UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
`
`v.
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`MASIMO CORPORATION,
`Patent Owner.
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`
`
`Case IPR2022-01299
`U.S. Patent 7,761,127
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`PETITIONER’S OBSERVATIONS REGARDING
`CROSS-EXAMINATION TESTIMONY OF DR. WILLIAM KING
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
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`
`
`Case IPR2022-01299
`U.S. Patent 7,761,127
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`PETITIONER’S OBSERVATIONS REGARDING
`CROSS-EXAMINATION TESTIMONY OF DR. WILLIAM KING
`
`
`
`APPLE-1001
`
`APPLE-1002
`
`APPLE-1003
`
`APPLE-1004
`
`
`APPLE-1005
`
`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
`
`Proceeding No.: IPR2022-01299
`Attorney Docket: 50095-0046IP1
`
`PETITIONER’S EXHIBITS LIST
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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]
`
`i
`
`
`
`APPLE-1016
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`APPLE-1017
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`APPLE-1018
`
`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
`
`Proceeding No.: IPR2022-01299
`Attorney Docket: 50095-0046IP1
`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)
`ii
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`
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`APPLE-1024
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`APPLE-1025
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`Proceeding No.: IPR2022-01299
`Attorney Docket: 50095-0046IP1
`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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`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
`
`iii
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`
`
`Proceeding No.: IPR2022-01299
`Attorney Docket: 50095-0046IP1
`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”)
`
`Transcript of Second Deposition of William P. King, Ph.D.
`(November 3, 2023)
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`APPLE-1059
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`APPLE-1060
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`APPLE-1061
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`APPLE-1062
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`iv
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`Proceeding No.: IPR2022-01299
`Attorney Docket: 50095-0046IP1
`Pursuant to the Board’s Order of September 21, 2023 (Paper 51), Petitioner
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`Apple Inc. submits the following observations on the cross-examination testimony
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`of Dr. William King taken by deposition on Nov. 3, 2023. See APPLE-1062.
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`OBSERVATION 1:
`In APPLE-1062 at 18:8-15, in response to questions relating to ¶39 of
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`Oldham (APPLE-1050), Dr. King testified that “Oldham teaches that you can
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`derive, calculate, or estimate an operating temperature even when there are
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`intervening thermal masses.” In APPLE-1062 at 20:8-13, Dr. King testified that
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`“[t]he way that Oldham uses ‘thermal mass’ refers to objects that affect heat
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`transfer or interfere with heat transfer.” In APPLE-1062 at 22:15-22, in response
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`to questions relating to Oldham’s “metal plate” disposed in a PCB (Oldham, ¶34),
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`Dr. King testified that “Oldham refers broadly to any object that can affect heat
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`transfer; so in a situation where the metal plate is affecting heat transfer, then it is
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`[a] thermal mass, according to Oldham.” APPLE-1062, 18:8-22:22. This
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`testimony is relevant to Dr. King’s assertion at ¶12 of his second declaration
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`(MASIMO-2194) that “Oldham uses ‘thermal mass’ differently than the ’127
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`Patent” because it shows that Oldham discloses a thermal mass in the form of a
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`metal plate disposed in a PCB similar to the “metallized” thermal mass disposed
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`within substrate 1200 of the ’127 Patent and the metal sheet (thermal core) in the
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`Yamada-Chadwick combinations. APPLE-1001, 10:66, 11:15, FIG. 14.
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`1
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`Proceeding No.: IPR2022-01299
`Attorney Docket: 50095-0046IP1
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`OBSERVATION 2:
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`In APPLE-1062 at 20:14-21, when asked whether Oldham’s thermal mass
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`can be other things besides “air,” Dr. King testified that “[t]he thermal mass could
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`be any object that affects or interferes with heat transfer.” This testimony is
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`relevant to the identification of “air” as a thermal mass at page 14 of the Patent
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`Owner’s Response because it shows that Oldham’s disclosure of a thermal mass is
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`not limited to “air.” POR, p. 14.
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`OBSERVATION 3:
`In APPLE-1062 at 9:19-10:5, when asked whether Dr. King’s second
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`declaration (MASIMO-2194) that Patent Owner submitted in support of its Sur-
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`Reply was Dr. King’s “first opportunity to address Oldham [APPLE-1050] in this
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`proceeding,” Dr. King testified that he had previously “cited Oldham as an
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`example of a temperature regulating system” in his first declaration (MASIMO-
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`2151) that Patent Owner submitted in support of its Patent Owner’s Response.
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`This testimony is relevant to Dr. King’s assertion in ¶7 of his second declaration
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`that “Apple first relied on Oldham in its Reply.” This testimony is relevant
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`because it shows that Dr. King, not Apple, first raised Oldham in this proceeding.
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`OBSERVATION 4:
`In APPLE-1062 at 10:6-11:7 and 11:14-12:9, in response to questions
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`relating to Apple’s reliance on Oldham in IPR2022-01300, which was
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`2
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`Proceeding No.: IPR2022-01299
`Attorney Docket: 50095-0046IP1
`discretionarily denied institution, Dr. King testified that he “did not” review, nor
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`did he “seek” to review, Apple’s petition from IPR2022-01300 before submitting
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`his first declaration (MASIMO-2151) in this proceeding. This testimony is
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`relevant to Dr. King’s assertion in ¶7 of his second declaration (MASIMO-2194)
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`that “this declaration is my first chance to respond to Apple’s and Dr. Anthony’s
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`new unpatentability arguments relying on Oldham” because it shows that Apple’s
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`positions regarding Oldham were accessible to Dr. King before he characterized
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`Oldham in his first declaration (MASIMO-2194).
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`OBSERVATION 5:
`In APPLE-1062 at 11:8-12:9, Dr. King testified that he was “aware” that he
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`was not the first expert whose declaration testimony Patent Owner submitted in
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`this proceeding1, but Dr. King did not “recall reviewing” the prior expert’s
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`declaration and was not aware that the prior expert had previously addressed
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`Oldham in his declaration testimony in this proceeding. This testimony is relevant
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`to Patent Owner’s assertions in the Sur-Reply at pp. 12-13 that Oldham is a “new
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`reference[] [that] should not be considered” because his second declaration was not
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`Dr. King’s first opportunity to respond to Apple’s positions on Oldham.
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`1 Masimo previously submitted a declaration from Dr. Jack Goldberg (EX-2051).
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`3
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`Proceeding No.: IPR2022-01299
`Attorney Docket: 50095-0046IP1
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`OBSERVATION 6:
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`In APPLE-1062 at 25:14-26:6, when asked whether a POSITA would know
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`how to correlate an operating temperature of an LED with the wavelength of the
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`LED (in relation to ¶39 of Oldham), Dr. King testified that “[i]f a POSITA had an
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`accurate measurement” “of the LED temperature,” “then that measurement could
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`be used to calculate a wavelength of an LED.” In APPLE-1062 at 24:7-14, when
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`asked whether it was well understood before the ’127 Patent that a relationship
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`exists between the operating temperature of an LED and its wavelength, Dr. King
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`testified that “yes, this was known.” This testimony is relevant to Dr. King’s
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`assertion that “Oldham doesn’t provide connectivity between” the concepts
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`disclosed in ¶¶39 and 41 of Oldham (see APPLE-1062, 31:3-14) because it shows
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`that the operating temperature of the LED(s) as discussed in ¶39 would be known
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`to correlate with the operating wavelength(s) of the LED(s) as discussed in ¶41.
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`OBSERVATION 7:
`
`In APPLE-1062 at 27:22-28:12, when asked about Oldham’s teaching at ¶38
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`that the “temperature regulating system can maintain the operating temperature of
`
`the LED such that the operating temperature … does not fluctuate by more than
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`10° C. during operation, for example,” and whether the wavelength of the LED
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`would fluctuate across the range of 10° C, Dr. King testified that “it’s known that
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`there’s a property of LEDs … that if their temperature changes, then their
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`4
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`Proceeding No.: IPR2022-01299
`Attorney Docket: 50095-0046IP1
`wavelength will shift, so that’s a generally known property, and there’s a
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`relationship between the temperature and the wavelength shift.” This testimony is
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`relevant because it contradicts Dr. King’s assertion in paragraph 11 of his second
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`declaration (MASIMO-2194) that paragraphs 38-39 in Oldham are merely
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`concerned with “thermal masses” that “facilitate the temperature regulating
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`system’s thermal function of maintaining various system components at constant
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`temperature” for which wavelength shift compensation would be inapplicable.
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`OBSERVATION 8:
`
`In APPLE-1062 at 32:20-33:5, Dr. King acknowledged that ¶41 of Oldham
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`starts with the phrase “[a]ccording to various embodiments” and “does not use the
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`word ‘alternative.’” In APPLE-1062 at 33:6-9, Dr. King agreed that “Oldham uses
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`the phrase ‘according to various embodiments’ many times throughout its
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`disclosure” including “at least several” times on the same page of Oldham as ¶41.
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`In APPLE-1062 at 34:2-7, Dr. King testified that “in some cases, the phrase
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`‘various embodiments’ is used to introduce new ideas in Oldham; and in other
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`cases it provides connectivity between different paragraphs.” This testimony is
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`relevant to the credibility of Dr. King’s assertion in paragraph 13 of his second
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`declaration (MASIMO-2194) that “[a] POSITA would have understood that
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`Paragraph 41 discloses an alternative embodiment that is not the temperature
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`regulating system described by many paragraphs in Oldham.”
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`5
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`Proceeding No.: IPR2022-01299
`Attorney Docket: 50095-0046IP1
`
`OBSERVATION 9:
`
`In APPLE-1062 at 43:21-44:11, in response to questions relating to Muthu’s
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`(APPLE-1051) disclosure in Section VII (Summary, p. 6), that “A feedback
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`control system using temperature feed-forward compensation and flux feedback
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`achieves the required level of color control and a relatively high product yield of
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`over 80% for typical variation in LED characteristics,” Dr. King testified that “the
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`temperature measurements of the heat sink … is part of the feedback control
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`system that achieves color control in this particular problem.” This testimony is
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`relevant to assertions in the Sur-Reply that “Muthu’s temperature-compensation
`
`technique performs very poorly” and “[t]hat unacceptable performance indicates
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`Muthu’s heat sink is not a ‘thermal mass’ and would discourage a POSITA from
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`using heat-sink temperature to estimate LED wavelengths.” Sur-Reply, 17-18.
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`This testimony is relevant because, like claims of the ’127 Patent, Muthu’s
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`compensation feedback is not limited to temperature alone.
`
`OBSERVATION 10:
`
`In APPLE-1062 at 51:12-52:12, in response to questions as to whether Dry’s
`
`(APPLE-1052) heat sink 101 would have a resistance to temperature change on a
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`scale that would allow it to perform the functions stated in paragraph 34 of
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`monitoring the temperature of LEDs 109, Dr. King testified that “[t]he heat sink
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`has been engineered to remove heat from the LEDs, and so the goal of the thermal
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`6
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`Proceeding No.: IPR2022-01299
`Attorney Docket: 50095-0046IP1
`design is to minimize the thermal resistance between the LEDs and the coolant. …
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`[T]here’s a finite temperature resistance between any two objects in the universe,
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`… but that’s different than saying that the heat sink has been designed to provide a
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`tailored resistance to support the LED temperature measurement.” This testimony
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`is relevant to Masimo’s assertion in the Sur-Reply that Chadwick’s “cooling”
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`function “is not the required temperature-change resistance function” for
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`estimating LED wavelengths because it demonstrates Masimo’s and Dr. King’s
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`focus on “design” intent rather than the multiple possible functions of a heat sink.
`
`OBSERVATION 11:
`
`In APPLE-1062 at 60:16-61:6, Dr. King testified that Noguchi (APPLE-
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`1008) does not describe its wavelength compensation techniques in the context of a
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`physiological sensor. This testimony is relevant to assertions in the Patent
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`Owner’s Sur-Reply that a POSITA seeking to improve Yamada’s pulse oximeter
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`would not turn to Muthu, Dry, Littleton, or Man because they are not directed to
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`“physiological sensors.” Sur-Reply, 16-18. This testimony is relevant the
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`credibility of these assertions in the Sur-Reply because Dr. King testifies that a
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`POSITA would have relied on Noguchi to improve physiological sensors
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`(MASIMO-2194, ¶¶17, 22, 29), and Dr. King relies on Noguchi to inform the state
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`of the art in his first declaration (MASIMO-2151, ¶¶54, 240).
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`7
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`Proceeding No.: IPR2022-01299
`Attorney Docket: 50095-0046IP1
`Respectfully submitted,
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`Dated 11/10/2023
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`/Nicholas W. Stephens/
`Nicholas Stephens, Reg. No. 74,320
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
`
`8
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`Proceeding No.: IPR2022-01299
`Attorney Docket: 50095-0046IP1
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`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on November 10, 2023, a complete and entire copy of this Petitioner’s
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`Observations Regarding Cross-Examination Testimony of Dr. William King and
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`its supporting exhibit were provided via email to the Patent Owner by serving the
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`email correspondence addresses of record as follows:
`
`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)
`Jeremiah S. Helm (Pro Hac Vice)
`
`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
`
`
`
`
`
`
`
`/Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`bradley@fr.com
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`9
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