UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`
`Petitioner,
`
`V.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`IPR2022-01291, IPR2022-01465
`U.S. Patent 10,687,745
`
`DECLARATIONOF R. JAMES DUCKWORTH
`IN SUPPORT OF PATENT OWNER’S SUR-REPLY
`
`I declare that all statements made herein on my own knowledgeare true andthat all statements
`
`made on information and belief are believed to be true, and further, that these statements were
`
`made with the knowledge that willful false statements and the like so made are punishable by
`
`fine or imprisonment,or both, under Section 1001 of Title 18 of the United States Code.
`
`I reserve the right to supplement my opinions in the future to respond to any arguments or
`
`positionsApplemayraise,takingaccountofnew7feasitbecomesavailabletome.
`Dated:
`_!e¢/2/ 2023
`T th
`
`R. James Duckworth, Ph.D.
`
`MASIMO 2100
`
`Apple v. Masimo
`IPR2022-01291
`
`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`
`Petitioner,
`
`V.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`IPR2022-01291, IPR2022-01465
`U.S. Patent 10,687,745
`
`DECLARATIONOF R. JAMES DUCKWORTH
`IN SUPPORT OF PATENT OWNER’S SUR-REPLY
`
`I declare that all statements made herein on my own knowledgeare true andthat all statements
`
`made on information and belief are believed to be true, and further, that these statements were
`
`made with the knowledge that willful false statements and the like so made are punishable by
`
`fine or imprisonment,or both, under Section 1001 of Title 18 of the United States Code.
`
`I reserve the right to supplement my opinions in the future to respond to any arguments or
`
`positionsApplemayraise,takingaccountofnew7feasitbecomesavailabletome.
`Dated:
`_!e¢/2/ 2023
`T th
`
`R. James Duckworth, Ph.D.
`
`MASIMO 2100
`
`Apple v. Masimo
`IPR2022-01291
`
`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
`
`
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION.0000...0cocccccccecc cece cceecceeceeecceeesceeeceeeeeeeeesseeeeseeeeseeeeseeeeeseeeesees ]
`
`Il.
`
`MATERIALS CONSIDERED... ..00 cece cece cece cece cece ceeeceeeeceeeteeeeteeeeeseetesees2
`
`Ill.
`
`LEVEL OF ORDINARYSKILL .00..00coeccceccccee cece cecceceetc eee ceeeteeeeeeeeeeseeeesees 5
`
`CLAIM CONSTRUCTION.0000..00...ccceecccecc cece ceeceeesceeesceeeeeeeeeeeeesseeeeseeeneeees 5
`
`A.
`
`B.
`
`“determine a physiological parameter ... wherein the
`physiological parameter comprises oxygen saturation”
`(Claims 9, 18) ......eececcccecececcesceecceesccesceceeeceaceeseecaeeeseeeeseeeseesseeesseeeseeeeeees5
`
`“plurality of photodiodesare arranged in an array
`havinga spatial configuration correspondingto a
`shape of the portion of the tissue measurementsite
`encircled by the light block” (Claim 15).........00.ooeeeeeeecceeeeeeeeeeeeeees 8
`
`THE IWAMITYA+SARANTOS GROUNDS DO NOT
`SHOW OBVIOUSNESS 00222... coc ccc cceeecceesceeescceeecceeeeeeesceeeeseeeeseeeesseeesseeesseeees9
`
`A.
`
`B.
`
`A POSITA Would Not Have Been Motivated to Add
`a Dark-Colored Coating to Iwamiya’s Light Shielding
`Frame 18 ooo... .eeecceceececececcceeeecccceeeceeeeeeeeceeeeceeeeeceeeceseeeeceeeeeesseeeeesseeeeesseees9
`
`A POSITA Would Not Have Modified Iwamiya with
`the Six Photodetector Arrangement Shownin the
`Reply... cece cecceecccecceecceecccesccessceseeeseeceseseaeeeaeceseeceaeceseceseeesesesssenseenseeees22
`
`C.—Apple’s Reply Tnesto Fix the Inoperable
`Iwamiya+Sarantos Combination by Making New
`Changes Contrary to Iwamiya’s Teachings.......0....0...0...ceeceeeeeeeeeee29
`
`D.=Anthony’s Multiple Different Theories about Claim
`25 Show the Combination Does NotSatisfy the
`Limitation 2.2.0... cece ceec ccc eeeccceccesceeecceseeceseceaeeeseecsaccaeceaceeseeesecesseeeseeess 34
`
`-]-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`VI.
`
`THE SARANTOS+SHIE GROUNDS DO NOT SHOW
`
`OBVIOUSNESS ....0... ooo cece cee cecceecceecceeecceeeseeeeececesceceeseeeeseeteteeeeees
`
`beceeeeeeeesees 36
`
`A.
`
`B.
`
`C.
`
`D.
`
` Shie Has Nothing to Do with Physiological
`Monitoring oo... eee cece cece cee ceeecceeeceeesecesseceessceesseeesseeeees
`
`beceeeseeeesees 36
`
`A POSITA Would Not Have Been Motivated to
`Combine Sarantos and Shie..................eecececccccccecceeseeeeeeeeeeees
`
`beceeeteeeesees40
`
`There Is No Reasonable Expectation of Success for
`Apple’s New Combination of Sarantos and Shie.................
`
`beceesseeeeeees48
`
` Sarantos’ Figures 22 and 25 Are Distinct
`Embodiments and Apple Presented New Theories
`Combining Those Two Embodiments (Limitations
`[15.3] and [15.4]) .cccccccccssscescsssseesssssssessssssseesssssesssessseeseseseeees
`
`beceeeseeeesees 50
`
`VIL.
`
`NO REASONABLE EXPECTATION OF SUCCESSIN
`
`DETERMINING OXYGEN SATURATION AT THE
`
`WRIST ooo cece cece cece cece eeeeeeeeeeeceeeeeeeeeceeeeeeeeeeeeeeeeeeeeeseeeseeeeees
`
`beceeseeeeeee 54
`
`A.
`
`B.
`
`The New References Do Not Show a Reasonable
`Expectation of Success, but Rather a Long-Felt but
`Unmet Need for Determining OxygenSaturation at
`the WiSt 22... ..ecececc cece cece ceeeeeeeccecceccccccceeeeeeeeceececcsteeeeeeeeeeeeeeeees
`
`beceeeeeeeseee 54
`
`The Testimony of Apple’s Engineers at the Relevant
`Time Showsthat There Was No Reasonable
`Expectation of Success -..............cccceccceecceeceeeeceesceeseeeeseeeeeeeees
`
`beceeeseeeeeees 68
`
`-li-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
`
`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
`
`
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`
`
`I, R. James Duckworth, declare and state as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`|My name is R. James Duckworth, Ph.D.
`
`I have been retained by
`
`Knobbe, Martens, Olson & Bear, LLP, counsel
`
`for Patent Owner Masimo
`
`Corporation (“Masimo’”).
`
`2.
`
`I am providing this declaration in response to Apple’s Petitioner’s
`
`Reply, the supplemental expert declaration of Apple’s expert, Dr. Brian Anthony
`
`(EX1042) and the new exhibits that Apple submitted with its Reply (EX1043-
`
`EX1058, EX1060-EX1080) in IPR2022-01291 and IPR2022-01465.
`
`3.
`
`I previously submitted three declarations in IPR2022-01291 and
`
`IPR2022-01465, namely, EX2002 in IPR2022-01291, EX2002 in IPR2022-01465S,
`
`and EX2070 in both IPRs.
`
`I will maintain the same naming convention as used in
`
`the EX2070 declaration (e.g., EX2002 in IPR2022-01291 is EX2002-1291). My
`
`analysis in this declaration applies to both the 1291 Reply and 1465 Reply.
`
`4.
`
`I am continuing to apply the legal standards provided to me by
`
`counsel as set forth in my original declarations. For reference, the legal standards
`
`that wereset forth in myoriginal declaration, EX2002-1291, have been included as
`
`Appendix A to this declaration.
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`Il. MATERIALS CONSIDERED
`
`5.
`
`In addition to the materials I previously identified in my earlier
`
`declarations, I have also reviewed and considered Patent Owner’s Responses in
`
`both IPRs, Petitioner’s Replies in both IPRs, and the new exhibits EX1042-
`
`EX1080, and any materials cited herein.
`
`I have also reviewed the transcript of the
`
`September 15, 2023 cross-examination of Dr. Anthony (EX2101). For reference,
`
`Apple’s new exhibits EX1042-1080 are:
`
`EX1043|The American Heritage Dictionary of the English Language, Fifth
`
`~Edition,HoughtonMifflinHarcourtPublishingCompany(2011)
`
`EX1045|Merriam-Webster’s Collegiate Dictionary, Eleventh Edition, Merriam-
`
`Webster, Incorporated (2014)
`
`EX1046|Bronzino, The Biomedical Engineering Handbook, CRC Press, Inc.
`
`(1995)
`
`
`
`
`
`E E
`
`
`
`
`
`X1048|Severinghaus et al., Recent Developments in Pulse Oximetry,
`
`~Anesthesiology,Vol.76,No.6(June1992)
`~(https://www.pcmag.com/reviews/mio-alpha-ble)
`
`EX1049|Duffy, MIO Alpha BLE Review, PC Magazine (Jan. 28, 2013)
`
`-2-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
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`EX1050|Pang et al., A Neo-Reflective Wrist Pulse Oximeter, IEEE Access,
`
`Volume 2 (January 12, 2015)
`
`EX1051|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)
`
`EX1052|U.S. Pat. App. Pub. 2006/0253010 to Bradyetal.
`
`EX1053|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)
`
`EX1055|Maattala et al., Optimum Place for Measuring Pulse Oximeter Signal in
`
`Wireless Sensor-Belt or Wrist-Band, 2007 International Conference on
`
`Convergence Information Technology, IEEE (2007)
`
`
`
`EX1056|Fontaine et al., Reflectance-Based Pulse Oximeter for the Chest and
`
`Wrist, Worchester Polytechnic Institute
`
`EX1057|Stein, “Withings Pulse O2 review: Fitness band plus heart rate monitor
`
`checks
`
`blood
`
`oxygen,
`
`too,’ CNET.com (April
`
`25,
`
`2014),
`
`(https://www.cnet.com/reviews/withings-pulse-o2-review/)
`
`-3-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`
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`Duckworth (August 9, 2023)
`
`EX1060|Mendelson et al., A Wearable Reflectance Pulse Oximeter for Remote
`
`Physiological Monitoring, Proceedings of the 28th IEEE EMBS Annual
`
`International Conference (Sept. 3, 2006)
`
`
`
`EX1069|Takatani et al., Optical Oximetry Sensors for Whole Blood and Tissue,
`
`~IEEEEngineeringinMedicineandBiology(June/July1994)
`
`EX1072|U.S. Patent No. 9,316,495 to Suzuki et al
`
`EX1073|U.S. Pat. App. Pub. 2014/0051955 to Tiaoet al
`
`EX1074|U.S. Pat. App. Pub. 2016/0058312 to Hanetal.
`
`4.
`
`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`EX1075|U.S. Pat. App. Pub. 2010/0261986 to Chinetal.
`
`EX1076|Beam Shaping with Cylindrical Lenses,
`
`
`
`EX1080|U.S. Pat. App. Pub. 2014/0323829 to LeBoeufetal.
`
`
`
`
`
`
`
`(https://www.newport.com/n/beam-shaping-with-cylindrical-lenses)
`
`EX1077|Dickey, Laser Beam Shaping Theory and Techniques, Second Edition,
`
`Taylor & Francis Group, LLC (2014)
`
`EX1078| Lee et al., Micro-LED Technologies and Applications, Information
`
`Display (June 2016)
`
`EX1079|U.S. Patent No. 6,398,727 to Buiet al.
`
`Il. LEVEL OF ORDINARY SKILL
`
`6.
`
`[am continuing to apply the same definition of a POSITAasstated in
`
`my earlier declarations and as definedin the Petition.
`
`IV. CLAIM CONSTRUCTION
`
`physiological parameter’... wherein
`a_
`“determine
`A.
`physiological parameter comprises oxygen saturation” (Claims9, 18)
`
`the
`
`7.
`
`Claims 9 and 18 require that the physiological monitoring device
`
`determine oxygen saturation at the wrist. Claims 9 and 18, which depend from
`
`Claims 1 and 15, include Limitations [1.7] and [15.8], which recite “a processor
`
`configured to .... determine a physiological parameter of the user responsive to the
`
`outputted at least one signal,” and Limitations [9] and [18], which recite “wherein
`
`-5-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`the physiological parameter comprises oxygensaturation.” Apple’s Petition never
`
`proposed a construction of this claim limitation, but its Reply and Anthony’s
`
`supplemental declaration now propose a new and incorrect construction for this
`
`limitation. Apple and Anthony now arguein Replythat “the claims merely refer to
`
`‘determin|ing]’ some unspecified oxygen saturation parameter at the wrist, which
`
`could be satisfied by far more rudimentary functions than that implemented on the
`
`Watch.” 1291 Reply, 21; 1465 Reply, 19. Anthony elaborates that the “claims do
`
`not specify a required accuracy or quality of its oxygen saturation measurements”
`
`and that “the oxygen saturation parameter might not even need to be a
`
`measurement.” EX1042, 441.
`
`Instead, he argues that the claim could besatisfied
`
`by “a binary indication of whether a signal sufficient for measuring oxygen
`
`saturation has been obtained or an indication that oxygen saturation above a
`
`defined level of range had been detected.” EX1042, 941.
`
`8.
`
`Apple’s and Anthony’s new construction is incorrect. A POSITA
`
`reading the claim limitation would understand “determine a_ physiological
`
`parameter ... wherein the physiological parameter comprises oxygensaturation”to
`
`require calculating the user’s oxygen saturation. The specification explains that a
`
`processor “receives the transmitted signal indicative of the detected light and |]
`
`determine[s], based on an amountof absorption ... arterial oxygen saturation ... in
`
`the tissue measurementsite.” EX1001, 2:66-3:4: see also id. at 13:37-40 (“the
`
`-6-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`signal processor 810 includes processing logic that determines measurements for
`
`desired analytes based on the signals received from the detector 806.”). The
`
`specification also describes a “method to determine a constituent or analyte in a
`
`patient’s blood” includes numeroussteps, including “receiving, by a processor, the
`
`transmitted signal responsive to the detected light,” and then culminating in the
`
`final step of “processing, by the processor, the received signal responsive to the
`
`detected light to determine a physiological parameter.” Id. at 3:46-61 (emphasis
`
`added). Thus, the specification informs a POSITA that merely obtaining “a signal
`
`sufficient for measuring oxygen saturation” or an indication that such a signal was
`
`obtained is not enough—theclaimsrequire the final step of calculating the oxygen
`
`saturation. The specification is consistent with the claim language, which a
`
`POSITA would understand to mean that
`
`the physiological monitoring device
`
`calculates the user’s oxygen saturation.
`
`9.
`
`A POSITA would not understand a “binary indication of whether a
`
`signal sufficient for measuring oxygen saturation has been obtained”to satisfy the
`
`plain and ordinary meaning of “determine a physiological parameter.” A binary
`
`indication of sufficient signal does not actually determine a user’s oxygen
`
`saturation value. Ensuring a “sufficient signal” is merely one step in the process of
`
`determining oxygensaturation.
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`10. Anthony agreed during his deposition that
`
`the claims require a
`
`calculation of oxygen saturation. EX2101, 69:4-9. Thus, both Dr. Anthony andI
`
`agree that the claims require that the physiological monitoring device actually
`
`calculates the user’s oxygen saturation value.
`
`“plurality of photodiodes are arranged in an array having a
`B.
`spatial configuration corresponding to a shape of the portion of the
`tissue measurementsite encircled by the light block” (Claim 15)
`
`11. Apple and Anthony also argue that the term “‘correspond’ also has
`
`broader meanings than those represented by the applicant to the Office during
`
`prosecution”and rely on three definitions from general-purpose dictionaries. 1291
`
`Reply, 10-11; 1465 Reply, 8-9; EX1042, 419; EX1043-EX1045 (dictionaries).
`
`However, I understand that a proper claim construction analysis first looks to the
`
`intrinsic evidence, which includes the patent specification and the prosecution
`
`history. As I explained previously,
`
`the Applicant explained in the parent
`
`prosecution that the claim limitation requires “a sufficient number of detectors
`
`such that, when arranged together in an array, can ‘match,’
`
`‘have a close
`
`similarity,’ or ‘represent’ the ‘at least partially circular shape’ of the irradiated
`
`portion of the tissue measurementsite,” and provided examples about an analogous
`
`limitation. EX2057, 322; EX2070, §67; EX2002-1291, {| 47-48; EX2002-1465,
`
`9947-49.
`
`The Applicant’s definition in the prosecution history informs the
`
`meaning of the claim term.
`
`In my opinion, Apple and Anthony disregarded the
`
`-8-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
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`IPR2022-01291
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`prosecution history and thus did not apply the correct construction to their
`
`analyses.
`
`V.
`
`THE IWAMIYA+SARANTOS GROUNDS DO NOT SHOW
`
`OBVIOUSNESS
`
`A POSITA Would Not Have Been Motivated to Add a Dark-
`A.
`Colored Coating to Iwamiya’s Light Shielding Frame 18
`
`12. Apple argues in Reply that a POSITA would have added a dark-
`
`colored coating to Iwamiya’s light shielding frame 18 because “Iwamziya left the
`
`selection of a suitable material for frame 18 to a POSITA”and that it would have
`
`been a “design choice.” 1291 Reply, 3, 5: 1465 Reply, 2, 3.
`
`I disagree for at least
`
`the reasons below.
`
`13. Apple disagrees with my analysis explaining why a POSITA would be
`
`led by Iwamiyato select a reflective rather than absorptive material for use on the
`
`light-shielding frame 18. 1291 Reply, 6; 1465 Reply, 4. However, as I explained
`
`previously, Iwamiya expressly teaches multiple times throughoutits specification
`
`that “light shielding” should be accomplished with reflective materials. EX2070,
`
`959-60; EX2002-1291, 9996-98: EX2002-1465, 9975-77. For example, Iwamiya
`
`states:
`
`[T]he holder portion 43 of the light receiving unit 33 is formed of a
`
`metal with a light shielding property, such as aluminum, and its
`
`surface is subjected to alumite treatment
`
`to have a reflection
`
`-9-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`function. Thereby, the light receiving element 33a can be optically
`
`protected.
`
`EX1004, 18:61-65; see also id. at 28:64-29:1, 39:20-24. Iwamiya thusspecifically
`
`teaches a material with a “light shielding property,” namely a metal that can be
`
`subjected to a reflective treatment.
`
`I understand that Apple has argued that this
`
`teaching should belimited to “holder portion 43” only. But a POSITA would have
`
`understood that Iwamiya’s disclosure of material with a light shielding property
`
`could apply to any light shielding feature, not just “holder portion 43.” Thus,as I
`
`explained previously, a POSITA would have understood that this teaching about a
`
`metal with a light shielding property would apply to the light shielding frame 18.
`
`The use of the same language, “light shielding,” expressly links them together.
`
`Furthermore, holder portion 43 in Iwamiya’s other embodimentis an analogous
`
`structure that performs the same functions as the light shielding frame 18. The
`
`annotated diagrams below are from my original declaration, EX2002-1291,
`
`showing why a POSITA would understandthe light shielding frame 18 and holder
`
`portion 43 to be analogousto each other.
`
`-10-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
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`IPR2022-01291
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`
`
`Optical
`Light
`Light receiving_filter Light
`
`
`
`emmiting
`emitting
`unit
`unit
`
`
`lic iib 18
`
`la 11
`/12a/
`1
`1
`
`esti PR Ahh
`
`
`
`
`
`
`FA
`UY;
`
`
`
`ROKYSNESAIEEE
`
`
`
`l
`
`
`
`Al
`
`
`Light shielding
`FIG.3"
`
`Light
`Optical
`Light
`Light
`
`
`emitting receiving_filter emitting
`unit
`unit
`10 31 31a°°
`34¢
`Poa
`34
`i
`
`SQAQMAASRRAYP
`SSENSSNS SAY
`el ae
`
`SS SSSESESSTF
`VSNY&
`
`
`7ASCELy
`
`
`
`
`
`
`Soe
`
`
`
`
`
`
`Holder portion
`FIG.13
`
`EX2002-1291, 497 (annotating EX1004, Figs. 3, 13).
`
`In view of the teachings
`
`throughout Iwamiya that “light shielding” materials are reflective, a POSITA
`
`-|1-
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`MASIMO2100
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`Apple v. Masimo
`IPR2022-01291
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`would have understoodthat the light shielding frame 18 is also made, or should be
`
`made, with a reflective material. There would have been no reason for a POSITA
`
`to ignore those repeated teachings. This suggests to me that hindsight analysis
`
`based on the °745 Patent claims motivated the combination rather than any
`
`teaching in the alleged priorart.
`
`14. Apple also argues in Reply that I did not acknowledge that the light
`
`shielding frame 18 and holder portion 43 are in different embodiments with
`
`different structures. But that criticism, even if it were somehow correct, does not
`
`account for the specification’s teaching that
`
`the “light shielding property” is
`
`formed of a metal with reflective treatment. And the criticism is not correct. My
`
`original declarations (EX2002 in both IPRs) acknowledgedthat these structures are
`
`in different embodiments, explained why a POSITA would have understood them
`
`to be analogousstructures and applied the teachings regarding holderportion 43 to
`
`the light shielding frame 18. EX2002-1291, 9996-98; EX2002-1465, 975-77.
`
`That analysis never changed in my mostrecent declaration (EX2070). EX2070,
`
`959-60.
`
`15. Apple argues in Reply that the reflective layers 13 and 15 serve
`
`different functions than the light shielding frame 18. 1291 Reply, 6-7; 1465 Reply,
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`4-5. But reflective layers 13 and 15 block light from going directly from the LED
`
`to the photodetector without passing through the user’s tissue. The light shielding
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`-|2-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`frame 18 also blocks light from reaching the photodetector without first passing
`
`through the optical filter 17. As I explained in my prior declaration, every time
`
`Iwamiya discusses the need to block light, it is done with a reflective material.
`
`EX2070, 959-60.
`
`Iwamiya repeatedly teaches that the “light shielding property”
`
`is formed of a metal with reflective treatment that results in a feature being
`
`“optically protected.” EX1004 at 18:61-65, 28:64-29:1; 39:20-25. Iwamiya thus
`
`teaches analogousstructures in other embodiments like the holder portion 43, as
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`well as other structures also designed to block light, are made from reflective
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`materials.
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`EX1004 at 18:61-65, 28:64-29:1; 39:20-25: see also Iwamiya’s
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`discussion of reflection layers 13 and 15 (6:62-7:3, 7:41-49). Apple’s and
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`Anthony’s analysis about so-called “different functions” does not actually address
`
`those teachings in Iwamiya.
`
`16. Apple’s Reply argues that “dark-colored coatings for light shielding
`
`as taught in Sarantos was a commonpractice well before the ’745 Patent.” 1291
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`Reply, 4; 1465 Reply, 2. Apple and Anthony cite Sarantos (EX1005), Webster
`
`(EX1013), and a new reference, Schulz (EX1067), to argue that “dark-colored
`
`coatings” were “commonpractice.” 1291 Reply, 4; 1465 Reply, 2; EX1042, 47.
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`But none of the cited references apply a dark-colored coating to a structure that
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`even remotely resembles the light shielding frame 18 and optical filter 17 structure
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`that is in Iwamiya.
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`Iwamiya has a specific structure unlike those in the cited
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`references. In Iwamiya, the light receiving unit (photodetector) 9 is recessed inside
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`a cavity (highlighted yellow below). See EX1004, Fig. 4 (annotated below).
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`Within the cavity, a light shielding frame 18 holds an optical filter 17 in front of
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`the photodetector. See EX1004, 8:38-42: Fig.4.
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`
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`Light emitter a© 18 &—Photodetector Light emitter
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`|
`|
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`.
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`.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Light shieldin
`
`
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`E
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`ane
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`Z
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`BAS OLE
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`
`
`
`E
`Optical filter 17
`Scattered
`light taking
`unit 8
`
`EX1004, Fig. 4 (annotated). As shown above,light inside the cavity (highlighted
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`yellow) has already passed throughthe tissue and through the scattered light taking
`
`unit 8.
`
`In contrast, none of the other references Apple cited have an analogous
`
`structure to Iwamtya’s light shielding frame or use a dark-colored coating on such
`
`a structure. Sarantos, for example, uses a dark-colored in-mold label to create
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`window regions in a transparent material that contacts the user’s skin. EX1005,
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`MASIMO2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`17:1-25, Fig. 22. The most similar structure in Iwamiya would bethe “scattered
`
`light taking unit 8.” Sarantos does not have any structure like Iwamiya’s light
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`shielding frame 18. Neither Apple nor Anthony provide any rationale for applying
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`the Sarantos “in-mold label” to an internal component in Iwamiyathat is behind
`
`the scattered light taking unit 8.
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`Iwamtyaalso already has an opticalfilter. Thus, a
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`POSITA would have no reason to take Sarantos’ disclosure regarding the in-mold
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`label and apply it to Iwamiya’s light shielding frame 18.
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`Windowregions
`
`
`
`
`
`—
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`om olNOY
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`FIG. 22
`In-mold label 2276
`
`EX1005, Fig. 22 (annotated). Webster (EX1013) at 96-97 and 111 likewise does
`
`not discuss a structure remotely similar to Iwamiya’s light shielding frame. Schulz
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`(EX 1067) also does not remotely resemble Iwamiya. Schulz depicts a sensor and
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`coats the exterior surfaces of the sensor with a light absorbing material. EX1067,
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`9:58-10:23, Figs. 2A-2C.
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`MASIMO 2100
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`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`eee
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`FIG, 2A
`
`FIG. 2B
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`FIG. 2C
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`EX1067, Figs. 2A-2C. Notably, while Apple and Anthony cited EX1067 at 9:58-
`
`10:23, the last sentence of that paragraph at 10:23-25 states, “In one embodiment,
`
`the elements 114 and 116 are white or reflective in the vicinity immediately
`
`surrounding the apertures 117, 119.” EX1067, 10:23-25 (emphasis added), 7:56-
`
`62. Those apertures are for the LED and the photodiode. Thus, even Schulz (the
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`reference cited by Apple and Anthony) teaches Iwamiya’s filter-holder should be
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`reflective, and not coated with a dark-colored, light-absorbing material as Apple
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`and Anthony propose.
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`-16-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`17. As I explained in my prior declaration, a POSITA would understand
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`that
`
`Iwamiya’s light shielding frame reflects light and prevents light
`
`from
`
`bypassing the optical filter. EX2070, §62.
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`It also allows scattered light from the
`
`measurementsite to be redirected towards the optical filter and eventually to the
`
`light receiving unit. Jd. A POSITA would have understood that this funneling of
`
`scattered light that has passed through thelight taking unit 8 (highlighted light blue
`
`below) andinto the cavity (highlighted yellow below) back to the light receiving
`
`unit 9 (the photodetector, purple) would be desirable in the context of Iwamiya.
`
`Iwamiya describes detecting weak signals with various features specifically
`
`designed to avoid the absorption of light by melanin in the skin. A POSITA would
`
`have wanted as much of the scattered light
`
`from the tissue to reach the
`
`photodetector as possible. Using a dark-colored coating on the light shielding
`
`frame in Iwamiya would have eliminated that effect of funneling light back to the
`
`light receiving unit, and thus would reduce the strength of the received signal.
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`-|7-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`Light shielding—_photodetector
`frame 18
`Light emitter
`Light emitter
`
`6 §/10ae Ht 7 The 7 8 ey ae
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`SSSax Y
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`NN 3
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`i: tissueentersthecavity
`
`Scattered light from
`
`ms
`
`H
`
`1
`
`‘
`
`E’
`
`\
`
`p
`
`Opticalfilter 17
`
`Scattered
`light taking
`unit 8
`
`EX1004, Fig. 4 (annotated).
`
`18.
`
`Contrary to Iwamiya’s teachings to use reflective materials for light
`
`shielding purposes, Apple and Dr. Anthony argue that a dark-colored coating that
`
`absorbs light would be preferable because it would “reduce reflections and light
`
`scatter in the empty space surrounding frame 18.” 1291 Reply, 6 (citing EX1042,
`
`99, 12): 1465 Reply, 4. Anthony argues that a “POSITA would have sought to
`
`reduce these effects since any light that reflected back from the space surrounding
`
`frame 18 and throughthe optical filter 17 to the photodiodes would have different
`
`path lengths that could increase optical interference and reduce measurement
`
`accuracy.” EX1042, 99. Anthony also argues that having a reflective light
`
`shielding frame in the cavity in Iwamiya “introduces greater risk of multiple
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`-18-
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`MASIMO2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`scattering and pathlength variations not present in the embodiments that employ
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`holder portion 43 (where no comparable cavity exists).” EX1042, 412.
`
`19. Apple criticizes my declaration for not addressing a so-called
`
`pathlength issue. But Anthony’s argument that the reflected light inside of the
`
`cavity would have different pathlengths that could increase optical interference is
`
`unsupported. Pathlength refers to the interaction of light and tissue, not light and
`
`empty space.
`
`Indeed, even the references Anthony relied upon explain that
`
`distinction. For example, Anthony cited Webster (EX1013) at PDF pages 69, and
`
`96-97. But those portions do not discuss reflections within empty space (such as a
`
`sensor cavity) as a potential source of pathlength variation. Rather, page 96 of
`
`Webster discusses how the Beer-Lambert
`
`law does not perfectly explain the
`
`interaction of light and blood because the Beer-Lambert law “assumes no light
`
`scattering, which is not true in whole blood.” EX1013, 96. This part of Webster
`
`refers to scattering in fissue. Pages 96-97 of Webster do not discuss pathlength
`
`variationsat all. That section discusses optical interference caused by (1) ambient
`
`light, and (2) emitted light that bypasses the tissue. EX1013, 96. Noneofit
`
`describes light that has already passed through tissue. Andthe light in Iwamiya’s
`
`cavity would have already passed through tissue and through the scattered light
`
`taking unit (8) before entering the cavity. There would be no further tissue for
`
`such light to interrogate. And none of the references Anthony cited support a
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`-19-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`“pathlength” problem for light after it has already interacted with the user’stissue.
`
`Moreover, Iwamiya addresses both the issues described by Webster:
`
`(1) ambient
`
`light and (2) emitted light that bypasses the tissue. Iwamiya addresses ambient
`
`light with the optical filter 17 whichfilters out light below 900 nm and the problem
`
`of light bypassing tissue by using reflection layers 13 and 15 in the light guide unit
`
`to preventthe light from going directly from emitter to detector.
`
`20. Anthony also cites Schulz (EX1067) at 1:65-2:16 and 9:58-10:23.
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`It
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`does not provide a POSITA with any reason to modify Iwamiya. Schulz at 1:65-
`
`2:16 discusses the problem where “light generated by the light source within the
`
`measuring device ... which is not transmitted through or reflected by the body part
`
`under examination will also result in signal error if such light is received by the
`
`detector.” EX1067, 2:8-11. Similarly, Schulz at 9:58-10:23 discusses using a light
`
`absorbing material on surface elements to eliminate undesirable light paths from
`
`the LED to the sensor. EX1067, 9:64-10:3 (“Specifically, light generated by the
`
`light source 103 can take several paths in reaching the detector, only one of which
`
`is the desired path via the aforementioned first and second apertures 117, 119 and
`
`through the interposed tissue material. Preferably, in order to obtain more accurate
`
`measurement of transmitted light intensity, these other paths are eliminated or
`
`attenuated.”). As discussed above, Iwamiya’s lightguide already includes features
`
`blocking such undesirable light. The light that enters Iwamiya’s light collecting
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`-20-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`unit 8 is either ambientlight or light that has passed through the user’s tissue and
`
`contains the desired signal.
`
`Iwamiya’s filter removes ambient light, leaving only
`
`the light with the desired signal. There is no reason to discard a portion of this
`
`light, as Apple’s proposed coating would do.
`
`Indeed, it would potentially absorb
`
`desirable light, which would be a detrimentrather than a benefit. And as I noted
`
`above, Schulz itself describes using a “white or reflective coating” in the “vicinity
`
`immediately surrounding the apertures” for the LED and photodetector. EX1067,
`
`10:23-25.
`
`21. Apple’s and Anthony’s arguments are also inconsistent. Apple
`
`suggests that a POSITA would be motivated to removethe optical filter 17 entirely
`
`from Iwamiya.
`
`1291 Reply, 14; 1465 Reply, 12; EX1042, 425. But the optical
`
`filter 17 was designed to prevent external light from reaching the photodetector.
`
`EX1004, 8:38-47.
`
`Iwamiya’s teachings include the optical filter 17 in every
`
`embodiment. EX1004, 8:38-47, 18:55-60, 28:56-63, 39:9-19. Apple presents no
`
`reason a POSITA would simultaneously remove a feature that
`
`Iwamiya
`
`specifically taught to reduce noise (the optical filter) yet add dark-colored coating
`
`supposedly to reduce noise.
`
`22. Moreover, Apple’s proposed modifications make no sense.
`
`The
`
`purpose of Iwamiya’s light shielding frame is to mountthe optical filter and ensure
`
`light passes through that filter. EX1004, 8:38-47. Apple presents no reason to
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`-21-
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`MASIMO 2100
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`Apple v. Masimo
`IPR2022-01291
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`MASIMO 2100
`Apple v. Masimo
`IPR2022-01291
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`remove the optical filter yet keep the structure designed to mountthat filter. The
`
`inconsistency in these arguments strongly suggests that Anthony relied on
`
`hindsight by working backwards from the ’745 Patent claims to combinethe prior
`
`art.
`
`23.
`
`Finally, Apple and Anthony argue that “even if design tradeoffs exist
`
`between the selection of a dark-colored coating and a reflective material, these
`
`tradeoffs would only render each option obvious.” 1291 Reply, 7; 1465 Reply, 5;
`
`EX1042, 914 (“the mere existence of design tradeoffs would not have detracted
`
`from the obviousness of using a dark-colored coating...”). However, a tradeoff
`
`typically results in some advantage to be gained in exchangefor a disadvantage.
`
`Buthere, there is no benefit to using a dark-colored coating. Rather, as I explained
`
`above, such a coating would reduce the amountof light that has already passed
`
`through the tissue that can ultimately reach Iwamiya’s photodetector, weakening
`
`the signal. A POSITA would not have co
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