1
`
`Patent Owner Masimo Corporation’s
`Demonstratives For Oral Hearing
`
`November 17, 2023
`Apple Inc. v. Masimo Corporation
`IPR2022-01299
`
`MASIMO 2196
`Apple v. Masimo
`IPR2022-01299
`
`
`
`Patent Owner Masimo Corporation’s
`Demonstratives For Oral Hearing
`
`November 17, 2023
`Apple Inc. v. Masimo Corporation
`IPR2022-01299
`
`MASIMO 2196
`Apple v. Masimo
`IPR2022-01299
`
`
`
`U.S. Patent No. 7,761,127
`
`Ex. 1001 Fig. 12 (simplified, annotated); POR 14
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`
`
`The Petition’s Grounds
`
`• Grounds 1A-1F rely on Yamada and Chadwick for
`the “thermal mass.”
`• Grounds 1C, 1D, 1E, 1F, 2C, 2D, 2E, and 2F rely
`on Cheung or Noguchi for using a temperature
`sensor for wavelength-shift compensation.
`• Grounds 1B, 1D, 1F, 2B, 2D, and 2F rely on
`Leibowitz for dependent claims in which the
`thermal mass has multiple layers or is copper clad.
`
`• Grounds 2A-2F rely on Yamada for the “thermal
`mass.”
`
`Pet. 2
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`3
`
`
`
`Every claim recites a “thermal mass”
`
`1/26. A physiological sensor comprising:
`
`… a thermal mass disposed proximate the emitters …
`
`7. A physiological sensor … comprising:
`
`a thermal mass …
`
`13/20. In a physiological sensor … a sensor method comprising:
`
`providing a thermal mass …
`
`Ex. 1001, independent claims 1, 7, 13, 20, 26
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`4
`
`
`
`Function of the Thermal Mass
`
`The substrate 1200 is also configured with a
`relatively significant thermal mass, which
`stabilizes and normalizes the bulk temperature so
`that the thermistor measurement of bulk
`temperature is meaningful.
`
`Ex. 1001, 10:67-11:4; POR 19; Sur-Reply 1
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`5
`
`
`
`Board correctly integrates the thermal mass function
`
`Considering the intrinsic evidence, we understand
`a “meaningful” temperature reading in the context of the
`’127 patent to be one on a scale relevant to estimating
`LED wavelengths.
`
`[W]e provisionally construe “thermal mass” as a
`
`mass having resistance to temperature change on a
`scale relevant to estimating LED wavelengths …
`
`Inst. Dec. 18-19; POR 17-22; Sur-Reply 1-2
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`6
`
`
`
`Apple fails to rebut Board construction of “thermal mass”
`
`• Apple’s construction is incomplete because it does not define “a mass
`that stabilizes a bulk temperature.”
`• Board construction correctly integrates bulk-temperature stabilization.
`• Claim construction need not use exact specification language.
`• Board construction does not encompass Cheung’s substrate.
`• Apple’s “additional reasons” are conclusory and meritless:
`• Apple’s construction, like the Board’s, adds a function (bulk-
`temperature stabilization) not recited in all claims.
`• Board’s use of “LEDs” rather than “light emitting sources” makes no
`practical difference considering prior art at issue.
`• Board’s construction distinguishes Cheung and is clear.
`
`Sur-Reply 1-2
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`7
`
`
`
`Apple relied on Yamada and Chadwick only
`for the “thermal mass” limitation [7.1] of claim 7
`
`Pet. 19-21; POR 31; Sur-Reply 4-5
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`8
`
`
`
`Apple merely incorporated its Yamada/Chadwick analysis
`into its “thermal mass” analysis for the other claims
`
`Pet. 42, 47, 57-58, 61; POR 30
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`9
`
`
`
`Yamada and Chadwick lack a thermal mass
`
`Yamada does not disclose any thermal
`function of intermediate layer 153
`
`The intermediate layer 153 is
`electrically grounded, reduces
`electrical noise, and shields light.
`
`The thermal function of Chadwick’s
`metal core with metal sheet 10 is
`cooling electronic components
`
`Pet. 14, 19-20; Ex. 1004, Fig. 19; Ex. 1005, Fig. 11;
`POR 30-44; Sur-Reply 4-7
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`10
`
`
`
`Yamada’s layer 153 not designed for thermal management
`
`While Yamada discloses that its substrate may include an “intermediate
`layer 153” made of a “conductive” metal, such sparse details do not show
`that the substrate includes the claimed “thermal mass.” However, a
`POSITA would have understood that the purpose of the intermediate layer
`is to provide electrical connection and provides negligible thermal
`management. Just because a circuit board includes one or more metal
`layers does not mean that those layers would have resistance to
`temperature change on a scale relevant to estimating LED wavelengths.
`Indeed, a POSITA would have understood that most circuit boards are not
`designed to sufficiently resist temperature change for estimating LED
`wavelengths. And there is no evidence Yamada’s conductive metal circuit
`board layer is designed with any consideration of thermal management of
`any type.
`
`Ex. 2151 (Dr. King) ¶126; POR 31-32
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`11
`
`
`
`Not every metal core circuit board has a thermal mass
`
`Ex. 2162 (Dr. Anthony) 185:3-15; POR 40
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`12
`
`
`
`Thermal function of Chadwick’s metal core is cooling
`electronic circuits and components of micro-miniature size
`
`Ex. 1005, 1:38-51, 2:19-29; POR 35-37; Sur-Reply
`5-7
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`13
`
`
`
`Petition relies on Chadwick’s cooling function
`
`Pet. 20
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`14
`
`
`
`Cooling LEDs to reduce spectral shift is not
`the claimed bulk-temperature stabilization
`
`Indeed, a POSITA would have understood Chadwick to minimize
`temperature-change resistance to maximize its core’s cooling function.
`Thus, the core would not retain sufficient heat from multiple LEDs to be
`relevant to estimating LED wavelengths. Chadwick’s metal core would
`have too little resistance to temperature change.
`
`In my opinion, a metal core such as the one suggested by Chadwick would
`In my opinion, a metal
`almost certainly produce so much cooling that any LED temperature
`core such as the one suggested by Chadwick would almost certainly produce so
`much cooling that any LED temperature difference from ambient temperature would
`difference from ambient temperature would be negligibly small and there
`be negligibly small and there would be no reason to compensate for temperatureinduced
`would be no reason to compensate for temperature-induced wavelength
`wavelength shift by using a temperature sensor to estimate LED
`shift by using a temperature sensor to estimate LED wavelengths.
`wavelengths.
`
`Ex. 2151 (Dr. King) ¶¶133, 153; POR 35-37, 58-59;
`Sur-Reply 5-7, 20-21
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`15
`
`
`
`Apple fails to rebut that cooling is Chadwick’s sole function
`
`Apple argues that a heat sink could both cool LEDs and serve as a thermal
`mass.
`
`• This hypothetical ignores that cooling is Chadwick’s sole disclosed
`function.
`• Possibility of a hybrid heat sink is irrelevant because it is not taught
`by Chadwick.
`• References do not suggest a thermal mass with required
`temperature-change resistance.
`
`Reply 19; POR 35-37; Sur-Reply 20-22
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`16
`
`
`
`Chadwick’s cooling function would work with Yamada
`
`Apple argues that Yamada sensor’s small size requires wavelength-shift
`compensation because Chadwick’s core cannot cool the LEDs enough.
`
`• Anthony speculation
`• Apple does not identify the minimum dimensions needed for
`Chadwick’s core to effectively perform its cooling function.
`• Apple does not identify the Yamada sensor’s maximum size and
`show that size is incompatible with Chadwick fully achieving its
`cooling function.
`• Apple ignores that Chadwick is intended to cool “micro-miniature”
`components.
`• Apple’s motivation-to-combine theory relies on a POSITA stumbling
`upon the invention by failure and happenstance.
`
`Reply 19; POR 35-37; Sur-Reply 20-22
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`17
`
`
`
`Uniform temperature gradient does not satisfy
`“thermal mass”
`• Petition argued that Chadwick would “produce a reasonably
`distributed/uniform temperature gradient reflective of an average,
`bulk temperature” for Element [7.3], the “bulk temperature”
`limitation.
`
`• Apple cannot rely on this argument for the “thermal mass”
`limitation.
`
`- 35 U.S.C. § 312(a)(3) (petition must identify grounds with
`particularity)
`- SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (Director lacks
`“license to depart from the petition”)
`
`Pet. 24; POR 37
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`18
`
`
`
`Chadwick would not produce a uniform temperature gradient
`
`No evidence supports Dr. Anthony’s assertion that
`Chadwick’s metal core would “produce a reasonably
`distributed/uniform temperature …”
`
`A POSITA would have understood that the frequent
`cycling on and off of the LEDs would have caused
`Chadwick’s metal core to continually have a non-uniform
`temperature gradient, with higher temperatures
`concentrated near the LEDs, while the sensor is in
`operation.
`
`Ex. 2151 (Dr. King) ¶167; POR 38; Sur-Reply 8
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`19
`
`
`
`Cooling electronics does not ensure uniform temperature
`
`Ex. 2162 (Dr. Anthony) 109:8-17; POR 39
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`20
`
`
`
`Apple conducted no structural analysis showing
`Chadwick’s metal core is the claimed “thermal mass”
`
`Ex. 2162 (Dr. Anthony) 165:5-17, 117:16-21, 118:12-
`16; Pet. 20-21; POR 39-40; Sur-Reply 6
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`21
`
`
`
`Apple’s analysis of Chadwick’s metal core is deficient
`
`[O]ne cannot conclude, simply because a circuit board
`has a metal core or metal layers, that the metal core or
`layers act as a “thermal mass” as claimed. Circuit
`boards are custom designed for particular devices and
`for particular purposes, which may include performing
`one or more of several thermal functions. … Accordingly,
`a cursory comparison of Chadwick’s metal core with
`embodiments of the ’127 patent cannot show that
`Chadwick’s metal core acts as the claimed “thermal
`mass.”
`
`Ex. 2151 (Dr. King) ¶134; POR 41
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`22
`
`
`
`Apple argued testing is needed for “thermal mass”
`
`Ex. 1012 (Apple ITC Briefing), 218; POR 41-42; Sur-
`Reply 6
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`23
`
`
`
`Apple’s argument that testing is needed prevailed at the ITC
`
`Ex. 2093 (ITC Initial Determination), 265; POR 41-42
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`24
`
`
`
`No experiments, tests, or simulations show that Chadwick’s
`metal core is the claimed “thermal mass”
`
`Ex. 2162 (Dr. Anthony) 168:11-21; POR 41; Sur-
`Reply 6
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`25
`
`
`
`Apple did not explain how to change Yamada’s substrate or
`Chadwick’s core to make either a “thermal mass”
`
`• Vague suggestions (e.g., “in any suitable manner,” “suitably designed”) are deficient.
`- Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1363 (Fed. Cir. 2011) (prior art must guide
`a POSITA to “a particular solution”).
`• Apple’s proposed heat-transfer and cooling functions are not the temperature-change-resistance
`function of the “thermal mass.”
`
`Pet. 15; POR 38-40, 42-44; Sur-Reply 19-20
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`26
`
`
`
`Anthony would not say how to modify Chadwick
`to make it a thermal mass
`
`Ex. 2162 (Dr. Anthony) 145:4-22; POR 40; Sur-Reply
`19-20
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`27
`
`
`
`Suggestion to use temperature sensor to compensate for
`wavelength shift does not propose any structural change
`
`• Proposes to change function of Yamada’s temperature sensor.
`• No proposal to change Yamada’s substrate or Chadwick’s core to make
`either a “thermal mass.”
`
`Pet. 37; Reply 19; Sur-Reply 20
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`28
`
`
`
`Anthony’s suggestion to size the core is deficient
`
`• Not in Petition; first argued in Reply.
`• The suggestion to size the core is as vague as the suggestion of a “suitably designed” core.
`• Absorbing excess heat is Chadwick’s cooling function, not the function of the “thermal mass.”
`• Anthony does not specify an appropriate size for the core.
`• Anthony ignores other factors needed to show how the core could function as a “thermal mass.”
`•
`Inconsistent with Reply argument that Yamada’s small size constrains the size of the core.
`
`Ex. 1003 (Dr. Anthony) ¶41 (cited by Reply 20); Sur-
`Reply 20; Ex. 2151 (Dr. King) ¶160
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`29
`
`
`
`King rebutted Anthony’s suggestion to size the core
`
`•
`
`•
`
`•
`
`“Dr. Anthony does not specify the appropriate size of the metal core or
`explain why a core of such size would resistant temperature change on a
`scale relevant to estimating LED wavelengths.”
`
`“[S]ize alone does not determine whether a metal core resists
`temperature change on a scale relevant to estimating LED wavelengths,
`and Dr. Anthony has not accounted for all relevant factors.”
`
`“Dr. Anthony’s proposed purpose for sizing the metal core is to ‘absorb a
`desired amount of excess or localized heat’ for ‘stabilizing the
`temperature of LEDs,’ which is not the claimed thermal function of
`resisting temperature change on a scale relevant to estimating LED
`wavelengths.”
`
`Ex. 2151 (Dr. King) ¶160; Sur-Reply 20
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`30
`
`
`
`The ’127 patent specification is not evidence of obviousness
`
`• Apple improperly relied on the ’127 patent itself to allege obviousness.
`Reply 21-22.
`
`• But even Dr. Anthony agreed the ’127 patent specification is not
`evidence of obviousness. Ex. 2195, 161:7-10.
`
`• The ’127 patent’s disclosure of stabilizing and normalizing “the bulk
`temperature so that the thermistor measurement of bulk temperature is
`meaningful” is novel guidance not found in any pre-’127-patent evidence.
`
`• The ’127 patent discloses additional details to enable specific
`implementations. See, e.g., Ex. 1001, 10:20-11:44, Figs. 12-18.
`
`Ex. 2195, 161:7-10; Ex. 1001, 10:20-11:44, Figs. 12-
`18; Ex. 2151 (Dr. King) ¶¶134-135; Sur-Reply 23-24
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`31
`
`
`
`Apple’s cases do not justify using the ’127 patent
`as evidence of obviousness
`In re Epstein and In re Publicover are ex parte examination cases
`rejecting applicant’s non-enabling-prior-art arguments.
`
`•
`
`• Uber Technologies found a patent’s silence as to how to transmit data
`suggested that choosing between two “undisputably known” prior-art
`methods would have been obvious.
`
`• Neither fact pattern applies here.
`
`Sur-Reply 24
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`
`
`Leibowitz adds only multi-layer copper construction
`
`• Apple relies on Leibowitz only for limitations of dependent claims 4-5,
`11-12, 18-19, 24-25, and 28-29 reciting “the thermal mass is a plurality
`of layers” and each layer “is substantially copper clad”
`• Apple argues Leibowitz’s “multi-layered construction” is a “simple
`substitution” for Chadwick’s core.
`Like Chadwick, Leibowitz merely discloses a heat sink for cooling:
`Another difficulty that has arisen as larger numbers of
`components are mounted on circuit boards, is that the heat
`produced by the components must be dissipated …
`
`•
`
`One of the principal advantages of the use of graphite in the
`circuit board structure is that it serves as a good conductor of
`heat, which normally can flow from the mounted components
`through the copper layers of the board, through mounting bolts,
`and hence to a housing or other heat sink.
`
`Pet. 33-35, 50, 63; Ex. 1006, 1:56-64, 4:65-5:2; POR
`67-69
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`33
`
`
`
`Every claim but 20 recites the “bulk temperature” limitations
`
`1/26. A physiological sensor comprising:
`
`… wherein the temperature sensor provides a temperature sensor
`output responsive to the bulk temperature so that the wavelengths are
`determinable as a function of the drive currents and the bulk temperature.
`
`7. A physiological sensor … comprising:
`
`… a temperature sensor thermally coupled to the thermal mass and
`capable of determining a bulk temperature for the thermal mass, the
`operating wavelengths dependent on the bulk temperature …
`
`13. In a physiological sensor … a sensor method comprising:
`
`… determining a plurality of operating wavelengths … dependent on
`a bulk temperature of the light emitting sources …
`
`Ex. 1001, independent claims 1, 7, 13, 26
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`34
`
`
`
`Claim 7 interrelates the measured bulk temperature, LED
`operating wavelengths, and physiological parameters
`
`•
`
`•
`
`Limitations require the operating wavelengths to be usable
`to determine physiological parameters.
`In the patent, a sensor determines the operating
`wavelengths by using the bulk temperature.
`• This relationship implies “the operating wavelengths
`dependent on the bulk temperature” are determined based
`on the bulk temperature.
`• Specification discloses that LED operating wavelengths
`(e.g., “λa”) are dependent on the bulk temperature (“Tb”)
`through Equation 3:
`
`Ex. 1001, claim 7; POR 27, Sur-Reply 4
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`35
`
`
`
`Wavelengths vary with LED junction temperature, not bulk
`temperature, as a matter of physical law
`
`A POSITA would have understood that temperature-based changes to LED
`wavelengths are always caused by changes to LED junction temperatures,
`not by changes to the bulk temperature of the thermal mass. Further, a
`POSITA would have understood that any change in the bulk temperature of
`the thermal mass is the result, not the cause, of the changes in LED
`junction temperatures that lead to wavelength shift. … Therefore, as a
`matter of physical law, both LED wavelengths and the bulk temperature of
`the thermal mass are responsive to LED junction temperatures; the LED
`wavelengths are not responsive to the bulk temperature of the thermal
`mass.
`
`Ex. 2151 (Dr. King) ¶118; POR 28
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`36
`
`
`
`Apple agreed the “bulk temperature” is used to estimate
`operating wavelengths in claim 7
`
`[C]laim 7 separately requires (a) measuring “bulk temperature,” and (b)
`“the operating wavelengths dependent on the bulk temperature”; …
`Likewise, the Summary of Invention describes (a) “the temperature sensor
`provides a[n] output responsive to the bulk temperature,” and (b) “the
`wavelengths are determinable as a function of the … bulk
`temperature”). [Ex. 1001] at 2:61-65; see also id. at Abstract (similar).
`Thus, the measurement of a “bulk temperature for the thermal mass” is a
`separate, predicate step before that temperature is used to estimate
`operating wavelengths.
`
`Ex. 1018 (Apple ITC Briefing), 121 (bold italics in
`original); POR 28
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`37
`
`
`
`Yamada does not measure a “bulk temperature”
`of a thermal mass to estimate LED wavelengths
`1. The Yamada/Chadwick combination lacks a “thermal mass.”
`2. Yamada’s temperature sensor measures “the temperature of the optical
`probe” to protect the patient from burns.
`a. Apple does not show Yamada’s temperature measurement
`represents LED temperatures.
`b. Apple does not show Yamada’s temperature measurement is
`representative of all or substantially all of the thermal mass.
`3. Apple does not allege Yamada’s temperature measurement is used to
`estimate LED wavelengths.
`
`POR 45-47
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`38
`
`
`
`Cheung does not measure a “bulk temperature”
`of a thermal mass to estimate LED wavelengths
`
`• Apple acknowledges Cheung measures ambient temperature. Pet. 43.
`• Cheung’s ambient-temperature measurement is not the bulk temperature of the thermal mass.
`• Apple’s assertion that the temperature of Chadwick’s core would indicate an approximate or
`average LED temperature is irrelevant and factually incorrect.
`• The “bulk temperature” is not an approximate or average LED temperature.
`• Conclusory and contrary to the evidence and basic heat transfer principles.
`Ex. 1007, Fig. 11, 13:20-32, 19:31-33; Ex. 2151 (Dr.
`King) ¶¶208-216; POR 47-48; Sur-Reply 8-11
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`
`
`Noguchi does not measure a “bulk temperature”
`of a thermal mass to estimate LED wavelengths
`
`• Apple acknowledges Noguchi measures the “temperature of the LED itself or the surrounding
`ambient temperature.” Pet. 58-61.
`• Noguchi does not measure the temperature of the thermal mass.
`• Noguchi uses a temperature sensor near a single LED to estimate that LED’s wavelength.
`• Noguchi discloses using more than one sensor to monitor more than one LED: the “number of
`LEDs or sensors used in the present invention can be more than one each.”
`Ex. 1008, Fig. 2, 2:30-31; Ex. 2151 (Dr. King) ¶¶228-
`230; Ex. 2093, 298; POR 4-5, 49-50; Sur-Reply 8-11
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`40
`
`
`
`No Motivation to Combine
`
`1. The prior art teaches away from the claimed invention
`a. Cheung and Noguchi teach that ambient temperature near the LEDs
`can accurately compensate for wavelength shift
`b. Webster criticized using a temperature sensor and instead urged
`using LED drive current directly to compensate for wavelength shift
`c. Huiku criticized using a temperature sensor and instead urged
`determining junction temperature directly from forward voltage drop
`2. Apple’s alleged motivations to combine would not have motivated a
`POSITA to combine the references to yield the claimed invention
`
`POR 50-66; Sur-Reply 9-24
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`
`
`Noguchi measures “temperature of the LED itself or the
`surrounding ambient temperature”
`
`• Measures “temperature of the LED itself or the surrounding ambient temperature.”
`• Measured temperature “will be suitable for achieving good results” in keeping LED wavelength
`constant when temperature sensor placed near the LED.
`• Dr. King: a “POSITA would have had no reason to measure anything but ambient temperature
`when a temperature sensor can be placed near enough to the LEDs to achieve the accuracy
`touted by Cheung and Noguchi.”
`Ex. 1008, Fig. 2, 2:2-4, 2:30-40; Ex. 2151 (Dr. King)
`¶177; POR 5, 52-54, 65; Sur-Reply 8-11
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`
`
`Cheung measures ambient temperature
`
`• Cheung’s “temperature sensor 50 indicates a change in the ambient temperature.”
`• Measured temperature “allows microcomputer 16 to accurately determine the wavelengths of the
`light emitted by LEDs.”
`• Dr. King: a “POSITA would have had no reason to measure anything but ambient temperature
`when a temperature sensor can be placed near enough to the LEDs to achieve the accuracy
`touted by Cheung and Noguchi.”
`Ex. 1007, Fig. 11, 13:20-32, 19:31-33; Ex. 2151 (Dr.
`King) ¶177; POR 6, 21, 52-54; Sur-Reply 8-11
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`
`
`Apple improperly recasts Cheung and Noguchi
`as measuring a “bulk temperature”
`• Apple admits that Cheung and Noguchi measure ambient temperature
`and lack a thermal core. Reply 14.
`• Though Noguchi discloses that a temperature sensor can be placed
`away from an LED, it does not suggest measuring a bulk temperature or
`a thermal mass.
`• Apple argues Cheung and Noguchi do not criticize the ’127 patent
`invention. But lack of criticism is not disclosure.
`• Anthony’s hindsight speculation that it “would be even more beneficial”
`to position “the temperature sensor and LEDs on a common substrate”
`does not change Cheung’s and Noguchi’s disclosure. K/S Himpp v.
`Hear-Wear Techs., LLC, 751 F.3d 1362, 1365–66 (Fed. Cir. 2014).
`• Apple’s argument that measuring thermal core temperature is “an
`obvious extension” of the references does not expand their disclosure.
`
`Sur-Reply 9-11
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`
`
`Webster criticized using a temperature sensor
`and instead urged direct measurement of LED drive current
`
`Ex. 2053, 68-69; Ex. 2151 (Dr. King) ¶¶178-179;
`POR 54; Sur-Reply 11-12
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`45
`
`
`
`Huiku criticized using a temperature sensor
`and instead urged using forward voltage drop
`
`Ex. 2067, 19:7-29; Ex. 2151 (Dr. King) ¶181; POR
`55-56; Sur-Reply 11-12
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`46
`
`
`
`Apple’s argument against teaching away is hindsight
`
`• Apple does not dispute that Webster and Huiku discourage temperature-
`sensor-based wavelength-shift-compensation techniques and encourage
`different methods.
`• Apple argues that using a thermal core to distribute heat to reduce
`temperature variation would resolve Webster’s and Huiku’s concerns.
`• Apple relies on Anthony’s 2023 testimony alone.
`• No prior art supports Anthony’s opinion.
`• There is no suggestion in Webster, Huiku, or other pre-’127-patent
`evidence to use a thermal core to resolve Webster’s and Huiku’s
`concerns.
`
`Reply 16; Sur-Reply 11-12
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`
`
`The Petition’s Alleged Motivations to Combine
`Yamada and Chadwick
`1. Reduce heat transmitted to the patient
`2. Mitigate heat-induced spectral shifts
`3. Facilitate measurement of an approximate or average LED temperature
`4. Draw heat away from the LEDs
`5. Application of known techniques to a known system to achieve
`predictable results
`
`Pet. 15-17
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`48
`
`
`
`1. Heat reduction would not have motivated the invention
`
`• Chadwick’s core for cooling is redundant of
`Yamada’s heat conductor 132.
`• There is no motivation to add a component whose
`benefit is redundant of the primary reference. See
`Ex parte Burns, Appeal No. 2016-000351, 2017 WL
`2132361, *2 (PTAB Apr. 28, 2017).
`• A heat sink for cooling electronic components is
`fundamentally different from a thermal mass for
`resisting temperature change on a scale relevant to
`estimating LED wavelengths.
`• Any Yamada embodiment could use the heat
`conductor in view of Yamada’s general teaching
`that an “optical probe of the present invention may
`further comprise a heat conductor.” Ex. 1004 ¶39.
`• Apple does not show Chadwick’s core is superior.
`• Using both Yamada’s heat conductor and
`Chadwick’s core would enhance cooling, not have
`the required temperature-change resistance.
`
`Ex. 1004 ¶¶39, 102-104, Fig. 31; Ex. 2151 (Dr. King)
`¶¶184-187; POR 57-58; Sur-Reply 22
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`
`
`2. Mitigating heat-induced wavelength shift
`would have led away from the invention
`
`If a thermal core successfully reduced wavelength shift, it would
`obviate the need for wavelength-shift compensation. Indeed, as
`explained above, Chadwick’s metal core would have been so
`effective at cooling that it would have effectively eliminated
`wavelength shift and any need to compensate for it. Accordingly,
`Apple’s proposed use of a thermal core would discourage a
`POSITA from attempting to design a thermal mass that would
`resist temperature change on a scale relevant to estimating LED
`wavelengths and using the measured temperature of the thermal
`mass to estimate LED wavelengths.
`
`Apple argues that reducing wavelength shift would improve
`accuracy in oximetry measurements. Pet., 16. But that
`improvement would motivate a POSITA to reduce wavelength shift
`further rather than attempt another solution.
`
`Ex. 2151 (Dr. King) ¶¶189-190; POR 58-59; Sur-
`Reply 20-22
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`50
`
`
`
`3. Facilitating measurement of an approximate or average
`LED temperature would not have motivated the invention
`a. The “bulk temperature” is not an approximate or average LED
`temperature
`b. No evidence supports Anthony’s conclusion that Chadwick’s core would
`distribute heat so that the temperature sensor would indicate an
`average LED temperature
`c. Apple provided no reason for Yamada to measure an approximate or
`average LED temperature
`d. Webster teaches away from measuring an average LED temperature
`e. Apple alleges that Cheung measures average LED temperature without
`a thermal mass
`
`POR 59-62
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`51
`
`
`
`3a. The “bulk temperature” is not an approximate or average
`LED temperature
`Masimo’s construction
`
`“a temperature measurement of the thermal mass that represents
`(but is not necessarily the same as) the LED temperatures”
`
`The Board’s preliminary (and Apple’s) construction
`
`“a temperature representative of all or substantially all of a
`thermal mass”
`Dr. King
`
`“Apple has not shown that measuring an approximate or average
`temperature of the LEDs would enable estimation of LED
`wavelengths to compensate for wavelength shift. … [A] mass that
`provided an LED temperature average would not be useful for
`temperature compensation because it would fail to capture the
`heterogenous, transient nature of the LED heat inputs.”
`
`POR 22-26, 60; ID 14-18; Ex. 2151 (Dr. King) ¶193
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`52
`
`
`
`3b. No evidence supports Anthony’s conclusion that
`Chadwick’s core would measure average LED temperature
`
`Neither Yamada nor Chadwick nor any other document Apple
`relies on shows that the metal core’s temperature would indicate
`an average temperature of the LEDs as Apple’s expert asserts.
`Further, Apple did not conduct any simulations or tests showing
`that Chadwick’s metal core temperature would indicate an
`average temperature of the LEDs. …
`
`In view of the complex temperature distribution in a system with
`multiple LEDs injecting different amounts of heat into the metal
`core at different times, it is extremely unlikely that a POSITA could
`have placed a temperature sensor on Chadwick’s metal core so
`that its temperature measurement would indicate an average
`temperature of the LEDs. Apple’s assumptions are simply not
`grounded in heat transfer physics.
`
`Ex. 2151 (Dr. King) ¶¶194-195; POR 60-61.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`53
`
`
`
`3c. Apple provided no reason for Yamada to measure an
`approximate or average LED temperature
`
`Apple fails to explain why Yamada’s temperature sensor would
`have needed to measure an approximate or average temperature
`of the LEDs. It certainly would not need to do so to achieve its
`disclosed goal of warning patients when “the temperature of the
`optical probe … becomes too high” to prevent burns. See
`EX1004 ¶111. Yamada achieves that goal by measuring “the
`temperature near the user” or “the temperature of the main body
`… where it is the highest.” Id. ¶109 (emphases added). In a
`safety application such as Yamada’s burn avoidance, a POSITA
`would understand that the key temperature to measure is the
`maximum temperature, not the average temperature. …
`
`And Apple does not propose modifying Yamada’s temperature
`sensor to achieve any goal for which it would have made sense to
`attempt to measure LED temperatures.
`
`Ex. 2151 (Dr. King) ¶¶197-198; POR 61.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`54
`
`
`
`3d. Webster teaches away from average LED temperature
`
`Webster
`
`Another problem is the difference between the sensed
`temperature and the actual temperature of the p-n junctions of the
`LEDs. If the two LEDs are being driven with different currents, as
`is normally the case, they will probably be at different
`temperatures. The temperature sensor will read at best an
`average of the two LED temperatures, and at worst an average of
`the two LED temperatures along with the skin and ambient
`temperatures.
`
`Dr. King
`
`Webster’s criticism of Cheung would have led a POSITA away not
`just from Cheung, but from any attempt to measure any
`temperature, including the temperature of Chadwick’s metal core,
`as an indicator of approximate or average LED temperatures.
`
`Ex. 2053, 68-69; Ex. 2151 (Dr. King) ¶199; POR 61-
`62
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`55
`
`
`
`3e. Cheung measures average LED temperature
`without a thermal mass
`
`Petition
`
`Cheung’s temperature sensor 50 produces a signal indicative of
`the “ambient temperature” of the “sensor assembly 48,” which
`would reflect an average or approximate temperature of the pair
`of LEDs in Cheung’s sensor assembly 48 (e.g., as opposed to a
`local temperature of an individual LED).
`
`Dr. King
`
`But if a POSITA would have been content with measuring merely
`an approximate or average LED temperature, the POSITA would
`have just used Cheung’s method of measuring ambient
`temperature. A POSITA would have understood Webster as
`indicating that Cheung’s method would at least measure an
`average LED temperature or a close approximation. Therefore, a
`POSITA would have had no reason to try a speculative method of
`measuring a bulk temperature that may not even have indicated
`an approximate or average LED temperature.
`
`Pet. 43; Ex. 2151 (Dr. King) ¶200; POR 62
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`56
`
`
`
`4. Drawing heat away from the LEDs
`would not have motivated the invention
`• Chadwick’s core for cooling is redundant of
`Yamada’s heat conductor 132.
`• There is no motivation to add a component whose
`benefit is redundant of the primary reference. See
`Ex parte Burns, Appeal No. 2016-000351, 2017 WL
`2132361, *2 (PTAB Apr. 28, 2017).
`• A heat sink for cooling electronic components is
`fundamentally different from a thermal mass for
`resisting temperature change on a scale relevant to
`estimating LED wavelengths.
`• Any Yamada embodiment could use the heat
`conductor in view of Yamada’s general teaching
`that an “optical probe of the present invention may
`further comprise a heat conductor.” Ex. 1004 ¶39.
`• Apple does not show Chadwick’s core is superior.
`• Using both Yamada’s heat co
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