throbber
Filed: November 4, 2022
`
`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 PRELIMINARY RESPONSE
`
`

`

`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION .................................................................................... 1
`
`II.
`
`TECHNOLOGICAL BACKGROUND ................................................... 3
`
`A.
`
`B.
`
`Pulse Oximetry ............................................................................... 3
`
`The Claimed Invention ................................................................... 6
`
`III. CLAIM CONSTRUCTION ................................................................... 16
`
`A.
`
`B.
`
`The Petition violates 37 C.F.R. § 42.104(b)(3). ........................... 16
`
`Proper constructions ..................................................................... 19
`
`1.
`
`2.
`
`“thermal mass” (claims 1, 7, 13, 20, 26) ............................ 19
`
`“bulk temperature” (claims 1, 7, 13, 21, and 26) ............... 25
`
`a)
`
`b)
`
`The “bulk temperature” is used to estimate
`wavelengths for multiple LEDs in every claim. ...... 25
`
`The temperature sensor measures the
`temperature of the thermal mass in every
`claim......................................................................... 27
`
`IV. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. §
`325(d) ...................................................................................................... 30
`
`V.
`
`THE CLAIMS ARE PATENTABLE OVER THE CITED ART .......... 33
`
`A.
`
`Claims 7-12 would not have been obvious over Yamada
`and Chadwick. .............................................................................. 35
`
`1.
`
`Yamada and Chadwick do not disclose or make
`obvious a “thermal mass.” ................................................. 35
`
`-i-
`
`

`

`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`2.
`
`Yamada and Chadwick do not disclose or make
`obvious a “temperature sensor … capable of
`determining a bulk temperature for the thermal mass,
`the operating wavelengths dependent on the bulk
`temperature.” ...................................................................... 38
`
`3.
`
`Apple fails to show a motivation to combine or
`reasonable expectation of success. ..................................... 41
`
`B.
`
`Claims 13-25 would not have been obvious over Yamada,
`Chadwick, and Cheung. ............................................................... 47
`
`1.
`
`2.
`
`3.
`
`Yamada, Chadwick, and Cheung do not disclose or
`make obvious a “thermal mass” as claimed....................... 47
`
`Yamada, Chadwick, and Cheung do not disclose or
`make obvious LED operating wavelengths
`“dependent on a bulk temperature of the light
`emitting sources.”............................................................... 48
`
`Apple fails to show a motivation to combine or
`reasonable expectation of success. ..................................... 51
`
`C.
`
`Claims 1-12 and 26-30 would not have been obvious over
`Yamada, Chadwick, and Noguchi. ............................................... 51
`
`1.
`
`2.
`
`3.
`
`Yamada, Chadwick, and Noguchi do not disclose or
`make obvious a “thermal mass” as claimed....................... 51
`
`Yamada, Chadwick, and Noguchi do not disclose or
`make obvious LED wavelengths “determinable as a
`function of” or “dependent on the bulk temperature.” ...... 52
`
`Apple fails to show a motivation to combine or
`reasonable expectation of success. ..................................... 56
`
`-ii-
`
`

`

`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`D.
`
`The challenged claims would not have been obvious over
`Apple’s Grounds 2A-2F. .............................................................. 56
`
`VI. APPLE IGNORES PRIOR ART THAT TEACHES AWAY
`FROM THE CLAIMED INVENTION .................................................. 57
`
`VII. APPLE IGNORES KNOWN SECONDARY
`CONSIDERATIONS OF NON-OBVIOUSNESS ................................. 61
`
`A.
`
`Failure to address known secondary considerations of non-
`obviousness warrants denial of institution. .................................. 61
`
`B. Masimo’s rainbow® sensors embody the claimed invention. ..... 62
`
`C.
`
`D.
`
`E.
`
`The rainbow® sensors are commercially successful. .................. 70
`
`The rainbow® sensors have received significant industry
`praise............................................................................................. 70
`
`There is a nexus between the commercial success and
`industry praise and the claimed invention. ................................... 72
`
`VIII. CONCLUSION ....................................................................................... 73
`
`
`
`
`
`-iii-
`
`

`

`TABLE OF AUTHORITIES
`
`Page No(s).
`
`ActiveVideo Networks v. Verizon Comms.,
`694 F.3d 1312 (Fed. Cir. 2012) ................................................................... 45
`
`Adidas AG v. Nike, Inc.,
`963 F.3d 1355 (Fed. Cir. 2020), cert denied, 141 S. Ct. 1376
`(2021) ........................................................................................................... 46
`
`Advanced Bionics, LLC v. Med-El Elektromedizinische Gerate
`GMBH,
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) ............................. 30, 31, 32
`
`Apple Inc. v. Masimo Corp.,
`No. IPR2020-01524, 2022 WL 1177317 (P.T.A.B. Apr. 19, 2022) ........... 42
`
`Apple Inc. v. Samsung Elecs. Co.,
`839 F.3d 1034 (Fed. Cir. 2016) ................................................................... 61
`
`Ex parte Burns,
`No. Appeal 2016-000351, 2017 WL 2132361
`(P.T.A.B. Apr. 28, 2017) ....................................................................... 41, 42
`
`ClassCo, Inc. v. Apple, Inc.,
`838 F.3d 1214 (Fed. Cir. 2016) ................................................................... 61
`
`Edwards Lifesciences LLC v. Cook Inc.,
`582 F.3d 1322 (Fed. Cir. 2009) ................................................................... 27
`
`Gilead Sciences, Inc. v. United States,
`IPR2019-01456, Paper 17 (PTAB Feb. 5, 2020) ......................................... 62
`
`Leo Pharm. Prod., Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) ................................................................... 61
`
`Mallinckrodt, Inc. v. Masimo Corp.,
`147 Fed. Appx. 158, 2005 WL 2139867 (Fed. Cir. Sept. 7, 2005) ............... 1
`
`-iv-
`
`

`

`TABLE OF AUTHORITIES
`(cont’d)
`
`Page No(s).
`
`Masimo Corp. v. Philips Electronic N. Amer. Corp.,
`2015 WL 2379485 (D. Del. May 18, 2015) .................................................. 1
`
`Muniauction, Inc. v. Thomson Corp.,
`532 F.3d 1318 (Fed. Cir. 2008) ................................................................... 62
`
`Robert Bosch Tool Corp. v. SD3, LLC,
`IPR2016-01751, Paper 15 (PTAB Mar. 22, 2017) ...................................... 62
`
`Stryker Corp. v. KFX Medical, LLC,
`IPR2019-00817, Paper 10 (PTAB Sept. 16, 2019)...................................... 61
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 325 ........................................................................................... 30, 32
`
`37 C.F.R. § 42.6 ................................................................................................ 74
`
`37 C.F.R. § 42.11 .............................................................................................. 62
`
`37 C.F.R. § 42.104 ............................................................................................ 16
`
`
`
`-v-
`
`

`

`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`2001
`
`Declaration of Jeremiah S. Helm in Support of Pro Hac Vice
`Motion
`
`2002
`
`Declaration of Mohamed Diab (Confidential)
`
`2003
`
`December 15, 2005 Rainbow Sensor Simulations (Confidential)
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
` “Signal Extraction & Rainbow Technology,” Masimo, 2005
`(Confidential)
`
`“Rad-57 Signal Extraction Pulse CO-Oximeter Operator’s
`Manual,” Masimo, 2018
`
`March 30, 2004 Masimo Rainbow Sensor Drawing (early
`rainbow®) (Confidential)
`
`Masimo Rainbow Sensor Drawing (early rainbow®)
`(Confidential)
`
`Masimo Corp. et al. v. Apple Inc., June 6-10, 2022 Public
`Hearing Transcript, ITC Inv. No 337-TA-1276
`
`2009
`
`December 16, 2016 Kyocera Substrate Drawing (Confidential)
`
`2010
`
`November 8, 2018 Rainbow Flex Circuit Drawing (Confidential)
`
`2011
`
`Masimo Corp. et al. v. Apple Inc., Masimo’s June 27, 2022 Public
`Initial Post-Hearing Brief, ITC Inv. No 337-TA-1276
`
`2012
`
`2007 Masimo MX-3 Board System Design (Confidential)
`
`2013
`
`2014
`
`2007 Masimo MX-3 Board Product Design Requirements,
`Revision A (Confidential)
`
`2010 Masimo MX-3 Board Product Design Requirements,
`Revision B (Confidential)
`
`Exhibit List, Page 1
`
`

`

`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`
`Exhibit No.
`
`Description
`
`2015
`
`2015 Masimo MX-3 Board Product Design Requirements,
`Revision F
`
`2016
`
`Masimo Rainbow Sensor Substrate, Exploded View
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`“Material Qualification Henkel 84-1LMISR4 Die Attach
`Adhesive,” Masimo
`
`PVIC ACE34560 Electrically Conductive Oven Cure Die Attach
`Adhesive Technical Data Sheet, Protavic Korea Co., Ltd.
`(Confidential)
`
`April 22, 2021 Masimo Rainbow Sensor Photographs (current
`rainbow ®) (Confidential)
`
`March 30, 2009 Masimo Rainbow Sensor Solder Drawing
`(Confidential)
`
`Masimo Rainbow Sensor Photograph (current rainbow ®)
`(Confidential)
`
`2022
`
`September 22, 2019 Masimo “Awards” Webpage
`
`2023
`
`“Masimo Honored with FDNY ‘Flag of Heroes’,” EMS1, 2008
`
`2024
`
`Photograph of “Flag of Heroes”
`
`2025
`
`Photograph of Masimo CEO Joe Kiani with “Flag of Heroes”
`
`2026
`
`U.S. Patent No. 5,758,644
`
`2027
`
`December 5, 2008 Masimo Rainbow Sensor Substrate Drawing
`(current rainbow®) (Confidential)
`
`2028
`
`Characterization Station Results (Confidential)
`
`2029
`
`Masimo Rainbow Sensor Finger Assembly Photograph, Top Side
`(current rainbow®)
`
`Exhibit List, Page 2
`
`

`

`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`
`Exhibit No.
`
`Description
`
`2030
`
`Masimo Rainbow Sensor Finger Assembly Photograph, Bottom
`Side (current rainbow®)
`
`2031
`
`Masimo Rainbow Research File, 2003 (Confidential)
`
`2032
`
`Masimo Rainbow Sensor Thermal Mass Drawing (current
`rainbow®) (Confidential)
`
`2033
`
`January 30, 2006 Masimo Rainbow Products System Design
`
`2034 – 2050 RESERVED
`
`2051
`
`Declaration of Jack Goldberg (Confidential)
`
`2052
`
`Curriculum Vitae of Jack Goldberg
`
`2053
`
`Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`
`Publishing, 1997
`
`2054
`
`Field Guide to Illumination, A. Arecchi et al., SPIE Press, 2007
`
`2055
`
`Fairchild Semiconductor Datasheet, 2001
`
`2056
`
`OSRAM BioMon Sensor Datasheet, 2016
`
`2057
`
`2058
`
`’127 Patent Claim Coverage Chart – Current Rainbow® Sensors
`(Confidential)
`
`’127 Patent Claim Coverage Chart – Early Rainbow® Sensors
`(Confidential)
`
`2059
`
`“Fine Ceramics for Electronics,” Kyocera, 2021
`
`2060
`
`“Thermal Properties of Metals, Conductivity, Thermal
`Expansion, Specific Heat,” Engineers Edge, available at
`https://www.engineersedge.com/properties_of_metals.htm
`
`Exhibit List, Page 3
`
`

`

`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`
`Exhibit No.
`
`Description
`
`2061
`
`2062
`
`2063
`
`2064
`
`2065
`
`2066
`
`“Thermal Properties of Non-Metals,” Engineers Edge, available
`at https://www.engineersedge.com/heat_transfer/thermal_
`properties_of_nonmetals_13967.htm
`
`“Metals – Specific Heats,” The Engineering ToolBox, available
`at https://www.engineeringtoolbox.com/specific-heat-metals-
`d_152.html
`
`“Heat Capacities for Some Select Substances,” University of
`Texas, available at https://gchem.cm.utexas.edu/data/
`section2.php?target=heat-capacities.php
`
`“FR-4,” Wikipedia, available at https://en.wikipedia.org/wiki/
`FR-4
`
`“Talk:FR-4,” Wikipedia, available at
`https://en.wikipedia.org/wiki/Talk:FR-4
`
`“Thermal Conductivity of Solders,” Electronics Cooling,
`available at https://www.electronics-
`cooling.com/2006/08/thermal-conductivity-of-solders/
`
`2067
`
`PCT Pub. No. WO 03/068060 (“Huiki”)
`
`2068 – 2080 RESERVED
`
`2081
`
`Declaration of Micah Young (Confidential)
`
`2082
`
`Masimo Rainbow Sensor Revenue Excel Spreadsheet
`(Confidential)
`
`
`
`
`
`Exhibit List, Page 4
`
`

`

`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`
`Masimo Corporation submits this Preliminary Response to the Petition for
`
`Inter Partes Review of U.S. Patent No. 7,761,127 (“the ’127 patent”) filed by Apple
`
`Inc.
`
`I.
`
`INTRODUCTION
`
`Masimo is the leader in the field of noninvasive physiological monitoring. In
`
`1989, Masimo was a small startup run out of an inventor’s condo. Today, Masimo
`
`is a publicly traded company that employs 6,300 people worldwide and has annual
`
`revenues exceeding one billion dollars. Masimo technology is used in clinical care
`
`to monitor over 200 million patients a year. This growth followed Masimo’s
`
`development of a range of technologies that revolutionized the field of noninvasive
`
`physiological monitoring. Other Masimo patents have withstood extensive attacks,
`
`including in litigation through trial, inter partes review, and appeal.1
`
`Apple’s Petition arises from a dispute with Masimo in the International Trade
`
`Commission. Apple was not, historically, a company that had any involvement in
`
`physiological monitoring devices. But, around 2013, Apple decided to enter the
`
`field and sought out Masimo for that technology. Although ostensibly interested in
`
`
`1 See Mallinckrodt, Inc. v. Masimo Corp., 147 Fed. Appx. 158, 2005 WL
`
`2139867 at *3 (Fed. Cir. Sept. 7, 2005) (nonprecedential); Masimo Corp. v. Philips
`
`Electronic N. Amer. Corp., 2015 WL 2379485 at *1 (D. Del. May 18, 2015).
`
`-1-
`
`

`

`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`
`integrating Masimo’s technology into Apple products, Apple secretly began
`
`poaching employees, one after another. The poached employees included Chief
`
`Technical Officer Marcelo Lamego, one of the inventors on the ’127 patent
`
`challenged in this Petition. Lamego took Masimo’s sensor design knowledge with
`
`him to Apple. Masimo has accused Apple’s devices of using Masimo technology,
`
`including key features disclosed and claimed in the ’127 patent.
`
`Masimo asserted the ’127 patent against Apple in an ITC Investigation—Inv.
`
`No. 337-TA-1276 (the “Investigation”). At the evidentiary hearing, Apple promised
`
`the ALJ it would “present the best possible evidence on the issues,” including the
`
`validity of the ’127 patent. See EX2008, 39:11-17. During the Investigation,
`
`including at the evidentiary hearing and in post-hearing briefing, Masimo identified,
`
`presented, and explained extensive objective evidence of non-obviousness of the
`
`’127 patent. Yet, despite Apple’s full awareness of Masimo’s extensive evidence of
`
`non-obviousness, Apple’s Petition is silent on that evidence, not even disclosing its
`
`existence to the Board.
`
`Apple also fails to establish a likelihood that at least one claim is unpatentable.
`
`The ’127 patent claims inventions related to compensating for changes in
`
`wavelengths of LEDs on a PCB when the LEDs’ temperatures change. The
`
`invention estimates the wavelengths of the LEDs using one measured temperature
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`-2-
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`

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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`
`of a thermal mass in the PCB. Apple, however, relies on art that addresses different
`
`issues and proposes inapplicable solutions:
`
` sounding an alarm to prevent burning a user based on a temperature
`
`measurement (Yamada)
`
` preventing a single LED’s wavelength from changing by adjusting the
`
`LEDs driving power based on temperature (Noguchi)
`
` dissipating heat from electronics to prevent failure (Chadwick)
`
`This art does not address the problem of the ’127 patent. In contrast, the PTO
`
`focused on Cheung in examining the ’127 patent. Cheung estimates the wavelengths
`
`of two LEDs with a temperature sensor on the same substrate as the LEDs. But
`
`Cheung did not disclose a thermal mass, so it measured ambient temperature of the
`
`sensor. Thus, Cheung is at least concerned with the same problem as the ‘127 patent.
`
`The Examiner allowed the ‘127 patent over Cheung. Apple fails to squarely address
`
`the Examiner’s allowance of the claims over Cheung because it exposes the
`
`weaknesses in Apple’s art.
`
`II. TECHNOLOGICAL BACKGROUND
`
`A.
`
`Pulse Oximetry
`
`Pulse oximetry is a noninvasive method of measuring physiological
`
`parameters in a patient’s blood by transmitting light into a tissue site (such as a
`
`finger) and measuring the light after it has passed through the tissue. EX2002 ¶6;
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`-3-
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`

`

`IPR2022-01299
`Apple Inc. v. Masimo Corporation
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`EX1001, 2:14-24. Figure 1 of the ’127 patent depicts a pulse oximeter with a sensor
`
`attached to a patient’s finger.
`
`
`
`EX2002 ¶6; EX1001, Fig. 1.
`
`In a typical pulse oximeter, the finger assembly that attaches to a patient’s
`
`finger contains: (1) two light sources, generally light-emitting diodes (LEDs), and
`
`(2) a sensor with a light detector (generally a photodetector), as shown below:
`
`
`
`
`
`Top view of sensor
`
`Bottom view of sensor
`
`EX2002 ¶7.
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`-4-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
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`Oxygen saturation (“SpO2”) is a parameter measured noninvasively by pulse
`
`oximeters. EX2002 ¶7. For an oxygen-saturation measurement using pulse
`
`oximetry, a sensor with LEDs typically transmits red and infrared light into the
`
`patient’s finger. Id. Some of the transmitted light is absorbed by the tissue and
`
`pulsating blood flow in the finger. Id. Bright red oxygenated blood absorbs light
`
`differently than dark red deoxygenated blood. Id. A light detector in the sensor
`
`measures the intensity of the light (i.e, amplitude) from both wavelengths after it
`
`passes through the tissue. Id. The picture below generally illustrates the amplitudes
`
`of a typical red and infrared signal over time.
`
`
`
`EX2051 ¶23.
`
`The ratio of the amplitude of the measured intensity of the light detected at
`
`the red wavelength compared to light detected at the infrared wavelength indicates
`
`the level of oxygen saturation. EX2002 ¶8.
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`-5-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
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`Thus, for pulse oximetry, the amplitude of each signal is crucial. Id. Assuring
`
`the amplitude of each signal is accurately processed is very different and much more
`
`difficult than detecting a pulse for pulse rate. Id. For pulse rate detection, a device
`
`need only measure the time it takes a signal to fluctuate over a cycle. Id.
`
`B.
`
`The Claimed Invention
`
`As a leading innovator in pulse oximeters, Masimo has been issued hundreds
`
`of patents for oxygen-saturation measurement using pulse oximeters. EX2002 ¶9.
`
`For example, Masimo engineers were the first to develop pulse oximeters that could
`
`accurately measure oxygen saturation while a patient is moving. Id.
`
`Masimo’s pulse-oximetry algorithms were already extremely accurate in
`
`measuring oxygen saturation before the ’127 patent invention. Id. ¶10. So,
`
`Masimo’s pulse oximeters do not use the invention claimed in the ’127 patent to
`
`measure oxygen saturation. Id. However, the ’127 patent provides a benefit,
`
`particularly for others with less advanced algorithms and sensors. Id.
`
`The ’127 patent arose from Masimo’s research and development of a light-
`
`based sensor to non-invasively measure much more difficult parameters, such as
`
`carboxyhemoglobin, beyond those traditionally measured by pulse oximetry. Id.
`
`¶11. Non-invasive measurement of carboxyhemoglobin was sought after because it
`
`allows early detection and treatment of carbon monoxide poisoning. Id. ¶¶12-15.
`
`However, before the ’127 patent, no company had been able to make that
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`-6-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
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`measurement. Id. ¶15. To this day, no other company offers a competitive product.
`
`Id.
`
`Masimo spent years researching the feasibility of non-invasively measuring
`
`carboxyhemoglobin (HbCO). ¶¶16-21. After extensive experimentation, Masimo
`
`concluded it was feasible to measure carboxyhemoglobin, methemoglobin, and total
`
`hemoglobin. Id. ¶17. To measure these parameters, Masimo used eight or more
`
`wavelengths of light, rather than the two wavelengths used for oxygen saturation.
`
`Id. ¶18. The technology is called rainbow® because the sensors use many colors or
`
`wavelengths of light. Id.
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`-7-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
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`To address this error, Masimo considered directly measuring the LED
`
`temperature to calculate the wavelength shift. Id. ¶32. Masimo explored measuring
`
`an LED’s internal temperature, called the junction temperature. Id. The inventors
`
`believed this approach was conceptually the simplest and most workable. Id.
`
`However, they later concluded this approach was impractical. Id. ¶33. Indeed, it is
`
`difficult to accurately measure the junction temperature of even a single LED. Id.
`
`A multi-LED sensor greatly compounds this difficulty because each LED will have
`
`a different junction temperature. Id. This would require, at a minimum, a separate
`
`temperature sensor for each LED. Id.
`
`Accordingly, Masimo set out to develop a sensor that could reliably estimate
`
`the operating wavelengths of the multiple LEDs of its rainbow® sensors using a
`
`single temperature measurement. Id. ¶34. Diab designed the rainbow® sensor with
`
`a temperature sensor and metallic layers located within the sensor’s circuit board or
`
`substrate. Id. ¶35. Diab selected the metallic layers so that they would thermally
`
`connect the LEDs and the temperature sensor. Id. The temperature sensor measured
`
`a temperature of the metallic layers, which is not the LED junction temperature and
`
`would never match that temperature. Id. ¶¶35, 36. But the temperature sensor was
`
`still usable to estimate the wavelength for each LED. Id. The ’127 patent calls that
`
`measured temperature a “bulk temperature” because it is used to estimate the
`
`-8-
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`

`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`
`wavelengths of multiple LEDs, not just one LED. Id. ¶55. The ’127 patent calls
`
`Diab’s metallic layers a “thermal mass.” EX1001, 11:10-13.
`
`Measuring a bulk temperature of a thermal mass and using the measured bulk
`
`temperature to estimate the wavelengths of multiple LEDs had not been done before.
`
`Id. ¶36. It was not apparent to Diab that measuring the temperature of the thermal
`
`mass would work. Id. Diab himself was skeptical because he knew that each LED
`
`would have a different junction temperature and thus a different wavelength
`
`variation with temperature. Id. Thus, Diab knew that a single temperature
`
`measurement could not possibly match all of the junction temperatures. Id.
`
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`IPR2022-01299
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Apple Inc. v. Masimo Corporation
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
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`In a sensor with multiple LEDs, the temperatures of each LED will differ. Id.
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`¶45. However, Diab found that temperature of a properly designed thermal mass
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`will correlate with the temperatures of each of the LEDs. Id. This allows a sensor
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`to use the measured temperature of the thermal mass to reliably estimate the
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`operating wavelengths of the LEDs. Id.
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
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`The ’127 patent describes and claims Masimo’s solution. The ’127 patent’s
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`Figure 12 (simplified) illustrates basic aspects of the claimed invention.
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`EX1001, Fig. 12; EX2002 ¶55; EX2051 ¶32.
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`Figure 12 shows the light emitters (yellow) on the substrate emitting optical
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`radiation (light) and transferring thermal energy to the thermal mass of the substrate
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`(orange). EX2002 ¶55. A temperature sensor (green) on the substrate is also
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`connected to the thermal mass of the substrate. Id. The temperature sensor measures
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`a bulk temperature (“T = Tb”). Id.
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`-12-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
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`Each claim of the ’127 patent includes a thermal mass disposed within the
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`substrate thermally coupled to the LEDs and a temperature sensor. The temperature
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`sensor measures a single temperature that the sensor uses to estimate the operating
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`wavelengths of all LEDs. EX1001, 10:22-48. The independent claims other than
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`claim 20 recite that the measured temperature is a “bulk temperature.” The ’127
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`patent explains the thermal mass stabilizes the bulk temperature “so that the
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`thermistor measurement of bulk temperature is meaningful.” Id., 10:67-11:4. In the
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`context of the ’127 patent, the bulk temperature is meaningful because it allows
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`reliable estimation of the LED operating wavelengths. Id., 10:32-39, Claim 7;
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`EX2051 ¶33. The invention allows the measurement of HbCO, “oxygen
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`saturation[,] and pulse rate with increased accuracy or robustness.” EX1001, 5:5-
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`22.
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`As Diab explains, proper sensor design involves a balance between
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`conducting heat energy from the LEDs to the thermistor so that the measured
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`temperature will track changes to LED temperature and storing heat energy so that
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`the measured temperature will not fluctuate too much and be inaccurate. EX2002
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`¶57. As Goldberg explains, a circuit board that stores too much or too little heat
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`energy or that is too thermally conductive or not thermally conductive enough would
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`not function as the claimed thermal mass. EX2051 ¶35. Accordingly, a POSITA
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
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`would not reasonably expect that an off-the-shelf multi-layer metallized circuit
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`board would function as the claimed thermal mass. Id.
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`The Examiner properly allowed the claims of the ’127 patent over prior-art
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`pulse oximeters. EX1002, 68-75. The Examiner found prior art that used
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`temperature sensors to compensate for wavelength shift. See, e.g., EX1007. One
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`such reference was Cheung. Id. The Examiner analyzed Cheung in detail. EX1002,
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`68-75. Shown below is an annotated Figure 11 from Cheung, with an exploded view
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`of Cheung’s sensor next to an enlarged view of the LED emitter portion.
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`EX1007, Fig. 11 (annotated).
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
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`A POSITA would understand the enlarged portion as showing a temperature
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`sensor 50 and LEDs 40, 42 mounted to a substrate (in blue) that has some mass.
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`EX2051, ¶36. Cheung alleges that its temperature sensor when used with a coding
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`resistor can be used to accurately determine the LEDs wavelengths. Id.; EX1007,
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`13:20-33. However, the Examiner found that Cheung does not have a thermal mass
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`disposed within a substrate. EX1002, 73. Thus, Cheung’s temperature sensor
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`cannot measure a bulk temperature of a thermal mass. EX2051, ¶36. Because
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`Cheung’s temperature sensor is not attached to a thermal mass in the substrate,
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`Cheung’s temperature sensor measures the ambient temperature of the sensor
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`assembly only. EX1007, 13:26-27, 19:31-33. Thus, any similarity between the ’127
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`patent and Cheung diverges in light of the lack of a thermal mass in Cheung.
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`Multiple prior-art references, including Webster (describing Cheung) and
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`Huiki, further discouraged the use of temperature sensors as unreliable and
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`encouraged the use of alternative methods. EX2051 ¶37. Accordingly, without the
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`benefit of hindsight, a POSITA would not have expected that measuring the
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`temperature of a thermal mass could be used to reliably estimate multiple LED
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`operating wavelengths. Id. No prior art suggested that measuring the temperature
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`of a thermal mass in the substrate could be used to reliably estimate LED
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`wavelengths. Id.
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`-15-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
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`III. CLAIM CONSTRUCTION
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`A. The Petition violates 37 C.F.R. § 42.104(b)(3).
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`A petition should identify “[h]ow the challenged claim is to be construed.” 37
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`C.F.R. § 42.104(b)(3). For example, the petitioner must include a statement
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`identifying a proposed construction if a claim term requires an express construction.
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`Trial Practice Guide at 44.
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`Apple’s Petition does not meet this requirement. While Apple acknowledges
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`the claims should be construed under the Phillips standard, it offers no construction.
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`Pet., 8. Apple offers two excuses for its failure:
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`Here, based on the evidence below and [1] the prior art’s description
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`of the claimed elements being similar to that of the ’127 Patent
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`specification, Petitioner submits that no formal claim constructions are
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`presently necessary because [2] “claim terms need only be construed
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`to the extent necessary to resolve the controversy.”
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`Id. (emphases added). The Board should reject both excuses.
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`First, the alleged similarity of prior-art descriptions with the patent
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`specification does not obviate the need for claim construction. Moreover, Apple
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`never explains what prior-art descriptions are supposedly similar to terms in the
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`patent specification. Also, that comparison is wrong because Apple should have
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`compared the prior art to the ’127 patent claim language.
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`-16-
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
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`Second, at least “thermal mass” and “bulk temperature” should be construed
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`to address patentability, as demonstrated by the parties’ dispute in the ITC. Apple
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`relied on particular constructions of “thermal mass” and “bulk temperature” to
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`address validity and infringement. EX1012, 213-215. Apple argued that the
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`“claimed ‘thermal mass’ does not refer to the physical property of ‘thermal mass’
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`that is possessed by all objects with mass, because that would render the limitation
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`meaningless.” EX1012, 213. Accordingly, Apple relied on the specification of the
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`’127 patent to argue that “the ‘thermal mass’ is a component that stabilizes a bulk
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`temperature.” Id. Apple further argued that “the claimed ‘thermal mass’ stabilizes
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`a bulk temperature, and the thermistor is then able to meaningfully measure that
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`‘bulk temperature.’” Id. In view of this claim construction, Apple asserted that, to
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`prove that an object is a “thermal mass” for infringement, “some form of experiment,
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`simulation, or emulation” would be needed to determine “whether an object …
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`actually stabilizes the temperature.” Id. After advocating a construction to contest
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`infringement, Apple cannot now avoid offering its claim construction for
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`patentability.
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`Apple proposed multiple constructions for “bulk temperature” in the
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`Investigation. Apple argued “bulk temperature” is “different from a regular
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`temperature measurement by a temperature sensor.” Id., 215. Apple also asserted
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`that “the specification distinguishes a measurement of ‘bulk temperature’ (Tb) from
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`IPR2022-01299
`Apple Inc. v. Masimo Corporation
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`a local temperature measurement at one point on the array, e.g., the temperature of
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`a single light emitter (Ta).” Id. Apple further argued that “the term ‘bulk
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`temperature’ follows the ordinary usage of the adjective ‘bulk,’ which is the majority
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`or greater part.” Id. Apple also argued the “bulk temperature” is an “average
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`temperature” or “a representative temperature of the whole bulk.” Id. After
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`advocating a variety of constructions to contest infringement, Apple cannot now
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`avoid claim construction altogether.
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`Masimo disputed Apple’s constructions because they are inconsistent with the
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`intrinsic record. Relying on the claim language and specification, Masimo explained
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`that (1) a “thermal mass” is “a mass that provides a bulk temperature that can be
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`used to reliably estimate the operating wavelengths of the LEDs” and (2) a “bulk
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`temperature” is “a single temperature used to estimate the operating wavelengths of
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`all the LEDs.” EX2011, 240-247.
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`The parties’ extensive claim construction arguments before the ITC
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`demonstrate that “thermal mass” and “bulk temperature” should be subject to a
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`proper claim construction analysis of the claim language and specification. In view
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`of the arguments in the Investigation, Apple knew full well th

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