ii.
`
`The Protrusions of the Multi-Detector Patents Achieved
`Unexpected Results
`
`Apple criticizes Madisetti for allegedly relying "on a single pnor aii reference,"
`
`Mendelson '799, to show skepticism regai·ding the convex protmsion. AppleIPHB 146. There
`
`are several problems with Apple's ai·gmnent.
`
`First, in response to Mendelson '799, Apple relies on WaiTen's testimony regai·ding a few
`
`words WaiTen highlighted in his demonstrative (RDX-0008.127). AppleIPHB 146. But
`
`Mendelson '799 actually discloses the following:
`
`[V]ai·iations in contact pressure between the sensor and the skin can cause larger
`enors in reflection pulse oximetiy (as compai·ed to ti·ansmission pulse oximetiy)
`since some of the blood near the superficial layers of the skin may be nonnally
`displaced away from the sensor housing towai·ds deeper subcutaneous stiuctures.
`Consequently, the highly reflective bloodless tissue compai·tinent neai· the surface
`of the skin can cause lai·ge en ors even at body locations where the bone is located
`too far away to influence the incident light generated by the sensor.
`
`Tr. (Wan en) 1267:19-1268:11; RDX-0008 .127; CX-1733 at 2:47-57. Apple now argues that
`
`"[t]he Mendelson patent does not disclose a 'convex protiusion' at all." AppleIPHB 146. But this
`
`is exactly the point. Apple fails to address Mendelson '799 teaches the undesirability of displacing
`
`blood away from the sensor. MasimoIPHB 133, 151-153, 161. Mendelson '799 taught to avoid
`
`displacing blood. Thus, of course Mendelson '799 does not disclose or teach a convex protiusion,
`
`because it taught that introducing pressure would displace blood, and cause en ors. CX-1733 at
`
`2:47-57.
`
`Second, after criticizing Mendelson '799, Apple contends Nippon (RX-0665) is "one of
`
`many articles that conveys that, if the detector protiudes slightly into the tissue, not only can you
`
`get more repeatable coupling, but you can increase the sensitivity of the sensor thereby improving
`
`the sensor." AppleIPHB 146. But the Patent Office considered Nippon during prosecution of the
`
`Multi-Detector Patents because Masimo cited it. JX-0004 at 430; JX-0005 at 402; JX-0006 at 481.
`
`-91-
`
`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`The Examiner refe1Ted to it as Jaeb---the first-named inventor-and cited it in the reasons for
`
`allowance for all three Multi-Detector Patents. JX-0004 at 385-386; JX-0005 at 385-387; JX-0006
`
`at 383-386. Apple refers to this same aii by a different name, but that does not change that the
`
`Patent Office ah-eady considered it. The Examiner coITectly explained that Nippon/Jaeb does not
`
`teach or suggest "a protrusion aiTanged over the interior surface, the protr11sion comprising a
`
`convex surface .... " Id. Rather, Nippon/Jaeb is flat. RX-0665 at FIG. 3b. Again, the evidence
`
`contl'adicts Apple's ai·gument.
`
`Third, Apple and WaiTen ignored the relevant Kiani and Rowe testimony and additional
`
`Apple evidence. Apple's third-pa1iy witness, Rowe, conceded that, if anything, the concave
`
`compound curvature of the Lumidigm patent would better
`
`and thus provide better coupling. CX-0279C (Rowe) 69:8-21. This is consistent with
`
`Mendelson '799, and the opposite of adding a pressure-inducing convex protrusion.
`
`Kiani testified about the inventors ' own surprise in development work leading to the
`
`claimed inventions. Before the claimed inventions, Masimo believed sensors with a well or cavity
`
`were advantageous because they would avoid pressure to the measurement site. Tr. (Kiani) 99:2-
`
`4, 99:8-16. Then, when Masimo and Cercacor were developing technology to noninvasively
`
`measure hemoglobin and glucose, "[j]ust getting to the signal is really challenging." Id. at 98:13-
`
`16. Kiani explained how he was surprised to discover the benefit of a pressure-inducing convex
`
`protrusion that was later disclosed in his patents. Id. at 98:9-99: 16.
`
`Apple also fails to address its own patents. Apple recognized the benefit of the claimed
`
`protrusion comprising a convex surface years after Masimo. And, in 2015, Block expressed his
`
`smp rise that
`
`0114C at 3. Block explained that
`
`ex-
`
`-92-
`
`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`-
`
`Id. at 2. He described,
`
`Id. Therefore, Apple's own engineers were surprised by the benefit of the claimed feature. Those
`
`in the field understood what was espoused by Mendelson '799 and others, that pressure should not
`
`be applied to the tissue.
`
`As explained in Masimo 's IPHB, in 2016, Apple 's engineers followed up on their smprise
`
`discove1y by filing a series of patents describing the benefits of a pressure-inducing convex
`
`protrusion. CX-1569; CX-1 806. Figures 3A and 3B from CX-1806 illustl'ate a "protrusion 302"
`
`applying "pressure 320."
`
`BACK SURFACE
`
`!0
`
`PROTRUSIO~
`302
`llACK '!' LATE
`)J6
`orGNING
`101
`
`orENINO Ol'ENNG
`' ~1 OPENING
`301
`/
`301
`
`FIG·. 3A
`
`OPENING
`JOI
`
`Cll'F.NIN{;
`301
`
`SK I {~-
`
`308
`
`{J
`PRCSSURG
`l'.A-... iio
`~ - - -- - -~,
`
`l'JlliSSUIU: ~ 320
`
`FIG. 3H
`
`CX-1806 at FIGS. 3A, 3B. Just as Block expressed to the team about
`
`the specification describes "[b ]y applying localized pressure to the
`
`individual's skin, the pressure gradient across a1terial walls can be reduced, which can lead to an
`
`-93-
`
`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`increase in pulsatile (A C) signal." Id. ~[0032]. Thus, the Apple engineers were smprised by, and
`
`then touted in their patents, the benefits of a convex protrnsion long after the Multi-Detector
`
`Patents.
`
`This evidence contradicts WaITen's unsupported concluso1y opinion that a protrusion
`
`would have been known to "increase yom AC-to-DC signal ratio, meaning that you would see the
`
`tissue perfusion in a better way." Tr. (WaITen) 1194:15-24. As explained above, the
`
`contemporaneous documents, and Apple's patents filed years later, contradict Apple's hindsight
`
`arguments. Certainly, Apple's evidence conti·adicts counsel's claims about rndimentaiy-decades(cid:173)
`
`old technology.
`
`iii.
`
`Apple Fails to Rebut the Evidence of Copying or Commercial
`Success
`
`Apple ignores its copying ofMasimo's technology by focusing on the development of the
`
`Series 6 without addressing the eai·lier watches. AppleIPHB 140-143. Apple contends that "Apple
`
`Watch Series 6 with the Blood Oxygen feature accused in this case was released before
`
`Complainants filed for the [Multi-Detector] Patents; Apple therefore could not have copied the
`
`featmes recited in the claims themselves." Id. at 140. Apple then relies on responses to leading
`
`questions to its own engineers about the development of that Series 6. Id. at 141. But as Masimo
`
`explained, copying of "the claim themselves" is not a limitation on evidence of copying
`
`technology. See MasimoIPHB 172-173.
`
`Masimo presented evidence of copying staiiing much eai·lier in 2012. MasimoIPHB 172-
`
`173. Apple alleges a lack of nexus. But Apple fails to address
`
`and introduced no documents about its watch development from the time period when Apple
`
`or why Apple provided
`
`-94-
`
`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`employed Michael O'Reilly (Masimo's fo1mer CMO) and Marcelo Lamego (Cercacor's fo1mer
`
`CTO). Lamego is a named inventor of the Multi-Detector Patents.
`
`Apple came fo1ward with no documentaiy evidence regarding the genesis of the supposed
`
`convex curve on the back c1ystal on the Series O Apple Watch. Apple hired Mannheimer (cid:173)
`
`CX-0175C (identifying Mannheimer
`
`Mannheimer worked on adding pulse oximetiy, but only after the
`
`Series O had ah-eady been designed with a curved back c1ystal. Tr. (Mannheimer) 1013:1-6,
`
`1015:9-19. And, the
`
`RX-0396C at 17-18. Thus, the origins of the supposed curve in Apple's
`
`back c1ystal design for the Series O remains a myste1y due to Apple's deliberate choice to withhold
`
`documents regarding the Series O design during the relevant time. The failure to provide
`
`documentation that cleai·ly exists justifies an inference that these documents would show
`
`connection to Masimo employees. See, e.g. , Certain Two-Way Radio Equ;pment, Inv. No. 337-
`
`TA-1053, Doc. ID 664543, Comrn'n Op. at 19-22 (Dec. 18, 2018) (infen-ing copying where, inter
`
`alia, respondent's employees were fo1merly employed by complainant, fo1mer employees of
`
`complainant actively recmited and hired additional employees from complainant to work for
`
`respondent, fo1mer employees had access to complainants' confidential info1mation and refused
`
`to answer questions at deposition regarding whether the accused products were developed using
`
`complainants' confidential infonnation).
`
`Regai·ding commercial success, Apple points to "numerous features" of the Apple Watch
`
`and "the accused Blood Oxygen feature is only one." AppleIPHB 144. But Apple fails to address
`
`its decision to emphasize that feature in launching the Series 6 and the evidence showing the
`
`products' success is significantly atti·ibutable to that infringing feature. MasimoIPHB 173-174.
`
`-95-
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`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`Apple also ignores that its market share soared, with the only material change being the addition
`
`of pulse oximetiy . MasimoIPHB 173-175.
`
`h.
`
`Apple's Improper IPR Arguments13
`
`Apple relies on IPR final written decisions to misleadingly allege the PTAB "rejected similar
`
`arguments from [Madisetti]." AppleIPHB 67, n.20. 14 Apple (1) failed to make any IPR arguments
`
`or reference any plan to inti·oduce IPR evidence in its Pre-Hearing Brief, (2) failed to inti·oduce
`
`evidence during the hearing, and (3) ignores the evidence that did come in when Apple 's counsel
`
`ti·ied to argue about the IPRs through witnesses. Thus, such arguments are waived under G.R. 9.2.
`
`See Doc. ID 77 4416 at 7-8. The only actual evidence was Madisetti responding to Apple 's
`
`repeated attempts to draw improper inferences without evidence, through Apple's attorney
`
`arguments. Specifically, Madisetti explained that Apple 's IPRs involved "different claims,
`
`different prior aii, and all the prior ali, all these patents, the prior aii and other IPR material was
`
`disclosed to the Patent Office and considered by the Patent Office before the issuance of the claims
`
`that are asse1ied in this litigation matter." Tr. (Madisetti) 1388: 17-22.
`
`Procedurally, Apple 's assertions that the PTAB rejected Madisetti 's ai·guments is simply
`
`impossible. During the IPRs, Apple submitted new expe1i opinions on Reply that directly
`
`13 Masimo has moved to stl'ike Apple's inclusion of sixteen non-admitted exhibits from the IPRs
`with its IPHB. Doc. ID 774416.
`14 Apple also attacks Madisetti 's opinions for other reasons. But these attacks repeat Apple 's failed
`attempt to challenge Madisetti 's expertise at the heai·ing. Tr. (Madisetti) 665:1 -674: 12. The ALJ
`admitted Madisetti "as an expe1i in the field of physiological monitoring technologies." Id. Apple
`again argues Madisetti has worked "[a]gainst Apple" and made money doing so. AppleIPHB 25.
`Eve1y expe1i renders opinions adverse to at least one paiiy and receives compensation for doing
`so. Apple also ignores the frequency of litigation involving Apple- a company regulai·ly accused
`of patent infringement in many fornms. Indeed, on June 27, 2022, ALJ Elliot issued an initial
`determination in Inv. No. 337-TA-1266, finding a Section 337 violation based on patent
`infringement by Apple Watch Series 6 and 7 for another medical parameter measurement Apple
`heavily touted as its own innovation. Doc. ID 773989.
`
`-96-
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`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`contradicted Apple 's and its expe1i's original position regarding the impact of a convex surface.
`
`Specifically, Apple's Petitions, expe1i declarations, and deposition testimony from its expe1i took
`
`the position that a convex cover would be beneficial because it would condense light to the center.
`
`However, the problem was that the combination Apple presented moved the detectors away from
`
`the center and to the periphe1y. Once Masimo exposed this flaw in its Patent Owner Response,
`
`Apple pivoted, much like it does here, and presented a brand new expe1i declaration in Reply
`
`claiming that the lens would instead direct light to the periphery. Apple Inc. v. Masimo C01p. ,
`
`IPR2020-01520, Exhibit 1047 ififl8-22 (Aug. 20, 2021); Apple Inc. v. Masimo Corp. , IPR2020-
`
`01521 , Exhibit 1047 ififl8-22 (Oct. 1, 2021).
`
`Madisetti never presented any opinions in response to this pivot by Apple because Apple
`
`presented this theo1y on Reply only. As Madisetti explained in the brief testimony about this topic
`
`when Apple attempted to argue with him about the IPRs, Madisetti never had the opportunity to
`
`provide rebuttal opinions. Tr. (Madisetti) 1388:6-22. Thus, Apple implicitly asks the ALJ to infer
`
`that the PTAB somehow rejected something Madisetti never said.
`
`Notably, Apple did not confront Madisetti on any of his actual opinions during the IPRs.
`
`Apple failed to present any evidence about those opinions during the hearing, and failed to relate
`
`any opinions from the IPRs to the Asse1ied Patents or prior aii grounds. Apple knows it did not
`
`rely on Lumidigm in any IPR. Apple knows the Asse1ied Claims differ from those at issue in the
`
`IPRs. Apple also knows the Patent Office considered all of its IPR ai·guments and all of its IPR
`
`prior art when examining and issuing the Asse1ied Claims.
`
`Apple 's (1) silence on the IPRs in its pre-hearing brief, (2) failure to present any evidence
`
`of the IPRs in its pre-heai·ing brief or during the heai·ing, and (3) belated attempt to ai·gue IPRs and
`
`selectively present select evidence in its initial post-hearing brief all strongly suggest that Apple
`
`-97-
`
`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`chose to avoid the actual evidence and is 1:Iying to influence the Initial Detennination through
`
`improper inferences. Had Apple made such arglllllents in its pre-hearing brief Masimo would have
`
`presented evidence rebutting Apple's IPR arglllllents. The ALJ should reject Apple's procedurally
`
`improper tactics.
`
`i.
`
`Different Claims
`
`Apple argues the Asserted Claims are "related" to those found unpatentable in IPRs.
`
`AppleIPHB 1. But that analysis is intentionally superficial. This likely explains why Apple did
`
`not include the argument in its pre-hearing brief. Only now- after the hearing-has Apple
`
`attempted to make this argument without a developed record. Indeed, as explained in Masimo's
`
`motion to su-ike, Apple waited until the due date of its IPHB to mention for the first time its plan
`
`to 1:Iy to admit selected IPR materials.
`
`Apple fails to candidly present the claims challenged in the IPRs, which as Madisetti
`
`explained, are different. Tr. (Madisetti) 1388:6-22. The Asserted Claims have elements not
`
`present in any of the claims challenged during the IPRs. For example, the Multi-Detector Patents
`
`include an opaque material configured to reduce light reaching the photodiodes without being
`
`attenuated by the tissue ('502 [19C], '648 [8D]), or opaque lateral surfaces or opaque material
`
`configured to avoid light piping through the pro1:I11sion ('501 [1E], '502 [28F], '648 [24]). Those
`
`features were not in any claims in any of the IPRs and were not considered by the PT AB, nor did
`
`Apple argue that the prior aii disclosed any such elements.
`
`As another example, the Multi-Detector Patent claims ('502 [20]-[21], [28D], [281]) recite
`
`a thennistor and describe features such as adjusting operation of the user-worn device responsive
`
`to the temperature signal. Those features were not in any claims in any of the IPRs, were not
`
`considered by the PT AB during the previous IPRs, were considered by the Patent Office when
`
`-98-
`
`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`granting the Asse1i ed Claims, and Apple did not present any argument that any such elements were
`
`disclosed by the art.
`
`The PTAB did not consider the Asse1i ed Claims in the IPRs. But, when issuing the
`
`Asse1i ed Claims, the Examiner did have Apple 's PTAB arguments, evidence, and prior aii from
`
`the IPRs. See, e.g., JX-0004 at 410-422, 529-539. Apple cannot exploit the IPR decisions to end(cid:173)
`
`nm Apple 's burden to prove invalidity by clear and convincing evidence.
`
`ii.
`
`Different Prior Art
`
`Apple also fails to address the different prior aii. Again, Madisetti provided the only
`
`hearing evidence on the record regarding the content of the IPRs. He identified that the prior ali
`
`was different. Tr. (Madisetti) 1388:6-22, 1386:11-1387:3. Here, Apple relies on Lumidigm for
`
`all its prior aii challenges to the Multi-Detector Patents. But Apple provides no evidence
`
`connecting Lumidigm to any Apple IPR. And as Madisetti explained, during prosecution of the
`
`Multi-Detector Patents, Masimo disclosed the prior aii and other IPR materials to the Patent
`
`Office, including Apple 's ai·guments and expe1i testimony. See, e.g., JX-0004 at 410-422, 529-
`
`539; Tr. (Madisetti) 1388:6-22. The Patent Office considered that aii, Apple's IPR ai·guments,
`
`and Apple's IPR expert testimony before issuing the Asse1ied Claims. Id.
`
`iii.
`
`Different Standard
`
`Apple also conveniently disregards the different burdens of proof. In the ITC, as in district
`
`comi s, patents enjoy a statuto1y presumption of validity, and challengers must prove each patent
`
`claim invalid by cleai· and convincing evidence-the highest burden of proof in U.S. civil
`
`litigation. 35 U.S.C. § 282; Microsoft C01p. v. i4i Ltd. Partnership, 564 U.S. 91 , 95 (2011). But
`
`no such presumption of validity applies in PTAB proceedings. See, e.g., Dynamic Drinkware,
`
`LLC v. Nat '! Graphics, Inc. , 800 F.3d 1375, 1379 (Fed. Cir. 2015). Petitioners need only establish
`
`-99-
`
`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`unpatentability by a preponderance of the evidence-i.e., that the claims are more likely than not
`
`unpatentable. Id. ; 35 U. S.C. § 316; see Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261 , 279
`
`(2016). This is a ve1y significantly reduced burden of proof compared to that which Apple had
`
`to-but failed-to meet in this Investigation. Apple's post-hearing attempt to rescue its failed
`
`obviousness arguments through innuendo regarding other IPRs fails to meet that standard.
`
`iv.
`
`Objective Evidence of Nonobviousness
`
`The PTAB also did not have and could not consider the significant objective evidence of
`
`nonobviousness presented here. Indeed, much of that evidence stems from Apple's own internal
`
`contemporaneous documents and testimony from its witnesses in this Investigation contradicting
`
`the arguments Apple presented both here and at the PTAB. Apple certainly never disclosed any
`
`of that infonnation to the PTAB. Such "evidence of secondaiy considerations may often be
`
`the most probative and cogent evidence in the record." WBIP , 829 F.3d at 1328 (internal citation
`
`and quotation mai·ks omitted) ("objective indicia of non-obviousness play an impo1iant role as a
`
`guard against the statutorily proscribed hindsight reasoning in the obviousness analysis"). Apple
`
`fails to address this distinction at all.
`
`3.
`
`35 U.S.C. § 112 (pre-AIA)
`
`Apple presents validity positions under 35 U.S.C. § 112 that contradict its anticipation and
`
`obviousness defenses.
`
`a.
`
`Written Description
`
`i.
`
`Claimed Combinations of LEDs, Photodiodes, and Openings
`with Opaque Surfaces
`('501 Patent Claim 12; '502 Patent Claims 22. 28; '648 Patent
`Claim 12)
`
`Apple concedes the specification discloses the claimed features, but disputes whether it
`
`describes them in a single embodiment. AppleIPHB 14 7-151. But Apple cites no legal authority
`
`-100-
`
`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`requiring a claim be directed to a single embodiment. Id. To the contrn1y , the legal authority it
`
`cites acknowledges that written description suppo1i may be provided by specification
`
`embodiments "linked together in the specification." Flash-Control, LLC v. Intel Corp. , No. 2020-
`
`2141 , 2021 WL 2944592, at *4 (Fed. Cir. 2021). Neve1iheless, as Masimo explained, FIG. 3
`
`discloses these features in a single embodiment. MasimoIPHB 17 6-1 77.
`
`At the hearing, Apple only asked Wanen a single question on Apple 's written description
`
`theo1y. AppleIPHB 148 (citing Tr. (Wan en) 1246:24-1 247:7)). WaITen responded merely that:
`
`"I can 't find a single embodiment." Tr. (Wanen) 1246:24-1247:7. Based on that testimony alone,
`
`Apple now labels the specification a "mix-and-match approach to the embodiments." Id. WaITen
`
`never explained which embodiments are supposedly mixed and matched. But Masimo explained
`
`how the specification links the claim elements together. MasimoIPHB 17 6-1 79. Wanen gave no
`
`opinion on that linkage in the specification. Tr. (Wanen) 1247:3-7 . Thus, Wan en's inability to
`
`find a single embodiment provides no evidence on the question of written description.
`
`Apple now argues Madisetti's testimony is somehow "insufficient to show" satisfaction of
`
`the written description requirement. AppleIPHB 151 n.24. Apple again invites legal enor by
`
`attempting to place an affnmative burden on Masimo to prove written description suppo1i for the
`
`claims. Masimo has no such burden, and issued claims have the presumption of written description
`
`support. See, e.g. , Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1351 (Fed. Cir. 2011)
`
`("To overcome the presumption of validity of patents, the accused must show that the claims lack
`
`a written description by clear and convincing evidence.").
`
`In addition, Masimo did much more than rely on Madisetti 's testimony to rebut Wanen' s
`
`single answer to a single Apple question. Masimo identified how the patent specification itself
`
`expressly states the features of the sensors shown or described in various embodiments, including
`
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`
`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`at least FIGS. 1-2, 7A-7B, 13, and 14F-14I, apply to the sensor of FIG. 3. MasimoIPHB 178-179
`
`(citing JX-0001 at 6:45-47, 6:65-7:8, 7:13-14, 21:51-54, 26:21-29, 38:3-36, and 44:22-29).
`
`Madisetti also pointed out where the specification links the embodiments together. Tr. (Madisetti)
`
`1347:18-1349:6; CDX-0012C.044. Apple relies on Flash-Control, LLCv. Intel Corp. , No. 2020-
`
`2141 , 2021 WL 2944592, at *3-4 (Fed. Cir. July 14, 2021). But Masimo 's IPHB ah-eady explained
`
`that Flash-Control addressed embodiments that are "never linked together in the specification ."
`
`MasimoIPHB 179. That is not the case here. Kiani also testified that Figm e 3C showed the LEDs,
`
`photodiodes, and openings with optical ban-iers "to make sm e only the light through the tissue gets
`
`to that photodetector that's sitting at the bottom of that hole." Tr. (Kiani) 99: 17-100:3, 101 :6-1 2.
`
`Without explanation, Apple fails to address Kiani 's testimony regarding those optical baITiers or
`
`their function to suggest that Fig. 3C does not show the claimed integrated whole. AppleIPHB
`
`149. Apple cannot show a lack of written description support by ignoring the full scope of the
`
`specification or all of Kiani's testimony about it.
`
`In contrast to its written description position, Apple alleged "Lumidigm itself expressly
`
`suggests" implementing the claimed features. AppleIPHB 151 n.24. Apple never explains how
`
`Lumidigm "expressly suggests" such features, much less what would be "express" about a
`
`"suggestion." Nor could it. Lumidigm 's key inventor, Rowe, explained the specification was a
`
`"brainstorming session" rather than the result of any actual work attempted or done. Tr. (Rowe)
`
`1146:18-1147:3 Apple failed to cany its bmden to prove invalidity by clear and convincing
`
`evidence with its reliance on the single WaITen answer that he "can't find" a single embodiment.
`
`-1 02-
`
`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`ii.
`
`Sets of LEDs Each Emitting at a First Wavelength and a
`Second Wavelength
`('502 Patent Claim 28)
`
`Apple again relies on WaITen's hearing testimony for its written description defense.
`
`Apple asked WaiTen if he had identified a discussion of this element in the specification, but all
`
`he said was: "I have not found one, no." AppleIPHB 151 (citing Tr. (WaiTen) 1247:13-17).
`
`Masimo 's IPHB addressed the specification suppo1i and Madisetti 's explanation of it.
`
`MasimoIPHB 180-181 (citing JX-0001 at FIGS. 7A-7B, 13, 141, 9:60-63, 12:9-12 ("In an
`
`embodiment, the emitter 104 includes sets of optical sources that ai·e capable of emitting visible
`
`!!JJ!lnear-infrared optical radiation ."), 12:13-25, 13:16-21, 33:30-38, 21:51-54, 38:8-22). Apple
`
`presented no evidence of how a POSITA would interpret that specification suppo1i. Apple cannot
`
`meet its burden by having its expe1i say "I couldn't find one," much less by ignoring the evidence
`
`provided and criticizing rebuttal to non-existent opinions.
`
`iii.
`
`"At Least Four Emitters ... Wherein Each of the Plurality of
`Emitters Comprises a Respective Set of at Least Three LEDs"
`('502 Patent Claim 22)
`
`For the "at least four emitters" element, Apple again relies on WaITen's testimony.
`
`AppleIPHB 151. WaiTen had a one-word answer on Apple 's written-description question at the
`
`hearing: ''No." Tr. (WaITen) 1247:8-12. Masimo and Madisetti more than adequately rebutted
`
`WaITen's testimony and addressed the specification suppo1i. MasimoIPHB 180. Neither Apple
`
`nor WaITen addressed that suppo1i . Apple utterly failed to cai1y its burden to prove invalidity with
`
`WaITen's "no."
`
`-103-
`
`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`b.
`
`Enablement
`
`i.
`
`"Touch-Screen Display" and "lndicia of Measurements"
`('502 Patent Claim 28)
`
`Apple pretends as though Wanen thoroughly addressed this issue at the hearing.
`
`AppleIPHB 152. But Wanen merely said in response to a leading question: "I have only found
`
`two briefreferences to touchscreens, so no." Id. (citing Tr. (Wanen) 1247:18-23)). And for this
`
`same element, when analyzing the prior aii, Apple relied on WaiTen's concluso1y testimony to
`
`argue that the use and implementation of user interfaces with touch screens was also "well known."
`
`AppleIPHB 95-96.
`
`Apple now criticizes Madisetti's rebuttal testimony as ifhe had something from Wanen to
`
`rebut. AppleIPHB 152. He did not. Apple failed to present cleai· and convincing evidence oflack
`
`of enablement. Madisetti, not WaiTen, provided the only testimony about what a POSITA would
`
`have known about these features based on the specification. MasimoIPHB 181-182.
`
`ii.
`
`Reducing/ A voiding "Light Piping"
`('501 Patent Claim 12; '502 Patent Claim 28; '648 Patent
`Claim 24)
`
`For the reducing/avoiding light piping elements, Apple again relies on WaiTen's testimony
`
`in response to a single question to ai·gue "light piping" elements in three claims lack written
`
`description or lack enablement. AppleIPHB 152-153. Wanen testified, ''No. I've just seen a vague
`
`con elation between the two, that's it." Tr. (WaiTen) 1247:24-1 248:4. Wanen provided no
`
`explanation for his summaiy conclusion. Masimo explained, with extensive suppo1i ing evidence,
`
`the multiple ways the specification teaches to reduce or avoid light piping, and Madisetti 's
`
`explanation of them. MasimoIPHB 182-183.
`
`Apple now argues, without evidentiaiy suppo1i, about what a "POSITA can detennine"
`
`from the specification. AppleIPHB 153. But Apple elicited no testimony to suppo1i that attorney
`
`-104-
`
`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`argument, and cannot can y its burden based on it. Even though Apple's deficient hearing
`
`presentation required no rebuttal, Madisetti still explained, with citations to evidence, that the
`
`specification teaches how to reduce or avoid light piping. Tr. (Madisetti) 1350:4-21, 1352:25-
`
`1353:11; CDX-0012C.046. Indeed, WaiTen acknowledged that the specification describes not
`
`only light piping, but also hard opaque plastics that reduce or avoid it. Tr. (WaITen) 1247:24-
`
`1248:4.
`
`WaITen's concluso1y testimony about what he could not find or could not see fails to
`
`support Apple 's validity challenges under 35 U.S.C. § 112. Apple's decision to devote minimal
`
`hearing time to these defenses confnms their lack of merit. Yet, Apple continues to press these
`
`defenses despite the lack of supporting evidence.
`
`F.
`
`Enforceability
`
`1.
`
`Prosecution Laches
`
`Apple identifies no evidence of unreasonable or unexplained delay. Apple first presents
`
`an attorney-drafted "timeline" from its opening to falsely asse1i "Masimo put a hold on filing any
`
`new applications in this family for nearly five yeai·s .... " AppleIPHB 154. But Apple cites no
`
`evidence of any "hold" or "gap." Cromai· provided unrebutted testimony to the contraiy,
`
`explaining Apple's opening slide omitted many filings spread throughout the time period such that
`
`the timeline was a "misrepresentation." Tr. (Cromai-) 1038:10-19.15
`
`Apple then relies on the time period between the eai·liest filing in the family and the filing
`
`of the specific applications that led to the Poeze patents to argue delay. AppleIPHB 155. But
`
`Apple never shows any delay or improper conduct during the prosecution of any of Masimo 's
`
`15 For example, Apple's alleged five-yeai· "gap" (from 2010 to 2015) omits the filing of App.
`14/069,974, App. 13/888,266, App. 14/153,895, App. 13/525,166, App. 14/064055, and the active
`prosecution of many more applications.
`
`-105-
`
`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`patent applications. Apple instead argues "[i]t is inelevant whether 'there was active prosecution;
`
`through that time period; of other patents in the family." Id. at 156. Under Apple's theo1y ,
`
`"prosecution activities with respect to other applications cannot justify the unreasonable delay for
`
`the asse1ted patents." Id. at 155.
`
`Apple invites legal en or. Apple's own brief quotes Symbol Techs., Inc. v. Lemelson Med.,
`
`Educ. & Research Found. , 422 F.3d 1378, 1385-86 (Fed. Cir. 2005), to explain that prosecution
`
`laches may apply "only after an unreasonable and unexplained delay in prosecution," which
`
`requires examining the ''prosecution hist01y of all of a series of related patents .... " AppleIPHB
`
`157 (quoting Symbol Techs. , 422 F.3d at 1386).
`
`Apple cites Hyatt and Personalized Media, both dealing with pre-GA TT filings, but neither
`
`case relied solely on the timing of the applications. Both cases focused on clear prosecution tactics
`
`that made it virtually "impossible" for the PTO to reasonably examine the patents. See Hyatt v.
`
`Hirshfield, 998 F.3d 1347, 1366-38 (Fed. Cir. 20210) ("Hyatt adopted an approach to prosecution
`
`that all but guaranteed indefinite prosecution delay, " addressing pre-GA TT patents that eventually
`
`included "at least 115,000" claims); Personalized Media Commc'ns, LLC v. Apple, Inc., 552 F.
`
`Supp. 3d 664, 686 (E.D. Tex. 2021) ("prosecution conduct" made it "virtually impossible for the
`
`PTO" to engage in reasonable examination, where patentee asserted 20,000 pre-GATT claims in
`
`a "deliberate strategy of delay" that included "effort[ s] to keep its patent po1tfolio hidden").
`
`Apple asse1ts that "by apparently tying its filings and prosecution of its continuation
`
`applications to Apple 's product releases," Masimo "intentionally and methodically delayed
`
`prosecution .... " AppleIPHB 156-157. Obviously, arguing that Masimo "apparently" engaged in
`
`conduct cannot satisfy Apple's bmden of clear and convincing evidence. See Personalized Media ,
`
`552 F. Supp. 3d at 684-85. Regardless, Apple cites nothing to suppo1t its speculation. Apple
`
`-106-
`
`MASIMO 2051
`Apple v. Masimo
`IPR2022-01291
`
`

`

`asse1is that Masimo 's delays "tracked the releases of Apple Watch products," id. at 157, but Apple
`
`again cites no suppo1i ing evidence. Id. Apple's demonstrative attorney-created timeline-which
`
`Masimo 's responsible prosecution attorney rightly explained is a "misrepresentation" and
`
`incomplete-is not evidence. Tr. (Cromar) 1038:10-19. Regardless, at best, Apple's timeline
`
`shows (1) Apple released a version of the Apple Watch in 2015 and in each year from 2018 to
`
`2020 and (2) Masimo filed some applications in those ( and other) years. That shows no con elation.
`
`Indeed, Apple nowhere showed that any of those filings have claims that Apple contends cover its
`
`products. Apple did not even present the claims. Apple 's timeline also deceptively groups
`
`Masimo applications eight months apa1i into a single entiy in an attempt to imply a con elation.
`
`AppleIPHB 154. Cromar presented unrebutted testimony rejecting Apple's "conelation." Tr.
`
`(Cromar) 1034:11-1035:19; 1040:1-9.
`
`Even if Apple could show a pmported con elation between Apple's watc