Filed: September 14, 2021
`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: 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.
`
`
`
`
`
`
`
`Case IPR2021-00209
`U.S. Patent 10,376,191
`
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: 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.
`
`
`
`
`
`
`
`Case IPR2021-00209
`U.S. Patent 10,376,191
`
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION .................................................................................. 1
`
`II. MASIMO’S PIONEERING TECHNOLOGY ....................................... 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`The ’191 Patent ............................................................................ 4
`
`Introduction To Independent Claims ........................................... 6
`
`The ’191 Patent Prosecution ........................................................ 7
`
`Petitioner’s Challenge To Priority Date Of Claimed Subject
`Matter ........................................................................................... 8
`
`III. THE PETITION’S PROPOSED COMBINATIONS ............................. 9
`
`IV. CLAIM CONSTRUCTION ................................................................... 9
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART .................................. 10
`
`VI. LEGAL STANDARD .......................................................................... 10
`
`VII. GROUNDS 1A-1B DO NOT ESTABLISH OBVIOUSNESS ............ 12
`
`A.
`
`Introduction To Ground 1A ........................................................ 12
`
`1.
`
`2.
`
`3.
`
`Aizawa Uses Peripheral Detectors Around A Single
`Centrally Located LED .................................................... 12
`
`Inokawa Uses Peripheral LEDs Around A Single
`Centrally Located Detector .............................................. 13
`
`Petitioner’s Proposed Combination Of Aizawa And
`Inokawa ............................................................................ 14
`
`
`
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`B. Ground 1A Does Not Establish Obviousness ............................ 15
`
`1.
`
`A POSITA Would Not Have Been Motivated To
`Combine Inokawa’s Lens With Aizawa’s Sensor ........... 15
`
`a)
`
`b)
`
`c)
`
`d)
`
`Petitioner Admits Inokawa’s Lens Directs
`Light To The Center Of The Sensor ...................... 15
`
`A POSITA Would Not Have Been Motivated
`To Direct Light Away From Aizawa’s
`Detectors And Would Have No Reasonable
`Expectation Of Success When Doing So .............. 19
`
`Dr. Kenny’s New Opinions Are Improper,
`Contradict His Declaration And Undermine
`Petitioner’s Obviousness Challenge ...................... 23
`
`Petitioner’s Obviousness Challenge Also
`Improperly Relies On References Not
`Identified As Part Of Ground 1A Without An
`Articulated Motivation To Combine Or
`Expectation Of Success ......................................... 33
`
`2.
`
`Petitioner Identifies No Credible Basis To Add A
`Second LED To Aizawa .................................................. 36
`
`C.
`
`The Remaining Challenged Dependent Claims Are
`Nonobvious Over Ground 1A .................................................... 42
`
`D. Ground 1B Fails For The Same Reason As Ground 1A And
`For Additional Reasons .............................................................. 42
`
`1.
`
`Ohsaki Does Not Fix The Problems With Petitioner’s
`Proposed Combination ..................................................... 43
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`2.
`
`A POSITA Would Have Understood That Ohsaki’s
`Board Would Not Prevent Slippage With Aizawa’s
`Sensor ............................................................................... 43
`
`E.
`
`The Challenged Dependent Claims Are Nonobvious Over
`Ground 1B .................................................................................. 45
`
`VIII. GROUND 2 DOES NOT ESTABLISH OBVIOUSNESS .................. 46
`
`A.
`
`Introduction To Ground 2 .......................................................... 46
`
`1. Mendelson-1988 Uses Detectors Around Centrally
`Located LEDs .................................................................. 46
`
`2.
`
`Petitioner’s Proposed Combination Of Mendelson-
`1988 And Inokawa ........................................................... 47
`
`B. Ground 2 Does Not Establish Obviousness ............................... 48
`
`1.
`
`2.
`
`There Would Have Been No Motivation To Combine
`And No Reasonable Expectation Of Success .................. 48
`
`Petitioner’s Proposed Ground 2 Combination Does
`Not Include The Claimed Cover (Claim 9) ..................... 51
`
`3. Mendelson-1988 And Inokawa Do Not Have A
`“Plurality Of Detectors In A Circular Portion Of The
`Housing” And A “Lens Configured To Be Located
`Between Tissue Of The User And The Plurality Of
`Detectors” (Claim 1) ........................................................ 52
`
`4.
`
`The Petition Improperly Relies On References Not
`Identified As Part Of Ground 2 With No Analysis Of
`Any Motivation To Combine ........................................... 54
`
`-iii-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`C.
`
`The Challenged Dependent Claims Are Nonobvious Over
`Ground 2 ..................................................................................... 56
`
`IX. CONCLUSION ..................................................................................... 57
`
`
`
`
`
`-iv-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ................................................................. 11
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ................................................................. 10
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ..................................................... 42, 45, 56
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ................................................................... 11
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ................................................................. 34
`
`InTouch Techs., Inc. v. VGo Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ................................................................. 53
`
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ................................................................. 55
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ................................................................. 11
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ................................................................. 11
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ................................................................. 11
`
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................. 28, 30
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ................................................... 9
`
`-v-
`
`
`
`TABLE OF AUTHORITIES
`(Cont’d)
`
`Page No(s).
`
`In re Royka,
`490 F.2d 981 (C.C.P.A. 1974) ................................................................... 10
`
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ................................................................. 11
`
`In re Stepan Co.
`868 F.3d 1342 (Fed. Cir. 2017) ................................................................. 32
`
`Whitserve, LLC v. Computer Packages, Inc.,
`694 F.3d 10 (Fed. Cir. 2012) ..................................................................... 38
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 112 ................................................................................................. 8
`
`35 U.S.C. § 312 ......................................................................................... 35, 43
`
`37 C.F.R. § 42.100 ............................................................................................ 9
`
`37 C.F.R. § 42.104 .......................................................................................... 43
`
`
`
`
`
`-vi-
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`
`IPR2021-00209
`Apple Inc. v. Masimo Corporation
`I.
`
`INTRODUCTION
`
`Petitioner’s combinations all suffer from the same fundamental flaw.
`
`Petitioner seeks to add a convex lens taught by Inokawa to sensor configurations
`
`taught by either Aizawa or Mendeslson-1988 to improve “light collection
`
`efficiency.” But Inokawa increases light collection efficiency by using a convex
`
`lens to condense light to a centrally located detector:
`
`Emitter
`
`Detector
`
`Emitter
`
`Lens
`Inokawa Fig. 2 (color added)
`
`
`
`In contrast, both Aizawa and Mendelson-1988 have peripherally located detectors:
`
`
`
`Emitter
`
`Plate
`
`
`
`
`
`
`
`Detector
`Detector
` Aizawa Fig. 1B
`
` (color added)
`
`
`
`
`
`
`
`
`Detector
`Emitters
`Detector
`
` Mendelson-1988 Fig. 2B
` (color added)
`
`Adding Inokawa’s convex lens to Aizawa and Mendelson-1988 as proposed by
`
`Petitioner would direct light away from the detectors. That would decrease light
`
`-1-
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`IPR2021-00209
`Apple Inc. v. Masimo Corporation
`
`collection efficiency and seriously undermine the operation of Aizawa and
`
`Mendelson-1988’s sensors. A person of ordinary skill in the art (POSITA) would
`
`not be motivated to make Petitioner’s erroneous combinations:
`
`
` Ground One Combination Ground Two Combination
`
`
`
`
`
`Petitioner completely overlooks this fundamental deficiency. Nowhere does
`
`Petitioner explain why a POSITA would diminish the performance of the Aizawa
`
`and Mendelson-1988 sensors by directing light away from their detectors.
`
`Petitioner’s declarant, Dr. Kenny, confirmed at his deposition for related IPRs
`
`that Inokawa’s convex lens would indeed direct light toward the center of the
`
`underlying structure. See, e.g., Ex. 2006 202:11-204:20. Confronted with this
`
`critical flaw, Dr. Kenny resorted to contradicting his previous opinions and
`
`improperly asserting new opinions. For example, Dr. Kenny attempted to downplay
`
`the importance of light collection, identifying it as merely one consideration. Ex.
`
`2006 108:21-109:14. Dr. Kenny even argued a POSITA might want to decrease
`
`light collection. Id. But that contradicts Dr. Kenny’s declaration and the Petition’s
`
`only stated motivation to combine. Pet. 13-17, 26-29, 47-51; Ex. 1003 ¶¶89, 139.
`
`Dr. Kenny also jettisoned his own illustration of the proposed combinations,
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`-2-
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`IPR2021-00209
`Apple Inc. v. Masimo Corporation
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`claiming he had not intended to illustrate a particular structure in any detail. Ex.
`
`2006 51:14-52:16. Dr. Kenny instead argued the optics of a sensor are complicated
`
`and that a POSITA would arrive at a particular design through “trial and error [by]
`
`trying out different shapes, different detector positions, different spacings and so
`
`on.”1 Ex. 2006 189:11-190:13.
`
`None of Dr. Kenny’s new and improper opinions can fix the fundamental flaw
`
`in Petitioner’s combinations. Indeed, if anything, Dr. Kenny’s new arguments
`
`underscore the complexity of combining different physiological sensor designs.
`
`Such complexity alone undermines Petitioner’s obviousness arguments. In fact, Dr.
`
`Kenny testified Inokawa’s purported benefit would not be clear when used with a
`
`different configuration of emitters and detectors:
`
`I think one of ordinary skill in the art would understand
`that in Inokawa[,] the objective is to concentrate light at
`the detector, which is in the center axis of the drawing
`and that the lens is capable of providing that benefit. If
`we're going to move the lenses and the LEDs and detectors
`around and ask different questions, it’s -- it isn’t so obvious
`that Inokawa is specifically considering those scenarios.
`It’s a little more hypothetical.
`Ex. 2006 86:19-87:6. Dr. Kenny is correct. “[I]t isn’t so obvious” that Inokawa’s
`
`convex lens would improve “light collection efficiency” of the peripheral detector
`
`arrangement of Aizawa or Mendelson-1988. To the contrary, a POSITA would have
`
`
`1 Emphasis supplied unless otherwise noted.
`
`-3-
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`IPR2021-00209
`Apple Inc. v. Masimo Corporation
`
`believed that Inokawa’s convex lens would direct light away from such peripherally
`
`located detectors.
`
`Petitioner’s obviousness challenge also suffers from many additional flaws,
`
`as explained in detail below. The Board should affirm the patentability of all the
`
`challenged claims.
`
`II. MASIMO’S PIONEERING TECHNOLOGY
`
`Masimo is a global medical device technology company that develops and
`
`manufactures innovative patient monitoring technologies, medical devices, and a
`
`wide array of sensors. Inventor Joe Kiani founded Masimo in 1989 as a garage start-
`
`up that revolutionized noninvasive monitoring. Today, Masimo is publicly traded
`
`and employs over 6,300 people worldwide, with annual revenues of over $1.1
`
`billion. A host of manufacturers use Masimo’s technology in their devices,
`
`including Philips, Atom, Mindray North America, GE Medical, Spacelabs, and Zoll.
`
`A. The ’191 Patent
`
`Masimo’s U.S. Patent No. 10,376,191 (the “’191 Patent”) discloses and
`
`claims an optical physiological sensor that uses a novel design to improve detection
`
`efficiency. Masimo’s claimed physiological sensor uses multiple detectors, multiple
`
`emitters, and a lens with a protruding surface that together dramatically enhance the
`
`sensor’s effectiveness. For example, the protruding surface thins out the
`
`measurement site, resulting in less light attenuation by the measured tissue. Ex. 1001
`
`-4-
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`IPR2021-00209
`Apple Inc. v. Masimo Corporation
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`7:43-46. The protruding surface further increases the area from which attenuated
`
`light can be measured. Ex. 1001 7:46-48. The multiple detectors allow for an
`
`averaging of measurements that can reduce errors due to variations in the path of
`
`light passing through the tissue. Ex. 1001 9:13-18; see also id. 3:10-21, 4:13-24.
`
`The inventors discovered that these different components work together to provide
`
`greater noise cancellation and an order of magnitude increase in signal strength. Ex.
`
`1001 9:13-18, 20:8-24; see also id. 3:10-21, 4:13-24.
`
`The Examiner agreed during prosecution that the claimed combination of
`
`features—including multiple detectors in conjunction with a lens comprising a
`
`protruding surface—provided a patentable advance unique in the field. Ex. 1002 at
`
`258-259. Petitioner’s references do not differ significantly from the prior art the
`
`Examiner already considered and found does not teach or suggest the claimed
`
`invention. None of Petitioner’s references disclose a lens with a protruding surface
`
`positioned over multiple detectors (let alone combined with the other claimed
`
`features).
`
`-5-
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`IPR2021-00209
`Apple Inc. v. Masimo Corporation
`B.
`
`Introduction To Independent Claims
`
`The ’191 Patent has two independent claims: claims 1 and 9.2 Each claims
`
`an optical physiological sensor that includes, among other things, (1) a plurality of
`
`emitters, (2) at least four detectors, and (3) a lens that comprises a protruding surface
`
`arranged to cover the at least four detectors.
`
`Claim 1 reads:
`
`1. A noninvasive optical physiological sensor comprising:
`
`a plurality of emitters configured to emit light into tissue of a
`
`user;
`
`a plurality of detectors configured to detect light that has been
`
`attenuated by tissue of the user, wherein the plurality of detectors
`
`comprise at least four detectors;
`
`a housing configured to house at least the plurality of detectors
`
`in a circular portion of the housing; and
`
`a lens configured to be located between tissue of the user and
`
`the plurality of detectors when the noninvasive optical physiological
`
`sensor is worn by the user, wherein the lens comprises a single
`
`
`2 Appendix A reproduces the challenged claims with bracketed labels for
`
`convenience.
`
`-6-
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`IPR2021-00209
`Apple Inc. v. Masimo Corporation
`
`outwardly protruding convex surface configured to cause tissue of the
`
`user to conform to at least a portion of the single outwardly protruding
`
`convex surface when the noninvasive optical physiological sensor is
`
`worn by the user and during operation of the noninvasive optical
`
`physiological sensor.
`
`Claim 9 reads:
`
`9. An optical physiological measurement sensor comprising:
`
`a plurality of emitters configured to emit light into tissue of a
`
`user;
`
`a housing including a planar surface;
`
`at least four detectors arranged on the planar surface of the
`
`housing, wherein the four detectors are arranged in a grid pattern; and
`
`a lens forming a cover of the housing, wherein at least a portion
`
`of the lens protrudes from the housing and the lens comprises a single
`
`convex surface.
`
`C. The ’191 Patent Prosecution
`
`During prosecution, the Examiner agreed that the claimed combination of
`
`features—including multiple detectors in conjunction with a lens comprising a
`
`protruding surface—provided a patentable advance unique in the field. Ex. 1002 at
`
`259-260. The Examiner understood that the prior art included physiological sensors
`
`-7-
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`IPR2021-00209
`Apple Inc. v. Masimo Corporation
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`with multiple emitters and detectors. Id. at 258-259. The Examiner also understood
`
`that the prior art included physiological sensors with a single detector under a
`
`protrusion. Id. However, the Examiner concluded that the prior art did not suggest
`
`creating a physiological sensor using multiple detectors positioned under a lens
`
`with a protruding surface in combination with the other claimed elements. Id. at
`
`259-260. The Examiner recognized the technological advance of the claimed
`
`invention and correctly allowed the claims.
`
`D.
`
`Petitioner’s Challenge To Priority Date Of Claimed Subject Matter
`
`The ’191 Patent claims priority to multiple provisional applications, including
`
`two provisional applications filed on July 3, 2008. Ex. 1001 at 2, Item (60) Related
`
`U.S. Application Data. Petitioner asserts that “the Challenged Claims are not
`
`entitled to the 07/03/2008 priority date” and that “the earliest effective priority date
`
`for the Challenged Claims cannot be before 07/02/2009.” Pet. 2.
`
`Petitioner’s assertion is irrelevant and incorrect. First, Apple has identified
`
`no relevant reference that would be disqualified based on the priority date for the
`
`claim subject matter. Pet. 3. Second, Petitioner provides no expert testimony on the
`
`issue of priority or corresponding support under 35 U.S.C. § 112. Ex. 1003 ¶16.
`
`Third, at least U.S. Patent Application No. 61/078207, to which the ’266 Patent
`
`claims priority, provides support for Petitioner’s identified claim features. Ex. 1001
`
`at 2, Item (60) Related U.S. Application Data. For instance, Figures 1, 2A-2D, and
`
`-8-
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`IPR2021-00209
`Apple Inc. v. Masimo Corporation
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`3A-3D and the corresponding disclosure (e.g., ¶¶30-31, 44, 61, 63-64, 68) of U.S.
`
`Patent Application No. 61/078207 provide such support. Thus, the challenged
`
`claims are entitled to a priority date of at least July 3, 2008.
`
`III. THE PETITION’S PROPOSED COMBINATIONS
`
`Petitioner presents three grounds. Grounds 1A-1B (the “Aizawa grounds”)
`
`combine at least Aizawa (Ex. 1006) and Inokawa (Ex. 1007, translation at Ex. 1008).
`
`Pet. 2. Ground 2 (the “Mendelson ground”) combines Mendelson-1988 (Ex. 1015)
`
`and the same Inokawa reference. Id.
`
`Aizawa and Mendelson-1988 share the same general arrangement of
`
`peripheral detectors positioned around a central light source. Ex. 1006 Figs. 1A-1B;
`
`Ex. 1015 Figs. 2A-2B. In contrast, Inokawa arranges two LEDs on the periphery of
`
`its sensor and one detector in the center. Ex. 1008 Fig. 2. Petitioner nevertheless
`
`asserts a POSITA would have incorporated Inokawa’s lens into Aizawa and
`
`Mendelson-1988’s sensor, which both have periphery-located detectors, to “increase
`
`the light-gathering ability.” Pet. 14-15, 48.
`
`IV. CLAIM CONSTRUCTION
`
`Petitioner identifies no terms for construction. The Board should give the
`
`claim terms their ordinary and customary meaning, consistent with the specification,
`
`as a POSITA would understand them. 37 C.F.R. § 42.100(b); Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`
`-9-
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`IPR2021-00209
`Apple Inc. v. Masimo Corporation
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner asserts a POSITA “would have been a person with a working
`
`knowledge of physiological monitoring technologies. The person would have had a
`
`Bachelor of Science degree in an academic discipline emphasizing the design of
`
`electrical, computer, or software technologies, in combination with training or at
`
`least one to two years of related work experience with capture and processing of data
`
`or information, including but not limited to physiological monitoring technologies.”
`
`Pet. 4. Alternatively, Petitioner asserts a POSITA could have “a Master of Science
`
`degree in a relevant academic discipline with less than a year of related work
`
`experience in the same discipline.” Id.
`
`Masimo notes that Petitioner’s asserted level of skill (1) requires no
`
`coursework, training or experience with optics or optical physiological monitors; (2)
`
`requires no coursework, training or experience in physiology; and (3) focuses on
`
`data processing and not sensor design. Id. For this proceeding, Masimo nonetheless
`
`applies Petitioner’s asserted level of skill. Ex. 2004 ¶¶35-38.
`
`VI. LEGAL STANDARD
`
`A petition based on “obviousness requires a suggestion of all limitations in a
`
`claim.” CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
`
`(citing In re Royka, 490 F.2d 981, 985 (C.C.P.A. 1974)). A patent claim is not
`
`obvious unless “a skilled artisan would have been motivated to combine the
`
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`IPR2021-00209
`Apple Inc. v. Masimo Corporation
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`teachings of the prior art references to achieve the claimed invention, and that the
`
`skilled artisan would have had a reasonable expectation of success in doing so.”
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed.
`
`Cir. 2012) (citations omitted). To prevail on any obviousness ground, a petitioner
`
`may not simply identify individual claim components—it must show why a “skilled
`
`artisan, with no knowledge of the claimed invention, would have selected these
`
`components for combination in the manner claimed.” In re Kotzab, 217 F.3d 1365,
`
`1371 (Fed. Cir. 2000). The petitioner must support even simple modifications with
`
`some motivation to make the change. See In re Gordon, 733 F.2d 900, 902 (Fed.
`
`Cir. 1984).
`
`An appropriate obviousness inquiry cannot involve even a “hint of hindsight.”
`
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir. 2011).
`
`A petitioner may not “simply retrace[] the path of the inventor with hindsight,
`
`discount[] the number and complexity of the alternatives, and conclude[] that the
`
`invention ... was obvious.” Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520
`
`F.3d 1358, 1364 (Fed. Cir. 2008). Likewise, “[c]are must be taken to avoid hindsight
`
`reconstruction by using the patent in suit as a guide through the maze of prior art
`
`references, combining the right references in the right way so as to achieve the result
`
`of the claims in suit.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (internal
`
`quotations and citations omitted).
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`-11-
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`IPR2021-00209
`Apple Inc. v. Masimo Corporation
`VII. GROUNDS 1A-1B DO NOT ESTABLISH OBVIOUSNESS
`
`A.
`
`Introduction To Ground 1A
`
`Ground 1A combines two references: Aizawa and Inokawa.
`
`1.
`
`Aizawa Uses Peripheral Detectors Around A Single Centrally
`Located LED
`
`Aizawa discloses a sensor with four periphery-located photodetectors (22)
`
`around a single centrally located LED (21). Ex. 1006 Abstract, Fig. 1A.
`
`DETECTOR
`
`LED
`
`DETECTOR
`
`Aizawa Fig. 1B (cross-sectional view, color added)
`
`
`
`Aizawa’s Features
` Green: central emitter
`(21)
` Red: peripheral
`detectors (22)
`
`
`
`
`
`Aizawa Fig. 1A (top-down view, color added)
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`-12-
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`IPR2021-00209
`Apple Inc. v. Masimo Corporation
`
`Aizawa uses this specific configuration of multiple detectors arrayed around a single
`
`LED to ensure that at least one detector is near the measurement site, which Aizawa
`
`indicates improves measurement consistency. Id. ¶[0027]. Aizawa detects signals
`
`on the palm side of the wrist and explains that as long as “one of the photodetectors
`
`22 is located near the artery 11,” it is “possible to detect a pulse wave accurately.”
`
`Id. ¶¶[0026]-[0027], Fig. 2. Aizawa includes a flat transparent plate (6) that
`
`improves adhesion between the detector and the wrist, which Aizawa states
`
`improves the detection efficiency. Id. [0030]. Aizawa’s sensor does not use a lens.
`
`Ex. 2004 ¶¶40-41.
`
`2.
`
`Inokawa Uses Peripheral LEDs Around A Single Centrally
`Located Detector
`
`In contrast to Aizawa, Inokawa uses a convex lens (27) to focus light from
`
`LEDs (21, 23) on the periphery of a sensor to a single detector (25) in the center.
`
`Ex. 1008 ¶[0058], Fig. 2.
`
`Inokawa’s Features
` Green: peripheral emitters
`(21, 23)
` Red: central detector (25)
` Blue: convex lens (27)
` Arrows showing direction of
`light in original, highlighted
`in yellow added
`
`
`
`
`
`Inokawa Fig. 2 (color added)
`
`-13-
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`
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`IPR2021-00209
`Apple Inc. v. Masimo Corporation
`
`As illustrated above, Inokawa discloses light reflecting off the body and passing
`
`through the lens, which directs incoming light to the centrally located detector. Ex.
`
`1008 ¶[0058]. Thus, Inokawa’s convex lens focuses incoming light away from the
`
`periphery and towards the sensor’s center, where the detector is located. Ex. 2004
`
`¶¶42-43.
`
`3.
`
`Petitioner’s Proposed Combination Of Aizawa And Inokawa
`
`Claim 1 of the ’191 Patent requires “a lens configured to be located between
`
`tissue of the user and the plurality of detectors when the noninvasive optical
`
`physiological sensor is worn by the user, wherein the cover comprises a single
`
`outwardly protruding convex surface.” Ex. 1001 Claim 1. Claim 9 requires “a lens
`
`forming a cover of the housing, wherein at least a portion of the lens protrudes from
`
`the housing and the lens comprises a single convex surface.” Id. Claim 9.
`
`Petitioner admits Aizawa does not disclose a lens with a protruding surface as
`
`the claims require. Pet. 13. Petitioner thus argues a POSITA would have replaced
`
`Aizawa’s flat plate for adhesion with Inokawa’s convex lens “to enhance light
`
`collection efficiency, specifically by modifying the flat cover of Aizawa to include
`
`a convex protrusion that acts as a lens.” Id. 14. Petitioner argues: “[t]he lens of
`
`Inokawa would provide precisely such a benefit to Aizawa’s device by
`
`refracting/concentrating the incoming light signals reflected by the blood.” Id. 14-
`
`-14-
`
`
`
`IPR2021-00209
`Apple Inc. v. Masimo Corporation
`
`15. Thus, Petitioner’s motivation for this alteration is increasing the amount of light
`
`reaching the detectors. Petitioner illustrates its proposed combination as follows:
`
`
`Petitioner’s Proposed Combination (Pet. 15)
`
`
`
`But neither Petitioner nor Dr. Kenny explains why a POSITA would have believed
`
`that Inokawa’s convex lens, which concentrates light to a central detector, would
`
`enhance light collection in Aizawa’s sensor (and the illustrated combination) with
`
`peripheral detectors. Id. 14-15 (citing Ex. 1003 ¶¶88-89); Ex. 2004 ¶¶44-47.
`
`B. Ground 1A Does Not Establish Obviousness
`1.
`
`A POSITA Would Not Have Been Motivated To Combine
`Inokawa’s Lens With Aizawa’s Sensor
`a)
`
`Petitioner Admits Inokawa’s Lens Directs Light To The
`Center Of The Sensor
`
`Petitioner and Dr. Kenny both admit a convex cover condenses light towards
`
`the center of the sensor and away from the periphery. Petitioner admits that “the
`
`lens of Inokawa ... serves a condensing function and thus, as with any other lens,
`
`refracts light passing through it.” Pet. 33; see also Ex. 2019 at 44; see also Ex. 2025
`
`Claim 12. Petitioner illustrates this condensing function using “the drawing below
`
`which compares the length of non-refracted light ... bouncing off an artery with that
`
`-15-
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`IPR2021-00209
`Apple Inc. v. Masimo Corporation
`
`of refracted light.” Pet. 33. Petitioner’s figure (below) illustrates a POSITA’s
`
`understanding that Inokawa’s convex lens, as implemented in Aizawa’s sensor,
`
`would direct light toward the center of the sensor. Id.
`
`
`
`Petitioner’s Illustration of Inokawa’s Light-Redirection (Pet. 33; see also Ex. 2019
`at 45)
`
`Dr. Kenny similarly included the above illustration in his declaration and explained
`
`that, when using a protruding surface such as Inokawa’s lens, “the incoming light is
`
`‘condensed’ toward the center.” Ex. 1003 ¶102; see also Ex. 2020 at 69-70; Ex.
`
`2004 ¶¶48-50. Dr. Kenny confirmed at his deposition for related IPR proceedings
`
`that the protruding surface in his proposed combination would cause “more light in
`
`the center than at the outer edge in this example.” Ex. 2006 204:1-13. Dr. Kenny
`
`agreed “that’s because light’s being directed towards the center and away from the
`
`edge….” Id. 204:14-20.
`
`Petitioner’s and Dr. Kenny’s admissions are consistent with Inokawa’s
`
`disclosure. Ex. 2004 ¶51. As shown in Figure 2 (below), Inokawa illustrates that
`
`the protruding surface condenses light towards the central detector 25. Ex. 1008
`
`-16-
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`
`
`IPR2021-00209
`Apple Inc. v. Masimo Corporation
`
`¶[0058], Fig. 2. The protruding surface in Inokawa works with the particular
`
`configuration of emitters and detectors: Inokawa increases light collection by
`
`increasing the amount of light that reaches the centrally located detector. Id.; Ex.
`
`2004 ¶52.
`
`Inokawa’s Features
` Green: peripheral emitters
`(21, 23)
` Red: central detector (25)
` Blue: convex lens (27)
` Arrows showing direction of
`light in original, highlighted
`in yellow
`
`
`Inokawa Fig. 2 (color added)
`
`
`
`Dr. Kenny agreed that Inokawa “provides this benefit by concentrating light towards
`
`the detector in the center….” Ex. 2006 83:15-84:2. Dr. Kenny explained that “one
`
`of ordinary skill in the art would understand that in Inokawa[,] the objective is to
`
`concentrate light at the detector, which is in the center axis of the drawing and that
`
`the lens is capable of providing that benefit.” Ex. 2006 86:19-87:1. Indeed,
`
`Petitioner admits: “reflected light headed toward the detectors is refracted and
`
`condensed as it passes the lens.” Pet. 28.
`
`-17-
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`
`
`IPR2021-00209
`Apple Inc. v. Masimo Corporation
`
`The ’191 Patent further confirms that a POSITA would have this
`
`understanding. Figure 14B (below) “illustrates how light from emitters (not shown)
`
`can be focused by the protrusion 605 onto detectors.” Ex. 1001 36:3-6.
`
`
`’191 Patent (Ex. 1001) Fig. 14B (highlighting added to show direction of light)
`
`The ’191 Patent explains that “[w]hen the light rays 1420 enter the protrusion 605,
`
`the protrusion 605 acts as a lens to refract the rays into rays 1422.” Id. 36:13-15.
`
`As shown in the ’191 Patent’s exemplary structure, the protruding surface directs
`
`light from the sides toward the center. Id. Fig. 14B; see Ex. 2004 ¶¶53-54.
`
`Accordingly, Petitioner, Dr. Kenny, and the ’191 Patent all agree that a
`
`POSITA would have understood that Inokawa’s protruding surface would direct
`
`incoming light towards the center of the sensor. This undermines Petitioner’s
`
`proposed combination because Aizawa’s detectors are located at the periphery of the
`
`sensor, as discussed in more detail below. Ex. 2004 ¶55.
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`-18-
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`
`
`IPR2021-00209
`Apple Inc. v. Masimo Corporation
`b) A POSITA Would Not Have Been Motivated To Direct
`Light Away From Aizawa’s Detectors And Would Have No
`Reasonable Expectation Of Success When Doing So
`
`Petitioner erroneously places Inokawa’s convex lens on Aizawa’s sensor,
`
`resulting in a sensor with the emitter (green) in the center and the detectors (red) on
`
`the periphery:
`
`
`Petitioner’s Proposed Combination (Pet. 27)
`
`
`
`Petitioner claims a POSITA would have been motivated to “further Aizawa’s
`
`objective of enhancing its light-collection efficiency.” Pet. 27. But a POSI
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