throbber
Apple Inc. (Petitioner)
`v.
`Masimo Corp. (Patent Owner)
`
`Petitioner’s Demonstratives
`
`Case No. IPR2022-01299
`U.S. Patent No. 7,761,127
`Before Hon. JOSIAH C. COCKS, GEORGE R. HOSKINS, and ROBERT A. POLLOCK
`Administrative Patent Judges
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`1
`
`1
`
`APPLE 1063
`Apple v. Masimo
`IPR2022-01299
`
`

`

`Table of Contents
`
`Section
`
`Slide
`
`'127 Patent Overview
`
`Yamada-Chadwick Combinations
`
`Masimo's Objections
`
`Objection 1: Monitoring LED Temps. Based on Core Temperatures was not Speculative
`
`Objection 2: The Thermal Core is Not Limited to a Cooling Function
`
`Objection 3: The Combinations Do Not Require Bodily Incorporation of Chadwick's Core
`
`Objection 4: A POSITA Would Have Known How to Implement a Thermal Mass
`
`Objection 5: The Prior Art Does Not Teach Away
`
`Objection 6: Attempts to Undermine Obviousness Based on Yamada’s Heat Conductor 132 Fail
`
`Claim Construction
`
`"A Thermal Mass“ is Rendered Obvious
`
`"Bulk Temperature" Limitations are Rendered Obvious
`
`Secondary Considerations Evidence Fails to Demonstrate Non-Obviousness
`
`3
`
`14
`
`29
`
`32
`
`44
`
`50
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`56
`
`63
`
`71
`
`75
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`98
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`103
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`107
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`2
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`

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`’127 Patent Overview
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`3
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`3
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`Overview of the ’127 Patent
`
`• The ’127 Patent was filed March 1,
`2006, and its earliest claimed priority
`date is March 1, 2005.
`
`• The ’127 Patent includes 30 claims.
`
`• The Petition challenges claims 1-30, of
`which claims 1, 7, 13, 20, and 26 are
`independent.
`
`APPLE-1001 (’127 Patent), Cover Page
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`4
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`

`

`Overview of the ’127 Patent
`
`APPLE-1001, 10:21-39.
`
`Paper 46 (Reply), 21-22.
`
`Paper 2 (Petition), 20-21.
`
`APPLE-1001, 10:62-11:15.
`
`Paper 46 (Reply), 21-22.
`
`Paper 2 (Petition), 20-21.
`
`
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`Overview of the ’127 Patent
`
`APPLE-1001, FIG. 12.
`
`Paper 2 (petition), 5.
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`Overview of the ’127 Patent
`
`APPLE-1001, FIG. 14.
`
`Paper 2 (petition), 6.
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`Overview of the ’127 Patent
`
`REDACTED
`
`APPLE-1056 (Diab Depo.), 86:4-87:4.
`
`Paper 46 (Reply), 21-22.
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`8
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`Overview of the Challenged Claims
`
`Claim 7
`
`APPLE-1001, cl. 7.
`Paper 2 (Petition), 18-27.
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`Overview of Challenged Claims
`
`Claim 13
`
`Claim 20
`
`APPLE-1001, cl. 13.
`
`Paper 2 (Petition), 39-45.
`
`APPLE-1001, cl. 20.
`
`Paper 2 (Petition), 47-48.
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`Overview of the Challenged Claims
`
`Claim 1
`
`Claim 26
`
`APPLE-1001, cl. 1.
`
`Paper 2 (Petition),56-59.
`
`APPLE-1001, cl. 26.
`Paper 2 (Petition), 61-62.
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`11
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`

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`Overview of Instituted Grounds
`
`Paper 2 (Petition), 2.
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`Overview of Instituted Grounds
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`13
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`Paper 2 (Petition), 2.
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`Yamada-Chadwick Combinations
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`14
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`14
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`Yamada
`
`Yamada Discloses an Optical Probe for Pulse Oximetry Having a Pair
`of LEDs and a Temperature Sensor Mounted on the Same PCB
`
`APPLE-1004, FIG. 5 (annotated).
`
`Paper 2 (Petition), 10.
`
`APPLE-1055, ¶25
`APPLE-1004, FIG. 19 (annotated).
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`APPLE-1004, FIG. 1
`
`

`

`Chadwick
`
`Chadwick Discloses a Thermal Core (Metal Sheet) in a PCB that Conducts
`Heat Away from Electronic Components Mounted to the Surface of the PCB
`
`APPLE-1005, FIG. 11 (annotated).
`Paper 2 (Petition), 13.
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`Yamada-Chadwick
`
`Proposed Combination: Integration within Yamada’s Substrate of a Thermal
`Core Based on Chadwick
`
`Metal sheet (thermal core)
`disposed within Yamada’s substrate
`
`Metal sheet 10
`
`APPLE-1005, FIG. 11 (annotated).
`
`Paper 2 (Petition), 13.
`
`APPLE-1004, FIG. 19 (annotated).
`
`Paper 2 (Petition), 10.
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`17
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`

`Yamada-Chadwick
`
`Proposed Combination: Integration within Yamada’s Substrate of a Thermal
`Core Based on Chadwick
`
`Dr. Anthony:
`
`Institution Decision:
`
`APPLE-1003, ¶ 41.
`Paper 46 (Reply), 19, 21.
`
`
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`Paper 21 (ID), 28.
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`18
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`

`Yamada-Chadwick
`
`Multiple Reasons Would Have Motivated a POSITA to Integrate a Thermal
`Core within Yamada’s Substrate Based on Chadwick
`
`1.
`
`2.
`
`3.
`
`4.
`
`“[R]educ[e] the amount of heat transmitted to the patient and increase[e] the
`‘exposure time’ by which the patient can don the sensor without discomfort
`or safety-related concerns.”
`
`“[M]itigate heat-induced spectral shifts in the wavelengths of light emitted by
`LEDs 111, 112.”
`
`“[O]btain a measurement indicative of not just a temperature of the thermal
`core but also of the LEDs 111, 112.”
`
`“Augment the ability of heat conductor 132 to draw heat away from LEDs
`111, 112, or [] provide an alternative to heat conductor 132 for drawing heat
`away from LEDs 11, 112.”
`
`APPLE-1003, ¶ 43-47.
`Paper 2 (Petition), 15-17.
`
`
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`Yamada-Chadwick
`
`The Institution Decision Found Patent Owner’s Arguments Challenging the
`Petition’s Motivations to Combine Unpersuasive
`
`Institution Decision:
`
`Re: Motivation 1
`
`Re: Motivation 2
`
`Paper 21 (ID), 28-29.
`
`Paper 21 (ID), 29.
`
`
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`Noguchi
`
`APPLE-1008, 1:6-12.
`
`APPLE-1008, 2:20-32.
`
`Paper 46 (Reply), 14.
`
`APPLE-1008, FIG. 1.
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`Yamada-Chadwick-Noguchi
`
`Dr. Anthony:
`
`APPLE-1003, ¶ 132.
`
`Paper 2 (Petition), 53-54.
`
`
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`Yamada-Chadwick-Noguchi
`
`Dr. Anthony:
`
`Paper 2 (Petition), 54.
`
`APPLE-1003,¶ 133.
`
`Institution Decision:
`
`
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`Paper 21 (ID), 34
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`23
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`Cheung
`
`APPLE-1007, FIG. 11 (annotated).
`
`Paper 37 (POR), 21.
`
`APPLE-1007, Abstract.
`Paper 2 (Petition), 36.
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`Yamada-Chadwick-Cheung
`
`Dr. Anthony:
`
`APPLE-1003, para. 89.
`
`Paper 46 (Reply), 12.
`
`Paper 2 (Petition), 37-38.
`
`
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`Yamada-Chadwick-Cheung
`
`Dr. Anthony:
`
`APPLE-1003, ¶ 90.
`Paper 2 (Petition), 37-38.
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`Leibowitz
`
`APPLE-1006, 1:56-64.
`Paper 2 (Reply), 29.
`
`APPLE-1006, 3:56-67.
`Paper 2 (Reply), 33.
`
`APPLE-1003, ¶ 32.
`Paper 2 (Petition), 29-30.
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`Yamada-Chadwick-Leibowitz
`
`Dr. Anthony:
`
`
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`28
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`APPLE-1003, ¶74.
`Paper 2 (Petition), 30-31.
`
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`

`Masimo’s Objections
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`29
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`Overview of Masimo’s Objections to the Prior Art Combinations
`
`1.
`
`“Even if a POSITA would have desired to add some form of wavelength-shift
`compensation to Yamada and Chadwick, the prior art would have motivated
`the POSITA to use ambient temperature, drive currents, or forward voltage
`drop to perform such compensation” Paper 37 (POR), 52.; “there would have
`been no reason to try a speculative method–measuring a bulk temperature–
`that may not even have indicated an approximate or average LED
`temperature” Paper 37 (POR), 62.
`
`2. Chadwick’s metal core provides a mere “cooling function is different from
`resisting temperature change on a scale relevant to estimating LED
`wavelengths.” Paper 37 (POR), 33, 35.
`
`3.
`
`“Apple does not propose any modifications to Yamada’s substrate or
`Chadwick’s metal core that would make either a ‘thermal mass’“ (POR, 42)
`and “[d]issipating heat … is the only thermal function Apple relies on for the
`“thermal mass” limitation.” Paper 37 (POR), 35.
`
`
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`Overview of Masimo’s Objections to the Prior Art Combinations
`
`4.
`
`“Apple conducted no testing, simulations, or assessment showing Chadwick
`discloses the required temperature-change resistance.” Paper 37 (POR), 41.
`
`5.
`
`“The prior art teaches away from the invention.” Paper 37 (POR), 51.
`
`6.
`
`“Adding Chadwick’s core to Yamada as a heat sink would not have motivated
`any combination yielding the invention” because “Yamada’s heat conductor
`132[] … already serves that purpose.” Paper 37 (POR), 57.
`
`
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`Masimo’s 1st Objection is Baseless
`
`Monitoring LED Temperatures Based on Core
`Temperatures was not Speculative
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`32
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`32
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`

`Masimo Wrongly Asserts that the use of a Bulk Temperature from a Thermal
`Core to Indicate LED Temperatures Was “Speculative”
`
`Masimo (POR):
`
`Paper 37 (POR), 62.
`
`Paper 37 (POR), 52.
`
`
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`Paper 37 (POR), 16.
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`33
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`

`

`Dr. King Wrongly Asserts that the use of a Bulk Temperature from a Thermal
`Core to Indicate LED Temperatures Was Counter-Intuitive
`
`Dr. King:
`
`EX2151, ¶55.
`
`Paper 46 (Reply), 13.
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`

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`Masimo and Dr. King Err in Characterizing the State of the Art
`
`The “law impose[s] upon the hypothetical person of ordinary
`skill in the art … knowledge of all the contents of the relevant
`prior art.”
`
`In re Carlson, 983 F.2d 1032, 1037-38 (Fed. Cir. 1993)
`
`Paper 46 (Reply), 17.
`
`Dr. Anthony:
`
`
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`35
`
`APPLE-1055, ¶29.
`Paper 46 (Reply), 16.
`
`

`

`Cheung and Noguchi
`
`Dr. Anthony:
`
`
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`36
`
`APPLE-1055, ¶30.
`Paper 46 (Reply), 15.
`
`

`

`Noguchi Discloses Remote Sensing of Multiple LEDs
`
`Noguchi:
`
`Dr. Anthony:
`
`APPLE-1008, 2:20-32.
`
`Paper 46 (Reply), 14.
`
`APPLE-1055, ¶ 76.
`
`Paper 46 (Reply), 14.
`
`
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`

`Additional References Corroborate Advanced State of the Art
`
`Dr. Anthony:
`
`APPLE-1055, ¶30.
`Paper 46 (Reply), 15.
`
`
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`

`Oldham
`
`APPLE-1050, ¶¶ 39, 41, FIG. 1; Reply, 17-18.
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`

`Oldham:
`
`Oldham
`
`Dr. King:
`
`APPLE-1050, ¶ 34, FIG. 1; Paper 59 (Observations), 1.
`
`APPLE-1062, 22:15-22; Paper 59 (Observations), 1.
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`

`Muthu
`
`Muthu:
`
`APPLE-1051, 336.
`Paper 46 (Reply), 18.
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`41
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`

`

`Dry
`
`Heat Sink 101
`
`Dry:
`
`Temp. Sensor
`301
`
`LEDs 109
`
`APPLE-1052, FIG.1.
`Paper 46 (Reply), 18.
`
`APPLE-1052, ¶32.
`Paper 46 (Reply), 18.
`
`APPLE-1052, ¶33.
`Paper 46 (Reply), 18.
`
`
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`APPLE-1052, ¶34.
`Paper 46 (Reply), 18.
`
`42
`
`

`

`Littleton
`
`Littleton:
`
`LED Array 13
`
`Temp. Sensor 19
`
`APPLE-1054, 3:7-22, FIG. 1.
`
`Paper 46 (Reply), 18.
`
`Copper Plate 17
`
`APPLE-1055, ¶52.
`
`Paper 46 (Reply), 18.
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`

`Masimo’s 2nd Objection is Baseless
`
`The Yamada-Chadwick Thermal Core is Not
`Limited to a Cooling Function
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`

`Dr. King Wrongly Assumes that the Yamada-Chadwick Core Would Provide
`“Exceptional Cooling” Resulting in No Wavelength Shift
`
`Dr. King:
`
`EX2151, ¶153.
`Paper 46 (Reply), 18.
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`Dr. King’s “Scaling Analysis” Fails to Demonstrate “Exceptional Cooling”
`
`Dr. Anthony:
`
`Paper 46 (Reply), 9-10, 20.
`
`APPLE-1055, ¶¶69-70.
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`46
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`

`The Yamada-Chadwick Core Has Substantially the Same Size, Material, and Thermal
`Properties as the Alleged “Thermal Mass” in Masimo’s Early Rainbow® Sensors
`
`REDACTED
`
`APPLE-1055, ¶ 67.
`
`Paper 46 (Reply), 10.
`
`47
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`The Constrained Size and Mass of the Thermal Core in the Yamada-
`Chadwick Combinations Would Not Yield the Alleged “Exceptional Cooling”
`
`Dr. Anthony:
`
`REDACTED
`
`APPLE-1055, ¶ 71.
`Paper 46 (Reply), 20.
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`APPLE-1004, FIG. 1.
`Paper 46 (Reply), 9.
`
`APPLE-1055, ¶71.
`
`

`

`Thermal Cores that Provide a Cooling Function can also Facilitate LED
`Temperature / Wavelength Estimation
`
`Dr. Anthony:
`
`REDACTED
`
`APPLE-1055, ¶79.
`Paper 46 (Reply), 19-20.
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`Masimo’s 3rd Objection is Baseless
`
`The Combinations Do Not Require Bodily
`Incorporation of Chadwick’s Core
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`Masimo is Wrong that “Apple is stuck with Chadwick’s disclosure
`of a core that merely cools electronic components”
`
`Masimo (POR):
`
`Paper 37 (POR), 42.
`
`
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`

`The Petition Explained that the Thermal Core Can be Implemented “In Any
`Suitable Manner” that Allows for Appropriate Heat Transfer
`
`Petition:
`
`Paper 2 (Petition), 15.
`
`
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`

`The Petition Explained that a POSITA Would Implement a Thermal Core in the
`Combinations in a Manner that Would Facilitate LED Temperature Estimations
`
`Petition:
`
`Paper 2 (Petition), 16-17.
`
`
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`53
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`

`The Petition Explained a POSITA Would Integrate a Thermal Core in Combinations with
`Cheung/Noguchi in a Manner that Would Compensate for Temperature/Wavelength Shift
`
`Petition (Cheung):
`
`Petition (Noguchi):
`
`Paper 2 (Petition), 37.
`
`
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`Paper 2 (Petition), 53.
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`54
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`

`Dr. Anthony Explained in his First Declaration That Modifications to the Size
`of the Thermal Core Would Have Been Obvious
`
`Dr. Anthony:
`
`
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`55
`
`APPLE-1003, ¶ 41.
`
`Paper 2 (Petition), 14-15.
`
`

`

`Masimo’s 4th Objection is Baseless
`
`A POSITA Would Have Known How to
`Implement a Thermal Mass to Achieve the
`Function of Estimating LED Temperatures
`and Wavelengths
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`Masimo Argues that the Design of a Thermal Mass is “Complex”
`
`Masimo (POR):
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`57
`
`Paper 37 (POR), 15.
`
`

`

`Masimo Criticizes Apple for Not Performing “Testing” or “Simulations”
`
`Masimo (POR):
`
`Paper 37 (POR), 41.
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`Masimo’s Arguments as to Alleged Design Complexities of a “Thermal Mass” are
`Incongruent With the ’127 Patent’s Sparse Descriptions of a “Thermal Mass”
`
`“[T]hat appellant did not provide the type of detail in his specification that he now
`argues is necessary in prior art references supports the Board's finding that one
`skilled in the art would have known how to implement the features of the references
`and would have concluded that the reference disclosures would have been enabling.”
`-In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994)
`
`’127 Patent:
`
`Paper 46 (Reply), 22.
`
`APPLE-1001, 10:62-11:15.
`Paper 46 (Reply), 22.
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`59
`
`APPLE-1001, FIG. 14 (annotated).
`Paper 2 (Petition), 6.
`
`

`

`Masimo’s Arguments as to Alleged Design Complexities of a “Thermal Mass” are
`Incongruent With the ’127 Patent’s Sparse Descriptions of a “Thermal Mass”
`
`Dr. Anthony:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`60
`
`APPLE-1055, ¶82.
`Paper 46 (Reply), 19-20.
`
`

`

`Mr. Diab (Co-Inventor) Conceded that the ’127 Patent Leaves the Design of a
`Thermal Mass to the Engineer
`
`Mr. Diab:
`
`REDACTED
`
`APPLE-1056 (Diab Depo.), 86:4-18.
`
`APPLE-1056 (Diab Depo.), 86:19-87:4.
`Paper 46 (Reply), 21-22.
`
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`
`61
`
`

`

`Dr. King Conceded that the ’127 Patent Leaves Details of the Design of the
`Thermal Mass to a POSITA
`
`Dr. King:
`
`APPLE-1055, ¶83.
`Paper 46 (Reply), 10.
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`62
`
`

`

`Masimo’s 5th Objection is Baseless
`
`The Prior Art Does Not Teach Away
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`63
`
`63
`
`

`

`Masimo Wrongly Contends that the Prior Art Teaches Away from the Alleged
`Inventions Claimed in the ’127 Patent
`
`Masimo (POR):
`
`Paper 37 (POR), 51.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`64
`
`

`

`Webster Does Not Teach Away from the Yamada-Chadwick Combinations
`
`Webster:
`
`Dr. Anthony:
`
`EX2053, pp. 68-69.
`Paper 37 (POR), 54.
`
`APPLE-1055, ¶ 55.
`Paper 46 (Reply), 16.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`65
`
`

`

`Webster Does Not Teach Away from the Yamada-Chadwick Combinations
`
`Dr. Anthony:
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`66
`
`APPLE-1055, ¶ 56.
`Paper 46 (Reply), 16.
`
`

`

`Huiku Does Not Teach Away from the Yamada-Chadwick Combinations
`
`Huiku:
`
`Dr. Anthony:
`
`APPLE-1055, ¶ 59.
`Paper 46 (Reply), 16.
`
`EX2067, p. 19.
`Paper 37 (POR), 55.
`
`APPLE-1055, ¶63.
`Paper 46 (Reply), 16.
`
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`
`67
`
`

`

`Masimo and Dr. King Also Fail to Credit the Full Breadth of Teachings in
`Cheung and Noguchi
`
`Dr. Anthony:
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`68
`
`APPLE-1055, ¶ 75.
`
`Paper 46 (Reply), 15.
`
`

`

`Noguchi’s Monitoring of Environmental Temp. Supports the Combinations
`
`Noguchi:
`
`Dr. Anthony:
`
`Institution Decision:
`
`APPLE-1008, 2:20-32.
`
`Paper 46 (Reply), 14.
`
`APPLE-1055, ¶ 76.
`
`Paper 46 (Reply), 15.
`
`Paper 21 (ID), 34
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`69
`
`

`

`Cheung’s Monitoring of Ambient Temp. Supports the Combinations
`
`Cheung:
`
`APPLE-1007, 19:29-34.
`Paper 2 (Petition), 43.
`
`Dr. Anthony:
`
`APPLE-1055, ¶ 76.
`
`Paper 46 (Reply), 15.
`
`APPLE-1007, FIG. 11 (annotated).
`
`Paper 37 (POR), 21.
`
`
`
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`
`70
`
`

`

`Masimo’s 6th Objection is Baseless
`
`Attempts to Undermine Obviousness Based
`on Yamada’s Heat Conductor 132 Fail
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`71
`
`71
`
`

`

`Masimo Incorrectly Asserts that Yamada’s Heat Conductor 132 Negates the
`Petition’s Motivations to Combine
`
`Masimo (POR):
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`72
`
`Paper 37 (POR), 57.
`
`

`

`Dr. Anthony Explained that a Thermal Core Would be Obvious to Use Alternatively or
`Together With Heat Conductor 132 in the Yamada-Chadwick Combinations
`
`Dr. Anthony:
`
`APPLE-1003, ¶ 46.
`Paper 2 (Petition), 17.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`73
`
`

`

`Dr. Anthony Explained that a Thermal Core Would be Obvious to Use Alternatively or
`Together With Heat Conductor 132 in the Yamada-Chadwick Combinations
`
`Dr. Anthony:
`
`APPLE-1055, ¶ 81.
`Paper 46 (Reply), 19-20.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`74
`
`

`

`Claim Construction
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`75
`
`75
`
`

`

`Overview of Disputed Claim Terms
`
`1. “A Thermal Mass” (Independent Claims 1, 7, 13, 20, 26)
`
`2. “Bulk Temperature” (Independent Claims 1, 7, 13, 26;
`Dependent Claim 21)
`
`3. “Operating Wavelengths Dependent on the Bulk
`Temperature” (Independent Claim 7)
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`76
`
`

`

`The Board Need Not Resolve Constructions to Find the
`Challenged Claims Unpatentable
`
`Grounds 1A-2F Render the Challenged Claims Obvious Under All of the
`Constructions Proposed in the Instituted IPR
`
`“[C]laim terms need only be construed to the extent necessary to resolve the
`controversy.”
`
`-Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
`Paper 2 (Petition), 8.
`
`Dr. Anthony:
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`77
`
`APPLE-1055, ¶64.
`Paper 45 (Reply), 9-10.
`
`

`

`Overview: “A Thermal Mass” Constructions
`
`Proponent
`
`Construction
`
`Board
`
`Apple
`
`“A mass having resistance to temperature change on
`a scale relevant to estimating LED wavelengths.”
`(Paper 21 (ID), p. 19)
`
`“A mass that stabilizes a bulk temperature.”
`(Paper 45 (Reply), pp. 2-3)
`
`Masimo
`
`[Same as ID] (Paper 37 (POR), pp. 17-18)
`
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`
`78
`
`

`

`Apple’s Construction Aligns with the ITC’s Construction
`
`Final Initial Determination (ITC):
`
`EX2093, 251-252.
`Paper 46 (Reply), 2, FN1.
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`79
`
`

`

`Apple’s Construction: “A Thermal Mass” Properly
`Refers to “A Mass that Stabilizes a Bulk Temperature”
`
`Apple’s Construction is Supported by the Specification of the ’127 Patent
`
`’127 Abstract:
`
`’127 Summary of the Invention:
`
`APPLE-1001, Abstract.
`
`Paper 2 (Petition), 3.
`
`The summary and abstract are “[s]tatements that describe the invention as a
`whole.” CR Bard v. US Surgical, 388 F.3d 858, 864 (Fed. Cir. 2004).
`
`Paper 46 (Reply), 3.
`Paper 2 (Petition), 3.
`
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`
`80
`
`APPLE-1001, 2:59-61.
`
`Paper 2 (Petition), 3.
`
`

`

`Apple’s Construction: “A Thermal Mass” Properly
`Refers to “A Mass that Stabilizes a Bulk Temperature”
`
`Apple’s Construction is Supported by the Specification of the ’127 Patent
`
`APPLE-1001, 10:24-26.
`Paper 2 (Petition), 21.
`
`APPLE-1001, 10:67 – 11:4.
`Paper 2 (Petition), 21.
`
`APPLE-1001, 11:10-13.
`Paper 2 (Petition), 21.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`81
`
`

`

`Apple’s Construction: “A Thermal Mass” Properly
`Refers to “A Mass that Stabilizes a Bulk Temperature”
`
`Mr. Diab:
`
`REDACTED
`
`APPLE-1056, 89:9-90:15.
`Paper 46 (Reply), 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`82
`
`

`

`Apple’s Construction: “A Thermal Mass” Properly
`Refers to “A Mass that Stabilizes a Bulk Temperature”
`
`Apple’s Construction is Supported by the File History and the Examiner’s
`Finding that Cheung Lacks a “Thermal Mass that Stabilizes a Bulk
`Temperature”
`
`File History:
`
`Dr. Anthony:
`
`APPLE-1002, 71.
`
`Paper 2 (Petition), 6.
`
`APPLE-1007, FIG. 11.
`
`Paper 2 (Petition), 36.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`APPLE-1055, ¶11
`
`Paper 46 (Reply), 3-4.
`
`83
`
`

`

`Masimo’s “A Thermal Mass” Construction Invites Legal Error
`
`Error 1: Masimo’s construction refers to a “resistance to temperature
`change” that has no basis in the specification.
`
`Dr. Anthony:
`
`APPLE-1055, 12.
`Paper 46 (Reply), 3-5.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`84
`
`

`

`Masimo’s “A Thermal Mass” Construction Invites Legal Error
`
`Error 2: Masimo’s construction would encompass Cheung’s substrate and is
`thus inconsistent with the file history.
`
`Dr. Anthony:
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`85
`
`APPLE-1055, ¶¶ 12, 13.
`
`Paper 46 (Petition), 4.
`
`

`

`Masimo’s “A Thermal Mass” Construction Invites Legal Error
`
`Error 3: Masimo’s construction imports non-recited limitations related to LED
`wavelength estimation into Claim 20.
`
`Dr. Anthony:
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`APPLE-1055, ¶15.
`Paper 46 (Reply), 5.
`
`86
`
`

`

`Masimo’s “A Thermal Mass” Construction Invites Legal Error
`
`Error 3: Masimo’s construction imports non-recited limitations related to LED
`wavelength estimation into claim 20.
`
`Dr. Anthony:
`
`APPLE-1055, ¶16.
`
`Paper 46 (Reply), 5.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`87
`
`

`

`Masimo’s “A Thermal Mass” Construction Invites Legal Error
`
`Error 4: Masimo’s construction refers to a thermal property (i.e., “resistance
`to temperature change”) that does not have a well-defined meaning.
`
`Dr. Anthony:
`
`APPLE-1055, ¶18.
`
`Paper 46 (Reply), 4-5.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`88
`
`

`

`Overview: “Bulk Temperature” Constructions
`
`Proponent
`
`Board
`
`Construction
`
`“A temperature representative of all or substantially all of a
`thermal mass.” (Paper 21 (ID), p. 19)
`
`Apple
`
`[Same as ID] (Paper 45 (Reply), p. 5)
`
`Masimo
`
`“A temperature measurement of the thermal mass that
`represents (but is not necessarily the same as) LED
`temperatures.” (Paper 37 (POR), pp. 22-23)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`89
`
`

`

`Apple’s Construction: “Bulk Temperature” Properly Refers to “A
`Temperature Representative of All or Substantially All of a Thermal Mass”
`
`Apple’s construction comports with the specification.
`
`’127 Patent (FIG. 12):
`
`Dr. Anthony:
`
`APPLE-1055, ¶21.
`Paper 46 (Reply), 5, 7.
`
`Paper 37 (POR), 14; APPLE-1001. FIG. 12 (annotated).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`
`90
`
`

`

`Apple’s Construction: “Bulk Temperature” Properly Refers to “A
`Temperature Representative of All or Substantially All of a Thermal Mass”
`
`Apple’s construction comports with the plain meaning of the term “bulk”
`
`Dr. Anthony:
`
`APPLE-1055, ¶22.
`Paper 46 (Inst), 7.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`91
`
`

`

`Apple’s Construction: “Bulk Temperature” Properly Refers to “A
`Temperature Representative of All or Substantially All of a Thermal Mass”
`
`Apple’s construction comports with the plain meaning of the term “bulk”
`
`Dictionaries:
`
`APPLE-1059, 226.
`
`Paper 46 (Reply), 22.
`
`APPLE-1058, 244.
`Paper 46 (Reply), 22.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`92
`
`

`

`Masimo’s “Bulk Temperature” Construction Invites Legal Error by
`Reading out the Term “Bulk”
`
`Dr. King:
`
`APPLE-1057, 148:10-149:4.
`
`Paper 46 (Reply), 7.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`93
`
`

`

`Masimo’s “Bulk Temperature” Construction Invites Legal Error by
`Reading out the Term “Bulk”
`
`Dr. Anthony:
`
`APPLE-1055, ¶24.
`
`Paper 46 (Reply), 7.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`94
`
`

`

`“Operating Wavelengths Dependent on the Bulk Temperature”
`(Independent claim 7) - Overview of Proposed Constructions
`
`Proponent
`
`Board
`
`Apple
`
`Masimo
`
`Position
`
`Requires “merely that the LEDs are thermally coupled to
`the core such that their operating wavelengths are
`dependent on (i.e., responsive to) its bulk temperature.”
`(Paper 21 (ID), pp. 28, 19-20)
`
`The Board was correct in the ID. No “determination” of
`operating wavelengths is required. (Paper 45 (Reply), p. 8)
`
`Requires determination of operating wavelengths based
`on the bulk temperature. (Paper 37 (POR), pp. 26-30)
`
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`
`95
`
`

`

`Masimo Improperly Imports a Non-Recited Requirement for
`“Determining” Operating Wavelengths in Claim 7
`
`Dr. Anthony:
`
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`
`96
`
`APPLE-1055, 25.
`
`Paper 46 (Reply), 8.
`
`

`

`Noguchi Grounds Still Render Claim 7 Obvious Even if
`Determination of Operating Wavelengths is Required
`
`Dr. Anthony:
`
`Paper 2 (Petition), 2.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`97
`
`APPLE-1055, ¶25.
`
`Paper 46 (Reply), 8
`
`

`

`“A Thermal Mass” is Rendered Obvious
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`98
`
`98
`
`

`

`Yamada-Chadwick Combinations Render Obvious a Thermal Mass
`Under Apple’s Proposed Construction
`
`Dr. Anthony (First Declaration):
`
`APPLE-1003, ¶ 53.
`Paper 2 (Petition), 20-21.
`
`APPLE-1003, ¶107.
`
`Paper 2 (Petition), 45.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`99
`
`

`

`Yamada-Chadwick Combinations Render Obvious a Thermal Mass
`Under Apple’s Proposed Construction
`
`Dr. Anthony (Second Declaration):
`
`REDACTED
`
`REDACTED
`
`REDACTED
`
`APPLE-1055, ¶67.
`Paper 46 (Reply), 10.
`
`APPLE-1055, ¶65.
`Paper 46 (Reply), 9.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`100
`
`

`

`Yamada-Chadwick Combinations Render Obvious a Thermal Mass
`Under Masimo’s Proposed Construction
`
`Dr. Anthony (Second Declaration):
`
`REDACTED
`
`APPLE-1055, ¶72.
`Paper 46 (Reply), 20.
`
`101
`
`

`

`Yamada-Chadwick Combinations Render Obvious a Thermal Mass
`Under Masimo’s Proposed Construction
`
`Mr. Diab (Co-Inventor)
`
`Dr. Anthony (Second Declaration):
`
`REDACTED
`
`APPLE-1056 (Diab Depo.), 86:4-86:12.
`
`Paper 46 (Reply), 21-22.
`
`APPLE-1055, ¶82.
`Paper 46 (Reply), 20.
`
`102
`
`

`

`“Bulk Temperature” Limitations are
`Rendered Obvious
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`103
`
`103
`
`

`

`Dr. Anthony’s First Declaration Explained How the Temperature Sensor
`in the Yamada-Chadwick Combinations Measures a Bulk Temperature
`
`Dr. Anthony (First Declaration):
`
`APPLE-1003, ¶ 60.
`
`Paper 2 (Petition), 23-24.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`104
`
`

`

`Dr. Anthony’s First Declaration Explained How the Temperature Sensor
`in the Yamada-Chadwick Combinations Measures a Bulk Temperature
`
`Dr. Anthony (First Declaration):
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`APPLE-1003, ¶ 60-61.
`
`Paper 2 (Petition), 23-24.
`
`105
`
`

`

`Dr. Anthony’s Second Declaration Elaborated on the Temp. Sensor in the
`Yamada-Chadwick Combinations Measuring a Bulk Temp.
`
`Dr. Anthony:
`
`APPLE-1055, ¶73.
`
`Paper 46 (Reply), 11.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`106
`
`

`

`Secondary Considerations Evidence Fails to
`Demonstrate Non-Obviousness
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`107
`
`107
`
`

`

`Masimo Fails to Demonstrate the Existence of a Presumption of Nexus
`
`“[W]hen the thing that is commercially successful is not coextensive with the
`patented invention—for example, if the patented invention is only a component of
`a commercially successful machine or process," the patentee is not entitled to a
`presumption of nexus.”
`
`“A patent claim is not coextensive with a product that includes a “critical”
`unclaimed feature that is claimed by a different patent and that materially impacts
`the product’s functionality …”
`
`Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373-74 (Fed. Cir. 2019)
`
`Paper 46 (Reply), 23.
`
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`
`108
`
`

`

`Masimo Fails to Demonstrate the Existence of a Presumption of Nexus
`
`No co-extensiveness: Masimo’s virtual marking website attributes dozens of
`patents to the Rainbow® sensors and Rad-57 monitor beyond just the ’127
`Patent.
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`109
`
`APPLE-1060.
`Paper 46 (Reply), p. 24
`
`

`

`Masimo Fails to Demonstrate the Existence of a Presumption of Nexus
`
`Mr. Diab:
`
`REDACTED
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`APPLE-1056, 97:11-98:13.
`Paper 46 (Reply), 23-24.
`
`110
`
`...
`
`

`

`Masimo Fails to Demonstrate the Existence of a Presumption of Nexus
`
`REDACTED
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`111
`
`EX-2102, ¶73
`Paper 46 (Reply), p. 23
`
`

`

`Masimo Fails to Demonstrate the Existence of a Presumption of Nexus
`
`REDACTED
`
`APPLE-1056, 65:6-12
`Paper 46 (Reply), 23-24.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`112
`
`

`

`Masimo Cannot Show Nexus-in-Fact Because the ’127 Claims Contain
`No Unique Characteristics
`
`Dr. Anthony
`
`Fox Factory, Inc. v. SRAM, LLC,

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