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`Apple, Inc. v. Masimo Corp.
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`Dr. R. James Duckworth
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`Page 1
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` _____________________________
` APPLE INC., )
` )
` Petitioner, )
` ) Case Nos.
` vs. ) IPR2022-01291
` ) IPR2022-10465
` MASIMO CORPORATION, )
` ) U.S. Patent
` Patent Owner. ) 10,687,745
` _____________________________)
`
`
` DEPOSITION OF DR. R. JAMES DUCKWORTH
` August 9, 2023
` 10:00 a.m.
`
`
`
` Reported by: Eileen Mulvenna, CSR/RMR/CRR
`
`
` ________________________________________________
` DIGITAL EVIDENCE GROUP
` 1730 M Street, NW, Suite 812
` Washington, D.C. 20036
` (202) 232-0646
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`APPLE 1059
`Apple v. Masimo
`IPR2022-01291
`
`1
`
`
`
`Apple, Inc. v. Masimo Corp.
`
`Dr. R. James Duckworth
`
`Page 1
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` _____________________________
` APPLE INC., )
` )
` Petitioner, )
` ) Case Nos.
` vs. ) IPR2022-01291
` ) IPR2022-10465
` MASIMO CORPORATION, )
` ) U.S. Patent
` Patent Owner. ) 10,687,745
` _____________________________)
`
`
` DEPOSITION OF DR. R. JAMES DUCKWORTH
` August 9, 2023
` 10:00 a.m.
`
`
`
` Reported by: Eileen Mulvenna, CSR/RMR/CRR
`
`
` ________________________________________________
` DIGITAL EVIDENCE GROUP
` 1730 M Street, NW, Suite 812
` Washington, D.C. 20036
` (202) 232-0646
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`APPLE 1059
`Apple v. Masimo
`IPR2022-01291
`
`1
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`
`
`8/9/2023
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`Apple, Inc. v. Masimo Corp.
`
`Dr. R. James Duckworth
`
`Page 2
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` REMOTE VIDEOTAPED DEPOSITION of
` DR. R. JAMES DUCKWORTH, Declarant for Patent Owner
` in the above-titled action, held on Wednesday,
` August 9, 2023, commencing at approximately 10:00
` a.m., before Eileen Mulvenna, CSR/RMR/CRR, Certified
` Shorthand Reporter, Registered Merit Reporter,
` Certified Realtime Reporter, and Notary Public of
` the State of New York.
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` APPEARANCES:
`
` ON BEHALF OF THE PETITIONER:
` FISH & RICHARDSON
` BY: PATRICK BISENIUS, ESQ.
` NICHOLAS STEPHENS, ESQ.
` KIM LEUNG, ESQ.
` 3200 RBC Plaza
` 60 South Sixth Street
` Minneapolis, Minnesota 55402
` 202.783.5070
` bisenius@fr.com
`
` ON BEHALF OF PATENT OWNER:
` KNOBBE, MARTENS, OLSON & BEAR, LLP
` BY: DANIEL KIANG, ESQ.
` 2040 Main Street
` Irvine, California 92614
` 949.760.0404
` daniel.kiang@knobbe.com
`
` ALSO PRESENT: DANIEL HOLMSTOCK, Document Technician
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` I N D E X
` WITNESS EXAMINATION BY PAGE
` Dr. R. James
` Duckworth MR. BINENIUS 7
`
` E X H I B I T S
` PAGE
` Exhibit 1001 US Patent 10,687,745 17
` Exhibit 2070 Declaration of Dr. R. James 46
` Duckworth
` Exhibit 1050 A Neo-Reflective Wrist 65
` Pulse Oximeter Article
` Exhibit 1051 A Wireless Reflectance 66
` Pulse Oximeter With Digital
` Baseline Control for
` Unfiltered
` Photoplethysmograms Article
` Exhibit 1052 US Patent Application No. 71
` 2006/0253010
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` E X H I B I T S, CON'T
` Exhibit 1053 Implementation of a 72
` Wireless Pulse Oximetry
` Based on Wrist Band Sensor
` Article
` Exhibit 1054 WO 01/17421 A1 73
` Exhibit 1055 Optimum Place for Measuring 74
` Pulse Oximeter Signal in
` Wireless Sensor-Belt
` Article
` Exhibit 1056 WPI Qualifying Project 74
` Report
` Exhibit 1057 Stein Article 76
` Exhibit 1058 U.S. Patent No. 7,468,036 76
` Exhibit 1005 US Patent No. 9,392,946 78
` Exhibit 1004 US Patent No. 8,670,819 87
` Exhibit 1007 US Patent No. 6,483,976 104
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` THE REPORTER: Good morning, Counsel.
` My name is Eileen Mulvenna. I'm the court
` reporter for today's deposition of James
` Duckworth.
` The attorneys participating in this
` deposition acknowledge that I am not
` physically present in the deposition room and
` that I will be reporting this deposition
` remotely. They further acknowledge that, in
` lieu of an oath administered in person, I
` will administer the oath remotely.
` Do the parties and their counsel
` consent to this arrangement and waive any
` objections to this manner of reporting?
` MR. KIANG: Yes.
` MR. BINENIUS: I agree.
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` DR. R. JAMES DUCKWORTH,
` having been duly sworn by Eileen Mulvenna,
` a Notary Public of the State of New York,
` was examined and testified as follows:
` EXAMINATION
` BY MR. BINENIUS:
` Q. We're here today regarding IPR
` proceeding IPR-2022-01291 and IPR proceeding
` IPR-2022-10465. Both proceedings regarding
` U.S. Patent No. 10,687,7745.
` Can you please state your full name?
` A. Reginald James Duckworth.
` Q. Can you please state your city of
` residence?
` A. St. Marys, Georgia.
` Q. Is there any reason that you cannot
` give truthful and accurate testimony today?
` A. Nope.
` Q. To ensure clarity, I will define
` several terms that will be used throughout this
` deposition. When I use the terms "Patent Owner" or
` "Massimo," I'm referring to Massimo Corporation, the
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` Patent Owner in this proceeding.
` Do you understand?
` A. Yes, I do.
` Q. When I use the term "Apple" or
` "Petitioner," I'm referring to Apple, Inc.
` Do you understand?
` A. Yes.
` Q. When I use the term "'745 patent," I
` am referring to U.S. Patent No. 10,687,745.
` Do you understand?
` A. Yes, I do.
` Q. When I use the phrase "these IPRs" or
` "these proceedings," I'm referring to IPR proceeding
` No. IPR-2022-01299 and IPR proceeding
` No. IPR-2022-01465 filed against the '745 patent.
` Do you understand?
` A. Yes, I do.
` Q. When I use the acronym "POSITA," I'm
` referring to a person of ordinary skill in the art
` at the time of the alleged invention.
` Do you understand?
` A. Yes, I do.
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` Q. You have prepared two declarations for
` these proceedings; correct?
` A. Yes.
` Q. When I use the term "your first
` declaration," I'm referring to Exhibit 2002 in both
` proceedings.
` Do you understand?
` A. Can you say that again, please,
` Counselor?
` MR. KIANG: Objection to form.
` BY MR. BINENIUS:
` Q. When I use the term "your first
` declaration," I'm referring to Exhibit 2002 in both
` proceedings.
` Do you understand?
` A. By "first declaration," let me -- let
` me find that in the documents.
` MR. KIANG: Counsel, I think there may
` be some confusion. There are two different
` Exhibit 2002s.
` MR. BINENIUS: Oh, yes, there's one
` for each proceeding, correct.
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` THE WITNESS: In the documents I
` received, I don't see a copy of my first
` declarations, the 2002 that you just referred
` to.
` BY MR. BINENIUS:
` Q. I may end up not asking questions
` specifically about that document, but I have
` uploaded one of your first declarations, the
` declaration Exhibit 2002 for IPR proceeding
` 2022-01291. If we do need to talk about it, we can
` refer to the electronic copy that I uploaded.
` A. Yes, I might want to work with a paper
` copy, in which case I'd like to print that out later
` if necessary.
` Q. If we get to it, that's fine.
` Moving on, when I use the term "your
` second declaration," I'm referring to Exhibit 2070
` in these proceedings.
` Do you understand?
` A. Yes, I do.
` Q. When I use the term "your
` declarations," I'm referring collectively to both of
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`
` your declarations in these proceedings.
` Do you understand?
` A. Well, there are a total of three
` declarations in total.
` Q. Ah, correct. I'm referring to all
` three of your declarations in these proceedings.
` A. Yes.
` Q. Can you describe how you prepared for
` today's deposition?
` A. I reviewed my declaration and the
` exhibits.
` Q. By your declaration, you're referring
` to Exhibit 2070?
` A. And the file first, the previous --
` the first two declarations, yes.
` Q. Approximately how much time did you
` spend preparing for today's deposition?
` A. For the deposition, maybe in total
` about 50 hours.
` Q. As part of your preparation to testify
` today, can you please identify each person you
` communicated with either in person or via video or
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` telephone conference?
` A. That would be Massimo counselors --
` sorry, the Knobbe Martens counselors. So Daniel
` that's on the call today; Carol, I forget her last
` name; Brian, and I forget his last name; and
` Jeremiah, I forget his last name.
` Q. As part of your preparation for
` today's deposition, did you conduct any independent
` searches, such as searches on the Internet?
` A. No.
` Q. As part of your preparation for
` today's deposition, did you review any documents
` that are not currently a record in either of the
` proceedings?
` A. Nope.
` Q. When were you first contacted by
` someone on behalf of Massimo?
` A. Regarding these proceedings?
` Q. Have you previously worked with
` Massimo on other proceedings?
` A. Yes.
` Q. When did you initially first begin
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` working with Massimo?
` A. I believe a couple of years ago.
` Yeah, approximately two years ago, I think.
` Q. Do you recall when Massimo contacted
` you regarding these specific proceedings?
` MR. KIANG: I'll object to privilege.
` Dr. Duckworth, you may answer to the
` extent it doesn't reveal any communications
` with counsel. You may answer when Massimo or
` Massimo's attorneys contacted you about these
` proceedings.
` THE WITNESS: I don't remember.
` BY MR. BINENIUS:
` Q. Do you have a written agreement that
` governs your work on this matter?
` A. Yes, I do.
` Q. Had you heard of Massimo prior to
` being contacted by Massimo --
` A. Yes.
` Q. -- to conduct --
` (Cross talk.)
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` BY MR. BINENIUS:
` Q. Do you recall when you had first heard
` of Massimo?
` A. It would be maybe 20 years ago.
` Something in that time frame. A long time ago.
` Q. When did you first become aware of the
` '745 patent?
` A. I don't remember exactly. Probably
` over a year ago.
` Q. Are you aware that the '745 patent is
` currently involved in a district court litigation
` between Apple and Massimo?
` MR. KIANG: Objection, scope.
` THE WITNESS: I -- I'm not sure. I --
` I don't know. Maybe I can clarify that that
` I know the '745 patent was part of the --
` some ITC proceeding. I don't know if that's
` what you're referring to.
` BY MR. BINENIUS:
` Q. Without revealing privileged
` communications, can you please describe the process
` by which you prepared your declaration? For
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` example, did you write every word throughout the
` entire process, did counsel for the Patent Owner
` prepare your first drafts that you revised, or did
` something else happen?
` MR. KIANG: Objection to form. And,
` also, objection, privileged.
` Dr. Duckworth, you may answer without
` revealing the contents of any communications
` with counsel.
` THE WITNESS: I produced my
` declarations in consultation with counsel.
` They are my opinions in the declarations.
` BY MR. BINENIUS:
` Q. What percentage of the arguments and
` theories for validity addressed in your declarations
` did you personally create as opposed to being told
` those arguments and theories by someone else?
` MR. KIANG: Objection to form.
` Objection, privileged.
` Dr. Duckworth, you may answer to the
` extent you can answer without revealing the
` contents of any communications with counsel.
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` THE WITNESS: I prefer not to answer.
` BY MR. BINENIUS:
` Q. Prior to your work on these IPR
` proceedings, did you ever communicate in any way
` with any of the named inventors of the '745 patent?
` A. No.
` Q. Did you have anyone such as an
` assistant help you with your declarations for these
` IPR proceedings?
` A. No.
` Q. Do you currently have any opinions
` about the '745 patent that are not contained in your
` declarations?
` A. No.
` Q. Are you currently aware of any errors
` that exist in your declarations?
` A. Nope.
` Q. During your career, approximately how
` many times have you been retained as an expert in
` litigation matters or IPR matters?
` A. Maybe ten times, also. Approximately
` ten.
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` Q. During your career, approximately how
` many times have you been deposed in such matters?
` A. A couple of times.
` (Exhibit 1001, US Patent 10,687,745.)
` Q. All right. I'd like to turn to the
` '745 patent, which is Exhibit 1001. Do you have
` that in front of you?
` A. I do, yes.
` Q. Have you read this entire patent?
` A. Yes.
` Q. Is it your opinion that the
` specification and figures of the '745 patent enable
` a POSITA to practice the claims of the '745 patent?
` MR. KIANG: Objection, relevance,
` scope.
` THE WITNESS: Can you state the
` question again, please, Counselor?
` BY MR. BINENIUS:
` Q. Do you believe that the specification
` and figures of the '745 patent enable a POSITA to
` practice the claims of the '745 patent?
` A. Yes.
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` MR. KIANG: Same objections.
` BY MR. BINENIUS:
` Q. Do you believe that a POSITA having
` all the ordinary knowledge and skills of a POSITA in
` this field would be able to practice the claims of
` the '745 patent based on the specification and
` figures of the '745 patent; or would a POSITA need
` additional resources, skills, or knowledge to
` practice the claims?
` MR. KIANG: Same objections.
` THE WITNESS: I believe I answered
` that question already.
` BY MR. BINENIUS:
` Q. I want to turn to the claims of the
` '745 patent, specifically starting with Claim 20.
` Looking at Claim 20, after the preamble, the first
` element reads, "a physiological monitoring device
` comprising."
` Do you see that?
` A. I do, yes.
` Q. In comparing that to Claim 1, does
` that recitation match the preamble of Claim 1?
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`Page 19
` A. Claim 1 states, "a physiological
` monitoring device comprising," and in Claim 20 says,
` "a physiological monitoring device comprising."
` Q. Turning to the next element of
` Claim 20, starting, "a plurality of light-emitting
` diodes," that element is the same as the next
` element of Claim 1; is that correct?
` A. I see that Claim 1 says, "a plurality
` of light-emitting diodes configured to emit light in
` a first shape," and I see that Claim 20 says, "a
` plurality of light-emitting diodes configured to
` emit light in a first shape."
` Q. So do you agree that they have the
` same recitations?
` A. Yes.
` Q. Turning to the next element of
` Claim 20, starting, "a material configured to be
` positioned," do you agree that this element is the
` same as the next element of Claim 1?
` MR. KIANG: Objection to form.
` THE WITNESS: Yeah, I agree they are
` the same words.
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` BY MR. BINENIUS:
` Q. Turning to the next element of
` Claim 20, starting, "a plurality of photodiodes," do
` you agree that this element is the same as the next
` element of Claim 1?
` A. Yes, I see that they say the same
` words.
` Q. Turning to the next element of
` Claim 20, starting, "a surface comprising," do you
` agree that this element is the same as the next
` element of Claim 1?
` A. Yes, I agree they're the same words.
` Q. Turning to the next element of
` Claim 20, starting, "a light block configured," do
` you agree that this element is the same as the next
` element of Claim 1?
` A. No, they don't state the same thing.
` Q. What is the difference between this
` element and the corresponding element in Claim 1?
` A. Claim 1 states, "a light block
` configured to prevent at least a portion of the
` light emitted from the plurality of light-emitting
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`Page 21
` diodes from reaching the plurality of photodiodes
` without" --
` THE REPORTER: Excuse me -- excuse me,
` Doctor. You need to slow down when you're
` reading, please.
` THE WITNESS: Oh, I'm sorry.
` Okay. So Claim 1 says, "a light block
` configured to prevent at least a portion of
` the light emitted from the plurality of
` light-emitting diodes from reaching the
` plurality of photodiodes without first
` reaching the tissue; and," and Claim 20
` reads, "a light block configured to prevent
` at least a portion of light from the
` plurality of light-emitting diodes from
` reaching the plurality of photodiodes without
` first reaching the tissue; and."
` BY MR. BINENIUS:
` Q. Oh, is the difference that the word
` "the" is omitted before the word "light"?
` A. Well, there's the word "the" missing
` and also "emitted." That's what I can see just
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`
` looking through there.
` Q. Turning to the next element of
` Claim 20, starting, "a processor configured to,"
` other than the semicolon and the word "and" at the
` end of this element, do you agree that this element
` is the same as the last element of Claim 1?
` A. Yes, I see they are the same words.
` Q. Let's now turn to Figure 3 of the '745
` patent. Can you please explain what this figure is
` showing?
` A. So the '745 patent describes Figure 3.
` It says, "Figure 3 illustrates schematically a side
` view of a three-dimensional pulse oximeter sensor
` according to an embodiment of the present disclosure
` [sic]."
` Q. Can you please describe the components
` of this pulse oximetry sensor shown in Figure 3?
` A. So we have a tissue measurement site
` 102. We have an emitter 302. We have a light
` diffuser 304. We have a light absorbing detector
` photo 306, a light concentrator 308, and a detector
` 310.
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` Q. The emitter 302 is a light source that
` emits light that is attenuated through tissue, such
` as the skin of a person; is that correct?
` A. You're referring specifically to
` Figure 3, Counselor?
` Q. Correct.
` A. Can you say the question again then,
` please?
` Q. The emitter 302 is a light source that
` emits light that is attenuated through tissue, such
` as the skin of a person; is that correct?
` A. Yes.
` Q. And the detector 310 captures and
` measures light that has been attenuated by the
` tissue of the person using the device; is that
` correct?
` A. In Figure 3 -- Figure 3, yes.
` Q. Continuing with Figure 3, in this
` example, the site that the light is being emitted
` into and captured from is the person's finger; is
` that correct?
` A. As shown in Figure 3, yes.
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` Q. Can you please now turn to Figure 5 --
` sorry. I want to go to 4B first.
` This is another example of a pulse
` oximetry sensor; is that correct?
` A. Figure 4P -- excuse me. "Figure 4B
` illustrates the top view of a portion of the
` three-dimensional pulse oximetry sensor shown in
` Figure 4A [sic]."
` Q. And in Figure 4B, the pulse oximetry
` sensor is sensing light attenuated at a person's
` finger; is that correct?
` A. Can you ask the question again,
` please, Counselor?
` Q. In Figure 4B, the pulse oximetry
` sensor senses light attenuated at a person's finger;
` is that correct?
` A. That's correct.
` Q. Can you please now turn to Figure 8.
` And can you please explain what is being shown in
` Figure 8?
` A. Figure 8, as described by '745 patent,
` illustrates a block diagram of an example pulse
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`Page 25
` oximeter system capable of non-invasively measuring
` one or more blood analytes in a [inaudible] patient,
` according to an embodiment of the disclosure.
` Q. Is the pulse oximetry system of
` Figure 8 a different representation of the pulse
` oximetry system of Figure 3, or does it differ in
` some significant way?
` MR. KIANG: Objection, form.
` THE WITNESS: Figures 3 and Figure 8
` are very different. I don't understand your
` question.
` BY MR. BINENIUS:
` Q. I can rephrase.
` Do you understand Figure 8 to be
` showing different components of the pulse oximetry
` sensor of Figure 3, or is Figure 8 a different
` embodiment from Figure 3?
` MR. KIANG: Objection to form.
` THE WITNESS: I haven't considered
` that for my declaration. So I do not have an
` opinion on that today.
`
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`
` BY MR. BINENIUS:
` Q. Figure 8 shows that light is being
` emitted into and captured from the person's finger;
` is that correct?
` A. Figure 8 shows an emitter 804, a
` finger representation 102, and a detector 806.
` Q. I'm going to turn to Column 12 of the
` '745 patent, and specifically starting at line 16 of
` Column 12.
` This paragraph of Column 12 is part of
` the description of Figure 8 which we were just
` discussing; is that correct?
` A. Let me see. So we're at lines -- can
` you repeat the lines, please -- or the column?
` Q. Column 12, line 16.
` A. Yes, it's part of Figure 8
` description, yes.
` Q. Can you please read the first sentence
` of the paragraph, starting at line 16, out loud?
` A. "The pulse oximetry system can measure
` analyte concentrations at least in part by detecting
` optical radiation attenuated by tissue at a
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`
` measurement site 102."
` Q. So this sentence is saying that the
` pulse oximetry system 800 of Figure 8 can be used to
` detect optical radiation attenuated through tissue
` at a measurement site; is that correct?
` A. That's what it says, yes.
` Q. And based on the rest of the
` disclosures of the '745 patent, this would include
` performing pulse oximetry to determine various
` physiological parameters, such as blood oxygen
` content; is that correct?
` A. Can you repeat the question, please?
` Q. Based on the disclosures of the '745
` patent as a whole, the pulse oximetry described in
` this paragraph would include determining various
` physiological parameters, such as blood oxygen
` content; is that correct?
` A. That is correct.
` Q. And as you previously mentioned,
` Figure 8 shows the measurement site is the person's
` finger; is that correct?
` A. All I said was that Figure 8 shows an
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`
` emitter, a finger 102, and a detector.
` Q. Based on your review of the '745
` patent, would you consider the finger to be the
` measurement site in Figure 8?
` MR. KIANG: Objection, scope.
` THE WITNESS: The next sentence that
` we were reading says, "The measurement site
` 102 can be any location on a patient's body,
` such as finger, foot, earlobe, wrist,
` forehead, or the like."
` BY MR. BINENIUS:
` Q. Okay. So the measurement site could
` be any location on a patient's body; is that
` correct?
` A. That is what the '745 patent states
` there, yes.
` Q. Does the '745 patent identify any
` changes that would need to be made to the
` physiological measurement system 800 to perform
` pulse oximetry at the patient's wrist rather than
` the finger?
` A. Could you ask the question again,
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`
` please, Counselor?
` Q. Does the '745 patent identify any
` changes that would need to be made to the
` physiological measurement system 800 to perform
` pulse oximetry at the patient's wrist instead of the
` finger?
` A. I believe that the descriptions and
` diagrams, for example, Figure 7A and 7B, describe a
` reflective pulse oximeter sensor that would be
` appropriate for use at the wrist.
` Q. What are the modifications made in the
` examples in Figure 7A and 7B to allow for
` measurement at the wrist rather than the finger?
` MR. KIANG: Objection to form.
` THE WITNESS: The main difference is
` the description of a reflective pulse
` oximeter sensor.
` BY MR. BINENIUS:
` Q. What makes the pulse oximeter sensor
` reflective?
` A. The --
` THE WITNESS: I'm sorry. Did someone
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` say something?
` Sorry, could you repeat the question
` then, please, Counselor?
` BY MR. BINENIUS:
` Q. Yes.
` What makes the pulse oximeter sensor
` shown in Figure 7A a reflective sensor?
` A. The emitter and the detectors are on
` the same side of the tissue.
` Q. Turning again to Figure 8 and its
` related description in Column 12, does the '745
` patent describe any modifications to the components
` shown in Figure 8 to allow for pulse oximetry at the
` wrist rather than the finger?
` MR. KIANG: Objection to form.
` THE WITNESS: The description in
` Column 12 related to Figure 8, where it says,
` "The measurement site 102 can be any location
` on a patient's body, such as a finger, foot,
` earlobe, wrist, forehead, or the like," would
` indicate to a POSITA that the embodiment
` shown in Figure 7A and 7B might be more
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