IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Al-Ali et al.
`In re Patent of:
`7,761,127 Attorney Docket No.: 50095-0046IP1
`U.S. Patent No.:
`July 20, 2010
`Issue Date:
`Appl. Serial No.: 11/366,209
`Filing Date:
`March 1, 2006
`Title:
`MULTIPLE WAVELENGTH SENSOR SUBSTRATE
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PETITIONER’S NOTICE RANKING PETITIONS FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,761,127
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`Al-Ali et al.
`In re Patent of:
`7,761,127 Attorney Docket No.: 50095-0046IP1
`U.S. Patent No.:
`July 20, 2010
`Issue Date:
`Appl. Serial No.: 11/366,209
`Filing Date:
`March 1, 2006
`Title:
`MULTIPLE WAVELENGTH SENSOR SUBSTRATE
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
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`PETITIONER’S NOTICE RANKING PETITIONS FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,761,127
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`Apple is filing two petitions (IPR2022-01299 and IPR2022-01300)
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`challenging U.S. Patent No. 10,761,127 (the “’127 patent”). This paper provides
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`“(1) a ranking of the petitions in the order in which [Petitioner] wishes the Board to
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`consider the merits, … and (2) a succinct explanation of the differences between
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`the petitions, why the issues addressed by the differences are material, and why the
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`Board should exercise its discretion to institute….” Trial Practice Guide, 59-61.
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`I.
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`Ranking of Petitions
`Although both petitions are meritorious and justified, Apple requests that the
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`Board consider the petitions in the following order:
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`Rank
`1
`2
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`Petition
`IPR2022-01299
`IPR2022-01300
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`Primary Reference
`Yamada
`Dietiker
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`II.
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`Factors Supporting Institution, Including Material Differences
`Material differences exist between the petitions, which are non-redundant at
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`least in their reliance on different combinations of references that demonstrate the
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`obviousness of the Challenged Claims in materially different ways.
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`For example, IPR2022-01299 relies on Yamada as a primary reference, and
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`asserts grounds presenting Yamada in combinations with each of Chadwick,
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`Leibowitz, Cheung, and Noguchi. Yamada describes an optical sensor that
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`“detects light (reflected light) that has been directed toward the surface of the
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`human body, scattered inside the human body, and returned toward the exposed
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`surface.” APPLE-1004, [0001]-[0002].
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`In contrast, IPR2022-01300 relies on Dietiker as a primary reference, and
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`asserts grounds presenting Dietiker in combinations with each of Oldham,
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`Leibowitz, Noguchi, and Yamada. Dietiker describes “a blood constituent
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`monitoring system and/or a non-invasive oximeter that may be utilized to monitor
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`arterial oxygen saturation.” APPLE-1009, [0005], [0033].
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`These distinct primary references, in combination with various secondary
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`references, apply differently to the claims of the ’127 Patent. For example, among
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`other things, the Yamada combinations describe temperature sensing for purposes
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`such as monitoring overheating conditions and compensating for temperature
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`fluctuations of LEDs, while the Dietiker combinations describe active temperature
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`regulation for LEDs in an oximetry instrument. Compare APPLE-1004, [0109]-
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`[0111], with APPLE-1010, [0024]-[0025]. Additionally, motivations to combine
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`the distinct sets of references presented in the two petitions materially differ. The
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`petitions are not redundant, duplicative, or substantially similar. Rather, each
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`petition compellingly demonstrates the unpatentability of the Challenged Claims,
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`without repeating the same theory.
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`Furthermore, Masimo asserted the ’127 patent in the context of a larger
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`litigation campaign against Apple involving serial assertion of, thus far, several
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`hundred claims across twenty-two patents in district court and ITC proceedings.
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`More specifically, the ’127 patent is one of five patents1 presently asserted by
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`Masimo against Apple in an ITC action initiated on June 29, 2021. Notably,
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`Masimo filed the applications from which three of the ITC-asserted patents issued
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`after filing a January 9, 2020 complaint asserting seventeen other patents against
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`Apple in the U.S. District Court for the Central District of California (CDCA)
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`(Case No. 8:20-cv-00048), and after Apple began filing IPRs challenging the
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`CDCA-asserted patents. The CDCA litigation was stayed pending resolution of
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`the IPRs,2 which yielded invalidation of every asserted claim in fifteen of the
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`seventeen CDCA-asserted patents.
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`Despite IPR proceedings, and regardless of findings that may occur in the
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`co-pending ITC proceeding in which the ’127 patent is presently asserted, it is
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`1 Masimo presently asserts U.S. Patent Nos. 7,761,127, 10,687,745, 10,912,501,
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`10,912,502, and 10,945,648 at the ITC.
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`2 IPR2020-01520, IPR2020-01521, IPR2020-01722, IPR2020-01523, IPR2020-
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`01524, IPR2020-01526, IPR2020-01536, IPR2020-01537, IPR2020-01538,
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`IPR2020-01539, IPR2020-01713, IPR2020-01714, IPR2020-01715, IPR2020-
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`01716, IPR2020-01722, IPR2020-01723, IPR2020-01737, IPR2020-01737,
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`IPR2021-00195, IPR2021-00208, IPR2021-00209.
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`entirely conceivable that Masimo will extend its campaign of harassing serial
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`litigation into the future through further district court actions.
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`Indeed, although Apple has every expectation that it will succeed in
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`demonstrating invalidity of the single ’127 Patent claim presently asserted at the
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`ITC, that outcome would not preclude Masimo from asserting the same claim (or
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`any other claim of the ’127 Patent) in a future district court action. APPLE-1032,
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`6 (“an ITC determination cannot conclusively resolve an assertion of patent
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`invalidity, which instead requires either district court litigation or a PTAB
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`proceeding to obtain patent cancellation”). Given the uncertainty of which claims
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`might ultimately be asserted in future district court actions, the instant petitions
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`challenge all thirty ’127 claims, not just the single claim asserted in the ITC.
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`Due to word count constraints, two petitions were needed to address Apple’s
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`arguments. Thus, the need for two petitions is driven by uncertainty regarding
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`which claims might ultimately be asserted should Masimo continue its campaign of
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`serial litigation. And yet, the Board’s institution of IPRs based on both petitions,
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`which compellingly demonstrate invalidity of the Challenged Claims based on
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`materially different grounds, would serve to efficiently address issues of invalidity
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`for all parties, including Masimo. Indeed, the Board’s institution of both petitions
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`and subsequent resolution of the validity issues presented therein has the potential
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`to play a significant role in bringing litigation between the parties to a close,
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`without the need for expenditure of further resources (judicial and otherwise) in
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`other forums.
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`For at least these reasons, Petitioner respectfully requests that the Board
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`institute trial on both petitions.
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`Dated July 22, 2022
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`Respectfully submitted,
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`/Nicholas W. Stephens/
`W. Karl Renner, Reg. No. 41,265
`Nicholas Stephens, Reg. No. 74,320
`Daniel D. Smith, Reg. No. 71,278
`Andrew B. Patrick, Reg. No. 63,471
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the under-signed
`certifies that on July 22, 2022, a complete and entire copy of this Notice Ranking
`Petitions was provided via Federal Express, to the Patent Owner by serving the
`correspondence address of record as follows:
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
`MASIMO CORPORATION (MASIMO)
`2040 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE CA 92614
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
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