`
`Filed: October 20, 2023
`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Irfan A. Lateef (Reg. No. 51,922)
`Ted M. Cannon (Reg. No. 55,036)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`
`
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail:
`AppleIPR127-1@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2022-01299
`U.S. Patent 7,761,127
`
`
`
`
`
`
`PATENT OWNER SUR-REPLY
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`CLAIM CONSTRUCTION .......................................................................... 1
`
`A.
`
`B.
`
`C.
`
`“thermal mass” .................................................................................... 1
`
`“bulk temperature” .............................................................................. 3
`
`“the operating wavelengths dependent on the bulk
`temperature” ........................................................................................ 4
`
`II.
`
`THE PRIOR ART DOES NOT DISCLOSE OR MAKE
`OBVIOUS A “THERMAL MASS” .............................................................. 4
`
`III. THE PRIOR ART DOES NOT DISCLOSE OR MAKE
`OBVIOUS THE “BULK TEMPERATURE” LIMITATIONS .................... 8
`
`IV. MOTIVATION TO COMBINE .................................................................... 9
`
`A. Apple fails to rebut Masimo’s teaching-away showing. ..................... 9
`
`1.
`
`Cheung and Noguchi teach measuring ambient
`temperature. ............................................................................... 9
`
`2. Webster and Huiku teach away from the invention,
`and Apple’s contrary arguments are based on
`hindsight. ................................................................................. 11
`
`3.
`
`Apple’s new references fail to satisfy Apple’s
`burden to prove motivation to combine. ................................. 12
`
`B.
`
`Apple fails to rebut Masimo’s no-motivation-to-combine
`showing. ............................................................................................ 19
`
`1.
`
`Apple never proposed changing Yamada’s substrate
`or Chadwick’s core to make either a “thermal mass.” ............ 19
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`2.
`
`3.
`
`4.
`
`Chadwick’s core would not have the thermal
`function of the “thermal mass.” .............................................. 20
`
`Chadwick’s core and Yamada’s heat conductor are
`redundant. ................................................................................ 22
`
`Anthony’s oversimplification of the complexity of
`designing a “thermal mass” is not credible. ............................ 23
`
`V. OBJECTIVE EVIDENCE SUPPORTS NON-OBVIOUSNESS ............... 25
`
`A.
`
`B.
`
`It is undisputed the rainbow® sensors embody the
`invention, are commercially successful, and have received
`industry praise. .................................................................................. 25
`
`There is a nexus between the objective evidence and the
`invention. ........................................................................................... 25
`
`
`
`
`-ii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Dynamic Drinkware LLC v. Nat. Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 18
`Edwards Lifesciences LLC v. Cook Inc.,
`582 F.3d 1322 (Fed. Cir. 2009) ............................................................................ 4
`In re Epstein,
`32 F.3d 1559 (Fed. Cir. 1994) ............................................................................ 24
`Fox Factory, Inc. v. SRAM, LLC,
`944 F.3d 1366 (Fed. Cir. 2019) .......................................................................... 25
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) ............................................................................ 27
`K/S Himpp v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) .......................................................................... 11
`Key Pharms. v. Hercon Labs. Corp.,
`161 F.3d 709 (Fed. Cir. 1998) .............................................................................. 9
`In re Publicover,
`813 F. App’x 527 (Fed. Cir. 2020) ..................................................................... 24
`Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc.,
`66 F.4th 1373 (2023) ........................................................................ 16, 17, 18, 19
`SAS Inst. v. Iancu,
`138 S. Ct. 1348 (2018) .......................................................................................... 5
`Uber Techs., Inc. v. X One, Inc.,
`957 F.3d 1334 (Fed. Cir. 2020) .......................................................................... 24
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .......................................................................... 19
`
`-iii-
`
`
`
`TABLE OF AUTHORITIES
`(cont’d)
`
`OTHER AUTHORITIES
`
`Page No(s).
`
`37 C.F.R. § 42.6 ....................................................................................................... 16
`
`
`-iv-
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`
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`I.
`CLAIM CONSTRUCTION
`A.
`“thermal mass”
`Apple urges the Board to adopt the ITC ALJ’s construction of “thermal mass.”
`
`Reply, 2 n.1. But Apple ignores that the claims are patentable over Yamada
`
`combined with a thermal core under that construction, as the ALJ found. POR,
`
`34-35. Further, Apple’s construction is incomplete because it does not define “a
`
`mass that stabilizes a bulk temperature.” Reply, 2-5; EX2195, 10:16-15:1. Apple’s
`
`specification quotes state that the thermal mass stabilizes a bulk temperature. Reply,
`
`2-3. But Apple ignores the specification’s explanation that the thermal mass
`
`“stabilizes and normalizes the bulk temperature so that the thermistor measurement
`
`of bulk temperature is meaningful.” EX1001, 11:1-4. The Board correctly
`
`interpreted that and other intrinsic evidence to construe “thermal mass” as “a mass
`
`having resistance to temperature change on a scale relevant to estimating LED
`
`wavelengths.” ID, 18-19; see POR, 17-22; EX2195, 24:13-16 (Anthony agreeing
`
`the bulk temperature is meaningful for wavelength-shift compensation).
`
`Apple criticizes the Board because the specification does not use the phrases
`
`“resistance to temperature change” or “scale relevant to estimating LED
`
`wavelengths.” Reply, 4. But claim constructions need not be lifted from the
`
`specification. Apple also does not show the Board’s language is inaccurate.
`
`-1-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Apple incorrectly argues the Board’s construction excludes the bulk-
`
`temperature-stabilization function. Id. The Board’s temperature-change-resistance
`
`construction correctly integrates the bulk-temperature-stabilization function. ID, 18;
`
`POR, 17-22.
`
`Apple argues the Board’s construction contradicts the file history. Reply, 4.
`
`Apple relies on King’s testimony as allegedly conceding that Cheung’s substrate
`
`would be a thermal mass under Masimo’s construction. Id. King said no such thing.
`
`King explained a hypothetical FR4 board could be designed with a thermal mass
`
`depending on many factors. EX1057, 124:14-125:8; see also EX2195, 34:4-14.
`
`King’s testimony was not about Cheung. Id.
`
`Apple’s “additional reasons” for criticizing the Board are conclusory and
`
`meritless. Reply, 4-5. Apple first criticizes the Board’s construction as adding a
`
`function not recited in all claims. Id., 5. But Apple’s construction does the same
`
`thing, adding the bulk-temperature-stabilization function. EX2195, 38:7-21. The
`
`Board’s use of “LEDs” rather than “light emitting sources” makes no practical
`
`difference considering the prior art at issue. Apple criticizes the Board’s
`
`construction as ill-defined and unclear, relying on Anthony’s opinion that the
`
`Board’s construction does not distinguish Cheung. Reply, 5 (citing EX1055 ¶18).
`
`That criticism is meritless because Cheung lacks any description of a mass with the
`
`required temperature-change resistance. POR, 21-22.
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`-2-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`B.
`“bulk temperature”
`The specification does not support the Board’s construction that the “bulk
`
`temperature” is representative of all or substantially all of the thermal mass as Apple
`
`asserts. Reply, 6. Apple relies on Figure 12 only. Id. But Figure 12 shows (1) the
`
`thermal mass receives thermal energy and (2) the temperature sensor measures the
`
`bulk temperature. See POR, 23-24; EX2151 ¶¶93-94; EX2195, 43:15-44:17. It does
`
`not illustrate any temperature distribution, much less the uniform distribution
`
`required by the Board’s construction. Id.
`
`The specification supports Masimo. Equation 3 uses a single bulk
`
`temperature as a proxy for multiple LED temperatures whereas Equation 4 uses a
`
`separate temperature measurement for each LED, indicating that different
`
`temperatures exist on the thermal mass. POR, 25-26. The “bulk temperature”
`
`representing multiple LEDs gives meaning to “bulk,” contrary to Apple’s argument.
`
`Reply, 7. The specification does not describe Apple’s bulk/local distinction. Id.;
`
`POR, 25-26.
`
`Apple cites definitions of “bulk” as a noun. Reply, 5-6 (citing EX1058, 244;
`
`EX1059, 226). But “bulk” as an adjective refers to multiple items. EX1058, 244;
`
`EX1059, 226; EX2195, 49:11-13, 51:4-11, 52:15-19. The ordinary meaning
`
`supports Masimo.
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`-3-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Apple’s argument that Masimo construes “bulk temperature” to be redundant
`
`with the “operating wavelengths dependent on the bulk temperature” limitations is
`
`frivolous. Reply, 7. The two limitations have different scope. POR, 22-30.
`
`C.
`“the operating wavelengths dependent on the bulk temperature”
`Masimo did not “rewrite” or “ignore” the plain claim language. Reply, 8. The
`
`phrase “dependent on” commonly designates a dependent quantity (“the operating
`
`wavelengths”)
`
`that
`
`is determined based on another quantity (“the bulk
`
`temperature”). POR, 27-28; EX2151 ¶116.
`
`Claims 7 and 13 recite the “dependent on” limitation. Apple argues Masimo
`
`“knew how to claim” the “determining step” in method claim 13 but chose not to
`
`claim that step in apparatus claim 7. Reply, 8. Apple ignores that method claims
`
`necessarily recite verbs such as “determining” that may be omitted from
`
`corresponding apparatus claims. As Apple acknowledges for “bulk temperature,”
`
`slight variations in claim language may have the same scope when appropriate in
`
`view of the intrinsic evidence. Reply, 7; Edwards Lifesciences LLC v. Cook Inc.,
`
`582 F.3d 1322, 1330 (Fed. Cir. 2009).
`
`II. THE PRIOR ART DOES NOT DISCLOSE OR MAKE OBVIOUS
`A “THERMAL MASS”
`In the Petition, Apple alleged the combination of Yamada with “a thermal
`
`core … based on the teachings of Chadwick” satisfies the “thermal mass”
`
`-4-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`limitation. Pet., 20. Apple pointed to Chadwick’s “metal core printed circuit board”
`
`with a metal sheet 10:
`
`
`
`Id., 21. Chadwick’s core is a heat sink for cooling electronic components. POR,
`
`35-37. Apple’s Petition agrees, explaining that Chadwick’s core would “sink heat
`
`LEDs …, thereby restricting temperature increases and heat-induced spectral shifts
`
`in LEDs.” Pet., 21. Apple did not propose converting Chadwick’s core from a heat
`
`sink for cooling into a thermal mass for stabilizing a bulk temperature. Id.; POR,
`
`42-44. Apple cannot now substitute a new obviousness ground proposing such a
`
`conversion. SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (Director lacks “license
`
`to depart from the petition”).
`
`
`
`Masimo established Chadwick’s core is not a “thermal mass” having the
`
`temperature-change-resistance function under the Board’s construction. POR, 30-
`
`-5-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`44. Apple responds in three ways. First, Apple challenges the Board’s construction.
`
`Reply, 2-5. But because the Board’s construction is correct (see supra I.A) and
`
`Chadwick’s core lacks the required temperature-change-resistance function, all
`
`claims are patentable.
`
`Second, Apple argues under its construction that the “core in the instituted
`
`grounds stabilize a bulk temperature and constitute a ‘thermal mass’ as claimed.”
`
`Reply, 9. But that argument is unsupported by the evidence. Whether a core
`
`performs
`
`the bulk-temperature-stabilization
`
`function
`
`required by Apple’s
`
`construction (and also integrated into the Board’s construction) depends on several
`
`complex factors such as “the amount of heat generated by the LEDs, the duty cycles
`
`of the LEDs, the materials and dimensions of the core and other layers of the circuit
`
`board, and the manner in which the components are attached to each other.” EX2151
`
`¶158. Apple would have needed to conduct further analysis, tests, or simulations to
`
`prove Chadwick’s core is a “thermal mass,” but did not do so. Id.; POR, 38-42.
`
`Apple generalizes that “the stabilizing property of a metal core stems from”
`
`its “thermal properties” and “mass.” Reply, 10. But Apple does not specify what
`
`properties and mass are needed for bulk-temperature stabilization, much less prove
`
`that Chadwick’s core has those properties and mass.
`
`Third, Apple argues a POSITA could “select an appropriate thickness or size
`
`of the core … to optimize its desired thermal functions.” Reply, 10. But that
`
`-6-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`argument does not change that cooling is Chadwick’s core’s sole desired thermal
`
`function. Sizing Chadwick’s core to optimize cooling would not cause the core to
`
`perform the different required temperature-change-resistance function. POR, 57-59.
`
`Apple attempts to rewrite the Petition by alleging it relied on “estimating LED
`
`temperatures” rather than Chadwick’s cooling function. Reply, 10. But the
`
`Petition’s “thermal mass” section expressly relies on the cooling function by arguing
`
`Chadwick’s core would restrict LED temperature increases and spectral shift. Pet.,
`
`21. The “thermal mass” section does not mention estimating LED wavelengths. Id.
`
`Apple incorrectly argues that the need to fit Chadwick’s core into Yamada’s
`
`finger-clip sensor would have made it obvious that the core has stabilization
`
`properties like the ’127 patent’s thermal mass and early rainbow® sensors’ board.
`
`Reply, 10. Many factors—not just size—determine the thermal properties of a mass.
`
`EX2151 ¶160. Apple did not conduct any analysis, testing, or simulations proving
`
`that sizing Chadwick’s core to fit within Yamada’s finger-clip sensor would cause
`
`the core to have the required temperature-change-resistance function. Reply, 10;
`
`EX2195, 156:14-157:13. No credible evidence shows Chadwick’s core would fail
`
`to cool components if confined within Yamada’s sensor. Indeed, Chadwick
`
`emphasizes the need for cooling “components of micro-miniature size.” EX1005,
`
`1:38-51.
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`-7-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`III. THE PRIOR ART DOES NOT DISCLOSE OR MAKE OBVIOUS
`THE “BULK TEMPERATURE” LIMITATIONS
`Apple does not argue the prior art satisfies the “bulk temperature” limitations
`
`under Masimo’s construction. Reply, 11. The Board should find the claims
`
`patentable if it adopts Masimo’s construction.
`
`Apple does not prove the prior art discloses or suggests using a bulk
`
`temperature to determine LED wavelengths. Id. Yamada triggers an alarm for burn
`
`prevention and Cheung and Noguchi measure ambient temperature, not a bulk
`
`temperature for the thermal mass. POR, 45-50.
`
`Apple does not even prove the prior art would measure a “temperature
`
`representative of all or substantially all of the core.” Reply, 11. Instead, Apple relies
`
`on Anthony’s testimony that Chadwick’s core would produce a small, uniform
`
`temperature gradient. Id. (citing EX1003 ¶¶60-62; EX1055 ¶¶73-74). But Apple
`
`fails to rebut King’s testimony that “the frequent cycling on and off of the LEDs”
`
`would cause “a non-uniform temperature gradient.” EX2151 ¶¶67-68. Apple did
`
`not analyze Chadwick’s core to determine its temperature gradient. Reply, 11;
`
`EX1055 ¶¶73-74.
`
`Apple argues specification and commercial embodiments use the same metal
`
`as Chadwick and allegedly share “similar geometry and size/mass.” Reply, 11;
`
`EX1055 ¶¶73-74. Comparing Chadwick to specification and commercial
`
`embodiments rather than to the claims is legally erroneous. Key Pharms. v. Hercon
`
`-8-
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`
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998). Moreover, Apple does not evaluate
`
`Chadwick’s core to prove the alleged similarity. Reply, 11; EX1055 ¶¶73-74;
`
`EX2195, 125:5-7, 127:14-128:2, 129:15-18. The ITC correctly required analysis
`
`such as tests—not conclusory allegations of similarity—to show the “bulk
`
`temperature” limitation. EX2093, 270-271, 280-281.1
`
`IV. MOTIVATION TO COMBINE
`A. Apple fails to rebut Masimo’s teaching-away showing.
`1.
`Cheung and Noguchi teach measuring ambient temperature.
`Apple admits Cheung and Noguchi measure ambient temperature or
`
`temperature near the LEDs. Reply, 14. Apple also admits Cheung and Noguchi “do
`
`not include a thermal core.” Id. Thus, Cheung and Noguchi do not disclose
`
`measuring a bulk temperature of a “thermal core” to estimate LED wavelengths.
`
`Apple relies on Anthony to reinterpret Cheung and Noguchi. Id. (citing
`
`EX1055 ¶¶56, 75-76). Apple first asserts, “Noguchi teaches that the distance
`
`between the sensor and LEDs can increase with sufficient coupling.” Reply, 14
`
`(citing EX1008, 2:20-40; EX1055 ¶76). That assertion is irrelevant to the invention.
`
`The “thermal mass” is not a range extender for the temperature sensor. It is
`
`meaningful for estimating the wavelengths of multiple LEDs, which Noguchi does
`
`not disclose or suggest. The portion of Noguchi Apple cites refers to a temperature
`
`
`1 In this IPR, Masimo submitted additional evidence not submitted in the ITC.
`
`-9-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`sensor placed within an LED package, as illustrated by Figure 2 below, so the sensor
`
`can measure the “temperature of the LED” or the ambient “temperature in the
`
`environment surrounding the LED.”
`
`
`
`EX1008, 2:20-50. Noguchi says a “contact-type sensor” has slightly more range
`
`than a “noncontact-type sensor.” Id. But either sensor must be placed near a
`
`corresponding LED “for achieving good results.” Id. Noguchi never suggests a
`
`POSITA could achieve good results using a single temperature sensor to measure a
`
`bulk temperature for a thermal mass and using the bulk temperature to estimate
`
`wavelengths of multiple LEDs. Id.
`
`Apple next argues that neither Cheung nor Noguchi criticizes using a bulk
`
`temperature of a thermal mass or suggests that ambient temperature is better. Reply,
`
`-10-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`14. But this argument is a logical fallacy—lack of criticism of a subject matter is
`
`not disclosure of omitted subject matter. Apple also relies on Anthony to assert in
`
`hindsight that it “would be even more beneficial” to position “the temperature sensor
`
`and LEDs on a common substrate.” Id. (citing EX1055 ¶¶75-76). Apple cites no
`
`evidence. Id. Further, expert testimony cannot supply a structural limitation missing
`
`from Cheung and Noguchi. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362,
`
`1365–66 (Fed. Cir. 2014).
`
`Finally, Apple argues that measuring the temperature of a thermal core is “an
`
`obvious extension” of Cheung’s and Noguchi’s disclosure of measuring ambient
`
`temperature. Reply, 15. But arguing what allegedly would have been obvious does
`
`not expand the references’ disclosure. Apple’s cases state that references are
`
`interpreted for all they teach—neither reference teaches a thermal mass. Id.
`
`2. Webster and Huiku teach away from the invention, and
`Apple’s contrary arguments are based on hindsight.
`Apple does not dispute that Webster and Huiku discourage temperature-
`
`sensor-based wavelength-shift-compensation techniques and encourage different
`
`methods. Reply, 16; see POR, 54-56. Apple concedes those references express
`
`concerns about temperature-sensor-based techniques but argues using a thermal core
`
`to distribute heat to reduce temperature variation would resolve the concerns. Reply,
`
`16. That argument demonstrates Apple’s motivation-to-combine argument is based
`
`on improper hindsight. Relying on Anthony’s 2023 testimony alone, Apple points
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`-11-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`to no suggestion in the references or any other pre-’127-patent evidence to use a
`
`thermal core to resolve Webster’s and Huiku’s concerns. Id.
`
`Focusing on what Webster and Huiku identify as the solutions to their
`
`concerns avoids the hindsight bias that infects Anthony’s 2023 testimony. If a
`
`POSITA knew thermal cores were a solution to Webster’s and Huiku’s concerns,
`
`then Webster and Huiku themselves would have at least suggested investigating their
`
`use. But no reference made that suggestion. Anthony’s 2023 opinion lacks
`
`corroboration and is not credible.
`
`3.
`
`Apple’s new references fail to satisfy Apple’s burden to prove
`motivation to combine.
`By introducing five new references, Apple tacitly admits the Petition failed to
`
`prove the claims obvious in view of Yamada and Chadwick. For several reasons,
`
`the new references also do not satisfy Apple’s burden.
`
`First, proof (1) that the Yamada/Chadwick combination meets the “thermal
`
`mass” and “bulk temperature” limitations and (2) motivation to combine are
`
`necessary parts of a prima facie case. The Petition fails to prove either. Apple tries
`
`to make
`
`the new references seem responsive by alleging
`
`that Masimo
`
`mischaracterized the state of the art. Reply, 13. Apple then cites Anthony’s
`
`characterization of the new references to allege: “Measuring a bulk temperature from
`
`a thermal core (thermal mass) to estimate LED operating temperatures/wavelengths
`
`was indisputably known.” Id. That is a late citation to alleged evidence that the
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`-12-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`prior art discloses the “thermal mass” and “bulk temperature” limitations,
`
`precisely what the Petition must show to make a prima facie case. Because Apple
`
`could have submitted the new references with its Petition, the new references should
`
`not be considered now. EX2195, 83:7-11, 84:4-85:19, 86:8-88:13.
`
`Second, even if the new references can be considered, they cannot change the
`
`Petition’s proposed Yamada/Chadwick combination.
`
` EX2195, 72:21-73:4,
`
`74:15-19, 75:75:15-22. For example, Apple cannot substitute a component from a
`
`new reference for Chadwick’s core. Id., 79:20-80:21. At most, the new references
`
`may provide motivation to combine Yamada with Chadwick’s core. But because
`
`Chadwick’s core is a heat sink for cooling, not a “thermal mass” with temperature-
`
`change-resistance for estimating LED wavelengths, the combination would not yield
`
`the invention. POR, 35-37.
`
`Third, the new references do not teach a “thermal mass” under either the
`
`Board’s or Apple’s construction. Apple relies on Oldham’s disclosure that its
`
`“temperature regulating system can adjust a monitored temperature of the LED to
`
`compensate for any thermal masses intervening between the LED and the
`
`temperature sensor and to thus derive, calculate, or estimate an operating
`
`temperature.” Reply, 17; EX1055 ¶36 (both citing EX1050 ¶39). A POSITA would
`
`not interpret that passage to suggest the “thermal masses” have the required
`
`-13-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`temperature-change-resistance function for estimating LED wavelengths. EX2194
`
`¶¶9-12. That Anthony believes otherwise undermines his credibility.
`
`Paragraph 39 refers to the “temperature regulating system” referenced in
`
`Paragraph 38, which “can maintain the operating temperature of the LED such that
`
`the operating temperature does not change appreciably.” EX1050 ¶¶38-39;
`
`EX2194 ¶11. Oldham broadly uses “thermal mass” to refer to any object, “such as
`
`air,” that could affect such temperature regulation. EX1050 ¶52; EX2194 ¶12;
`
`EX2195, 103:3-13. Paragraph 39 refers to multiple “thermal masses”—including
`
`air—potentially interfering with an accurate “monitored temperature of the LED.”
`
`EX1050 ¶39; EX2194 ¶¶11-12. Thus, Oldham needs to “compensate for” the
`
`thermal masses to correct temperature-measurement errors. Id. Oldham does not
`
`use any of the thermal masses for a temperature-change-resistance function for
`
`estimating LED wavelengths. Id.
`
`Apple’s reliance on Paragraph 41 is also misplaced. Reply, 17. Paragraph
`
`41’s generic teaching of wavelength-shift compensation is no more detailed than
`
`Cheung’s or Huiku’s. EX2194 ¶13; EX2195, 104:22-107:7. Paragraph 41 says “the
`
`temperature of the LED can be monitored … with a temperature sensor” to
`
`“compensate for the spectral shifts” using a coefficient for each LED. EX1050 ¶41.
`
`It says nothing about any thermal mass, much less using a thermal mass with the
`
`temperature-change-resistance function for estimating LED wavelengths. EX2194
`
`-14-
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`
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`¶13; EX2195, 106:9-20. A POSITA would not interpret Oldham as suggesting such
`
`a thermal mass in view of its teaching that “thermal masses” are objects that interfere
`
`with accurate temperature measurements, and, thus, must be compensated for to
`
`correct errors. Id.
`
`Finally, Paragraphs 24-25, 34, and 38 do not disclose a thermal mass with the
`
`required temperature-change-resistance function. Id. ¶14. These paragraphs refer
`
`to the temperature-regulating-system embodiments that maintain various system
`
`components at a constant temperature. Id. For example, Paragraph 34 teaches a
`
`“heat exchange pathway” to “keep various system components at substantially the
`
`same temperature.” EX1050 ¶34. This form of “temperature stability”—
`
`maintaining constant temperature across the entire system—is not the required
`
`temperature-change-resistance function. EX2194 ¶14; EX2195, 95:15-96:10,
`
`97:22-98:20. Further, Oldham does not teach or suggest using any component of
`
`Paragraph 34’s “heat exchange pathway” as a thermal mass with a temperature-
`
`change-resistance
`
`function
`
`for
`
`facilitating Paragraph 41’s
`
`temperature
`
`compensation. Id.
`
`Accordingly, Oldham would not have suggested to a POSITA that
`
`Chadwick’s core would have a temperature-change-resistance function for
`
`estimating LED wavelengths. Id. ¶15. Thus, Apple failed to prove a motivation to
`
`combine Yamada with Chadwick in a manner that yields the invention. Id.
`
`-15-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Muthu, Dry, Man, and Littleton also do not suggest using a thermal mass to
`
`resist temperature change or stabilize a bulk temperature for estimating LED
`
`wavelengths. Apple does not argue otherwise. Reply, 18. Its Reply contains a one-
`
`sentence allegation that these references “described the use of a temperature
`
`measured from a heat sink or a massive core to estimate LED temperatures or
`
`wavelengths.” Id. That cursory allegation is irrelevant to the “thermal mass”
`
`limitation under either the Board’s or Apple’s construction because it does not
`
`address temperature-change resistance or bulk-temperature stabilization. Apple
`
`does not even allege, much less prove, that any of the references suggests that
`
`Chadwick’s core has the required temperature-change resistance. Id. Thus, Apple
`
`failed to prove a motivation to combine Yamada with Chadwick in a manner that
`
`yields the invention. And Apple cannot expand its cursory Reply allegation to
`
`incorporate Anthony’s nearly 1,600-word testimony about these references. 37
`
`C.F.R. § 42.6(a)(3).
`
`Muthu is about maintaining the appearance of white light “in the general
`
`illumination market,” not improving physiological sensors. EX1051, 333. Apple
`
`does not show a POSITA seeking to improve physiological sensors would have
`
`turned
`
`to consumer-lighting
`
`literature.
`
` EX2194 ¶17; See Sanofi-Aventis
`
`Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1379 (2023) (Petitioner
`
`failed to show prior art was analogous).
`
`-16-
`
`
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`In addition, Muthu teaches it is more practical—not as accurate—to measure
`
`heat-sink temperature rather than junction temperature. EX1051, 335; EX2194 ¶18.
`
`This practical need does not suggest the heat sink resists temperature change or
`
`stabilizes a bulk temperature to improve LED-wavelength estimation. Id. Indeed,
`
`the same paragraph that discusses measuring heat-sink temperature points out that
`
`problems with that technique introduce “significant errors.” Id. And Muthu’s Figure
`
`8 shows Muthu’s temperature-compensation technique performs very poorly in
`
`“product yield.”
`
`EX1051, Fig. 8; EX2194 ¶19. Muthu explains that “less than 20% of products will
`
`have a color error of less than 0.005” and concludes: “It is clear that this control
`
`scheme will not achieve the performance required for illumination applications.”
`
`
`
`-17-
`
`
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Id., 337. That unacceptable performance indicates Muthu’s heat sink is not a
`
`“thermal mass” and would discourage a POSITA from using heat-sink temperature
`
`to estimate LED wavelengths. EX2194 ¶19.
`
`
`
`Dry is about cooling “LED light sources as sources of illumination,” not
`
`improving physiological sensors. EX1052 ¶¶4, 6. Apple has not shown a POSITA
`
`seeking to improve physiological sensors would have turned to consumer lighting.
`
`EX2194 ¶22; see Sanofi-Aventis, 66 F.4th at 1379. Dry discloses a “cooling device
`
`… to remove heat” to prevent “degradation or destruction of the LED.” EX1052
`
`¶¶6-8. Its temperature sensor “monitors the temperature [of the LEDs] and controls
`
`the cooling device to vary the degree of cooling.” Id. ¶9. It does not suggest using
`
`a thermal mass to resist temperature change or stabilize a bulk temperature for
`
`estimating LED wavelengths. EX2194 ¶¶23-24.
`
`
`
`Apple fails to prove Man is entitled to its provisional filing date and is prior
`
`art. Dynamic Drinkware LLC v. Nat. Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir.
`
`2015). And Man estimates LED temperature to blend light to create a desired color,
`
`not LED wavelengths to improve physiological measurements. EX1053 ¶¶17-18.
`
`See also EX2194 ¶¶26-27.
`
`
`
`Littleton is about using LEDs to emulate “night sky illumination conditions”
`
`like a “full moon,” not improving physiological sensors. EX1054, 2:4-7. Apple has
`
`not shown a POSITA seeking to improve physiological sensors would have turned
`
`-18-
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`
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`to astronomy. EX2194 ¶29; see Sanofi-Aventis, 66 F.4th at 1379. Further, Littleton
`
`uses a temperature sensor to control a cooler that maintains LEDs at constant
`
`temperature. EX1054, 3:7-22. It does not suggest using a thermal mass to resist
`
`temperature change or stabilize a bulk temperature for estimating LED wavelengths.
`
`EX2194 ¶30.
`
`B. Apple fails to rebut Masimo’s no-motivation-to-combine showing.
`1.
`Apple never proposed changing Yamada’s substrate or
`Chadwick’s core to make either a “thermal mass.”
`Apple argues the Petition suggested “a thermal core could be provided … in
`
`any suitable manner … to allow heat transfer from the surface components to the
`
`core.” Reply, 19 (citing Pet., 15). That argument is deficient for two reasons. First,
`
`Apple cannot meet its burden by vaguely proposing to implement the prior art “in
`
`any suitable manner” without identifying any specific modification. Unigene Labs.,
`
`Inc. v. Apotex, Inc., 655 F.3d 1352, 1361 (Fed. Cir. 2011) (prior art must guide a
`
`POSITA to “a particular solution”). Second, Apple’s proposed heat-transfer
`
`function is not the temperature-change-resistance function of the “thermal mass.”
`
`POR, 35-37, 43.
`
`The Petition’s suggestion the core should be “suitably designed” to restrict
`
`“temperature increases and heat-induced spectral shifts” is deficient
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