IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Poeze et al.
`In re Patent of:
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`10,912,501
`U.S. Patent No.:
`February 9, 2021
`Issue Date:
`Appl. Serial No.: 17/031,356
`Filing Date:
`September 24, 2020
`Title:
`USER-WORN DEVICE FOR NONINVASIVELY MEASURING
`A PHYSIOLOGICAL PARAMETER OF A USER
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`
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`Attorney Docket No. 50095-0042IP1
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PETITIONER’S NOTICE RANKING PETITIONS FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 10,912,501
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`1
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`
`Poeze et al.
`In re Patent of:
`
`10,912,501
`U.S. Patent No.:
`February 9, 2021
`Issue Date:
`Appl. Serial No.: 17/031,356
`Filing Date:
`September 24, 2020
`Title:
`USER-WORN DEVICE FOR NONINVASIVELY MEASURING
`A PHYSIOLOGICAL PARAMETER OF A USER
`
`
`
`Attorney Docket No. 50095-0042IP1
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITIONER’S NOTICE RANKING PETITIONS FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 10,912,501
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`Apple is filing two petitions (IPR2022-01271 and IPR2022-01272)
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`challenging U.S. Patent No. 10,912,501 (the “’501 Patent”). This paper provides
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`“(1) a ranking of the petitions in the order in which [Petitioner] wishes the Board to
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`consider the merits,…and (2) a succinct explanation of the differences between the
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`petitions, why the issues addressed by the differences are material, and why the
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`Board should exercise its discretion to institute….” Trial Practice Guide, 59-61.
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`I.
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`Ranking of Petitions
`Although both petitions are meritorious and justified, Apple requests that the
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`Board consider the petitions in the following order:
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`Rank
`1
`2
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`Petition
`IPR2022-01272
`IPR2022-01271
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`Primary Reference
`Lumidigm
`Mendelson-799
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`II.
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`Factors Supporting Institution, Including Material Differences
`Material differences exist between the petitions, which are non-redundant at
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`least in their reliance on different combinations of references that demonstrate the
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`obviousness of the Challenged Claims in materially different ways.
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`For example, IPR2022-01272 relies on Lumidigm as its primary reference,
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`and asserts grounds presenting Lumidigm in combinations with each of Scharf,
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`Kotanagi, and Tran. Lumidigm describes “electro-optical sensors for use in
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`biometric analysis of optical spectra of tissue” that are “built into the case of a
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`wristwatch 112 and operate[] based upon signals detected from the skin in the area
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`2
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`of the wrist.” Lumidigm, 11:61-64, Fig. 8B. Lumidigm’s wristwatch obtains data
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`indicative of spectroscopic characteristics of a patient’s blood or skin, which are
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`used to determine physiological parameters. See id., 3:44-45, 19:16-40.
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`In contrast, IPR2022-01271 relies on Mendelson-799, and asserts grounds
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`presenting Mendelson-799 in combinations with each of Aizawa, Ohsaki,
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`Goldsmith, Scharf, Dalke, and Kotanagi. Mendelson-799 describes a pulse
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`oximeter featuring a sensor housing 17 that accommodates “closely spaced light
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`emitting elements” and an array of twelve “discrete detectors (e.g., photodiodes).”
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`Mendelson-799, Abstract, 9:22-40, 10:16-37, FIGS. 7, 8.
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`These distinct primary references, in combination with various secondary
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`references, apply differently to the claims of the ’501 Patent. Additionally,
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`motivation to combine the distinct sets of references presented in the two petitions
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`materially differs. The petitions are not redundant, duplicative, or substantially
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`similar. Rather, each petition compellingly demonstrates the unpatentability of the
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`Challenged Claims, without repeating the same theory.
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`Furthermore, Masimo sought through collateral prosecution new claims
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`issued in the ’501 patent amidst its campaign against Apple involving serial
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`assertion of, thus far, several hundred claims across twenty-two patents in district
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`court and ITC proceedings. Despite IPR proceedings, and regardless of findings
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`that may occur in the co-pending ITC proceeding in which the ’501 patent is
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`3
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`presently asserted, it is entirely conceivable that Masimo will extend its campaign
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`of harassing serial litigation into the future through further district court actions.
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`Indeed, although Apple has every expectation that it will succeed in
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`demonstrating the invalidity of the single ’501 patent claim presently asserted at
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`the ITC based on grounds involving Lumidigm, that outcome would not preclude
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`Masimo from asserting the same claim (or any other claim of the ’501 patent) in a
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`future district court action. APPLE-1032, 6 (“an ITC determination cannot
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`conclusively resolve an assertion of patent invalidity, which instead requires either
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`district court litigation or a PTAB proceeding to obtain patent cancellation”).
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`Given the uncertainty of which claims might ultimately be asserted in future
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`district court actions, the first-ranked IPR2022-01272 petition challenges all thirty
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`’501 claims on Lumidigm-based grounds, not just the single claim asserted in the
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`ITC. Petitioner strongly desires substantive review of this petition by the Board, so
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`as to conclusively resolve invalidity over the included grounds.
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`Moreover, the majority of the references applied in the second-ranked
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`IPR2022-01271 petition are highly familiar to the Board and to Masimo, in view of
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`the Board’s invalidation of nearly all claims challenged across thirteen related
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`patents, based on grounds involving various combinations of Mendelson-799,
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`Aizawa, Ohsaki, and Goldsmith. E.g., Apple Inc. v. Masimo Corp., IPR2020-
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`01538 Pap. 43, 2, 9 (PTAB Feb. 23, 2022)(finding “claims 1–7 and 20–28 of the
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`4
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`’554 patent…unpatentable” based on a ground including Mendelson-799 and
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`Ohsaki); Apple Inc. v. Masimo Corp., IPR2020-01538 Pap. 31, 2, 9-10 (PTAB
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`May 2, 2022)(finding “claims 1–30 of the ’564 patent…unpatentable” based on
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`grounds including Aizawa, Ohsaki, and Goldsmith).
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`Indeed, given both the strong similarities between the ’501 Patent claims and
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`claims previously invalidated in IPR, and the triviality of features introduced by
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`Masimo in the ’501 Patent (e.g., “a protrusion…comprising a convex surface and a
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`plurality of openings extending through the protrusion and positioned over…three
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`photodiodes”), consideration of the challenges raised in the IPR2022-01271
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`petition would present no undue burden to the Board or to Masimo.
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`Due to word count constraints, two petitions were needed to address both
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`Lumidigm-based and Mendelson-799-based grounds. Given the context of
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`uncertainty created through Masimo’s serial litigation campaign, Apple
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`respectfully submits that institution of both petitions is more than justified. Indeed,
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`the Board’s institution of IPRs based on both petitions, which compellingly
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`demonstrate invalidity of the Challenged Claims based on materially different
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`grounds, would serve to efficiently address issues of invalidity for all parties,
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`including Masimo.
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`For at least these reasons, Petitioner respectfully requests that the Board
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`institute trial on both petitions.
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`Dated July 15, 2022
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`Respectfully submitted,
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` /Andrew B. Patrick/
`W. Karl Renner, Reg. No. 41,265
`Andrew B. Patrick, Reg. No. 63,471
`Daniel D. Smith, Reg. No. 71, 278
`Hyun Jin In, Reg. No. 70,014
`Grace Kim, Reg. No. 71,977
`Gretchen DeVries, Reg. No. 72,505
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the under-signed
`certifies that on July 15, 2022, a complete and entire copy of this Notice Ranking
`Petitions was provided via Federal Express, to the Patent Owner by serving the
`correspondence address of record as follows:
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`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`MASIMO CORPORATION (MASIMO)
`2040 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE CA 92614
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`/Michael Stanwyck/
`Michael Stanwyck
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 596-5938
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