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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2022-01291
`U.S. Patent 10,687,745
`____________
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`
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`
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`IWAMIYA-SARANTOS RENDERS OBVIOUS CLAIMS 1 AND 9
`(GROUND 1A) AND IWAMIYA-SARANTOS-VENKATRAMAN
`RENDERS OBVIOUS CLAIMS 15, 18, 20, AND 27 (GROUND 1B) ......... 3
`A.
`Iwamiya-Sarantos renders obvious a “surface comprising a dark-
`colored coating” (elements [1.4] and [20.4]) ........................................ 3
`Iwamiya-Sarantos-Venkatraman renders obvious that “the plurality of
`photodiodes are arranged in an array having a spatial configuration
`corresponding to a shape of the portion of the tissue measurement site
`encircled by the light block” (element [15.4]) ...................................... 7
`Iwamiya-Sarantos (with or without Venkatraman) renders obvious
`measuring oxygen saturation at the wrist (claims 9 and 18) and adding
`a second wavelength (claim 27) .......................................................... 11
`Sarantos discloses and renders obvious measuring oxygen
`saturation at the wrist ................................................................ 11
`A POSITA would have known how to make predictable
`adaptations to Iwamiya’s device that would allow the device in
`the Iwamiya-Sarantos combination to measure oxygen
`saturation ................................................................................... 13
`The POR mischaracterizes Iwamiya in asserting that it teaches
`away from measuring blood oxygen saturation using red and
`infrared light .............................................................................. 14
`A POSITA would have reasonably expected success in
`modifying Iwamiya to measure oxygen saturation at the wrist 15
`D. Apple demonstrated that Iwamiya-Sarantos-Venkatraman render
`obvious claim 20 and 27, and all their elements ................................. 23
`SARANTOS-SHIE RENDERS OBVIOUS CLAIMS 1, 9, 15, AND 18
`(GROUND 2A) AND SARANTOS-SHIE-VENKATRAMAN RENDERS
`OBVIOUS CLAIMS 15, 18, 20, AND 27 (GROUND 2B) .......................... 24
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`B.
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`C.
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`I.
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`II.
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`Attorney Docket: 50095-0045IP1
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`TABLE OF CONTENTS
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`A.
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`Sarantos-Shie renders obvious a “first shape” and a different “second
`shape” (elements [1.1]-[1.2] and [20.1]-[20.2]) .................................. 24
`Shie discloses changing a first shape of light into a second
`shape .......................................................................................... 24
`A POSITA would have been motivated to combine Sarantos
`and Shie and would have reasonably expected success ............ 25
`Sarantos-Shie (with or without Venkatraman) renders obvious a “light
`block having a circular shape” (element [15.3]) ................................. 26
`Sarantos-Shie (with or without Venkatraman) renders obvious “the
`plurality of photodiodes are arranged in an array having a spatial
`configuration corresponding to a shape of the portion of the tissue
`measurement site encircled by the light block” (elemen [15.4]) ........ 27
`Sarantos-Shie (with or without Venkatraman) renders obvious
`measuring oxygen saturation at the wrist (claims 9 and 18) ............... 28
`III. CONCLUSION .............................................................................................. 28
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`B.
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`C.
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`D.
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`Case No. IPR2022-01291
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`EXHIBITS
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`APPLE-1001 U.S. Pat. No. 10,687,745 to Al-Ali (“the ’745 Patent”)
`
`APPLE-1002 Prosecution History of the ’745 Patent (Serial No. 16/835,772)
`
`APPLE-1003 Declaration of Dr. Brian Anthony
`
`APPLE-1004 U.S. Pat. No. 8,670,819 (“Iwamiya”)
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`APPLE-1005 U.S. Pat. No. 9,392,946 (“Sarantos”)
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`APPLE-1006 U.S. Pub. No. 2014/0275854 (“Venkataraman”)
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`APPLE-1007 U.S. Pat. No. 6,483,976 (“Shie”)
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`APPLE-1008 U.S. Pat. No. 6,801,799 (“Mendelson-799”)
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`APPLE-1009 U.S. Pub. No. 2015/0018647 (“Mandel”)
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`APPLE-1010 U.S. Pub. No. 2009/0275810 (“Ayers”)
`
`APPLE-1011 PCT. Pub. No. 2011/051888 (“Ackermans”)
`
`APPLE-1012 U.S. Pat. No. 6,158,245 (“Savant”)
`
`APPLE-1013 Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`
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`APPLE-1014 U.S. Pub. No. 2009/0054112 (“Cybart”)
`
`APPLE-1015 U.S. Pat. No. 5,893,364 (“Haar”)
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`APPLE-1016 U.S. Pat. No. 5,952,084 (“Anderson”)
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`APPLE-1017 U.S. Pat. No. 10,470,695 (the “’695 patent”)
`
`APPLE-1018 Apple v. Masimo, Case No. IPR2020-01722, Paper 29 (Final
`Written Decision) (PTAB May 5, 2022) (the “’695 FWD”)
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`APPLE-1019 – APPLE-1030 RESERVED
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`APPLE-1031 Masimo Corporation, et al. v. Apple Inc., Redacted Complaint,
`ITC Inv. No. 337-TA-1276
`
`
`APPLE-1032 Interim Procedure for Discretionary Denials in AIA Post-Grant
`Proceedings with Parallel District Court Litigation, issued June
`21, 2022 (“Interim Guidance”)
`
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`APPLE-1033 Final Initial Determination on Violation of Section 337, Public
`Version, ITC Inv. No. 337-TA-1276, January 10, 2023
`
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`APPLE-1034 Emails re Masimo’s Request for Authorization to Motion for
`Additional Discovery
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`APPLE-1035 Protective Order
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`APPLE-1036 CONFIDENTIAL - ITC Inv. No. 337-TA-1276 Hearing Transcript
`of Dr. Ueyn Block
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`APPLE-1037 CONFIDENTIAL - ITC Inv. No. 337-TA-1276 Hearing Transcript
`of Dr. Saahil Mehra
`
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`APPLE-1038 ITC Inv. No. 337-TA-1276 Exhibit RX-0335 (U.S. Pat. No.
`5,830,137 (“Scharf”))
`
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`APPLE-1039 ITC Inv. No. 337-TA-1276 Exhibit RX-0504 (Austin Wareing,
`Optimization of Reflectance-Mode Pulse Oximeter Sensors)
`
`
`APPLE-1040 ITC Inv. No. 337-TA-1276 Exhibit RX-0508 (Jianchu Yao and
`Steve Warren, Stimulating Student Learning with a Novel “In-
`House” Pulse Oximeter Design (2005))
`
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`APPLE-1041 ITC Inv. No. 337-TA-1276 Exhibit RX-0632
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`APPLE-1042 CONFIDENTIAL - Supplemental Declaration of Dr. Brian
`Anthony
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`APPLE-1043 Excerpt of The American Heritage Dictionary of the English
`Language, Fifth Edition, Houghton Mifflin Harcourt Publishing
`Company (2011)
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`APPLE-1044 Excerpt of Collins Dictionary, HarperCollins Publishers (2010)
`
`APPLE-1045 Excerpt of Merriam-Webster’s Collegiate Dictionary, Eleventh
`Edition, Merriam-Webster, Incorporated (2014)
`
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`APPLE-1046 Excerpts from Bronzino, The Biomedical Engineering Handbook,
`CRC Press, Inc. (1995) (“Bronzino”)
`
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`APPLE-1047 U.S. Patent No. 6,014,576 to Raley
`
`APPLE-1048 Severinghaus et al., Recent Developments in Pulse Oximetry,
`Anesthesiology, Vol. 76, No. 6 (June 1992)
`
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`APPLE-1049 Duffy, MIO Alpha BLE Review, PC Magazine (Jan. 28, 2013)
`available at https://www.pcmag.com/reviews/mio-alpha-ble
`
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`APPLE-1050 Pang et al., A Neo-Reflective Wrist Pulse Oximeter, IEEE Access,
`Volume 2 (January 12, 2015)
`
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`APPLE-1051 Li et al., A Wireless Reflectance Pulse Oximeter With Digital
`Baseline Control for Unfiltered Photoplethysmograms, IEEE
`Transactions on Biomedical Circuits and Systems, Vol. 6, No. 3
`(June 2012)
`
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`APPLE-1052 U.S. Patent Application Publication No. 2006/0253010 to Brady et
`al.
`
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`APPLE-1053 Cai et al., Implementation of a Wireless Pulse Oximeter Based on
`Wrist Band Sensor, 2010 3rd International Conference on
`Biomedical Engineering and Informatics (BMEI 2010)
`
`International Publication No. WO 2001/17421 to Lindberg et al.
`
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`APPLE-1054
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`APPLE-1055 Maattala et al., Optimum Place for Measuring Pulse Oximeter
`Signal in Wireless Sensor-Belt or Wrist-Band, 2007 International
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`Conference on Convergence Information Technology, IEEE
`(2007)
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`APPLE-1056 Fontaine et al., Reflectance-Based Pulse Oximeter for the Chest
`and Wrist, Worchester Polytechnic Institute (April 2013) available
`at https://digital.wpi.edu/show/6969z2326
`
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`APPLE-1057 Stein, “Withings Pulse O2 review: Fitness band plus heart rate
`monitor checks blood oxygen, too,” CNET.com (April 25, 2014),
`available at https://www.cnet.com/reviews/withings-pulse-o2-
`review/
`
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`APPLE-1058 U.S. Patent No. 7,468,036 to Rulkov et al.
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`APPLE-1059 CONFIDENTIAL - Transcript of the Deposition of Dr. R. James
`Duckworth (August 9, 2023)
`
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`APPLE-1060 Mendelson et al., A Wearable Reflectance Pulse Oximeter for
`Remote Physiological Monitoring, Proceedings of the 28th IEEE
`EMBS Annual International Conference (Sept. 3, 2006)
`
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`APPLE-1061
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`International Publication No. WO 2011/051888 to Ackermans et
`al.
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`APPLE-1062 U.S. Patent Application Publication No. 2005/0116820 to
`Goldreich
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`International Publication No. WO 2012/140559 to Shmueli et al.
`
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`APPLE-1063
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`APPLE-1064 U.S. Patent No. 7,650,176 to Sarussi et al.
`
`APPLE-1065 U.S. Patent Application Publication No. 2002/0095092 to Kondo
`et al.
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`APPLE-1066 U.S. Patent Application Publication No. 2015/0355604 to Fraser et
`al.
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`APPLE-1067 U.S. Patent No. 6,580,086 to Schulz et al.
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`APPLE-1068 U.S. Patent Application Publication No. 2013/0267854 to Johnson
`et al.
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`APPLE-1069
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`ITC Inv. No. 337-TA-1276 Exhibit RX-0498 (Takatani et al.,
`Optical Oximetry Sensors for Whole Blood and Tissue, IEEE
`Engineering in Medicine and Biology (June/July 1994))
`
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`APPLE-1070 U.S. Patent No. 5,164,858 to Aguilera, Jr. et al.
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`APPLE-1071 U.S. Patent Application Publication No. 2005/0267346 to Faber et
`al.
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`APPLE-1072 U.S. Patent No. 9,316,495 to Suzuki et al.
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`APPLE-1073 U.S. Patent Application Publication No. 2014/0051955 to Tiao et
`al.
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`APPLE-1074 U.S. Patent Application Publication No. 2016/0058312 to Han et
`al.
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`APPLE-1075 U.S. Patent Application Publication No. 2010/0261986 to Chin et
`al.
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`APPLE-1076 Beam Shaping with Cylindrical Lenses, available at
`https://www.newport.com/n/beam-shaping-with-cylindrical-lenses
`
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`APPLE-1077 Dickey, Laser Beam Shaping Theory and Techniques, Second
`Edition, Taylor & Francis Group, LLC (2014)
`
`
`APPLE-1078 Lee et al., Micro-LED Technologies and Applications, Information
`Display (June 2016)
`
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`APPLE-1079 U.S. Patent No. 6,398,727 to Bui et al.
`
`APPLE-1080 U.S. Patent Application Publication No. 2014/0323829 to LeBoeuf
`et al.
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`Masimo’s arguments in the POR fail because, at bottom, the challenged
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`claims of the ’745 Patent are simply not innovative. Masimo’s leading arguments
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`focus not on any features of independent claims 1, 15, or 20, but rather on a pair of
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`dependent claims (i.e., claims 9 and 18) that further specify that the “physiological
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`parameter” determined at the wrist is “oxygen saturation.” But determining
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`oxygen saturation at the wrist was not new in the ’745 Patent and Masimo does not
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`argue otherwise. Nor could it. The record is replete with prior art that achieved
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`this task long before the ’745 Patent. Masimo nonetheless spends dozens of pages
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`attempting to dismiss the prior art through argument that a POSITA somehow
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`would have lacked a reasonable expectation of success in determining oxygen
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`saturation at the wrist.
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`Masimo’s arguments are ironic, however, given that the ’745 Patent itself
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`describes no solutions for addressing the challenges that Masimo only now alleges
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`must be overcome to successfully measure oxygen saturation at the wrist. Indeed,
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`the ’745 specification never once acknowledges any such challenges. The ’745
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`specification merely lists the wrist as one suitable measurement site among others,
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`without mention of even a single adaptation to the disclosed reflectance sensor that
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`would ensure successful measurements at the wrist apart from any other site. If
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`Masimo’s own specification is enabling—as Masimo’s expert, Dr. Duckworth,
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`contends it is—then so is the prior art, and a POSITA would have reasonably
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`expected success implementing such features.
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`Tellingly, the only basis offered for Masimo’s reasonable expectation of
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`success narrative is evidence of Apple’s own successes in overcoming challenges
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`in developing pulse oximetry for the Apple Watch. But in so doing, Masimo
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`ignores substantial evidence that was produced to Masimo before the POR and that
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`demonstrates how these challenges stemmed from design requirements that went
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`well beyond any requirements recited in the claims of the ’745 Patent. Worse,
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`Masimo and Duckworth failed to account for multiple prior art publications known
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`by a POSITA that describe experimental results confirming the feasibility of
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`measuring oxygen saturation at the wrist before the ’745 Patent.
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`Finally, tucked behind the arguments on dependent claims 9 and 18, Masimo
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`raises just a single substantive argument against each of independent claims 1, 15,
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`and 20 in Grounds 1A-1B. Each of these arguments was previously presented
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`unsuccessfully in the POPR, and the same arguments were previously rejected by
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`the ITC. Masimo raises similar arguments in Grounds 2A-2B. But for the reasons
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`explained in detail below, none of Masimo’s arguments has merit.1 Apple thus
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`submits that the challenged claims are obvious and should be cancelled.
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`1 For ease of review, Apple first addresses in this Reply Masimo’s substantive
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`arguments on the independent claims before turning to dependent claims 9 and 18.
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`2
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`IWAMIYA-SARANTOS RENDERS OBVIOUS CLAIMS 1 AND 9
`(GROUND 1A) AND IWAMIYA-SARANTOS-VENKATRAMAN
`RENDERS OBVIOUS CLAIMS 15, 18, 20, AND 27 (GROUND 1B)
`A.
`Iwamiya-Sarantos renders obvious a “surface comprising a dark-
`colored coating” (elements [1.4] and [20.4])
`Masimo’s argument that the Iwamiya-Sarantos combination “rests on the
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`unsupported assumption that Iwamiya’s light shielding frame 18 would not, in fact,
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`provide the light shielding function disclosed in Iwamiya” is baseless.2 POR, 44.
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`Apple has never disputed that Iwamiya’s original frame 18 was intended to block
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`unwanted light from reaching the photodiodes. APPLE-1004, 8:38-42. Iwamiya
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`instead lacks express disclosure of materials that would be suitable to achieve the
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`desired “light shielding” function of frame 18. Pet., 15-17; APPLE-1059, 88:12-
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`94:8. Iwamiya left the selection of a suitable material for frame 18 to a POSITA,
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`and the Petition specifically explained that “[a] POSITA would have been
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`motivated to employ an in-mold label or other black or opaque material as
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`disclosed by Sarantos in the light shielding frame 18 of Iwamiya to serve the
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`purpose indicated by the component’s name: shielding the photodiodes 9 from
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`stray light[] … .” Pet., 16.
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`2 Masimo’s substantially similar argument on element [1.4] was also rejected at the
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`ITC, as it was in the Institution Decision. EX2093, 226-228; Decision, 18-21.
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`The use of dark-colored coatings for light shielding as taught in Sarantos
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`was common practice well before the ’745 Patent. APPLE-1005, 17:1-25; see also
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`APPLE-1013, 96-973, 111; APPLE-1067, 9:58-10:23; APPLE-1042, ¶7.
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`Accordingly, a POSITA would have found it obvious to apply a dark-colored
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`coating to Iwamiya’s frame 18 in any suitable manner that would ensure light is
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`blocked from reaching the photodiodes except through the opening permitted by
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`optical filter 17, e.g., by coating an exterior of the frame 18 with a dark, light-
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`absorbing material. APPLE-1005, 17:1-25; APPLE-1042, ¶8.
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`3 Numbers refer to page numbers of the PDF document.
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`dark-colored coating on exterior surface of light shielding frame 18
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`APPLE-1004, FIG. 44
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`A POSITA also would have found the selection of a light-absorbing material
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`for frame 18 to involve a merely routine design choice for a POSITA, especially
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`given that light-shielding materials must either (1) absorb or (2) reflect light, and
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`the use of a “dark” coating would be particularly obvious to absorb the broadest
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`spectrum of light. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
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`(“When… there are a finite number of identified, predictable solutions, a person of
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`4 Annotations and color added to figures unless otherwise noted.
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`5
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`ordinary skill has good reason to pursue the known options within his or her
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`technical grasp.”); APPLE-1042, ¶8; APPLE-1059, 94:14-95:10.
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`Masimo suggests in the POR that a POSITA would be led by Iwamiya to
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`select a reflective rather than absorptive material for use on the light-shielding
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`frame 18. POR, 46-50. But Masimo’s suggestion is wrong/unsupported, and Dr.
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`Anthony explained in detail multiple reasons why this is so. APPLE-1042, ¶¶9-14.
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`First, a dark-colored coating that absorbs light as taught in Sarantos would be
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`preferable to a reflective material for shielding light with Iwamiya’s frame 18 since
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`the absorptive material would reduce reflections and light scatter in the empty
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`space surrounding frame 18. APPLE-1042, ¶¶9, 12. In particular, the dark-colored
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`coating would reduce the amount of scattered/reflected light from the space
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`surrounding frame 18 from reflecting back through optical filter 17 to the
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`photodiodes, which would increase noise and risk reducing sensor accuracy. Id.
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`Duckworth not only failed to address this issue but refused even to discuss it
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`during his deposition. APPLE-1059, 95:11-96:17. Second, Masimo’s argument
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`that a POSITA would select a reflective material for frame 18 merely because light
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`guiding ring 11 and diffusion ring 12 include reflective layers 13, 15 does not
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`follow. APPLE-1004, 6:62-7:3, 7:41-49; see also id., 6:10-14, 7:14-24, 10:44-49,
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`11:55-12:36. Rings 11, 12 are distinct from frame 18, and the reflective layers 13,
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`15 serve far different functions of preventing light leakage to an exterior of rings
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`11, 12 and guiding light through rings 11, 12 than the light shielding function of
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`frame 18. APPLE-1004, 6:67-7:3, 7:45-49; APPLE-1042, ¶10. Third, Masimo’s
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`suggestion that light-shielding frame 18 must be reflective since holder portion 43
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`is reflective also does not follow. These components are not even used in the same
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`embodiments, and differences in the structures of these embodiments confirms that
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`frame 18 need not have a reflective exterior. APPLE-1004, 18:61-65, 28:64-29:1,
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`39:20-24, FIGS. 4, 13; APPLE-1059, 88:1-94:8; APPLE-1042, ¶¶11-13. Neither
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`Masimo nor Mr. Duckworth acknowledges these differences. And even if design
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`tradeoffs exist between the selection of a dark-colored coating and a reflective
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`material, these tradeoffs would only render each option obvious—not preclude
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`obviousness of the first option as Masimo would have it. Allied Erecting &
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`Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir.
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`2016) (“[A] given course of action often has simultaneous advantages and
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`disadvantages, and this does not necessarily obviate motivation to combine.”);
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`Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)
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`(“should not nullify its use as a basis to modify”); APPLE-1042, ¶14.
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`B.
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`Iwamiya-Sarantos-Venkatraman renders obvious that “the
`plurality of photodiodes are arranged in an array having a spatial
`configuration corresponding to a shape of the portion of the tissue
`measurement site encircled by the light block” (element [15.4])
`That Iwamiya’s photodiodes 9 are arranged in a circular array having a
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`spatial configuration corresponding to a shape of the portion of the tissue
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`measurement site encircled by the circular light block is evident from the fact that
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`the photodiodes are “disposed … on the same circumference centered on an
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`optical axis” of the circular light taking unit 8.5 APPLE-1004, 14:36-41; APPLE-
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`1042, ¶16; Pet., 23-24.
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`5 Masimo’s substantially similar argument on element [15.4] was also rejected at
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`the ITC, where the ALJ found that Iwamiya “clearly” discloses these features.
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`EX2093, 232-233.
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`photodiodes 9 arranged “on the same circumference centered on an optical
`axis” of the circular light taking unit 8
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`light block
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`APPLE-1004, FIG. 2 (annotated according to Iwamiya’s teachings)
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`Iwamiya never limits the number of photodiodes 9 that can be used in its
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`device. APPLE-1042, ¶17. Iwamiya instead leaves the choice of the number of
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`photodiodes to a POSITA, who would have known that more than just a “small
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`plurality” of photodiodes (e.g., more than 2-3) were commonly employed in pulse
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`oximeters before the ’745 Patent (and would have found it obvious to use a greater
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`number of photodiodes (e.g., six or more) to achieve known benefits such as
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`9
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`increasing the detection area and light sensitivity). Id.; see, e.g., APPLE-1013,
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`107; APPLE-1008, 4:6-9, 4:59-62; APPLE-1060, 4; APPLE-1068, [0022], FIG.
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`1A.
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`Notably, the ’745 specification also never expressly discloses a minimum or
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`critical number of photodiodes that must be present to form the claimed array.
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`APPLE-1042, ¶18. Masimo thus improperly seeks to hold the prior art to a higher
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`standard of disclosure than the ’745 patent itself. APPLE-1001, 9:27-30, 11:38-43;
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`APPLE-1059, 97:22-102:17. In any event, Masimo the specific number of
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`photodiodes alleged to be required by the claims is not even a patentable
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`distinction in the first place. E.I. du Pont de Nemours & Co. v. Synvina C.V., 904
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`F.3d 996, 1006 (Fed. Cir. 2018) (“‘where the general conditions of a claim are
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`disclosed in the prior art, it is not inventive to discover the optimum or workable
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`ranges by routine experimentation’”). Indeed, it is settled law that a claimed range
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`is rendered obvious both when the prior art range overlaps and even when it does
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`not in the absence of criticality or unexpected results. In re Peterson, 315 F.3d
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`1325, 1329 (Fed. Cir. 2003); MPEP §2144.05. Iwamiya’s disclosure of a plurality
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`of photodiodes encompasses a range that renders the claim limitation obvious.
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`The claim term “correspond” also has broader meanings than those
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`represented by the applicant to the Office during prosecution of the parent
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`application. APPLE-1043, 3; APPLE-1044, 3; APPLE-1045, 3. Iwamiya’s
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`photodiodes arranged “on the same circumference centered on an optical axis” of
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`circular light taking unit 8 is consistent with the plain meaning of “correspond” at
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`least because the photodiodes are in agreement, harmony, or conformity with the
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`circular shape of the light taking unit 8 bounded by the circular light block.
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`APPLE-1042, ¶19.
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`C.
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`Iwamiya-Sarantos (with or without Venkatraman) renders
`obvious measuring oxygen saturation at the wrist (claims 9 and
`18) and adding a second wavelength (claim 27)
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`Sarantos discloses and renders obvious measuring oxygen
`saturation at the wrist
`As an initial matter, the POR’s focus on whether Sarantos’s own device
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`measures oxygen saturation or just pulse rate is misdirected. POR, 20-21. The
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`Petition relied on Sarantos in claims 9 and 18 not for the structures of Sarantos’s
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`own device, but rather for its reference to well-known techniques for measuring
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`oxygen saturation using two wavelengths of light (i.e., red and infrared
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`wavelengths). Pet., 19-20 (citing APPLE-1005, 13:40-14:22); In re Etter, 756 F.2d
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`852, 859 (Fed. Cir. 1985) (en banc) (“the criterion [is] not whether the references
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`could be physically combined but whether the claimed inventions are rendered
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`obvious by the teachings of the prior art as a whole”); accord In re Mouttet, 686
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`F.3d 1322, 1332 (Fed. Cir. 2012); APPLE-1042, ¶22. It is undisputed that
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`Sarantos discloses these techniques regardless of whether Sarantos’s own device
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`implements them.
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`Nonetheless, Sarantos clearly contemplates embodiments where its device
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`would measure blood oxygenation levels using red and infrared light. APPLE-
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`1042, ¶23. This is evident from Sarantos’s express description of structural
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`adaptations that can be made to accommodate multiple LEDs of different
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`wavelengths. See, e.g., APPLE-1005, 13:34-36, 13:44-14:22. The Board’s
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`institution decision thus correctly assessed that Sarantos expressly discloses these
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`features. Decision, 22-23.
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`Sarantos’s use of “green/yellow” light in preferred embodiments also does
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`not constitute a teaching away. Meiresonne v. Google, Inc., 849 F.3d 1379, 1382
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`(Fed. Cir. 2017) (“A reference that ‘merely expresses a general preference for an
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`alternative invention but does not criticize, discredit, or otherwise discourage
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`investigation into’ the claimed invention does not teach away.”). A POSITA
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`reviewing Sarantos’s alternative embodiments for measuring blood oxygen levels
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`at col. 13:36-14:22 would have understood and found obvious that the
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`ratios/dimensions of Sarantos’s HAR photodetectors could and would be suitably
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`optimized for the detection of red/infrared light. APPLE-1042, ¶23. Sarantos
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`never even expresses a preference, let alone criticizes, red/infrared light for
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`measuring blood oxygen levels. Id.
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`A POSITA would have known how to make predictable
`adaptations to Iwamiya’s device that would allow the device
`in the Iwamiya-Sarantos combination to measure oxygen
`saturation
`Masimo’s arguments that a POSITA would not have known how to modify
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`Iwamiya’s device to measure oxygen saturation levels improperly treats the
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`POSITA as an automaton lacking ordinary creativity or knowledge of basic pulse
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`oximetry techniques that had been developed decades before the ’745 Patent.
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`Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1343 (Fed. Cir.
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`2020) (quoting KSR, 550 U.S. at 421); ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214,
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`1219 (Fed. Cir. 2016); APPLE-1042, ¶24.
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`To be sure, although obviousness does not require a detailed explanation of
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`every predictable structural modification that a POSITA would make to implement
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`a proposed combination, the evidence here nonetheless confirms that a POSITA
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`would have known how to adapt Iwamiya’s device to measure blood oxygen levels
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`using red/infrared light as taught in Sarantos. APPLE-1042, ¶25. Iwamiya’s
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`device already includes 940 nm infrared LEDs that would be suitable for
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`measuring blood oxygen levels; it would have been obvious and straightforward to
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`augment the device with one or more LEDs emitting red light, e.g., by adding one
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`or more red LEDs or replacing one of Iwamiya’s two original infrared LEDs with a
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`red LED. Id. Likewise, Anthony explains that optimizing sensitivity of the
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`13
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`photodiodes for oxygen saturation, adapting the optical filter to pass both red and
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`infrared light (or implementing an oximeter without such a filter), and performing
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`basic signal processing algorithms for calculating oxygen saturation were all
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`known, obvious, and well within the skill of a POSITA. Id.; see, e.g., APPLE-
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`1013, 94, 96; APPLE-1070, Abstract; APPLE-1071, [0052]; APPLE-1080, [0137].
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`
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`The POR mischaracterizes Iwamiya in asserting that it
`teaches away from measuring blood oxygen saturation
`using red and infrared light
`Iwamiya’s disclosed embodiments focus on detecting a pulse wave for
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`measuring a pulse rate (heart rate) using a single wavelength of infrared light at
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`940 nm. APPLE-1004, 1:62-2:6, 6:32-35. But as the Board correctly recognized
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`in instituting IPR, Iwamiya never criticizes, discredits, or otherwise discourages
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`the use of two wavelengths of red and infrared light for the purpose of measuring
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`oxygen saturation. Meiresonne, 849 F.3d at 1382 (“criticize, discredit, or
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`otherwise discourage”); Decision, 22-23. A POSITA looking to adapt Iwamiya to
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`determine oxygen saturation would not have been led away from the use of red and
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`infrared LEDs (or from implementing any of the other obvious adaptations
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`previously discussed) that would allow the device to determine oxygen saturation
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`apart from pulse rate. APPLE-1042, ¶26. Indeed, Iwamiya’s preferred 940 nm
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`wavelength light for pulse rate measurements could still be retained in the
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`Iwamiya-Sarantos combination since 940 nm light is also commonly used for
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`14
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`determining oxygen saturation. Id.; APPLE-1013, 16, 52, 62-63, 73, 79-80;
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`APPLE-1040, 4; APPLE-1056, 16; APPLE-1050, 1; APPLE-1053, 3-4; APPLE-
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`1052, [0007]. A POSITA’s desire to expand the capabilities of Iwamiya’s device
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`by adding a red wavelength to measure oxygen saturation in addition to pulse rate
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`would have justified any reasonably necessary design tradeoffs. Winner, 202 F.3d
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`at 1349 n.8.
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`
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`A POSITA would have reasonably expected success in
`modifying Iwamiya to measure oxygen saturation at the
`wrist
`The Petition cited Anthony’s opinion from his first declaration that a
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`“POSITA would have reasonably expected success in adapting Iwamiya’s sensor”
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`to measure oxygen saturation “because wrist-worn pulse oximetry sensors, such as
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`that described in Sarantos, were well-known in the art.” APPLE-1003, ¶48. The
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`POR’s belabored attempts to undermine this showing is baseless.
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`Even apart from Sarantos, the record includes well over a dozen references
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`from before the ’745 Patent that describe solutions for determining oxygen
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`saturation at the wrist.6 Anthony reviewed these references—including references
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`6 The bulk of these references—including Exhibits APPLE-1050–APPLE-1056,
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`APPLE-1058, APPLE-1061–APPLE-1066—were not previously submitted or
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`available to the ALJ at the ITC proceeding involving the ’745 Patent.
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`that were entered into the record before the POR and others that Apple identified
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`responsive to Masimo’s POR arguments—and explained how they further
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`demonstrate that a POSITA would have reasonably expected success implementing
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`the combinations to determine oxygen saturation at the wrist before the ’745
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`Patent. APPLE-1042, ¶¶27-34 (citing APPLE-1039–APPLE-1041, APPLE-1050–
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`APPLE-1056, APPLE-1058, APPLE-1061–APPLE-1066). A POSITA would
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`have known of all these references since the law “presumes that all prior art
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`references in the field of the invention are available to this hypothetical skilled
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`artisan.” In re Carlson, 983 F.2d 1032, 1037-38 (Fed. Cir. 1993) (a POSITA “is
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`charged with knowledge of all the contents of the relevant prior art” and “is
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`presumed to know all the pertinent prior art”); In re Rouffet, 149 F.3d 1350, 1357
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`(Fed. Cir. 1998).
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`Notably, the evidence reviewed by Anthony includes engineering and
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`scientific papers describing actual studies and experimental results that confirm the
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`feasibility of determining oxygen saturation at the wrist before the ’745 Patent.
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`See, e.g., APPLE-1050, 2 (“another novel reflective wrist pulse oximeter that has
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`been developed”); APPLE-1051, Abstract (“This sensor has demonstrated an
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`ability to gather high-integrity data at fingertip, wrist, earlobe, palm, and temple
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`locations from a group of 48 subjects (20 to 64 years old).”); APPLE-1053,
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`Abstract (“The experimental results have confirmed the feasibility of this wrist-
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`band oximeter.’); APPLE-1055, 5 (“wireless integrated pulse oximeter implanted
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`in a … wrist band is possible to achieve with many benefits and practical
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`applications ”). A POSITA
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