.D., called as a witness,
`having been first duly sworn by a Notary Public of
`the State of New York, was examined and testified as
`follows:
`EXAMINATION
`BY MR. HELM:
` Q. Good morning, Dr. Kenny. You
`understand that you're here to be deposed today?
` A. Yes, I do.
` Q. And you understand that this is a
`remote deposition?
` A. I do.
` Q. And you understand that your answers
`are going to be taken down by the court reporter,
`correct?
` A. Correct.
` Q. And the answers that you give here
`are given under oath, correct?
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`Thomas Kenny Jr., Ph.D.
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`Page 7
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` A. Yes.
` Q. And it has the same effect as if you
`were in a courtroom or in front of a judge or in
`front of the board testifying in person, correct?
` A. Yes.
` Q. You understand that any answers you
`give have to be verbal; they can't be grunts or
`groans or head nods; is that correct?
` A. Yes.
` Q. And you understand that I'll be
`asking you questions as part of this deposition
`process, correct?
` A. Yes, I do.
` Q. And if you answer the question, I'm
`going to assume that you understand it; is that fair?
` A. That's fair.
` Q. Okay. And if you don't understand my
`question or have any reservations or
`misunderstandings or confusion whatsoever, please
`tell me immediately; is that okay?
` A. Yes.
` Q. Okay. Great. Can we pull up the
`
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`Page 8
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`declaration from the 1520 IPR? That would be
`Exhibit 1047.
` (Whereupon, Exhibit 1047, Second
`Declaration of Dr. Thomas W. Kenny - IPR1520, was
`identified.)
` A. And do you mind if I open up this box
`of material that you all sent me?
` Q. Please do and that box, it's not, not
`a surprise. It's just paper copies of your
`Declaration, if you prefer.
` A. Useful to have that so I can flip
`around.
` Q. Absolutely, and it does make it
`easier I've found for the witness to have the paper
`copies as well.
` A. I do appreciate that you sent me
`about a pound of material instead of the 30 pounds of
`some prior experiences.
` Q. Correct, correct. We do what we can,
`Dr. Kenny.
` A. One big binder of exhibits. All
`right. And the first one we're taking out is the
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`Page 9
`original Declaration or the more recent Declaration?
` Q. The more recent Declaration, 1047 in
`the 1520.
` A. I see. Okay. Thank you. Let me
`pull this out. Okay. I have it.
` Q. Can you turn to Paragraph 7 in this
`Declaration?
` A. Sure. Okay.
` Q. And you see there is a figure? It's
`on Page 7 --
` A. Uh-huh.
` Q. -- of the declaration. Do you see
`there's a figure?
` A. Yes.
` Q. Did you make this figure, Dr. Kenny?
` A. This figure came out of a
`collaboration between myself and the attorneys. I
`was involved in the production of the figure and I'm
`responsible for its -- I guess its understanding and
`meaning at this point.
` Q. Very good. What were you intending
`to show with this figure?
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`Thomas Kenny Jr., Ph.D.
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`Page 10
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` MR. SMITH: Objection; form.
` A. So this figure which is on the top
`part of Page 7 is adapted from the Inokawa reference.
`It shows the shape of the, the object from Inokawa
`and the tissue and the various sites in the tissue
`that are the likely locations or possible locations
`of infrared light being reflected back towards the
`sensor.
` Q. There are small circles with green
`arrows coming out of them, correct?
` A. That's correct.
` Q. And those circles are representative
`of the corpuscles; is that correct?
` A. That's correct. These would be the
`portions of the anatomy that are reflecting light
`back towards the sensor.
` Q. But there, there could be other
`portions of the anatomy that reflect light back
`towards the sensor as well; is that fair?
` MR. SMITH: Objection; form.
` Q. So for example, a bone could reflect
`light back towards the sensor, correct?
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`Page 11
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` A. Correct.
` Q. But this figure is specifically
`showing the corpuscles; is that correct?
` A. That's correct, for this figure.
` Q. There are also green arrows coming
`out of those corpuscles; is that correct?
` A. That's correct.
` Q. Those arrows are indicating the light
`that's being reflected from the corpuscles; is that
`right?
` MR. SMITH: Objection; form.
` A. So, yes, the green arrows shown in
`this figure are indicating possible reflections from
`the corpuscles.
` Q. So the, the green arrows, for
`example, if we look at the corpuscles on the left,
`there's one, two, three, four, five green arrows
`coming out of that corpuscle on the far left; is
`that, is that right?
` A. That's correct.
` Q. And these five arrows show some but
`not all possible directions for the light reflecting
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`Page 12
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`off that corpuscle; is that correct?
` A. That is correct.
` Q. And then there's similarly for the
`other corpuscles, they all have -- it appears to me
`at least, all have five green arrows coming out of
`them and they similarly are all showing some but not
`all possible directions of light being reflected off
`of those respective corpuscles; is that correct?
` MR. SMITH: Objection; form.
` A. I think that's an accurate
`description of this figure, that all of these green
`arrows showing possible reflected light.
` Q. Is that a fair characterization of
`what you were intending to show with this figure?
` A. I believe so.
` Q. Can we go to Paragraph 42 of this
`Declaration, please?
` A. Okay.
` Q. This, this figure here at
`Paragraph 42 of your Declaration is not identical but
`is similar to the figure we just looked at, correct?
` MR. SMITH: Objection; form.
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`Page 13
` A. I think that's a fair statement.
` Q. And here, there are, again, circles
`with green arrows coming out of them; is that
`correct?
` A. That's correct.
` Q. And again, those circles are
`representative of the corpuscles; is that correct?
` A. Correct.
` Q. And again, the green arrows show some
`possible reflection of light from those corpuscles;
`is that correct?
` A. That's correct.
` Q. In this figure there, in addition --
`an indication on the left and an indication on the
`right that says "Toward the center" with a red arrow,
`pointing towards the center.
` Do you see that?
` A. That's correct, yes.
` Q. What were you intending to convey
`with the indication of toward the center and a red
`arrow pointing toward the center on the left and
`towards the center in a red arrow pointing to the
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`Page 14
`
`center on the right?
` MR. SMITH: Objection; form.
` A. So as written in Paragraph 42,
`referring to the modified Aizawa device figure --
`sorry. So I think here in the first sentence of
`Paragraph 42, we're referring to the figure right
`below which is obviously modified Inokawa and not
`Aizawa so that's a typo.
` Q. I don't want to go off on the wrong
`path. So the figure on the -- below 42 --
` A. Uh-huh.
` Q. -- that is a -- the sensor from
`Aizawa, correct? The --
` MR. SMITH: Objection; form.
` Q. Setting aside the, the skin, the
`tissue, the lens, the top piece of that is from
`Aizawa; is that correct?
` A. That's correct.
` MR. SMITH: Objection.
` Q. Okay. I just want to make sure we --
`because I want to make sure we're talking about the
`same thing. The lens shape and the corpuscles, that
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`Page 15
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`came from Inokawa, correct?
` A. That's correct, and that's -- so the
`bottom portion of this is more consistent with the
`figure on the top of the Page 7. The top part of
`this is, is adapted from some other figure in the
`Declaration --
` Q. Okay.
` A. -- reflected -- yes, thank you.
` Q. Very good. Okay. I want to make
`sure we, we don't get on the wrong patent.
` A. I appreciate it. Okay. So could you
`restate the question?
` Q. Yeah, let me restate the question
`because just to, just to make sure.
` What were you intending to illustrate
`with the annotation of towards the center and the
`arrow pointing, pointing inwards on the left and the
`towards the center and the arrow pointing inwards on
`the right?
` MR. SMITH: Objection; form.
` A. So as written in the Paragraph 42,
`"It can be seen that a convex lens' ability to direct
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`Page 16
`light 'toward the center' would allow the detector to
`capture light that otherwise would have been missed
`by the detectors, regardless of their location within
`the sensor device." And this function performed by
`the lens would allow a larger function of light
`randomly backscattered from the tissue to be detected
`within the active detection area surrounding the
`source.
` Q. Where is the light that is captured
`that otherwise would have been missed by the
`detectors, where is that light coming from?
` MR. SMITH: Objection; form.
` A. It's coming from one or more of the
`arrows representing the reflective light from the
`corpuscles.
` Q. Is the light that is -- oh, I have a
`internet connection unstable message. Let me, let me
`just peek and make sure I didn't miss something from
`your answer. Okay. Okay.
` Is the light that is captured that
`otherwise would have been missed by the detectors
`coming from a more peripheral location?
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`Page 17
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` MR. SMITH: Objection; vague.
` A. So this figure shows many possible
`rays of light coming from many possible locations of
`reflection in the tissue. This includes some rays
`that would have otherwise -- as I say, this is light
`that otherwise would have been missed by the
`detectors because of the effect of the function
`performed by the lens which allows a larger fraction
`of light randomly backscattered from the tissue to be
`detected within the active detection area surrounding
`the source.
` Q. What do you mean when you say
`"randomly backscattered from the tissue"?
` A. In this context, it means that the
`light backscattered from the tissue can go in a large
`number of possible directions, not any single precise
`direction. So it's represented by the array of
`arrows.
` Q. The light that interacts with the
`corpuscle does not go in any particular direction
`upon reflection; is that correct?
` MR. SMITH: Objection; form.
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`Page 18
` A. So maybe this is getting into nuance,
`but the light coming from the emitter is comprised of
`many photons, you know, billions of them, even
`perhaps many billions of billions of them. Each of
`those photons is entering the issue, interacting with
`the tissue, scattering backwards in a direction
`that's unpredictable for that single photon. It
`depends on the nature of its interaction with the
`corpuscle.
` The green arrows are meant to
`represent the possibilities of that returned
`backscattered path for these photons.
` Q. It's correct to say that some of the
`light from the emitter passes through the tissue
`without reflection backscattering, correct?
` A. That is correct.
` Q. Some of the light coming from the
`emitter is absorbed by the tissue, correct?
` A. That's correct.
` Q. Some of the light coming from the
`emitter is reflected in a direction that does not
`reach back to where the sensor is positioned; is that
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`correct?
` A. That's correct.
` Q. The indication in this figure,
`"Toward the center," does that indicate the
`redirection that leads to the detector capturing
`light that otherwise would have been missed --
` MR. SMITH: Objection; form.
` Q. -- for a particular ray?
` MR. SMITH: Same objection.
` A. So just again, reading from
`Paragraph 42, the "lens' ability to direct light
`'toward the center' would allow the detector to
`capture light that would otherwise have been missed
`by the detectors, regardless of their location within
`the sensor device."
` Q. So there, there is some light that
`would have been captured by the detectors that is
`redirected and no longer hits the detectors; is that
`correct?
` MR. SMITH: Objection; form.
` A. So of all of the photons scattered
`backwards from all of these sites --
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` Q. Correct.
` A. -- and interacting with this curved
`optical surface that we're calling the lens, some of
`those rays are diff- -- sorry -- refracted in a way
`that directs them toward the detectors which
`otherwise might have missed, and there would be some
`other rays that would have hit the detectors that are
`refracted away from the detectors; that's correct.
` Q. So in your analysis, did you
`determine the relative amount of light that is
`refracted towards the detectors that would otherwise
`have been missed and compare it to the amount of
`light originally going to the detector that is now
`refracted away and misses the detector, with the
`presence of the convex surface?
` MR. SMITH: Objection; form.
` A. In order to perform such an analysis,
`I would need to know a full set of detailed
`dimensions and shapes of the objects that would be
`involved in that final design. So there was no such
`detailed calculation presented for this cartoon
`representation of the combination of elements from
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`the references.
` What I've stated throughout the
`earlier Declaration and throughout the earlier
`deposition is that a person of ordinary skill in the
`art would understand how to take advantage of the
`detector locations and the shape of this convex
`surface so as to obtain an improvement in the amount
`of light arriving at the detectors.
` Q. The improvement in the light arriving
`at the detectors depends on the dimensions and shapes
`of the objects in the final design; is that correct?
` MR. SMITH: Objection; form.
` A. Yes, yes.
` Q. And in this Declaration, there was no
`detailed calculation presented for dimensions and
`shapes that establish that relatively more light
`reaches the detectors for a convex surface than for a
`flat or no surface; is that correct?
` MR. SMITH: Objection; form.
` A. So we could read from Paragraph 44,
`"As I made clear during my deposition," and following
`that is a quote, I think, from the transcript of the
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`deposition, "'The convex shape [of Inokawa's lens]
`allows light that might have been just specularly
`reflected off of a flat plate to be captured and
`refracted inwards. And in the region where there's
`curvature, it allows the light to be concentrated,
`and in this case, roughly speaking, in the
`neighborhood of the detectors and inwards.' That is,
`that the addition of a convex lens allows the
`detectors to capture some of the reflected light
`that...would have missed them completely, and to
`provide some concentration of the light towards the
`location of the detectors."
` And again, as I explained in the
`deposition and, and since then in these Declarations,
`it's within the skill of one of ordinary skill in the
`art to appreciate how to arrange the position of the
`detectors and to arrange the shape of the lens so as
`to obtain some benefit as described here.
` Q. Determining whether there is a
`benefit as described in your Declaration, would have
`required detailed calculations for dimensions, for
`particular dimensions and shapes of that lens and
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`sensor, correct?
` MR. SMITH: Objection; form.
` A. So restate the question, please.
` Q. Determining whether there is a
`benefit, as described in your Declaration, would it
`have required detailed calculations for particular
`dimensions and shapes of the lens and sensor,
`correct?
` MR. SMITH: Objection; form.
` A. So if we're referring to a particular
`detailed drawing, one could perform those
`calculations, one of ordinary skill in the art would
`know how to do that.
` My statement is that in the general
`view of this combination of, of ideas from the two
`references, that one of ordinary skill in the art
`would understand that it's possible to design a
`curved surface that would provide these benefits of
`capturing some light that would otherwise have been
`missed and in addition, providing some additional
`concentration of the light at the neighborhood of the
`detectors.
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` Q. The light that is captured, that
`would have otherwise have been missed, is that light
`coming from the peripheral edge of the detector?
` MR. SMITH: Objection; form.
` A. It could come from any number of
`locations in, in this illustration. One of ordinary
`skill in the art would understand that the light
`reflected from the corpuscles would arrive at the
`interface of this curved surface from a number of, at
`a number of positions and with a number of
`orientations and that some of that light would be
`refracted inwards in a way that's beneficial towards
`the performance of the system.
` Q. Is there light coming from the
`measurement site for this type of convex surface that
`is reflected outwards?
` MR. SMITH: Objection; form.
` A. So I, I think light returning towards
`the sensor and encountering that interface, some of
`it is refracted, some of it will be reflected.
` Q. Is there light coming in from the
`measurement site for this type of convex surface that
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`Page 25
`is refracted from to the peripheral edge of the
`detector?
` MR. SMITH: Objection; form.
` A. Let me just, so could you restate
`that? I'm a little confused about the whole thing --
` Q. I can.
` A. Yeah, please do.
` Q. I can. Let me restate it because if
`there's any confusion, let me restate it.
` Is there light coming from the
`measurement site that is refracted towards the
`peripheral edge of the detector?
` MR. SMITH: Objection; form.
` Q. Let me, I'm going to ask again
`because I'm going to -- I want to --
` A. I think I'm just hung up on the last
`word.
` Q. Yeah. Let me, let me -- I'm going to
`restate it, because I think that last word is weird.
`So let me try it again and if this one is confusing,
`we'll keep at it.
` Is there light coming from the
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`Page 26
`measurement site that is refracted towards the
`peripheral edge of the sensor?
` MR. SMITH: Objection; form.
` A. And by "sensor" here, we're talking
`about the entire structure?
` Q. Correct. And with that
`clarification, I'll ask the -- I'll pose the
`question.
` Is there light coming from the
`measurement site that is refracted by the convex
`surface, towards the peripheral edge of the sensor
`structure?
` MR. SMITH: Objection; form.
` A. So among the very many rays of light
`that are possible in this configuration, coming in
`from all locations and with all angles, striking the
`lens at all locations and with all possible
`orientations, angles of incidence at all of those
`locations, there are some rays that would be
`refracted towards the center. Some would be
`refracted towards the detectors, some would be
`refracted towards the edge.
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` Q. Is there light coming from the
`measurement site that is refracted by the convex
`surface, towards the peripheral edge of the sensor
`structure that would be directed more centrally by a
`flat surface?
` MR. SMITH: Objection; form.
` A. Pardon me here, I'm in my mind,
`performing a whole sequence of ray trace imagining --
`let's see. Pardon for the delay. This is a complex
`hypothetical that I had not previously thought
`carefully about.
` And just to explain what I'm doing,
`I'm looking at the figure that's below Paragraph 20,
`which provides a side-by-side illustration of the
`flat plate and the convex surface, just to help me
`think through the two cases within the hypothetical.
` So could you restate the question?
` Q. Yes. Let me, let me make sure that I
`can restate it in a correct way.
` Is there light coming from the
`measurement site that is refracted by the convex
`surface, towards the peripheral edge of the sensor
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`Page 28
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`structure that would have been directed more
`centrally by a flat surface?
` MR. SMITH: Objection; vague.
` A. So, again, it's a complicated
`hypothetical. I'm 100 percent sure this is the kind
`of question Dr. Madisetti would have refused to
`answer, but in the spirit of engagement, I'm trying
`to formulate an answer, just to try to be helpful.
` I think, again, without a detailed
`analysis, calculating angles of incidence in
`refraction and knowing the indices of the materials,
`it's -- you know, I can't say anything in a
`quantitative way. Can I imagine the possibility of a
`ray somewhere in the universe of possible rays coming
`in, that the convex surface is redirecting from
`central path maybe somewhat slightly towards the
`edge; whereas, the flat plate would have performed a
`slightly different redirection?
` You know, I think the key point here
`is that there's so many different possible angles of
`incidence coming in and locations of arrival at these
`two surfaces, that I can't rule out the possibility
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`Page 29
`that there could be such a ray. It seems to be a
`very outlying kind of case, given the situation here.
` But, you know, I, I think the
`question you've asked, I can't give an absolute no
`answer. I just don't believe it's possible to say
`anything very much more quantitative than that. And,
`again, I hope you appreciate I'm, I'm giving you an
`answer that there's no universe in which
`Dr. Madisetti would have cooperated in this manner.
` Q. Dr. Kenny, I appreciate all answers
`given. So, regardless of anything else that has
`taken place, why is it that there are so many
`different possible angle