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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`____________
`
`
`Case IPR2022-01299
`U.S. Patent 7,761,127
`____________
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`
`
`
`

`

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`Case No. IPR2022-01299
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`Attorney Docket: 50095-0046IP1
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`TABLE OF CONTENTS
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`
`
`
`I. 
`II. 
`
`C. 
`
`B. 
`
`Introduction ...................................................................................................... 1 
`Claim Construction .......................................................................................... 2 
`A. 
`“A Thermal Mass” (Independent Claims 1, 7, 13, 20, 26) ................... 2 
`B. 
`“Bulk Temperature” (Independent Claims 1, 7, 13, 26; Dependent
`Claim 21) ............................................................................................... 5 
`“Operating Wavelengths Dependent on the Bulk Temperature” (Claim
`7) ............................................................................................................ 8 
`III.  Grounds 1A-2F Render the Disputed Claim Limitations Obvious ................. 9 
`A. 
`The “Thermal Mass” Limitations Are Obvious .................................... 9 
`B. 
`The “Bulk Temperature” Limitations Are Obvious ............................ 11 
`IV.  The POR Fails to Refute the Petition’s Showing that a Thermal Core and
`Bulk Temperature Suitable for Estimating LED Temperatures and
`Wavelengths Would Have Been Obvious in the Instituted Grounds ............ 12 
`A.  A POSITA Would Have Been Motivated to Use the Thermal Core for
`LED Temperature and Wavelength Estimation, and Masimo’s
`Arguments to the Contrary are Based on Masimo’s Inaccurate and
`Incomplete Review of Prior Art Solutions .......................................... 12 
`A POSITA Would Have Known How to Implement the Thermal Core
`and Sensor in the Instituted Grounds to Successfully Obtain a Bulk
`Temperature Measurement Suitable for LED Temperature and
`Wavelength Estimation ....................................................................... 18 
`V.  Masimo’s Secondary Considerations Evidence Fails to Show That the
`Challenged Claims Would Not Have Been Obvious .................................... 23 
`A.  Masimo Fails to Show a Presumption of Nexus ................................. 23 
`B.  Masimo Cannot Show Nexus-in-Fact Because the ’127 Claims
`Contain No Unique Characteristics ..................................................... 25 
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`i
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`Case No. IPR2022-01299
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`C.  Masimo’s Objective Indicia Evidence is Not Connected to the ’127
`Claims or the Direct Result of Any Allegedly Unique Characteristics
` ............................................................................................................. 25 
`VI.  Conclusion ..................................................................................................... 27 
`
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`
`ii
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`APPLE-1001
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`APPLE-1002
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`APPLE-1003
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`APPLE-1004
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`APPLE-1005
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`APPLE-1006
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`APPLE-1007
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`APPLE-1008
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`APPLE-1009
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`APPLE-1010
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`APPLE-1011
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`APPLE-1012
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`Case No. IPR2022-01299
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`Attorney Docket: 50095-0046IP1
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`EXHIBITS
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`U.S. Patent No. 7,761,127 to Al-Ali (“the ’127 Patent”)
`
`Excerpts from the Prosecution History of the ’127 Patent
`
`Expert Declaration of Brian Anthony, Ph.D.
`
`Certified English Translation of Japanese Patent Publication
`No. JP 2004-337605 A (“Yamada”)
`
`U.S. Patent No. 3,514,538 (“Chadwick”)
`
`U.S. Patent No. 4,591,659 (“Leibowitz”)
`
`U.S. Patent No. 5,259,381 (“Cheung”)
`
`U.S. Patent No. 5,334,916 (“Noguchi”)
`
`[RESERVED]
`
`[RESERVED]
`
`Japanese Patent Publication No. JP 2004-337605 A
`
`Respondent Apple Inc.’s Post-Hearing Brief, In the Matter of
`Certain Light-Based Physiological Measurement Devices and
`Components Thereof, International Trade Commission
`Investigation No. 337-TA-1276 (June 27, 2022) (Public
`Version)
`
`APPLE-1013
`
`APPLE-1014
`
`APPLE-1015
`
`Interim Procedure for Discretionary Denials in AIA Post-Grant
`Proceedings with Parallel District Court Litigation, issued June
`21, 2022 (“Interim Guidance”)
`J.A. Scarlett, THE MULTILAYER PRINTED CIRCUIT BOARD
`HANDBOOK (1985) (selected excerpts)
`[RESERVED]
`
`
`
`iii
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`APPLE-1016
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`APPLE-1017
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`APPLE-1018
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`APPLE-1019
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`APPLE-1020
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`APPLE-1021
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`APPLE-1022
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`APPLE-1023
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`Case No. IPR2022-01299
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`Attorney Docket: 50095-0046IP1
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`Counsel’s Email Exchange re “Motions to Seal and Protective
`Order” dated November 2, 2022 and November 3, 2022
`Respondent Apple Inc.’s Corrected Pre-Hearing Brief, In the
`Matter of Certain Light-Based Physiological Measurement
`Devices and Components Thereof, International Trade
`Commission Investigation No. 337-TA-1276 (May 16, 2022)
`(Public Version)
`Respondent Apple Inc.’s Corrected Reply Post-Hearing Brief,
`In the Matter of Certain Light-Based Physiological
`Measurement Devices and Components Thereof, International
`Trade Commission Investigation No. 337-TA-1276 (September
`2, 2022) (Public Version)
`Complainants Masimo Corp’s. and Cercacor Labs., Inc.’s Pre-
`Hearing Brief, In the Matter of Certain Light-Based
`Physiological Measurement Devices and Components Thereof,
`International Trade Commission Investigation No. 337-TA-
`1276 (May 13, 2022) (Public Version)
`Complainants Masimo Corp’s. and Cercacor Labs., Inc.’s Reply
`Post-Hearing Brief, In the Matter of Certain Light-Based
`Physiological Measurement Devices and Components Thereof,
`International Trade Commission Investigation No. 337-TA-
`1276 (July 11, 2022) (Public Version)
`Respondent Apple Inc.’s Opening Markman Brief, In the
`Matter of Certain Light-Based Physiological Measurement
`Devices and Components Thereof, International Trade
`Commission Investigation No. 337-TA-1276 (Jan. 27, 2022)
`Complainants Masimo Corp’s. and Cercacor Labs., Inc.’s
`Opening Claim Construction Brief, In the Matter of Certain
`Light-Based Physiological Measurement Devices and
`Components Thereof, International Trade Commission
`Investigation No. 337-TA-1276 (Jan. 27, 2022)
`Respondent Apple Inc.’s Rebuttal Markman Brief, In the
`Matter of Certain Light-Based Physiological Measurement
`Devices and Components Thereof, International Trade
`Commission Investigation No. 337-TA-1276 (Feb. 10, 2022)
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`iv
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`APPLE-1024
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`APPLE-1025
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`Case No. IPR2022-01299
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`Attorney Docket: 50095-0046IP1
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`Complainants Masimo Corp’s. and Cercacor Labs., Inc.’s
`Rebuttal Claim Construction Brief, In the Matter of Certain
`Light-Based Physiological Measurement Devices and
`Components Thereof, International Trade Commission
`Investigation No. 337-TA-1276 (Feb. 10, 2022)
`Updated Joint Proposed Claim Construction Chart, In the
`Matter of Certain Light-Based Physiological Measurement
`Devices and Components Thereof, International Trade
`Commission Investigation No. 337-TA-1276 (Feb. 23, 2022)
`
`[RESERVED]
`
`
`APPLE-1026 – APPLE-1049
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`APPLE-1050
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`APPLE-1051
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`APPLE-1052
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`APPLE-1053
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`APPLE-1054
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`APPLE-1055
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`APPLE-1056
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`APPLE-1057
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`APPLE-1058
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`
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`U.S. Patent App. Pub. No. 2005/0279949 (“Oldham”)
`
`Subramanian Muthu et al., Red, Green, and Blue LEDs for
`White Light Illumination, IEEE Journal on Selected Topics in
`Quantum Electronics, Vol. 8, No. 2 (March/April 2002)
`(“Muthu”)
`
`U.S. Patent App. Pub. No. 2003/0230765 (“Dry”)
`
`U.S. Patent App. Pub. No. 20100259182 (“Man”)
`
`U.S. Patent No. 7,055,986 (“Littleton”)
`
`CONFIDENTIAL – Supplemental Declaration of Brian
`Anthony, Ph.D.
`
`CONFIDENTIAL – Transcript of Deposition of Mr. Mohamed
`Diab (August 18, 2023)
`
`Transcript of Deposition of William P. King, Ph.D. (August 8,
`2023)
`
`The American Heritage® Dictionary of the English Language,
`4th Ed. (2000) (excerpts) – “Bulk” Definition
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`v
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`The New Oxford American Dictionary (2001) (excerpts) –
`“Bulk” Definition
`
`Masimo Patent Information Webpage, printed from
`https://www.masimo.com/company/masimo/patents/ (August
`31, 2023)
`
`U.S. Patent No. 8,355,766 (“MacNeish”)
`
`
`APPLE-1059
`
`
`APPLE-1060
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`APPLE-1061
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`vi
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`I.
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`Case No. IPR2022-01299
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`Attorney Docket: 50095-0046IP1
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`Introduction
`The POR fails to refute the Petition’s showing that claims 1-30 of the ’127
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`Patent are obvious.
`
`Masimo’s arguments are first premised on erroneous constructions of the
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`terms “thermal mass” and “bulk temperature,” although the instituted grounds
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`render the claims obvious under any of the constructions that have been proposed.
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`Masimo’s arguments are further premised on assertions that a POSITA
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`would have had “no reason to try a speculative method—measuring a bulk
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`temperature—that may not even have indicated an approximate or average LED
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`temperature.” POR, 62. According to Masimo, a POSITA would have been led
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`instead toward a range of alternative approaches for estimating LED
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`temperatures/wavelength that Masimo admits were known in the prior art. But
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`Masimo’s cherry-picked selection of prior art approaches known to a POSITA was
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`incomplete and inaccurate. The evidence shows that estimating LED
`
`temperatures/wavelengths from a bulk temperature of a thermal mass was not new
`
`in the ’127 Patent. Nor was it “speculative.” A POSITA would have possessed the
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`skill and motivation to use a bulk temperature from a thermal mass in Grounds 1A-
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`2F in a manner that, consistent with prior art approaches, would have achieved the
`
`same functions described and claimed in the ’127 Patent.
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`Masimo’s objective indicia evidence also lacks nexus and fails to rebut the
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`1
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`Petition’s compelling showing of obviousness. For each of the reasons addressed
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`in this Reply and the Petition, the Board should cancel all claims 1-30.
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`II. Claim Construction
`Apple explained in the Petition that no formal constructions were necessary
`
`in view of substantial similarity between the claim features mapped in the prior art
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`and the ’127 Patent’s own descriptions of those features. Pet., 8. Since the
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`Petition filing, the Board preliminarily construed “thermal mass” and “bulk
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`temperature” and Masimo advanced constructions of these same terms (and others)
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`in its POR. In light of these developments, Apple addresses these terms below to
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`rectify errors in Masimo’s constructions.
`
`A.
`“A Thermal Mass” (Independent Claims 1, 7, 13, 20, 26)
`To the extent the Board construes the term “a thermal mass,” it should be
`
`construed as a mass that stabilizes a bulk temperature.1 APPLE-1055, ¶9; see also
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`id., ¶¶7-8.
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`The claims, specification, and file history all support this construction.
`
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`1 The ALJ adopted this same construction in an earlier ITC proceeding involving
`
`the ’127 Patent. EX2093, 250-256. The construction makes clear that “a thermal
`
`mass” in the ’127 Patent does not refer merely to the physical property of “thermal
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`mass” possessed by all objects with mass. APPLE-1055, ¶10, n. 1.
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`2
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`Independent claims 1 and 26, for example, each refer to the thermal mass
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`“stabiliz[ing] a bulk temperature.” This is consistent with the Abstract’s
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`description of “[a] thermal mass [] disposed proximate the emitters so as to
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`stabilize a bulk temperature.” 2 APPLE-1001, Abstract; see also id., 2:59-61 (same
`
`description in the “SUMMARY OF THE INVENTION”), 10:24-26, 10:67-11:4,
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`11:10-13, FIG. 14. CR Bard v. US Surgical, 388 F.3d 858, 864 (Fed. Cir. 2004)
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`(emphasizing summary and abstract “[s]tatements that describe the invention as a
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`whole”). Diab agreed that stabilization is essential. APPLE-1056, 89:9:90:15; see
`
`also id., 87:5-89:9.
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`The file history is also instructive. APPLE-1055, ¶¶10-11. The Examiner
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`rejected claims based on Cheung (APPLE-1007), which describes a pulse oximeter
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`with a traditional circuit board lacking a thermal core or similar structures.
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`APPLE-1002, 71; APPLE-1007, FIG. 11; APPLE-1055, ¶11; APPLE-1057,
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`103:11-105: 6. The Examiner expressly recognized that Cheung lacks a “thermal
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`mass that stabilizes a bulk temperature of the emitters.” APPLE-1002, 71;
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`APPLE-1007, FIG. 11. The Examiner’s statement underscores that a mass such as
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`a traditional circuit board that that does not stabilize a bulk temperature is not “a
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`thermal mass” in the ’127 Patent. APPLE-1055, ¶¶11-12.
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`2 All emphasis added unless otherwise indicated.
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`3
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`Masimo urges adoption of the Board’s preliminary construction of a thermal
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`
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`mass as “a mass having resistance to temperature change on a scale relevant to
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`estimating LED wavelengths” because it allegedly “aligns” with the description of
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`the thermal mass in the ’127 Patent. ID, 19; POR, 17. Apple respectfully
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`disagrees. The specification never describes the thermal mass in terms of its
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`“resistance to temperature change” or the “scale relevant to estimating LED
`
`wavelengths”; those phrases appear nowhere in the specification. Rather, the
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`specification repeatedly describes the thermal mass as a mass that “stabilizes” a
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`bulk temperature. APPLE-1001, 10:24-26, 10:67-11:4, 11:10-13. Masimo’s re-
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`writing of the specification’s description is unwarranted, especially where, as here,
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`Masimo’s construction improperly excludes what the specification expressly
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`describes: that the thermal mass stabilizes a bulk temperature. APPLE-1055, ¶¶12-
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`13.
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`Moreover, Masimo’s proposed construction is contradicted by the file
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`history. King conceded that a traditional FR4 board suitably designed—i.e.,
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`precisely the type of substrate that the Examiner found not to be a thermal mass in
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`Cheung—could nonetheless qualify as a thermal mass under Masimo’s
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`construction. APPLE-1057, 124:14-125:8, 89:9-90:15; APPLE-1055, ¶¶11-13.
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`Apple respectfully submits that the preliminary construction Masimo
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`endorses is problematic for additional reasons as well. APPLE-1055, ¶¶11-13.
`4
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`The preliminary construction (i) adds a functional requirement for the thermal
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`mass related to LED wavelength estimation that is not recited by all challenged
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`claims (e.g., independent claim 20), (ii) imposes a requirement for a specific type
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`of emitter not recited by the claims (i.e., LEDs), (iii) refers to a thermal property
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`(i.e., “resistance to temperature change”) that is not well-defined, and (iv) refers to
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`a “scale” for estimating LED wavelengths whose bounds are not clearly resolved.
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`APPLE-1055, ¶¶14-19.
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`B.
`
`“Bulk Temperature” (Independent Claims 1, 7, 13, 26; Dependent
`Claim 21)
`To the extent the Board construes the term “bulk temperature,” it should be
`
`construed as set forth in the Institution Decision as “a temperature representative of
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`all or substantially all of a thermal mass.”3 ID, 19; APPLE-1055, ¶¶20-21.
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`The Board’s construction is consistent with the plain and ordinary meaning
`
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`3 The Board’s construction is consistent with the Petition’s description of a “bulk
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`temperature” as “an ‘average’ temperature or a temperature of a ‘vast majority’ …
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`.” Pet., 24. The construction is also consistent with the ALJ’s construction at the
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`ITC, which focused on the “bulk temperature” being a representative temperature
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`for the thermal mass. APPLE-2093, 258-259. Masimo’s construction in the POR
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`would lead the Board to a construction resembling what the ALJ already rejected.
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`5
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`of the term “bulk.” APPLE-1058, 244 (“The major portion or greater part”);
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`APPLE-1059, 226 (“the majority or greater part of something”). As claimed, the
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`modifier “bulk” clearly distinguishes a “bulk temperature” from a temperature that
`
`is representative of only a discrete location of the thermal mass from where the
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`measurement is obtained. APPLE-1055, ¶22; Pet., 24.
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`The intrinsic evidence supports the Board’s construction. As shown in FIG.
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`12, for example, the bulk temperature 1202 is shown to reflect the thermal energy
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`that has diffused from the emitters through a bulk of the thermal mass 1220, and
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`the bulk temperature 1202 is thus representative of all or substantially all of the
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`thermal mass:
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`APPLE-1001, FIG. 12 (annotated version reproduced from POR, 23).
`
`Although the claims challenged in this IPR recite slightly varying language
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`6
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`around the term “bulk temperature,” Apple agrees with Masimo to the extent that
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`“bulk temperature” should be construed to have the same meaning across all
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`claims. Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1330 (Fed. Cir.
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`2009); POR, 22-23. For those claims that refer to a “bulk temperature” of/for the
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`emitters or light emitting sources, the bulk temperature must further depend on the
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`temperatures of the emitters—but the bulk temperature itself is still representative
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`of all or substantially all of the thermal mass. APPLE-1055, ¶23.
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`By contrast, Masimo’s construction of “bulk temperature” as “a temperature
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`measurement of the thermal mass that represents (but is not necessarily the same
`
`as) LED temperatures” is critically flawed because it fails to give meaning to the
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`term “bulk.” POR, 22-26; APPLE-1055, ¶¶21-22. Nothing in Masimo’s
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`construction distinguishes a “bulk temperature” from a local temperature or any
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`other temperature measured from the thermal mass if that temperature represents
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`LED temperatures. Indeed, King conceded that he treated “bulk temperature”
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`simply as “the temperature that’s measured at the thermal mass” without regard to
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`the term “bulk.” APPLE-1057, 148:10-149:4; APPLE-1055, ¶¶22-24.
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`Additionally, Masimo’s construction would render the wavelengths
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`dependent/determinable on bulk temperature limitations redundant in claims 1, 13,
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`and 27, while effectively creating such a limitation in claim 20 when it was not
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`recited.
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`7
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`C.
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`“Operating Wavelengths Dependent on the Bulk Temperature”
`(Claim 7)
`The Board properly recognized in the Institution Decision that claim 7’s
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`“operating wavelengths dependent on the bulk temperature” limitation requires
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`“merely that the LEDs are thermally coupled to the core such that their operating
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`wavelengths are dependent on (i.e., responsive to) its bulk temperature.” ID, 28,
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`19-20; APPLE-1055, ¶25. Masimo’s attempt to re-write the plain language of
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`claim 7 to require that the “operating wavelengths” further be “determined based
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`on the bulk temperature” should be rejected. POR, 26-30.
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`Masimo offers “four reasons” that the Board should add a non-recited
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`“determining” step to claim 7, but none explains why the plain language should be
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`ignored. Id.; APPLE-1055, ¶25. Masimo knew how to claim such a “determining”
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`step as it did in claim 13 (“determining a plurality of operating wavelengths …”),
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`but chose to pursue broader coverage in claim 7.4
`
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`4 Even if claim 7 were interpreted to require determination of LED operating
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`wavelengths based on the bulk temperature, the combinations based on Noguchi
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`(Grounds 1E-1F, 2E-2F) perform this determination and would have rendered
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`claim 7 and its dependent claims obvious. Pet., 53-54, 59-60.
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`8
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`III. Grounds 1A-2F Render the Disputed Claim Limitations Obvious
`The POR focuses on alleged deficiencies in the prior art’s teaching of (i) the
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`“thermal mass” claim features and (ii) the “bulk temperature” claim features.
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`While instituted Grounds 1A-2F include certain differences, each ground relies on
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`a “thermal core” in a modified version of Yamada’s substrate as the claimed
`
`“thermal mass” and all grounds demonstrate that the temperature measured from
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`the core is a “bulk temperature.” The follow sub-sections address how Petition’s
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`mappings in all grounds render the “thermal mass” and “bulk temperature”
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`limitations obvious under Apple’s constructions.5 APPLE-1055, ¶¶64-65, 73-74.
`
`Section IV further addresses obviousness under Masimo’s constructions, among
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`other issues.
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`A. The “Thermal Mass” Limitations Are Obvious
`The thermal core in the instituted grounds stabilize a bulk temperature and
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`constitute a “thermal mass” as claimed. Pet., 45-46, 19-21; APPLE-1003, ¶¶50-51,
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`107-108; supra, Section II.A; APPLE-1055, ¶6; generally ¶¶65-72. As explained
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`5 For simplicity, the discussion in this Reply focuses on the thermal core in the
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`Yamada-Chadwick grounds. Unless otherwise indicated or apparent, it should be
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`understood that this discussion is representative and similarly applies to each of the
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`instituted grounds. APPLE-1055, ¶64.
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`9
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`in the Petition, the stabilizing property of a metal core stems from the thermal
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`properties of the metal and its reasonably “substantial” mass—i.e., the same
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`properties that allow the “substantial metallized areas” of the thermal mass 1220 to
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`stabilize the bulk temperature in the ’127 Patent. APPLE-1001, 11:10-13; Pet., 45.
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`A POSITA would have known how to select an appropriate thickness or size
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`of the core in the combinations to optimize its desired thermal functions. APPLE-
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`1055, ¶¶66-67, 83. For the thermal functions described in the Petition (e.g.,
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`cooling LEDs, reducing spectral shift, estimating LED temperatures), it would
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`have been obvious for the thermal core to have a reasonably substantial mass to
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`have a meaningful thermal effect on the desired thermal function(s). APPLE-1055,
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`¶66. The reasonably substantial mass of the core would increase its heat capacity
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`and stabilize the bulk temperature. APPLE-1055, ¶¶65-72; Pet., 13-18. With the
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`core thicknesses exemplified in Chadwick and the length/width of the core suitable
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`for use in a finger-clip sensor in the combinations, it would have been obvious for
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`the core in the instituted grounds to be of comparable size and mass to the
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`structures identified as a thermal mass in the ’127 Patent
`
`
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`comparable stabilization and thermal properties. APPLE-1005, 3:38-51; APPLE-
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`, and would have
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`1055, ¶¶66-68, 72.
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`10
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`B.
`The “Bulk Temperature” Limitations Are Obvious
`It would have been obvious for the temperature sensor thermally coupled to
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`the thermal core in the instituted grounds to measure a bulk temperature
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`representative of all or substantially all of the core. Pet., 24-25; APPLE-1003,
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`¶¶60-62; supra, Section II.B; APPLE-1055, ¶73. Anthony explained that, in the
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`combinations, heat from LEDs is absorbed and distributed through a bulk of the
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`thermal core such as a sheet of aluminum or copper. APPLE-1003, ¶¶60-62. The
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`rate of heat diffusion through the identified core materials including aluminum and
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`copper would produce heat distribution and a bulk temperature representative of
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`substantially all of the core as a result of basic heat conduction processes through
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`the core. APPLE-1055, ¶¶73-74; see also, APPLE-1055, 18, 69; EX2151, ¶¶144-
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`145, 148, 151 (describing fast rate of thermal diffusion in Al/Cu). Further, given
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`that the core in the combinations is made of a metal like the metal of the thermal
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`mass in the ’127 Patent, and given the core’s similar geometry and size/mass to the
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`thermal mass in the ’127 Patent
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`, it would have been
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`obvious that the bulk temperature in the combinations would be representative of
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`all or substantially all of the thermal mass at least to the same extent as the bulk
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`temperature in the ’127 Patent. APPLE-1055, ¶¶73-74.
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`Case No. IPR2022-01299
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`Attorney Docket: 50095-0046IP1
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`IV. The POR Fails to Refute the Petition’s Showing that a Thermal Core
`and Bulk Temperature Suitable for Estimating LED Temperatures and
`Wavelengths Would Have Been Obvious in the Instituted Grounds
`A. A POSITA Would Have Been Motivated to Use the Thermal Core
`for LED Temperature and Wavelength Estimation, and Masimo’s
`Arguments to the Contrary are Based on Masimo’s Inaccurate
`and Incomplete Review of Prior Art Solutions
`The Petition demonstrated multiple motivations for a POSITA to implement
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`Yamada’s substrate with a thermal core based on Chadwick6, including to facilitate
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`“measure[ment] [of] a temperature indicative of a temperature of the LEDs.” Pet.,
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`16; APPLE-1003, ¶45, 77-83. The indicated temperature of the LEDs, indirectly
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`measured via the thermal core, would be obvious to use for purposes including
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`“compensat[ing] for the effect of temperature-induced wavelength fluctuations.”
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`Pet., 37, 53-56; APPLE-1003, ¶¶44, 88-89, 132-135; APPLE-1055, ¶¶26-31. The
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`Petition cited Cheung and Noguchi to exemplify these teachings, each of which
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`describes techniques for compensating for temperature-induced wavelength shifts
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`based on indirect measurements of LED temperatures. APPLE-1003, ¶¶33-38. To
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`be sure, there is no dispute that wavelength-shift compensation techniques were
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`well known in the art. King volunteered a number of known approaches to
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`indirectly estimating LED temperatures using various inputs (e.g., ambient
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`6 Supra, Footnote 5.
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`temperature, drive current, forward voltage drop, temperatures measured in close
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`proximity to the LED). EX2151, ¶¶36, 41. See also, APPLE-1055, §§ V, VI, and
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`VIII.A.
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`Notwithstanding this evidence, Masimo contends that the use of a bulk
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`temperature from a thermal core thermally coupled to the LEDs still would not
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`have been an obvious option for a POSITA to use in estimating the temperature
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`and corresponding wavelengths of LEDs. POR, 50-66; EX2151, ¶55 (“counter-
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`intuitive hypothesis”). To arrive at this position, Masimo and King frame the state
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`of the art before the ’127 Patent as allegedly teaching away or pointing toward use
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`of physical variables other than a bulk temperature from the core as more
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`predictable proxies for LED temperatures. Masimo’s and King’s framing of the
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`state of the art stems from their review of both references relied upon in the
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`Petition (Cheung and Noguchi) and additional references not cited in the Petition
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`but alleged to be within the knowledge of a POSITA (Oldham, Webster, and
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`Huiku). POR, 51-57; EX2151, ¶¶36-51. But Masimo’s characterization of these
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`references and the knowledge of a POSITA is inaccurate and incomplete.
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`Measuring a bulk temperature from a thermal core (thermal mass) to estimate LED
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`operating temperatures/wavelengths was indisputably known and was an obvious
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`design option before the ’127 Patent. APPLE-1055, ¶¶26-52.
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`To start, Masimo’s assertions that a POSITA reading Cheung or Noguchi
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`would only seek to measure an “ambient” or “direct” temperature of the LEDs,
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`Attorney Docket: 50095-0046IP1
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`rather than a bulk temperature from the core in the instituted grounds, are incorrect
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`and fail to adequately credit all that these references would have suggested to a
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`POSITA. APPLE-1055, ¶¶75-76, 32-52. Cheung’s and Noguchi’s first concern
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`was measuring a temperature reasonably representative of LED temperatures, and
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`they describe ambient measurements or measurements in close-proximity to the
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`LEDs as suitable options for their devices, which do not include a thermal core or
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`similar structures in the substrate of the circuit board. APPLE-1007, 19:16-34,
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`FIG. 11; APPLE-1008, 1:7-12, 2:50-3:14, 1:33-50. But Noguchi teaches that the
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`distance between sensor and LEDs can increase with sufficient coupling. APPLE-
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`1008, 2:20-40; APPLE-1055, ¶76. Further, neither Cheung nor Noguchi criticizes
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`the use of a bulk temperature from a thermal core or suggests that an ambient
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`temperature or a temperature in the immediate vicinity of the LED would be
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`preferable to a temperature from a sensor thermally coupled to the LEDs via the
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`core. APPLE-1055, ¶¶56, 75. To the contrary, a POSITA would have appreciated
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`that Cheung’s and Noguchi’s positioning of the temperature sensor and LEDs on a
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`common substrate would be even more beneficial when the sensor and LEDs are
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`thermally coupled via the core. APPLE-1005, ¶¶75-76. This follows because the
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`core provides a natural pathway for heat conduction and would allow the
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`temperature sensor to obtain a measurement indicative of the LED temperatures
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`even at further distances from the LEDs. Id.; APPLE-1057, 30:2-31:9.
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`The bulk temperature measured by the sensor coupled to the thermal core in
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`the instituted grounds is an obvious extension of the “ambient” temperatures
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`described in Cheung and Noguchi in the circumstance where the substrate has a
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`thermal core like those known in the art. Pet., 13-18, 37-39, 53-56. A POSITA
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`would not read Cheung and Noguchi as inflexibly as Masimo requires in the POR.
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`Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1343 (Fed. Cir.
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`2020) (“‘a person of ordinary skill is also a person of ordinary creativity, not an
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`automaton,’ so the fact that it would take some creativity to carry out the
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`combination does not defeat a finding of obviousness”) (quoting KSR, 550 U.S. at
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`421); ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016); In re
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`Arora, 369 F. App’x 120, 122 (Fed. Cir. 2010) (“prior art reference must be
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`considered for all that it teaches to those of ordinary skill in the art, not just the
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`embodiments disclosed therein”) (citing In re Inland Steel Co., 265 F.3d 1354,
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`1361 (Fed. Cir. 2001); In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992));
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`APPLE-1055,¶¶75-76; see also, id. ¶¶27-30.
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`Next, Masimo’s efforts to look beyond the Petition’s prior art for evidence
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`of teaching away or other measurements that a POSITA allegedly would have tried
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`before measuring the bulk temperature of the core are misleading and have no
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`merit.7 See POR (“there would have been no reason to try a speculative method—
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`measuring a bulk temperature”); APPLE-1055, ¶¶26-31. For example, Masimo
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`cites Webster as offering an alleged critique of Cheung, but Webster’s concern
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`about differences in temperature among the LEDs would be solved by the
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`proposed combinations since the thermal core would conduct heat between and
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`reduce variation among the LED temperatures in the combinations. POR, 54-55
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`(citing EX2053, 68-69); APPLE-1055, ¶¶53-56. Huiku’s concern with the
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`variation in heat conductivity in a traditional circuit board likewise would be
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`inapplicable to a substrate with a thermal core that more readily distributes heat
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`and reduces temperature variation. POR, 55-56 (citing EX2067, 19:8-13); APPLE-
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`1055, ¶¶57-63. Webster and Huiku thus evidence why a POSITA would have
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`found a thermal core to be beneficial in the combinations. APPLE-1055, ¶¶63, 26-
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`29.
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`Equally problematic, Masimo and King overlooked more pertinent teachings
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`in the prior art that confirm a POSITA would have known how to use a bulk
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`7 Masimo and King assert that a POSITA would know from Webster that LED
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`drive currents could be used for LED temperature estimation and would know
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`from Huiku that the forward voltage drop of the LED cold be used for such
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`estimation. EX2151, ¶¶47-56, 177-183.
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`temperature from a thermal mass specifically to estimate LED temperatures and
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`Attorney Docket: 50095-0046IP1
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`wavelengths before the ’127 Patent. In re Carlson, 983 F.2d 1032, 1037-38 (Fed.
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`Cir. 1993) (a POSITA “is charged with knowledge of all the contents of the
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`relevant prior art” and “is presumed to know all the pertinent prior art”); In re
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`Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998).
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`For example, King purported to consider Oldham in his declaration, but he
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`only credited Oldham as teaching active heating/cooling techniques that “attempt
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`to maintain target LED temperatures or operating wavelengths.” EX2151, ¶40.
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`King admitted in deposition that he had not accounted for Oldham’s additional
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`teachings of the very concept t