IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Ammar Al-Ali
`In re Patent of:
` Attorney Docket No.: 50095-0045IP2
`10,687,745
`U.S. Patent No.:
`June 23, 2020
`Issue Date:
`Appl. Serial No.: 16/835,772
`Filing Date:
`March 31, 2020
`Title:
`PHYSIOLOGICAL MONITORING DEVICES, SYSTEMS,
`AND METHODS
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PETITIONER’S NOTICE RANKING PETITIONS FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 10,687,745
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`1
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`
`Ammar Al-Ali
`In re Patent of:
` Attorney Docket No.: 50095-0045IP2
`10,687,745
`U.S. Patent No.:
`June 23, 2020
`Issue Date:
`Appl. Serial No.: 16/835,772
`Filing Date:
`March 31, 2020
`Title:
`PHYSIOLOGICAL MONITORING DEVICES, SYSTEMS,
`AND METHODS
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PETITIONER’S NOTICE RANKING PETITIONS FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 10,687,745
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`1
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`Apple is filing two petitions (IPR2022-01291 and IPR2022-01292)
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`challenging U.S. Patent No. 10,687,745 (the “’745 Patent”). This paper provides
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`“(1) a ranking of the petitions in the order in which [Petitioner] wishes the Board to
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`consider the merits,…and (2) a succinct explanation of the differences between the
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`petitions, why the issues addressed by the differences are material, and why the
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`Board should exercise its discretion to institute….” Trial Practice Guide, 59-61.
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`I.
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`Ranking of Petitions
`Although both petitions are meritorious and justified, Apple requests that the
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`Board consider the petitions in the following order:
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`Rank Petition
`1
`IPR2022-01292
`2
`IPR2022-01291
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`Primary References
`Iwamiya, Sarantos
`Ackermans, Mendelson-799
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`II.
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`Factors Supporting Institution, Including Material Differences
`Material differences exist between the petitions, which are non-redundant at
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`least in their reliance on different combinations of references that demonstrate the
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`obviousness of the Challenged Claims in materially different ways.
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`For example, IPR2022-01292 relies on Iwamiya and Sarantos as primary
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`references, and asserts grounds based on Iwamiya in combinations with each of
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`Sarantos and Venkatraman, and Sarantos in combinations with Shie and
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`Venkatraman. Iwamiya describes an “optical biological information detecting
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`apparatus” provided in “a central portion of the back cover” of “a wristwatch.”
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`2
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`APPLE-1004, Abstract, 5:54-66, FIGS. 1, 4. Sarantos describes a “wristband-type
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`wearable fitness monitor” that measures “physiological parameters.” APPLE-
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`1005, 2:5-14, 5:55-59, 7:12-14, 13:39-47.
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`In contrast, IPR2022-01291 relies on Ackermans and Mendelson-799, and
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`asserts grounds based on Ackermans in combinations with Savant and
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`Venkatraman, and presenting Mendelson-799 in combination with Haar,
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`Venkatraman, and Savant. Ackermans describes an optical sensor for measuring
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`the blood oxygenation levels of a user. APPLE-1011, Abstract, 1, 2-5.
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`Mendelson-799 describes a pulse oximeter featuring a sensor housing that
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`accommodates “closely spaced light emitting elements” and an array of “discrete
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`detectors (e.g., photodiodes).” APPLE-1008, 9:22-40, 10:16-37, FIGS. 7, 8.
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`These distinct primary references, in combination with various secondary
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`references, apply differently to the claims of the ’745 Patent. Additionally, the
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`motivations to combine the distinct sets of references presented in the two petitions
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`materially differ. The petitions are not redundant, duplicative, or substantially
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`similar. Rather, each petition compellingly demonstrates the unpatentability of the
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`Challenged Claims, without repeating the same theory.
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`Furthermore, Masimo sought through collateral prosecution new claims
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`issued in the ’745 patent amidst its campaign against Apple involving serial
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`assertion of, thus far, several hundred claims across twenty-two patents in district
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`3
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`court and ITC proceedings. Despite IPR proceedings, and regardless of findings
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`that may occur in the co-pending ITC proceeding in which the ’745 patent is
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`presently asserted, it is entirely conceivable that Masimo will extend its campaign
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`of harassing serial litigation into the future through further district court actions.
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`Indeed, although Apple has every expectation that it will succeed in
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`demonstrating the invalidity of the six ’745 patent claims presently asserted at the
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`ITC based on grounds involving Iwamiya and Sarantos, that outcome would not
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`preclude Masimo from asserting the same claims (or any other claim of the ’745
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`patent) in a future district court action. APPLE-1032, 6 (“an ITC determination
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`cannot conclusively resolve an assertion of patent invalidity, which instead
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`requires either district court litigation or a PTAB proceeding to obtain patent
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`cancellation”). Given the uncertainty of whether Masimo might reassert these
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`same six claims in future district court actions, Petitioner strongly desires
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`substantive review of the first-ranked IPR2022-01292 petition by the Board, so as
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`to conclusively resolve invalidity over the included grounds.
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`Moreover, the majority of the references applied in the second-ranked
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`IPR2022-01291 petition are highly familiar to the Board and to Masimo, in view of
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`the Board’s invalidation of all challenged claims of the related ’695 patent in
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`IPR2020-01722 based on grounds involving Ackermans, and the Board’s
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`invalidation of claims of multiple Masimo patents based on grounds involving
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`4
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`Mendelson-799. E.g., Apple Inc. v. Masimo Corp., IPR2020-01722 Pap. 29, 2, 29
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`(PTAB May 5, 2022)(finding “claims 6, 14, and 21 of the ’695 patent
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`…unpatentable” based on a ground including Ackermans); Apple Inc. v. Masimo
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`Corp., IPR2020-01538 Pap. 43, 2, 9 (PTAB Feb. 23, 2022)(finding “claims 1–7
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`and 20–28 of the ’554 patent…unpatentable” based on a ground including
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`Mendelson-799).
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`Indeed, given both the strong similarities between the ’745 Patent claims and
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`claims previously invalidated in IPR, and the triviality of features introduced by
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`Masimo in the ’745 Patent, consideration of the challenges raised in the IPR2022-
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`01291 petition would present no undue burden to the Board or to Masimo.
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`Due to word count constraints, two petitions were needed to address grounds
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`based on the asserted primary references. Given the context of uncertainty created
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`through Masimo’s serial litigation campaign, Apple respectfully submits that
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`institution of both petitions is more than justified. Indeed, the Board’s institution
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`of IPRs based on both petitions, which compellingly demonstrate invalidity of the
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`Challenged Claims based on materially different grounds, would serve to
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`efficiently address issues of invalidity for all parties, including Masimo.
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`For at least these reasons, Petitioner respectfully requests that the Board
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`institute trial on both petitions.
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`5
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`Dated July 22, 2022
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`Respectfully submitted,
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`/Daniel D. Smith/
`W. Karl Renner, Reg. No. 41,265
`Daniel D. Smith, Reg No. 71,278
`Andrew B. Patrick, Reg. No. 63,471
`Nicholas Stephens, Reg. No. 74,320
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the under-signed
`certifies that on July 22, 2022, a complete and entire copy of this Notice Ranking
`Petitions was provided via Federal Express, to the Patent Owner by serving the
`correspondence address of record as follows:
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
`MASIMO CORPORATION (MASIMO)
`2040 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE CA 92614
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
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