`
`Filed: October 2, 2023
`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Brian C. Claassen (Reg. No. 63,051)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Daniel Kiang (Reg. No. 79,631)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.:
`(949) 760-0404
`Fax:
`(949) 760-9502
`E-mail:
`AppleIPR745-1@knobbe.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner,
`
`Vv.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`Case IPR2022-01291
`U.S. Patent 10,687,745
`
`PATENT OWNER SUR-REPLY
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`2.
`
`3.
`4.
`
`5.
`
`INTRODUCTION .................................................................................... 1
`I.
`II. WAIVER .................................................................................................. 2
`III. CLAIM CONSTRUCTION ..................................................................... 3
`IV. ARGUMENT ............................................................................................ 4
`A.
`Iwamiya-Sarantos Combinations ................................................... 4
`B.
`Sarantos-Shie Combinations ........................................................ 12
`1.
`Shie Does Not Disclose a Material Used in
`Physiological Sensors ........................................................ 12
`A POSITA Would Not Have Been Motivated to
`Make Sarantos-Shie ........................................................... 14
`Sarantos’s Figures 22-25 Are Not “Cohesive” .................. 16
`Sarantos-Shie Does Not Render Obvious the Claimed
`Spatial Configuration ......................................................... 18
`Sarantos Does Not Disclose Oxygen Saturation
`Measurements at the Wrist ................................................. 18
`C. No Expectation of Success ........................................................... 19
`1.
`The Newly Cited References Do Not Establish a
`Reasonable Expectation of Success ................................... 21
`A POSITA’s Knowledge of All Art Does Not
`Establish an Expectation of Success .................................. 27
`Apple Witness Testimony and Documents Are
`Highly Probative ................................................................ 28
`Apple’s Enablement Arguments Are Irrelevant ................ 31
`4.
`CONCLUSION ....................................................................................... 33
`
`2.
`
`3.
`
`V.
`
`-i-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Ariosa Diagnostics v. Verinata Health,
`805 F.3d 1359 (Fed. Cir. 2015) ..................................................................... 2
`Fromson v. Advance Offset Plate, Inc.,
`755 F.2d 1549 (Fed. Cir. 1985) ..................................................................... 2
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ................................................................... 32
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ....................................................................................... 6
`In re Rouffet,
`149 F.3d 1350 (Fed. Cir. 1998) ................................................................... 27
`In re Wands,
`858 F.2d 731 (Fed. Cir. 1988) ..................................................................... 31
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) ................................................................... 25
`OTHER AUTHORITIES
`35 U.S.C. §312 .................................................................................................. 27
`37 C.F.R. §42.6 ........................................................................................... 14, 25
`
`
`-ii-
`
`
`
`
`
`EXHIBIT LIST
`
`Exhibit
`
`or
`
`2001|Declaration of Jeremiah S. Helm in Support of Pro Hac Vice Motion
`
`2002|Declaration of Professor R. James Duckworth, Ph.D
`
`2003|Curriculum Vitae of Professor R. James Duckworth, Ph.D
`
`EMBS AnnualInternational Conference, pp. 912-915, 2006
`
`R.J. Duckworthetal., “Field Testing of a Wireless Wearable
`Reflectance Pulse Oximeter,” American Telemedicine Association
`Annual Conference, 2006
`
`Y. Mendelsonetal., “A wearable reflectance pulse oximeter for remote physiological monitoring,” Proceedings of the 28th IEEE
`
`Y. Mendelson, “Wearable Wireless Pulse Oximetry for Physiological
`Monitoring,” Worcester Polytechnic Institute Precise Personnel
`Location Workshop, 2008
`
`2007|RESERVED
`
`Masimo Corp.et al. v. Apple Inc., June 6-10, 2022 Public Hearing
`Transcript, ITC Inv. No 337-TA-1276
`
`2009-
`010
`
`RESERVED
`
`3011 Masimo Corp.et al. v. Apple Inc., Masimo’s June 27, 2022 Public Initial
`Post-Hearing Brief, ITC Inv. No 337-TA-1276
`
`012 Masimo Corp.et al. v. Apple Inc., Masimo’s August 18, 2022 Motion to
`Modify Protective Order, ITC Inv. No 337-TA-1276
`
`Masimo Corp.et al. v. Apple Inc., Apple’s August 29, 2022 Opposition
`2013|to Masimo’s Motion to Modify Protective Order, ITC Inv. No 337-TA-
`1276
`
`-111-
`
`
`
`Apple’s September 19, 2022 Email to Masimo Opposing Masimo’s
`015
`~|Request for Additional Discovery
`
`2016-|RESERVED
`
`2018
`
`2019|U.S. Patent Pub. No. 2017/0325744
`
`2020|January 3, 2013 MasimoPress Release Regarding iSpO2
`
`2021|October 2, 2013 Marcelo Lamego Email to Apple CEO Tim Cook
`
`2022|US. Patent No. 10,524,671
`
`2023|US. Patent No. 10,247,670
`
`U.S. Patent No. 11,009,390
`
`U.S. Patent No. 10,219,754
`
`2026|RESERVED
`
`
`ena
`Description
`014 Masimo’s September 20, 2022 Email to Board Requesting Authorization
`to File Motions for Additional Discovery
`
`
`
`2027
`
`Masimo Corp.et al. v. Apple Inc., Public Order Regarding Masimo’s
`Motionfor Preliminary Injunction, Case No. 8:20-cv-00048 (C.D. Cal.)
`
`2028 SovaasenevaeWebpageTitled“AppleWatchSeries6”
`
`
`
`
`2029 AppleWatchSeries6Video=Watch Series 6 Video
`2030-
`5049
`RESERVED
`
`050
`.
`
`Respondent Apple Inc.’s Post-Hearing Brief (publicly filed July 13,
`2022 in the Investigation)
`
`-IV-
`
`
`
`
`Exhibit
`Description
`
` WhatIt Means,” Independent, Oct. 7, 2020
`
`September 15, 2020 Apple Press Release Regarding Apple Watch Series
`
`ndrew Griffin, “Apple Watch Series 6: Why Apple Added a Sensorto
`Tell How Much OxygenIs in Your Blood as Its Big New Feature — And
`
`(https://www.independent.co.uk/tech/apple-watch-series-6-blood-
`oxygen-pulse-oximetry-red-light-heart-rate-vo2-max-b5 13807. html)
`
`-V-
`
`No
`
`post Complainants’ReplyPost-HearingBrief(publiclyfiledJuly25,2022in
`
`2051
`
`the Investigation)
`
`052
`
`RespondentApple Inc.’s Corrected Pre-Hearing Brief (publicly filed
`May 27, 2022 in the Investigation)
`
`2053
`
`054
`
`2055
`
`February 23, 2022 Updated Joint Proposed Claim Construction Chart,
`.
`or
`filed in the Investigation
`
`January 27, 2022 Complainants’ Opening Claim Construction Brief,
`filed in the Investigation
`
`February 10, 2022 Respondent Apple Inc.’s Rebuttal MarkmanBrief,
`-
`filed in the Investigation
`
`2056|Excerpts of the File History of App. No. 16/532,065
`
`Excerpts of the File History of App. No. 15/195,199
`
`5
`
`058
`
`August 31-September 27, 2022 Email Chain between Masimo’s counsel
`and Apple’s counsel regarding Petition correction
`
`059
`
`PCT Publication WO 02/28274
`
`5060
`
`Redlined comparison of text of Mendelson-799 and PCT Publication
`WO 02/28274
`
`2061|U-S. Pat. App. Pub. No. 2014/0107493
`
`6 A
`
`5062
`
`2063
`
`
`
`
`Exhibit
`Description
`
`No
`
`064
`
`Brian Chen, “The New Apple Watch Measures Your Blood Oxygen.
`Now What?,” New York Times, Sept. 17, 2020
`(https://www.nytimes.com/2020/09/17/technology/personaltech/new-
`apple-watch-blood-oxygen-level-review.html)
`
`2065|Excerpts of Webster’s New Collegiate Dictionary (1980)
`
`2066|Masimo 2014 Annual Report
`
`2067 Marcelo Lamego LinkedIn Profile
`(https://www.linkedin.com/in/marcelo-lamego-72564454)
`
`2068|RESERVED
`
`2069|RESERVED
`
`2072|Excerpt of Webster’s II New College Dictionary (2001) 073
`
`February 13, 2023 Respondent Apple Inc.’s Response to Complainants’
`2075|Petition for Review (Public Version), filed in Masimo Corp.et al. v.
`Apple Inc., ITC Inv. No 337-TA-1276
`
`2070
`
`071
`
`Declaration of Professor R. James Duckworth, Ph.D. in Support of
`ss
`Masimo’s Patent Owner Responses
`
`Transcript of March 24, 2023 Deposition of Dr. Brian W. Anthony and
`Exhibits 1-3 Thereto
`
`Encyclopedia Britannica, Light, the visible spectrum,
`https://www.britannica.com/science/light (last visited May 19, 2023)
`
`074
`
`Nonconfidential Excerpt of Page 65 from June 6-10, 2022 Hearing
`Transcript, Masimo Corp.et al. v. Apple Inc., ITC Inv. No 337-TA-1276
`
`CONFIDENTIAL~—Transcript of Testimony of Brian Land from June
`2076|6-10, 2022 Hearing Transcript, Masimo Corp.et al. v. Apple Inc., ITC
`Inv. No 337-TA-1276
`
`-Vi-
`
`
`
`
`Exhibit
`Description
`
`No
`
`CONFIDENTIAL — Transcript of Testimony of Dr. Stephen Waydo
`
`CONFIDENTIAL — Transcript of Testimony of Dr. Vivek Venugopal
`2079|from June 6-10, 2022 Hearing Transcript, Masimo Corp. et al. v. Apple
`Inc., ITC Inv. No 337-TA-1276
`
`CONFIDENTIAL- Transcript of Testimony of Dr. Paul Mannheimer
`2077|from June 6-10, 2022 Hearing Transcript, Masimo Corp.et al. v. Apple
`Inc., ITC Inv. No 337-TA-1276
`
`2078|from June 6-10, 2022 Hearing Transcript, Masimo Corp.et al. v. Apple Inc., ITC Inv. No 337-TA-1276
`
`080
`
`081
`
`5082
`
`083
`
`CONFIDENTIAL — ITC Exhibit CX-0289C — Designated Portions of
`February 10, 2022 Deposition of Paul Mannheimer
`
`CONFIDENTIAL — ITC Exhibit CX-0299C — Designated Portions of
`February 18, 2022 Deposition of Stephen Waydo
`
`CONFIDENTIAL — ITC Exhibit CX-0295C — Designated Portions of
`February 11, 2022 Deposition of Tao Shui
`
`CONFIDENTIAL — ITC Exhibit CX-0007C — Email from Brian Land to
`Paul Mannheimeretal.
`
`2084|CONFIDENTIAL — ITC Exhibit CX-0175C — Apple Organization Chart
`
`2085|CONFIDENTIAL — ITC Exhibit CX-0177C — Apple Presentation
`
`2086|CONFIDENTIAL — ITC Exhibit CX-0185C — Apple Presentation
`
`Kim,Gina, “Masimo Wants $3B From Apple Over Smartwatch IP, Jury
`Told.” Law360, April 5, 2023
`(https://www.law360.com/articles/1593689/masimo-wants-3b-from-
`apple-over-smartwatch-ip-jury-told)
`
`-Vll-
`
`
`
`
`
`Exhibit
`No.
`
`Description
`
`ITC Exhibit CX-1616 — Fowler, Geoffrey, “The new Apple Watch says
`my lungs maybesick. Orperfect. It can’t decide.” Washington Post,
`September23, 2020 (https://www.washingtonpost.com/technology/202
`
`0/09/23/apple-watch-oximeter/)
`
`2089
`
`CONFIDENTIAL — ITC Exhibit CX-1793C — Apple Presentation
`
`2090
`
`CONFIDENTIAL - ITC Exhibit CX-1800C — Email from Adrian Perica
`to Steve Hotelling,etal.
`
`2092
`
`2093
`
`“Track Your SpO2 to Uncover Changes in Your Wellbeing,” Fitbit,
`Sept. 7, 2020 (https://blog.fitbit.com/track-your-spo2/)
`
`CONFIDENTIAL — ITC FinalInitial Determination (Public version
`filed at Exhibit 1033)
`
`2094
`
`Comparison of EX1003 with the Petition
`
`2095
`
`Declaration of Daniel C. Kiang (served only)
`
`William, Andrews, “Fitbit Update Lets You Quickly Check Your Blood
`OxygenSaturation.” Forbes, Sept. 9, 2020
`(https://www.forbes.com/sites/andrewwilliams/2020/09/09/fitbit-update-
`lets-you-quickly-check-your-blood-oxygen-
`saturation/?sh=5d6ecb55e76a)
`
`Brian W. Anthony
`
`2096
`
`2097-
`
`2099
`
`2100
`
`2101
`
`Transcript of Telephonic Hearing before the Panel, dated September1,
`2023
`
`RESERVED
`
`CONFIDENTIAL - Declaration of Dr. R. James Duckworth in Support
`of Patent Owner’s Sur-Reply
`
`CONFIDENTIAL — Transcript of September 15, 2023 Deposition of Dr.
`
`-Vill-
`
`
`
`
`
`Exhibit
`No.
`Description
` 2102|Transcript of September 27, 2023 Telephonic Hearing before the Panel
`
`-1X-
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Apple filed an underdeveloped Petition that did not address all claim
`
`elements and instead proposed incomplete or inoperable combinations. Apparently
`
`recognizing the flaws in its Petition, Apple submitted a Reply with twice the
`
`numberof substantive exhibits that it submitted with the Petition (thirty-seven new
`
`exhibits) and a ninety-six-page expert declaration. But the Reply does notfix the
`
`Petition’s problems because the new theories conflict with the references
`
`themselves, would result in worse sensors, and still do not establish all claimed
`
`elements. Apple’s shifting theories demonstrate that it worked backward from the
`
`claims and attempted to cobble together disparate features.
`
`Apple also cites a hodgepodge of new references to support its reasonable
`
`expectation of success arguments. But those references identify an aspirational
`
`goal of determining oxygen saturation at the wrist, without evidence that goal was
`
`ever realized. Apple also trivializes its own engineers’ testimony explaining the
`
`difficulty of determining oxygen saturation at the wrist as ignorant, misinformed,
`
`or irrelevant. Apple relies on its expert’s hindsight re-imagination of that evidence
`
`and his speculation that the engineers’ testimony related to non-existent design
`
`goals. At no point did Apple’s expert, Anthony, speak with the Apple engineers
`
`who could have corrected his misunderstanding. He presents no reason to depart
`
`from the ITC’s determinationsthat were groundedin evaluating live testimony and
`
`
`
`
`
`supporting evidence. And Applestill does not squarely address the ITC’s finding
`
`that the Iwamiya-Sarantos combination had no reasonable expectation of success
`
`for Claims 9, 18, and 27. EX2093, 230, 235-236, 240.
`
`Apple tries to prove obviousness by pointing to unconnected pieces in
`
`different references. But “[o|nly God works from nothing. Men must work with
`
`old elements.” Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549, 1556 n.3
`
`(Fed. Cir. 1985). That the Reply includes so many new references and an
`
`enormousdeclaration yetstill struggles to patch together the claimed invention in a
`
`coherent manner underscoresthat the claims are not obvious.
`
`Il. WAIVER
`
`Apple’s Petition failed to establish a prima facie case of obviousness
`
`because it (1) ignored evidence that underminedits arguments, (2) did not support
`
`its position with evidence,
`
`and (3) proposed incomplete or
`
`inoperable
`
`combinations. Apple’s Reply includes 37 new exhibits and a 96-page declaration.
`
`As discussed below, Apple’s Reply also includes new terms to be construed
`
`(Section III) and new combinations and modifications of prior art (Sections IV.A,
`
`IV.B.1-4). But providing new evidence or new theories beyond the Petition is not
`
`within the proper scope of a Reply andfails to establish a prima facie case. Ariosa
`
`Diagnostics v. Verinata Health, 805 F.3d 1359, 1367 (Fed. Cir. 2015).
`
`Indeed,
`
`Anthony repeatedly testified that the new material was “not necessary.” EX2101,
`
`-2-
`
`
`
`
`
`19:5-12, 27:1-17, 99:21-100:12. Accordingly, the Board should not consider the
`
`Reply’s new evidence and arguments.
`
`Ill. CLAIM CONSTRUCTION
`
`The Reply raises the construction of “determine...oxygen saturation.”
`
`Apple argues the claim “could be satisfied by” unspecified “rudimentary
`
`functions.” Reply, 21. Anthony suggests “determine...oxygen saturation” “might
`
`not even need to be a measurement”and could instead be an “indication of whether
`
`a signal sufficient for measuring oxygen saturation has been obtained....””»- EX1042
`
`41. The ’745 Patent, however, explains the processor “receive[s] the transmitted
`
`signal” and “determine[s]...arterial oxygen saturation...in the tissue measurement
`
`site.” EX1001 2:66-3:4; 3:46-61; 13:37-40. “Determine...oxygen saturation” thus
`
`requires more than “a signal sufficient
`
`for”;
`
`it requires calculating oxygen
`
`saturation. EX2100,8-10. Anthony concededthat the claims require calculating
`
`oxygen saturation, consistent with a POSITA’s understanding. EX2101, 69:4-9.
`
`The Reply also raises a dispute about the term “corresponding,” which
`
`Apple argues “has broader meaningsthan those represented by the applicant to the
`
`Office during prosecution of the parent application.” Reply, 10. But the intrinsic
`
`evidence explains “corresponding,” e.g., in the context of Claim 15, requires a
`
`sufficient number of detectors to match or represent the relevant shape. POR 51-
`
`-3-
`
`
`
`
`
`52; EX2100, §11. Apple’s approach, which ignores the intrinsic evidence in favor
`
`of dictionary definitions, was rejected by Phillips.
`
`IV. ARGUMENT
`
`A.
`
`Iwamiya-Sarantos Combinations
`
`Iwamiya’s goal is to obtain pulse rate measurements without interference
`
`from pigment and ambient light. POR, 22-27. Iwamiya’s design requires:
`
`e LEDs “configured to emit
`
`infrared light
`
`(Ap=940 nm) where
`
`absorbance of melanine pigment contained in the skin. ..is low,”
`
`e
`
`a photodetector “with spectral sensitivity characteristic of reacting
`
`strongest with light of a specific wavelength band of about A=940
`
`nm,” and
`
`e an optical filter “configured to transmit light of a specific wavelength
`
`band of 900 nm or moreandshield light of a wavelength band of 900
`
`nm orless.”
`
`EX1004, 6:31-34, 8:29-31, 8:42-47. Every Iwamiya embodimentrequires these
`
`features, which work together to provide a usable signal and avoid “unnecessary
`
`light included in the external light such as the sunlight.” EX1004, 8:38-47, 13:1-
`
`23; EX2100, 934.
`
`The Petition proposed a non-functional modification that added a red emitter
`
`but kept Iwamiya’s other features. The Reply does not contest the original
`
`4.
`
`
`
`
`
`obviousness theory was inoperable.
`
`Instead, the Reply asserts a new theory that
`
`alleges “predictable adaptations” (Reply, 13), which Iwamiya teaches are
`
`undesirable.
`
`First, the Reply argues that using a dark-colored coating was “common
`
`practice” and therefore obvious. Reply, 4-5. But noneof the references cited by
`
`Apple apply a dark coating to anything like Iwamiya’s light shield/filter design.
`
`EX2100, 416. A POSITA would have understood that in Iwamiya’s design
`
`(below), the light taking unit (light blue) passes scattered “observation light” from
`
`the skin into the cavity (yellow) where the detector receives it. Id.; EX1004, Fig. 4
`
`(below), 7:50-61; 8:20-23.
`
`It would have been desirable to funnel as muchofthe
`
`“observation light” entering the cavity to the detector as possible. EX2100, 417.
`
`Apple’s proposed modification of adding “absorptive material” admittedly “would
`
`reduce the amountof scattered/reflected light from the space surrounding frame 18
`
`from reflecting back through optical filter 17 to the photodiodes” (Reply, 6),
`
`thereby reducing the signal reaching the detector. EX2100, 417. The Reply
`
`criticizes Masimo’s expert, Duckworth, for analyzing Iwamiyaand explaining that
`
`Iwamiya uses reflective surfaces for similar structures in other embodiments.
`
`Reply, 6-7; POR 46-47; EX2100, 914-15. Although Iwamiya does not expressly
`
`discuss the material for “light shielding frame 18,” it specifically discloses “metal
`
`with a light shielding property.” EX1004 8:38-42, 18:61-64. The specification
`
`
`
`
`
`associates the frame and the property with the same “light shielding” language. A
`
`POSITA would naturally use that disclosed material with the light shielding
`
`property for the light shielding frame to achieve the benefits discussed above.
`
`EX2100, 13.
`
`
`
`Light shieldin
`
`;
`
`¢
`
`Light emitter ee 18 8—Photodetector Light emitter
`
`
`
`
`
`
`
`Vf
`
` DESooSarr
`
` E
`
`Scattered
`light taking
`unit 8
`
`Optical filter 17
`
`EX1004, Fig. 4 (annotated).
`
`Second, Apple misapplies KSR’s “routine design choice” by sidestepping
`
`the requirementfor “a design need...to solve a problem.” KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 402 (2007).! Apple argues that “scattered/reflected light” in
`
`Iwamiya’s cavity would increase noise. Reply, 6 (citing EX1042, 999, 12). The
`
`only support
`
`is Anthony’s declaration, which cites references discussing (1)
`
`' Emphasesaddedunless noted.
`
`-6-
`
`
`
`
`
`scattered/reflected light in tissue or (2) detectors receiving emitted light which
`
`bypassed the tissue (light piping).
`
`EX1042, 99; EX2100, 9918-20.
`
`Tissue
`
`scattering/reflection is a completely different phenomenon and is inapplicable to
`
`Iwamiya’s sensor cavity because there is no tissue or blood to absorb and change
`
`the signal.
`
`Jd., §19.
`
`Iwamiya also addressed light piping with its design.
`
`Id.
`
`Reflections within Iwamiya’s measurement cavity improve signal by directing
`
`light that has already emerged from the body, through air, to the photodiode. Jd.;
`
`EX2100, 4919-20.
`
`Third, Apple argues a POSITA would add a coating to block light from
`
`bypassing Iwamiya’s optical filter (Reply, 4) but later inconsistently proposes
`
`removing Iwamiya’s filter altogether, thereby eliminating the alleged reason for the
`
`coating. Reply 13-14; EX2100, §§21-22. Apple’s inconsistent position revealsit
`
`relied on hindsight analysis to salvage an inoperable combination.
`
`Indeed, the
`
`Reply asserts an extensive series of new changes to Iwamiya. Reply, 13-14. But
`
`those changes destroy Iwamiya’s benefits, no longer avoid pigment or ambient
`
`light, increase noise and optical interference, and generally conflict with Iwamiya’s
`
`teachings to avoid light below 900nm (such as red). EX2100, {34-36; POR, 22-
`
`27, 48-49.
`
`Fourth, Apple justifies its modification with an illusory “design tradeoff.”
`
`Reply, 15. Apple asserts a POSITA would want to “expand the capabilities of
`
`-7-
`
`
`
`
`
`Iwamiya’s device...to measure oxygen saturation....” Jd. But, as discussed (POR
`
`28-42; EX2070, 9920-34;
`
`infra, Section IV.C), a POSITA would have no
`
`expectation of determining oxygen saturation with Iwamiya’s wrist-sensor.
`
`It is
`
`not a design trade-off to destroy Iwamiya’s functions and advantages without any
`
`reasonably expected benefit. EX2100, 423, 37.
`
`Fifth, Twamiya teaches away from using non-infrared wavelengths.
`
`Iwamiya detects only infrared light to (1) avoid pigment in the skin and (2)
`
`remove “unnecessary light includedin the external light such as the sunlight.” See,
`
`e.g., EX1004, 1:62-2:6, 6:31-34, 10:34-38; EX2070, 9914, 46-47, 63. For those
`
`reasons, Iwamiya discourages detecting visible light, including red light. EX2070,
`
`994. Apple does not address this teaching away. Reply, 14-15. And Anthony
`
`admits skin pigmentation was a key source of error. EX1042, {62. Nevertheless,
`
`Anthony argues that adding red LEDs to Iwamiya was a mere “design choice.”
`
`EX1042, 925. But Anthony’s proposed designs irradiate different tissue locations
`
`with different wavelengths of light, which would result in noisy or unusable
`
`signals. EX2100, 31-33. That Anthony proposes such flawed arrangements
`
`underscores his erroneousanalysis.
`
`Sixth, Apple argues that using six photodiodes in Iwamiya would “achieve
`
`knownbenefits such as increasing the detection area and light sensitivity.” Reply
`
`9-10. A POSITA, however, would have understood that Apple’s modification
`
`-8-
`
`
`
`
`
`substantially decreases the detection area, and corresponding signal strength.
`
`EX2100, 924-26. Asillustrated below, Iwamiya’s existing detection area (left,
`
`green) is substantially larger than Apple’s modification (center, red); Apple’s
`
`modification no longer covers the area shownin orange (right). EX2100, 426.
`
`
`
`Left/Right: EX2100, 426; Middle: Reply, 9 (Apple’s annotated EX1004, Fig. 2)
`
`The modification decreases signal strength by 50% or more—the opposite of
`
`Apple’s alleged benefit and a very undesirable result, particularly for weak signals
`
`at the wrist. EX2100, 925-26.
`
`Apple’s alleged “known benefits” rely on a completely different sensor
`
`design that positions detectors around a perimeter and captureslight emitted from a
`
`central emitter reflected outward. Reply, 9-10; EX1042, 917; see, e.g., EX1008,
`
`Fig. 7 (annotated below, central emitters/peripheral detectors); EX2100, 427.
`
`-9-
`
`
`
`Photodetectors
`Light emitter RQ MRR
`
`Figure 7
`
`Iwamiya-Sarantos does the opposite: peripheral emitters direct
`
`light
`
`inward
`
`towards the center. EX2100, 27 (annotating EX1004, Fig. 4, below).
`
`Light emitter
`
`Central photodetector
`
`SASL LDA LA ff
`
`Light directed towards
`central photodetector
`
`The different configuration means a circular arrangementin the center necessarily
`
`creates a gap in Iwamiya-Sarantos’s detection area (below) that reduces signal
`
`strength—the opposite of Apple’s proposed motivation. EX2100, 925, 27:
`
`EX2070, 9100, 102-104.
`
`-10-
`
`
`
` Empty spot
`
`EX2100, 925.
`
`Apple rationalizes its modification based on Iwamiya’s reference to a
`
`“circumference.” Reply, 8. But a POSITA would have understood that Iwamiya’s
`
`“circumference” defines the detectors’ relative location, and not a circular array.
`
`EX2100, 428. For example,
`
`the detector arrangement below is on the same
`
`circumference centered on the optical axis and captures light over the entire
`
`detection area.
`
`
`
`EX2100, §]28-29. Apple’s circular arrangementis not a design tradeoff and would
`
`result in a substantially worse signal. Jd.
`
`Apple argues the ’745 Patent should have identified “a minimum orcritical
`
`numberof photodiodes,” and asserts the claims involve optimizing ranges. Reply,
`
`-|]-
`
`
`
`
`
`10. But the claims are not directed to a range.
`
`Instead, they recite a particular
`
`structural arrangement(not disclosed by Iwamiya) that is defined by a sufficient
`
`numberof detectors. POR, 51-52; EX2057, 322: EX2100, 930.
`
`Finally, Apple asserts
`
`that Sarantos “discloses and renders obvious
`
`measuring oxygen saturation at
`
`the wrist.” Reply 11-12. Apple relies on
`
`Sarantos’s alleged “alternative embodiments for measuring blood oxygen levels at
`
`col. 13:36-14:22.” Reply, 11-12. But that portion of Sarantos is, at best, a
`
`speculative invitation for experimentation. EX2002-1291, 481; EX2070, 9957, 88.
`
`Sarantos later confirms its disclosed sensors were “not tailored for use in other
`
`spectrums, such as the red or infrared spectra.” EX1005 18:35-51; POR 25-27:
`
`PO POR 36-38; infra §IV.B.5.
`
`Iwamiya would have
`
`discouraged, and teaches away from,
`
`the proposed combination. POR 23-28.
`
`There was no expectation that adding emitters to Iwamiya would result
`
`in
`
`successful oxygen saturation determinations.
`
`B.
`
`Sarantos-Shie Combinations
`
`1.
`
`Shie Does Not Disclose a Material Used in Physiological Sensors
`
`Apple argues that Shie “discloses both cylindrical and Fresnel-type lenses,”
`
`and it “would have been obvious to transform light from a first shape to a second
`
`-|2-
`
`
`
`
`
`shape.” Reply, 25.
`
`Shie, however, has nothing to do with physiological
`
`monitoring but instead discusses, e.g., “automotive applications” such as “trailer
`
`lights.” EX1007 6:8-11; EX2100, 441. Apple instead relies on a new exhibit and
`
`argues that lenses are “used routinely” in “optical instrumentation.” Reply, 25.
`
`But the new exhibit (1) identifies many optical elements; (2) does not suggest any
`
`change in shape; and (3) involves “a fiber optic sensor” (below) irrelevant to
`
`Sarantos. EX1046, 10 (below); EX2100, 42.
`
`FIBER OPTIC
`CABLE
`
`
`
`
`
`
`That optical elements could be used in someinstrumentation does not suggest a
`
`POSITA would have looked to Shie, or specifically selected a cylindrical or
`
`Fresnel-type lens for use with Sarantos. EX2100, 442.
`
`Anthony’s analysis also conflicts with Apple’s ITC arguments. Anthony
`
`relies on his assumption that light from a square LED is square, with “no change in
`
`shape between the LEDs and the diffuser.” EX1042, §§53, 58. But before the
`
`ITC, Apple argued that light from a square LED “changes from a square to a
`
`-13-
`
`
`
`
`
`circular shape without passing through any material....”. EX2050, 160, 166-168.
`
`Apple cannot credibly maintain such inconsistent positions.
`
`2.
`
`A POSITA Would Not Have Been Motivated to Make Sarantos-
`
`Shie
`
`Apple argues the Petition “identified multiple reasons” motivating the
`
`Sarantos-Shie combination. Reply, 25. Masimo rebutted these motivations,
`
`explaining they would decrease Sarantos’s
`
`signal
`
`strength and were self-
`
`contradicting and unsupported. POR, 56-64; EX2070, §{78-87. The Reply does
`
`not address Masimo’s arguments but instead asserts, without explanation, that
`
`Masimo used an “incomplete understanding.”
`
`Reply, 25-26. Apple also
`
`references “design tradeoffs” without any hint of what they are. Jd., 26. Apple’s
`
`Reply thus includes no explanation why a POSITA would pluck a cylindrical or
`
`Fresnel-type lens from the universe of optical elements. Instead, Apple improperly
`
`incorporates Anthony’s declaration. Reply 25-26 (citing EX1042, §§60-64): 37
`
`C.F.R. §42.6(a)(3).
`
`Anthonyfirst asserts a cylindrical or Fresnel lens would direct more light to
`
`the photodiodes. EX1042 §61. Anthony, however, identified no deficiency in
`
`Sarantos’s optimized detectors. EX2100, 951. Anthony drawsan arbitrary oval or
`
`square on Sarantos’s figures (below) andalleges a lens could provide suchprecise
`
`patterns:
`
`-14-
`
`
`
`
`
`Optical AC Power Beam
`eoyrsceengeeengrmemmngencemegmeenynemyremty
`
`Optical AC Power Beam
`
`* S
`
`474 2
`
`0
`nine
`/
`first shape (circle) pee
`
`2 @\e
`
`6
`
`second shape (ellipse)
`
`“6 @
`
`8
`x (mm)
`.
`first shape (circle) pg,
`
`8
`
`ONS
`
`Ss
`
`secondshape (rectangle)
`
`APPLE-1005, FIG. 6 (annotated)
`
`APPLE-1005, FIG. 6 (annotated)
`
`EX1042, 464. But these figures illustrate light passed throughtissue that reflects,
`
`refracts, and absorbs it. EX1005, 6:5-8; 10:51-11:3; EX2100, 947-48. Light
`
`scattered and reflected by the body will not maintain its shape, and there is no
`
`evidence that the shape ofreflected light will track the first and second shapes of
`
`emitted light. EX2100, §49. A POSITA would not have understood Sarantos-Shie
`
`could result in the precise shapes Anthonyrequires. Jd.
`
`Anthonyalso argues Fresnel or cylindrical lenses would distribute light over
`
`a wider area (the opposite of his first argument) to reduce the effect of skin
`
`aberrations. EX1042 461-62. The cited references do not recognize that effect.
`
`EX2100, 452. Anthony further argues a POSITA would have modified Sarantos
`
`for cosmetic reasons, something neither Sarantos nor Shie suggests. EX1042 463
`
`(citing EX1074). A POSITA would not have made cosmetic changes expected to
`
`reduce Sarantos’s signal. EX2100, 953; EX2070, 987.
`
`Apple’s experience emphasizes its hindsight-driven arguments are wrong.
`
`
`
`
`ee
`PO Apple concluded:
`
`eo
`
`e “conventional sensing methods do not result in waveformsthat are
`
`consistent enough for SpO2 measurements at the wrist;”
`
`ee
`
`e “[ijnvention is required”
`
`EX2085, 7, 9, 12, 13; see also EX2076, 981:19-983:12: EX2100, 957.
`
`«22079. 834:5-14, 834:20:24, 836:3-6; 837:4-18: 845:7-
`
`16. A POSITA would not have added a Fresnel or cylindrical lens to Sarantos.
`
`EX2100, 4951, 57.
`
`3.
`
`Sarantos’s Figures 22-25 Are Not “Cohesive”
`
`The Reply asserts “Sarantos’s description of FIGS. 22-25 is cohesive.”
`
`Reply, 26. But Sarantos distinguishes between HAR (Figures 22-24) and non-
`
`HAR(Figures 25-26) embodiments. EX1005, 19:22-32; EX2100, 4958-59. Apple
`
`is wrong that “no combination was required to show unpatentability,” and the
`
`Reply impermissibly combines those embodiments for the first time. Reply, 26-
`
`27. Apple further argues it would have been obvious to combine Sarantos’s
`
`Figures 22 and 25, but the alleged result is a completely different structure that
`
`-16-
`
`
`
`
`
`breaks Sarantos’s single annular detector into many small detectors (below).
`
`Reply, 27-28.
`
`
`
`light block
`
`FIG. 25
`
`Sarantos teaches either HAR or ring-shaped detectors would capture more light
`
`than small detectors, and thus discourages the modification. EX2100, {{61-62;
`
`EX1005, 9:48-10:15, 19:21-32.
`
`A POSITA instead would have followed
`
`Sarantos’s teachings and used HAR detectors in, e.g., a square or triangular
`
`arrangement (below). EX2100, 462; EX1005, Figs. 17, 18.
`
`-|7-
`
`
`
`
`
`4.
`
`Sarantos-Shie Does Not Render Obvious the Claimed Spatial
`
`Configuration
`
`The Petition did not address Claim 15’s “array” with a “spatial configuration
`
`corresponding to a shape” requirement. POR, 66-67. The Reply impermissibly
`
`gap-fills that deficiency by relying on its new modification of Sarantos’s Figure 25
`
`(above). Reply, 27; EX2100, §60. Sarantos-Shie does not teach arranging a
`
`plurality of photodiodes as claimed.
`
`Instead, a POSITA would have implemented
`
`HAR detectors in, e.g., a triangular shape, which does not meet Claim 15. EX2100,
`
`§§60-62.
`
`5.
`
`Sarantos Does Not Disclose Oxygen Saturation Measurementsat
`the Wrist
`
`Apple incorrectly asserts: “Sarantos discloses measuring oxygen saturation
`
`at the wrist.” Reply, 28. A POSITA would not have understood Sarantos’s
`
`passing reference to oxygen saturation as disclosing such a device. EX2002-1291,
`
`-18-
`
`
`
`
`
`981, 120; EX2070, §§[57, 88.
`
`Indeed, Sarantos discourages red and infrared
`
`measurements as “dramatically different” from the spectrums for which its sensor
`
`is tailored. EX2070, §§]57, 88; POR 20-21: EX1005, 18:42-51. Fitbit (Sarantos’s
`
`assignee) could not implement oxygen saturation determinations at the wrist for
`
`many years and recognized such determinations as a “hard technical problem.”
`
`POR, 29. Apple does not address this evidence or argument.
`
`Moreover, as explained, a POSITA would have expected the proposed
`
`modifications would reduce Sarantos’s signal strength. POR, 59-64; EX2100, 446
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