Filed January 18, 2022
`
`By:
`
`
`On behalf of:
`Patent Owner Masimo Corporation
`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
`Tel.: (949) 760-0404
`Email: AppleIPR2021-0209-191@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2021-00209
`Patent 10,376,191
`
`
`
`
`
`PATENT OWNER MASIMO SUR-REPLY TO REPLY
`
`
`
`
`
`
`By:
`
`
`On behalf of:
`Patent Owner Masimo Corporation
`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
`Tel.: (949) 760-0404
`Email: AppleIPR2021-0209-191@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2021-00209
`Patent 10,376,191
`
`
`
`
`
`PATENT OWNER MASIMO SUR-REPLY TO REPLY
`
`
`
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`ARGUMENT ................................................................................................... 2
`
`b)
`
`2.
`
`3.
`
`A. Grounds 1A-1B ..................................................................................... 2
`Petitioner’s New Evidence And Arguments
`1.
`Address An Argument Masimo Never Made ............................. 2
`The Principle Of Reversibility Is Irrelevant
`a)
`To Petitioner’s Proposed Combination ............................ 6
`Petitioner’s Other New Theories Are
`Similarly Misplaced ........................................................ 10
`Petitioner Does Not Establish A Motivation To
`Modify Aizawa’s Sensor To Include Both Multiple
`Detectors And Multiple LEDs .................................................. 13
`Ohsaki Would Not Have Motivated A POSITA To
`Add A Convex Protrusion To Aizawa’s Sensor ....................... 15
`Ground 2 .............................................................................................. 20
`1.
`A POSITA Would Not Have Added A Convex
`Surface To Mendelson-1988’s Sensor ...................................... 20
`Petitioner’s Proposed Combination Does Not
`Include A “Cover” .................................................................... 20
`Petitioner’s Proposed Combination Does Not
`Include The Claimed “Plurality Of Detectors In A
`Circular Portion Of The Housing” ............................................ 23
`
`B.
`
`2.
`
`3.
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`4.
`
`Petitioner Uses Nishikawa As Far More Than A
`“Supporting Reference” ............................................................ 23
`III. CONCLUSION .............................................................................................. 24
`
`
`
`
`
`
`
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) .......................................................................... 19
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 21
`
`
`
`-iii-
`
`
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
`
`I.
`
`INTRODUCTION
`
`Rather than substantively rebut Masimo’s arguments, Petitioner concocts
`
`arguments Masimo never made and then spends many pages of briefing attempting
`
`to disprove those arguments. Petitioner asserts numerous new optics theories in an
`
`attempt to show a convex surface does not direct “all” light to “a single point at the
`
`center.” Reply 3.1 Masimo never made such an argument.
`
`Rather, Masimo argued that a convex surface condenses relatively more
`
`light towards a more central location as compared to a flat surface. There should
`
`be no dispute on this issue. Petitioner and its declarant repeatedly admitted that a
`
`convex surface would direct light away from the periphery and towards a more
`
`central position. Yet, Petitioner proposed adding a convex surface above
`
`peripherally located detectors, arguing a POSITA would make the addition to
`
`improve optical signal strength.
`
` Masimo explained that, consistent with
`
`Petitioner’s admissions, a POSITA would not have been motivated to direct light
`
`away from peripherally located detectors. None of Petitioner’s new arguments
`
`persuasively rebut this. The Board should affirm the patentability of all challenged
`
`claims.
`
`
`1 All emphasis is added unless otherwise noted
`
`1
`
`
`
`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
`
`II. ARGUMENT
`
`A. Grounds 1A-1B
`1.
`
`Petitioner’s New Evidence And Arguments Address An Argument
`Masimo Never Made
`
`Petitioner mischaracterizes Masimo’s position as contending Inokawa’s lens
`
`would direct “all” light “only at a single point at the center….” Reply 3.
`
`However, Petitioner never quotes any such Masimo argument because none exists.
`
`Masimo clearly and repeatedly argued “that a POSITA would have understood that
`
`Inokawa’s protruding surface would direct incoming light towards the center of
`
`the sensor.” Patent Owner Response (“POR”) 18; see also id. 2, 15-16, 25-28, 30.
`
`Masimo’s declarant, Dr. Madisetti, likewise repeatedly testified that Inokawa’s
`
`lens directs light “to a more central location as a result of passing through the
`
`protruding surface.” Ex. 2004 ¶54; see also id., e.g. ¶¶34, 43, 49, 51, 52, 55.2
`
`Masimo and Dr. Madisetti explained that a convex surface condenses relatively
`
`more light towards a more central location as compared to a flat surface. See, e.g.,
`
`Ex. 2004 ¶67 (“Taken as a whole, a POSITA would have understood that a
`
`protruding surface results in an overall redirection of incoming light towards the
`
`
`2 Indeed, when asked, Dr. Kenny could identify no testimony from Dr.
`
`Madisetti stating that all light was directed to center. See, e.g., Ex. 2027 63:7-64:6,
`
`94:20-96:1, 96:18-97:7.
`
`2
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`
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
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`center of the underlying sensor and away from the periphery of the underlying
`
`sensor.”); POR 15 (“Petitioner and Dr. Kenny both admit a convex cover
`
`condenses light towards the center of the sensor and away from the periphery.”).
`
`Petitioner nonetheless strenuously argues that Inokawa’s lens cannot focus
`
`light “at a single point at the center,” a position Masimo never took. Reply 3; see
`
`also id. 9 (Inokawa’s “cover/lens cannot focus all incoming light toward the
`
`sensor’s center.”). Indeed, Petitioner spends thirteen pages attacking this argument
`
`with illustrations attempting to show that not all light would be directed to a center
`
`point. See, e.g., Reply 2-15. Petitioner’s arguments entirely miss the point. The
`
`issue is not whether a convex surface will direct all light toward a center point.
`
`The issue is whether a convex surface (as compared to a flat surface) will direct
`
`more light to Aizawa’s peripherally located detectors—the entire basis of
`
`Petitioner’s proposed motivation to combine the cited references. Pet. 13-17.
`
`There can be no legitimate dispute that a convex surface directs light
`
`centrally (and away from the periphery). This is a straightforward optics principle.
`
`Indeed, Petitioner repeatedly admitted that a convex surface would direct light
`
`away from the periphery and towards a more central position. POR 15-17; Pet. 33.
`
`Dr. Kenny clearly explained: “the incoming light is ‘condensed’ toward the
`
`center.” Ex. 1003 ¶102; see generally id. ¶¶101-103; see also Ex. 2020 ¶¶119,
`
`200. Petitioner and Dr. Kenny even illustrated that a POSITA would have
`
`3
`
`
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
`
`understood that a convex surface redirects light to a more central location
`
`compared to a flat surface.
`
`
`Petitioner’s Illustration Of Change In Light Direction Due To Convex Surface
`(Purple) Compared To Flat Surface (Green)
`(Pet. 33-34; Ex. 1003 ¶102; see also Ex. 2019 at 45, citing Ex. 2020 ¶119)
`
`On reply, Petitioner claims its illustrations were “merely simplified diagrams” and
`
`“illustrate…one example scenario (based on just one ray and one corpuscle).”
`
`Reply 15. But Petitioner previously made no such distinction. Instead, Petitioner’s
`
`illustrations addressed a claim limitation regarding the “mean path length of light
`
`traveling to the…detectors”—not any individual ray. Pet. 33-34; Ex. 1003 ¶¶101-
`
`103, 155-157; Ex. 1001 Claim 6; see also Ex. 2019 at 45; Ex. 2025 Claim 12. Dr.
`
`Kenny clearly stated Inokawa’s convex surface (1) “provides a condensing
`
`function by refracting the light passing through it,” (2) that “such refraction of the
`
`incoming reflected light can shorten the path of the light,” (3) “because the
`
`incoming light is ‘condensed’ toward the center.” Ex. 1003 ¶¶102, 156; see also
`
`Ex. 2020 ¶119. A POSITA would have believed that condensing light towards the
`
`center reduces the optical signal strength at peripheral detectors.
`
`4
`
`
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
`
`After recognizing the fundamental error in its proposed combination,
`
`Petitioner now attempts to rewrite its petition and argue “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’….” Reply 3 (quoting Ex.
`
`2006 164:8-16). As supposed support, Petitioner quotes a single sentence of Dr.
`
`Kenny’s deposition testimony. Ex. 2006 164:8-16. Dr. Kenny admitted, however,
`
`that this cited opinion was not in his declaration. Id. 170:22-171:5.
`
`Regardless, Petitioner’s attempt to rewrite its petition fails. Indeed,
`
`Petitioner’s entire motivation to combine Inokawa with Aizawa was based on the
`
`fundamental error that a convex surface would increase optical signal strength by
`
`focusing incoming light at peripherally located detectors. Pet. 13-17, 27-28; see
`
`also id. 48-49 (same motivation for the Inokawa/Mendelson-1988 combination).
`
`During Dr. Kenny’s deposition, in an attempt to avoid Petitioner’s error, Dr.
`
`Kenny would not even agree Inokawa’s lens provides a condensing function by
`
`refracting light that passes through it. See Ex. 2027 181:9-182:5. In doing so, Dr.
`
`Kenny refuted his own previous statements. See, e.g., Ex. 1003 ¶¶102, 156; Ex.
`
`2020 ¶119 (“the lens of Inokawa...provides a condensing function by refracting the
`
`light passing through it”).
`
`Petitioner similarly asserts that “Inokawa generally discloses a ‘lens [that]
`
`makes it possible to increase the light-gathering ability’ of a reflectance-type pulse
`
`5
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
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`sensor.” Reply 2 (quoting Ex. 1008 ¶[0015]) (brackets in original). Based on this
`
`assertion, Petitioner argues that Inokawa would improve light-gathering at all
`
`locations, regardless of the location of the LEDs and detectors. Reply 3-4. But
`
`Petitioner contradicts its own declarant’s deposition testimony. Dr. Kenny testified
`
`Inokawa’s benefit would not be clear if Inokawa’s LEDs and detectors were
`
`moved:
`
`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 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 also confirmed that a convex surface would
`
`direct light toward the center of the underlying sensor. See, e.g., Ex. 2006 202:11-
`
`204:20. Petitioner does not even attempt to explain this testimony.
`
`a)
`
`The Principle Of Reversibility Is Irrelevant To Petitioner’s
`Proposed Combination
`
`Petitioner next asserts yet another new theory. Specifically, Petitioner points
`
`to the principle of reversibility. Reply 4. Petitioner claims that “[t]his core
`
`concept forms the basis of all Aizawa-based combinations.” Id. 7. Yet the petition
`
`never mentioned the principle of reversibility, and included no analysis of this
`
`allegedly “core concept.” Instead, Petitioner quotes Dr. Kenny’s declaration,
`
`6
`
`
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
`
`which “[i]ncidentally” stated that “because 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…or emitted away from the center.” Id.
`
`7 (quoting Ex. 1003 ¶88). As discussed above, Dr. Kenny admitted that
`
`“work[ing] the same way” means “the incoming light is ‘condensed’ toward the
`
`center” in the proposed combination. Ex. 1003 ¶¶102, 156; Ex. 2020 ¶119; see
`
`also id. ¶200; Ex. 1052 at 74 (wave passing through convex lens “converges”), 76-
`
`77. Dr. Kenny never previously analyzed or espoused the principle of reversibility
`
`asserted in Petitioner’s reply. Petitioner’s new theory is improper, denies Masimo
`
`the opportunity to respond with expert testimony, conflicts with Petitioner’s and
`
`Dr. Kenny’s prior admissions, and should be rejected.
`
`Petitioner’s new theory is also irrelevant. Petitioner employs the theory to
`
`argue the path of a reflected light ray would trace an identical route forward and
`
`backwards. Reply 4. This argument assumes ideal conditions that are not present
`
`when tissue scatters and absorbs light. Even Petitioner admits that tissue randomly
`
`scatters and absorbs light rays, which would cause forward and reverse light paths
`
`to be unpredictable and very likely different. See id. 9 (stating a POSITA would
`
`have understood reflectance-type sensors measure “random” light that was
`
`“reflected, transmitted, absorbed, and scattered by the skin and other tissues and
`
`the blood before it reaches the detector”); Ex. 2027 29:11-30:7, 31:8-32:3, 38:17-
`
`7
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`
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
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`42:6. Petitioner never explains how the principle of reversibility could apply to
`
`such “random” light.
`
`Indeed, Dr. Kenny testified that “light backscattered from the tissue can go
`
`in a large number of possible directions, not any single precise direction.” Ex.
`
`2027 17:12-18; see also id. 17:19-19:2 (reiterating random path and absorbance),
`
`38:17-40:13, 40:14-42:6 (“Every photon tracing that particular path…would have a
`
`potentially different interaction with the tissue and it would be scattered,
`
`potentially, in a different direction than the photon arriving before and after it.”).
`
`In contrast, the principle of reversibility provides that “a ray going from P to S [in
`
`one direction] will trace the same route as one going from S to P [the opposite
`
`direction]” assuming there is no absorption or scattering. Ex. 1052 at 51
`
`(illustrating diffuse reflection), 53 (defining principle of reversibility), 207
`
`(principle of reversibility requires no absorption). Indeed, Dr. Kenny testified that
`
`the principle of reversibly applies to a light ray between two points and admitted it
`
`does not apply to randomly scattered light in bulk. Ex 2027 207:9-208:22. In that
`
`circumstance, Dr. Kenny merely testified that light “can go” or “could go” along
`
`the same path. Id. 207:17-209:21, 210:8-211:6. That hardly supports Petitioner’s
`
`argument that light will necessarily travel the same paths regardless of whether the
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`LEDs and detectors are reversed.
`
`8
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`
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
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`Petitioner accordingly misapplies the principle of reversibility to the
`
`proposed combination. Indeed, the principle of reversibility does not even address
`
`the relevant comparison: whether a convex surface—as compared with a flat
`
`surface—would collect and focus additional light on Aizawa’s peripherally located
`
`detectors. See Ex. 2027 212:3-14. Petitioner attempts to use the theory of
`
`reversibility to argue that one could simply reverse the LEDs and detectors in
`
`Inokawa’s sensor and obtain the same benefit of Inokawa’s convex lens. Reply 4-
`
`9. Petitioner illustrates this argument with yet another new theory of “aggregate”
`
`reversibility, which stiches together different rays produced from different random
`
`scattering events. Id. 6.3 Petitioner’s aggregate ray theory does not address the
`
`question of how a change from a flat to convex surface would redirect more light
`
`towards the center and away from peripheral detectors. As Petitioner previously
`
`illustrated, a convex surface redirects incoming light towards the center as
`
`compared to a flat surface. Pet. 33-34, 61-63; Ex. 2019 at 45.
`
`
`3 Contrary to Petitioner’s argument, Reply 6-7, Dr. Madisetti did not
`
`“express ignorance” of Fermat’s principle: his testimony referred to “a stationary
`
`OPL,” an undefined term in the passage about which he was asked. Ex. 1034
`
`89:12-19. Indeed, Dr. Madisetti’s earlier testimony cited “Fermat’s law.” Id.
`
`33:17-34:13.
`
`9
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`
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
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`Petitioner also argues Inokawa and Ohsaki “demonstrate the use of
`
`covers/lenses featuring convex surfaces to direct light to non-centrally located
`
`detectors.” Reply 7 (emphasis omitted). But Petitioner relies on Inokawa Figure
`
`3, which shows data transferred directly to an opposing base station—not
`
`physiological measurements using attenuated light reflected from tissue. See Ex.
`
`1008 ¶[0100], Figs. 15 (showing convex/concave arrangement), 17 (showing flat
`
`cover with lens above emitter). Inokawa’s other data-transfer embodiments
`
`illustrate improved methods for data transfer involving a “flush” fit. Id. Ohsaki
`
`does not teach that its arrangement redirects light towards the detector, and instead
`
`discusses slipping. See Ex. 1014 ¶¶[0019], [0023]-[0025]. Moreover, Ohsaki’s
`
`sensor includes only a single emitter and detector positioned side-by-side under a
`
`longitudinal surface, unlike Aizawa’s central emitter/peripheral detector
`
`arrangement. Ex. 1014 Figs. 1-2, ¶[0019]; Ex. 1006 ¶[0009] (requiring “at least
`
`three photodetectors disposed around the light emitting diode and not linearly”).
`
`Thus, Petitioner’s new theory once again ignore the differences in sensor
`
`configuration and the resulting optical requirements.
`
`b)
`
`Petitioner’s Other New Theories Are Similarly Misplaced
`
`Petitioner next asserts other new theories found nowhere in the petition.
`
`First, Petitioner asserts that “Ohsaki’s [sic Inokawa’s] convex cover provides a
`
`slight refracting effect, such that light rays that otherwise would have missed the
`
`10
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
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`detection area are instead directed toward that area.” Reply 10. But that directly
`
`undermines Petitioner’s provided motivation to combine. The petition argued that
`
`a “POSITA would have looked to Inokawa to enhance light collection efficiency,
`
`specifically by modifying the flat cover of Aizawa to include a convex protrusion
`
`that acts as a lens.” Pet. 14. Petitioner’s assertion that a “lens provides a slight
`
`refracting effect” trivializes Petitioner’s proposed motivation and undermines its
`
`petition.
`
`Second, Petitioner attempts to distinguish Figure 14B in Masimo’s patent as
`
`showing the impact of a convex surface on collimated light, as opposed to diffuse
`
`backscattered light. Reply 11-13. But Masimo’s patent makes no such distinction.
`
`See POR 24-25. Moreover, Dr. Kenny admitted “one of ordinary skill in the art
`
`would expect a diffuse light source encountering a convex lens of the sort that
`
`we’re contemplating today, would lead to convergence of the light on the opposite
`
`side of the lens, in general” and that there would be “a convergence of most of the
`
`light rays.” Ex. 2007 423:7-424:18. Petitioner also argues that Figure 14B “is not
`
`a representation of light that has been reflected from a tissue measurement site”
`
`because Figure 14B “shows a transmittance-type configuration where light is
`
`‘attenuated by body tissue,’ not backscattered.” Reply 12. But even if incoming
`
`light follows different paths (Reply 13), light entering the lens from all angles
`
`would, on average, result in more light directed towards the center and less light
`
`11
`
`
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
`
`at the periphery—as compared to a flat cover or no cover. See, e.g., Ex. 2004
`
`¶¶66, 68.
`
`Indeed, while Petitioner asserts new and complex optical theories, Petitioner
`
`never explains why or how a POSITA would have known or considered those
`
`theories, much less arrived at Masimo’s claims. Petitioner never disputes that its
`
`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 data processing and not sensor design. POR 10.4
`
`Rather than consider Petitioner’s various complex theories, a POSITA would have
`
`understood and applied the straightforward understanding that a convex surface
`
`condenses light toward the center, precisely as Petitioner advocated in its petition.
`
`In fact, if anything, Petitioner’s new arguments emphasizing the complexity
`
`of optics undermine Petitioner’s obviousness arguments. Id. 23-32. As Dr. Kenny
`
`explained, light rays only “reach the [peripherally located] detectors [in Aizawa] if
`
`they can somehow find those tapered openings, but not if they pass-through any
`
`part of this holder [surrounding the detectors].” Ex. 2006 257:11-18; Ex. 2027
`
`73:13-74:14, 76:13-21. Petitioner fails to show its various new and complex
`
`4 Despite testifying there are “thousands of textbooks” describing lens
`
`design, Dr. Kenny cited none in his declarations. Ex. 2027 109:4-110:12,
`
`112:16-113:5.
`
`12
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
`
`theories would have motivated a POSITA to arrive at Petitioner’s flawed
`
`combination.
`
`2.
`
`Petitioner Does Not Establish A Motivation To Modify Aizawa’s
`Sensor To Include Both Multiple Detectors And Multiple LEDs
`Petitioner next argues a POSITA would have added a second LED to
`
`Aizawa’s sensor. Reply 15. As a preliminary matter, even if a POSITA added a
`
`second LED, Petitioner’s proposed combination of Aizawa and Inokawa would
`
`still not meet all claim limitations. POR 36. As Masimo explained, Petitioner’s
`
`resulting sensor would—consistent with both references—include only a single
`
`centrally located detector. Id. 36-38. In contrast, the claims at issue require both
`
`multiple emitters and multiple detectors in the same sensor or measurement
`
`device. See, e.g., Ex. 1001 Claims 1, 9. Petitioner’s reply does not acknowledge
`
`or address this failing.
`
`Regardless, Petitioner’s asserted motivations for adding additional emitters
`
`are unpersuasive. Petitioner’s first purported motivation is “[t]he added ability to
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`measure body movement.” Pet. 18. As Petitioner now concedes, however,
`
`Aizawa’s sensor already monitors body motion, so the extra emitter adds no
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`functionality. Reply 16; POR 38. Thus, adding another LED would unnecessarily
`
`increase complexity while adding no new functionality. Petitioner criticizes
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`Aizawa’s disclosure for not explaining how it uses the computed motion signal.
`
`Reply 16. But Inokawa likewise provides no details regarding how it uses the
`
`13
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
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`motion signal. See, e.g., Ex. 1008 ¶[0059]. Petitioner claims Inokawa’s approach
`
`is “more reliable” than Aizawa’s. Reply 16 (citing Pet. 18, Ex. 1003 ¶72). But
`
`Petitioner cites nothing in Inokawa that suggests Inokawa’s approach is superior to
`
`Aizawa’s. There would have been no reason for a POSITA to replace Aizawa’s
`
`approach with Inokawa’s.
`
`Petitioner’s second purported motivation for adding more LEDs is to
`
`provide LED-based data transmission. Pet. 20-23. But Inokawa transmits pulse
`
`rate data only “when the pulse sensor ... is mounted onto” a cumbersome “base
`
`device.” See, e.g., Ex. 1008 Abstract; POR 38-39. Petitioner’s proposed
`
`modification requires that a user (1) stop data collection, (2) remove the sensor,
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`and (3) attach the sensor to a “base device.” POR 38-41. In contrast, Aizawa’s
`
`sensor already includes a transmitter that allows real-time collection and display
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`of physiological measurements—a key goal of Aizawa’s system. Ex. 2007 402:6-
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`11; Ex. 2020 ¶101; Ex. 1006 ¶¶[0004], [0015]. While Petitioner suggests its
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`proposed modification might “improve accuracy,” Petitioner provides no evidence
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`that Aizawa’s existing approach suffered from accuracy problems. Reply 15-17.
`
`Petitioner’s combination
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`thus eliminates Aizawa’s real-time data display
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`functionality while adding no credible additional benefit. POR 39-41.
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`Petitioner next relies on a non-ground reference, Nanba (Ex. 1010), to assert
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`that additional LEDs would provide more reliable measurements. See Pet. 18; Ex.
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`14
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
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`1003 ¶72 (citing Ex. 1010 8:45-50); Reply 16 (citing Ex. 1003 ¶72). But Nanba’s
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`pulse wave sensor only uses a single LED emitter—not two different LEDs at two
`
`different wavelengths, as Dr. Kenny erroneously asserts. Ex. 1010 8:45-50; Ex.
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`1003 ¶72. Thus, Nanba’s sensor—like Aizawa’s—would use a single emitter to
`
`monitor motion. See, e.g., Ex. 1010 1:65-2:12 (apparatus for “detecting vital
`
`functions such as cough and yawn” and monitoring “a motion artifact” during “a
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`pulse wave”). Nanba would not motivate a POSITA to add an additional emitter.
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`Moreover, Petitioner does not dispute its proposed modifications would
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`cause additional problems, including additional costs, energy use, and thermal
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`problems. Petitioner asserts a POSITA “is fully capable of employing inferences
`
`and creative steps.” Reply 18-19. But Petitioner provides no evidence of what
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`those inferences are or what those creative steps might be, much less why they
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`would lead to Masimo’s claimed invention. As previously explained, a POSITA
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`would have expected that placing LEDs in close proximity—as in Petitioner’s
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`proposed combination—could cause detrimental results. POR 40-42. A POSITA
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`would not have been motivated to make Petitioner’s proposed modifications.
`
`3. Ohsaki Would Not Have Motivated A POSITA To Add A Convex
`Protrusion To Aizawa’s Sensor
`
`Ground 1B argues that Ohsaki would have further motivated a POSITA to
`
`add a convex surface to “prevent slippage of Aizawa’s device.” Pet. 44-45. The
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`petition’s entire Ground 1B analysis was only three pages. Id. 43-45. Petitioner
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`15
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`Apple v. Masimo
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`admitted Ohsaki’s sensor is worn on the back side of a user’s wrist. Id. 43.
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`Petitioner’s sole motivation for adding Ohsaki was “to further prevent slippage.”
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`Id. 45. But Ohsaki does not address or correct the fundamental problem with
`
`Petitioner’s proposed combination discussed above: like Inokawa, Ohsaki’s cover
`
`would direct light away from Aizawa’s peripherally located detectors. Ex. 2004
`
`¶92. A mere desire to prevent slippage would not motivate a POSITA to create a
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`flawed sensor, contrary to Petitioner’s suggestion otherwise. See Reply 21-22.
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`Moreover, a POSITA would not have believed Ohsaki’s longitudinal cover
`
`would benefit Aizawa’s circular sensor. Ex. 2004 ¶94. Ohsaki indicates that its
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`sensor—including its longitudinal cover with a convex surface—must have an
`
`elongated shape oriented with the longitudinal direction of the user’s arm. Ex.
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`1014 ¶[0019]; Ex. 2004 ¶93. In contrast, Aizawa’s sensor uses a circular
`
`arrangement of detectors disposed around a central emitter. Ex. 1006 ¶¶[0009],
`
`[0027], [0036]; Ex. 2004 ¶94. Aizawa specifically distinguishes its sensor from
`
`linear sensors such as Ohsaki’s, stating, “the photodetectors…should not be
`
`disposed linearly.” See, e.g., Ex. 1006 ¶[0027].
`
`A POSITA would not have been motivated to add Ohsaki’s longitudinal
`
`cover to Aizawa’s circular sensor to “prevent slippage,” as Petitioner asserts. Pet.
`
`45. Ohsaki teaches that its longitudinal cover must be oriented with the
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`longitudinal direction of the user’s arm to prevent slippage. Ex. 1014 ¶[0019]; Ex.
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`16
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`
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
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`2004 ¶93. Petitioner apparently makes Ohsaki’s longitudinal cover circular so that
`
`it fits over Aizawa’s circular sensor. Pet. 45; POR 43-45. That removes the very
`
`shape and functionality Ohsaki teaches is important to prevent slippage. Ex. 2004
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`¶¶93-95. Indeed, Ohsaki teaches that its longitudinal cover must be oriented with
`
`the longitudinal direction of the user’s arm. Ex. 1014 ¶[0019]; Ex. 2004 ¶93. Dr.
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`Kenny admitted that a circular structure has no longitudinal directionality. Ex.
`
`2008 165:20-166:5.
`
`Ohsaki also indicates that its convex surface prevents slipping only on the
`
`backhand side (i.e., watch-side) of the user’s wrist. Ex. 1014 ¶[0024]. Ohsaki’s
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`sensor has “a tendency to slip off” if positioned on the palm side of the user’s
`
`wrist. Id. ¶[0023], Figs. 3A-3B; Ex. 2004 ¶93. In contrast, Aizawa positions its
`
`sensor on the palm side of the wrist. Ex. 1006 Fig. 2. Aizawa requires this
`
`positioning so that the sensor “becomes close to the artery…of the wrist.” Id.
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`¶[0026]; see also id., e.g., Abstract, ¶¶[0002], [0009], [0027]; Ex. 2004 ¶94. A
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`POSITA starting with Aizawa’s sensor would not have been motivated to add
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`Ohsaki’s backhand side (i.e., watch-side) convex surface to prevent slipping.
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`Ohsaki teaches its convex surface has a “tendency to slip” at Aizawa’s required
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`palm-side measurement site. POR 43-45; Ex. 2004 ¶95; Ex. 1014 ¶[0023].
`
`Petitioner asserts “a POSITA would have understood that Ohsaki’s benefits
`
`are provided…on either side of the user’s wrist or forearm.” Reply 21. Petitioner
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`17
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`
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
`
`first points to Ohsaki’s claim 1, which refers to the “back side of a user’s wrist or a
`
`user’s forearm.” Id. 20 (emphasis in original). But Ohsaki discloses a
`
`“wristwatch-type” device (Ex. 1014 Title), and thus the “forearm” refers to the
`
`same anatomical junction—not some other measurement location. POR 43-45; Ex.
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`2004 ¶¶90-95. Petitioner also points to Ohsaki’s claim 5 and states that the claim
`
`does not mention “a backside of the wrist or forearm.” Reply 20 (emphasis
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`omitted). But Ohsaki’s claim 5 likewise does not mention a convex surface.
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`Indeed, Ohsaki’s claim 5 requires a sensor arranged “in a longitudinal direction of
`
`the user’s arm,” further supporting Masimo’s position.5 Moreover, as discussed
`
`above, Ohsaki’s overall disclosure undermines Petitioner’s proposed combination.
`
`Petitioner argues that Ohsaki’s features need not be “bodily incorporated.”
`
`Reply 21. But putting aside Petitioner’s failure to explain how a POSITA would
`
`combine Ohsaki’s longitudinal cover with Aizawa’s circular sensor, Petitioner’s
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`illustrated combination has a circular structure
`
`that eliminates Ohsaki’s
`
`longitudinal directionality. POR 43-45. Based on Ohsaki, a POSITA would have
`
`5 Ohsaki’s other claims also support Masimo’s position. For example,
`
`claims 1 and 2 specify a convex surface used on the back side of the wrist or
`
`forearm. Ex. 1014 Claims 1, 2. Claim 6 requires a longitudinal shape and
`
`orientation incompatible with Petitioner’s proposed circular sensor. See Ex. 1014
`
`Claim 6 (depending from claim 5).
`
`18
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`
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`IPR2021-00209 – Patent 10,376,191
`Apple v. Masimo
`
`believed that such a change would undesirably lead to slipping, undermining
`
`Petitioner’s asserted motivation to combine. Ex. 1014 ¶[0019]. “An inference of
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`nonobviousness is especially strong [because] the prior art’s teachings undermine
`
`the very reason being proffered as to why a person of ordinary skill would have
`
`combined the known elements.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
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`Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009).
`
`Petitioner also argues that “the advantages of a light permeable protruding
`
`convex cover would apply regardless of any alleged longitudinal directionality of
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`Ohsaki’s cover and regardless of where on the body such a convex cover was
`
`placed.” Reply 20. But none of Petitioner’s cited references support Petitioner’s
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`broad assertion. Ohsaki demonstrates that a convex surface alone does not prevent
`
`slipping because Ohsaki’s shape is designed to fit within the underlying bone
`
`structure of the wrist and forearm on the backhand side. Ex. 1014 ¶¶[0006],
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`[0019], [0023], [0024], Figs. 3A-3B. Petitioner claims “it is well-understood that
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`physically digging into the skin with a protrusion provides an additional adhesive
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`effect.” Reply 22. To the contrary
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