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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2022-01465
`U.S. Patent 10,687,745
`____________
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`

`

`
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`Case No. IPR2022-01465
`
`Attorney Docket: 50095-0045IP3
`
`TABLE OF CONTENTS
`
`IWAMIYA-SARANTOS RENDERS OBVIOUS CLAIMS 2-3, 5-6, 8, 10-
`12, AND 14 (GROUND 1A) AND IWAMIYA-SARANTOS-
`VENKATRAMAN RENDERS OBVIOUS CLAIMS 4, 17, 19, AND 21-26
`(GROUND 1B) ................................................................................................ 1 
`A. 
`Iwamiya-Sarantos renders obvious a “surface comprising a dark-
`colored coating” (elements [1.4] and [20.4]) ........................................ 1 
`Iwamiya-Sarantos (with or without Venkatraman) renders obvious
`that “the plurality of photodiodes are arranged in an array having a
`spatial configuration corresponding to a shape of the portion of the
`tissue [measurement site encircled/bounded] by the light block”
`(element [15.4] and claims 6 and 26) .................................................... 5 
`Iwamiya-Sarantos renders obvious adding a second wavelength (claim
`2) to measure oxygen saturation at the wrist ....................................... 10 
`Sarantos discloses and renders obvious measuring oxygen
`saturation at the wrist ................................................................ 10 
`A POSITA would have known how to make predictable
`adaptations to Iwamiya’s device that would allow the device in
`the Iwamiya-Sarantos combination to measure oxygen
`saturation ................................................................................... 11 
`The POR mischaracterizes Iwamiya in asserting that it teaches
`away from measuring blood oxygen saturation using red and
`infrared light .............................................................................. 12 
`A POSITA would have reasonably expected success in
`modifying Iwamiya to measure oxygen saturation at the wrist 13 
`Iwamiya-Sarantos-Venkatraman renders obvious “the second shape
`comprises a width and a length, and wherein the width is different
`from the length” (Claim 25) ................................................................ 21 
`SARANTOS-SHIE RENDERS OBVIOUS CLAIMS 2, 5, 6, 8, 10, 11, 13,
`14, 17, AND 19 (GROUND 2A), SARANTOS-SHIE-VENKATRAMAN
`RENDERS OBVIOUS CLAIMS 3-4, 17, 19, AND 21-26 (GROUND 2B),
`
`B. 
`
`C. 
`
`D. 
`
` 
`
` 
`
` 
`
` 
`
`i
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`
`
`I. 
`
`II. 
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`

`

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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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` 
`
` 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`AND SARANTOS-SHIE-SAVANT RENDERS OBVIOUS CLAIM 12
`(GROUND 2C) .............................................................................................. 22 
`A. 
`Sarantos-Shie renders obvious a “first shape” and a different “second
`shape” (elements [1.1]-[1.2], [20.1]-[20.2], claim 19) ........................ 22 
`Shie discloses changing a first shape of light into a second
`shape .......................................................................................... 22 
`A POSITA would have been motivated to combine Sarantos
`and Shie and would have reasonably expected success ............ 24 
`Sarantos-Shie (with or without Venkatraman) renders obvious a “light
`block having a circular shape” (element [15.3]) ................................. 25 
`Sarantos-Shie (with or without Venkatraman) renders obvious that
`“the plurality of photodiodes are arranged in an array having a spatial
`configuration corresponding to a shape of the portion of the tissue
`measurement site encircled by the light block” (element [15.4], claims
`6 and 26) .............................................................................................. 26 
`Sarantos-Shie-Savant renders obvious the second shape comprising a
`circular geometry (claim 12) ............................................................... 27 
`Sarantos-Shie-Venkatraman renders obvious “the second shape
`comprises a width and a length, and wherein the width is different
`from the length” (Claim 25) ................................................................ 29 
`III.  CONCLUSION .............................................................................................. 30 
`
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`ii
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`Case No. IPR2022-01465
`
`Attorney Docket: 50095-0045IP3
`
`EXHIBITS
`
`APPLE-1001 U.S. Pat. No. 10,687,745 to Al-Ali (“the ’745 patent”)
`
`APPLE-1002 Prosecution History of the ’745 patent (Serial No. 16/835,772)
`
`APPLE-1003 Declaration of Dr. Brian Anthony
`
`APPLE-1004 U.S. Pat. No. 8,670,819 (“Iwamiya”)
`
`APPLE-1005 U.S. Pat. No. 9,392,946 (“Sarantos”)
`
`APPLE-1006 U.S. Pub. No. 2014/0275854 (“Venkataraman”)
`
`APPLE-1007 U.S. Pat. No. 6,483,976 (“Shie”)
`
`APPLE-1008 U.S. Pat. No. 6,801,799 (“Mendelson-799”)
`
`APPLE-1009 U.S. Pub. No. 2015/0018647 (“Mandel”)
`
`APPLE-1010 U.S. Pub. No. 2009/0275810 (“Ayers”)
`
`APPLE-1011 PCT. Pub. No. 2011/051888 (“Ackermans”)
`
`APPLE-1012 U.S. Pat. No. 6,158,245 (“Savant”)
`
`APPLE-1013 Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`
`
`APPLE-1014 U.S. Pub. No. 2009/0054112 (“Cybart”)
`
`APPLE-1015 U.S. Pat. No. 5,893,364 (“Haar”)
`
`APPLE-1016 U.S. Pat. No. 5,952,084 (“Anderson”)
`
`APPLE-1017 U.S. Pat. No. 10,470,695 (the “’695 patent”)
`
`APPLE-1018 Apple v. Masimo, Case No. IPR2020-01722, Paper 29 (Final
`Written Decision) (PTAB May 5, 2022) (the “’695 FWD”)
`
`
`
`
`
`iii
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`

`

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`
`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
`
`
`APPLE-1019 U.S. Pub. No. 2009/0097129 (“Naito”)
`
`APPLE-1020 U.S. Pub. No. 2006/0128869 (“Taima”)
`
`APPLE-1021 Polymers and Plastic Resins Information, Engineering360, printed
`from
`https://www.globalspec.com/learnmore/materials_chemicals_adhes
`ives/plastics_elastomers_polymers/plastics_polymers on August
`15, 2022
`
`
`APPLE-1022 Methods and Approaches of Futures Studies, printed from
`http://crab.rutgers.edu/~goertzel/futuristmethods.html on August
`15, 2022
`
`
`APPLE-1023 – APPLE-1030 RESERVED
`
`APPLE-1031 Masimo Corporation, et al. v. Apple Inc., Redacted Complaint,
`ITC Inv. No. 337-TA-1276
`
`
`APPLE-1032 Interim Procedure for Discretionary Denials in AIA Post-Grant
`Proceedings with Parallel District Court Litigation, issued June
`21, 2022 (“Interim Guidance”)
`
`
`APPLE-1033 Final Initial Determination on Violation of Section 337, Public
`Version, ITC Inv. No. 337-TA-1276, January 10, 2023
`
`
`APPLE-1034 Emails re Masimo’s Request for Authorization to Motion for
`Additional Discovery
`
`
`APPLE-1035 Protective Order
`
`APPLE-1036 CONFIDENTIAL - ITC Inv. No. 337-TA-1276 Hearing Transcript
`of Dr. Ueyn Block
`
`
`APPLE-1037 CONFIDENTIAL - ITC Inv. No. 337-TA-1276 Hearing Transcript
`of Dr. Saahil Mehra
`
`
`APPLE-1038 ITC Inv. No. 337-TA-1276 Exhibit RX-0335 (U.S. Pat. No.
`5,830,137 (“Scharf”))
`
`
`
`
`
`iv
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`

`

`
`APPLE-1039 ITC Inv. No. 337-TA-1276 Exhibit RX-0504 (Austin Wareing,
`Optimization of Reflectance-Mode Pulse Oximeter Sensors)
`
`
`
`Case No. IPR2022-01465
`
`Attorney Docket: 50095-0045IP3
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`
`APPLE-1040 ITC Inv. No. 337-TA-1276 Exhibit RX-0508 (Jianchu Yao and
`Steve Warren, Stimulating Student Learning with a Novel “In-
`House” Pulse Oximeter Design (2005))
`
`
`APPLE-1041 ITC Inv. No. 337-TA-1276 Exhibit RX-0632
`
`APPLE-1042 CONFIDENTIAL – Supplemental Declaration of Dr. Brian
`Anthony
`
`
`APPLE-1043 Excerpt of The American Heritage Dictionary of the English
`Language, Fifth Edition, Houghton Mifflin Harcourt Publishing
`Company (2011)
`APPLE-1044 Excerpt of Collins Dictionary, HarperCollins Publishers (2010)
`
`APPLE-1045 Excerpt of Merriam-Webster’s Collegiate Dictionary, Eleventh
`Edition, Merriam-Webster, Incorporated (2014)
`
`
`APPLE-1046 Excerpts from Bronzino, The Biomedical Engineering Handbook,
`CRC Press, Inc. (1995) (“Bronzino”)
`
`
`APPLE-1047 U.S. Patent No. 6,014,576 to Raley
`
`APPLE-1048 Severinghaus et al., Recent Developments in Pulse Oximetry,
`Anesthesiology, Vol. 76, No. 6 (June 1992)
`
`
`APPLE-1049 Duffy, MIO Alpha BLE Review, PC Magazine (Jan. 28, 2013)
`available at https://www.pcmag.com/reviews/mio-alpha-ble
`
`
`APPLE-1050 Pang et al., A Neo-Reflective Wrist Pulse Oximeter, IEEE Access,
`Volume 2 (January 12, 2015)
`
`
`APPLE-1051 Li et al., A Wireless Reflectance Pulse Oximeter With Digital
`Baseline Control for Unfiltered Photoplethysmograms, IEEE
`Transactions on Biomedical Circuits and Systems, Vol. 6, No. 3
`(June 2012)
`
`
`
`
`
`v
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`

`

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`APPLE-1052 U.S. Patent Application Publication No. 2006/0253010 to Brady et
`al.
`
`
`
`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`
`APPLE-1053 Cai et al., Implementation of a Wireless Pulse Oximeter Based on
`Wrist Band Sensor, 2010 3rd International Conference on
`Biomedical Engineering and Informatics (BMEI 2010)
`
`International Publication No. WO 2001/17421 to Lindberg et al.
`
`
`APPLE-1054
`
`APPLE-1055 Maattala et al., Optimum Place for Measuring Pulse Oximeter
`Signal in Wireless Sensor-Belt or Wrist-Band, 2007 International
`Conference on Convergence Information Technology, IEEE
`(2007)
`
`
`APPLE-1056 Fontaine et al., Reflectance-Based Pulse Oximeter for the Chest
`and Wrist, Worchester Polytechnic Institute
`
`
`APPLE-1057 Stein, “Withings Pulse O2 review: Fitness band plus heart rate
`monitor checks blood oxygen, too,” CNET.com (April 25, 2014),
`available at https://www.cnet.com/reviews/withings-pulse-o2-
`review/
`
`
`APPLE-1058 U.S. Patent No. 7,468,036 to Rulkov et al.
`
`APPLE-1059 CONFIDENTIAL – Transcript of the Deposition of Dr. R. James
`Duckworth (August 9, 2023)
`
`
`APPLE-1060 Mendelson et al., A Wearable Reflectance Pulse Oximeter for
`Remote Physiological Monitoring, Proceedings of the 28th IEEE
`EMBS Annual International Conference (Sept. 3, 2006)
`
`
`APPLE-1061
`
`International Publication No. WO 2011/051888 to Ackermans et
`al.
`
`
`APPLE-1062 U.S. Patent Application Publication No. 2005/0116820 to
`Goldreich
`
`
`APPLE-1063
`
`APPLE-1064 U.S. Patent No. 7,650,176 to Sarussi et al.
`
`International Publication No. WO 2012/140559 to Shmueli et al.
`
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`vi
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`
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`APPLE-1065 U.S. Patent Application Publication No. 2002/0095092 to Kondo
`et al.
`
`
`APPLE-1066 U.S. Patent Application Publication No. 2015/0355604 to Fraser et
`al.
`
`
`APPLE-1067 U.S. Patent No. 6,580,086 to Schulz et al.
`
`APPLE-1068 U.S. Patent Application Publication No. 2013/0267854 to Johnson
`et al.
`
`
`APPLE-1069
`
`ITC Inv. No. 337-TA-1276 Exhibit RX-0498 (Takatani et al.,
`Optical Oximetry Sensors for Whole Blood and Tissue, IEEE
`Engineering in Medicine and Biology (June/July 1994))
`
`
`APPLE-1070 U.S. Patent No. 5,164,858 to Aguilera, Jr. et al.
`
`APPLE-1071 U.S. Patent Application Publication No. 2005/0267346 to Faber et
`al.
`
`
`APPLE-1072 U.S. Patent No. 9,316,495 to Suzuki et al.
`
`APPLE-1073 U.S. Patent Application Publication No. 2014/0051955 to Tiao et
`al.
`
`
`APPLE-1074 U.S. Patent Application Publication No. 2016/0058312 to Han et
`al.
`
`
`APPLE-1075 U.S. Patent Application Publication No. 2010/0261986 to Chin et
`al.
`
`
`APPLE-1076 Beam Shaping with Cylindrical Lenses, available at
`https://www.newport.com/n/beam-shaping-with-cylindrical-lenses
`
`
`APPLE-1077 Dickey, Laser Beam Shaping Theory and Techniques, Second
`Edition, Taylor & Francis Group, LLC (2014)
`
`
`APPLE-1078 Lee et al., Micro-LED Technologies and Applications, Information
`Display (June 2016)
`
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`vii
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`
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`APPLE-1079 U.S. Patent No. 6,398,727 to Bui et al.
`
`APPLE-1080 U.S. Patent Application Publication No. 2014/0323829 to LeBoeuf
`et al.
`
`
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`viii
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`Case No. IPR2022-01465
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`Masimo raises just a single argument in Grounds 1A-1B related to
`
`
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`limitations from independent claims 1, 15, and 20. Each of these arguments was
`
`previously presented unsuccessfully in the POPR, and the same arguments were
`
`previously rejected by the ITC. Masimo raises similar arguments in Grounds 2A-
`
`2B. But for the reasons explained in detail below, none of Masimo’s arguments
`
`has merit. Apple thus submits that the challenged claims are obvious and should
`
`be cancelled.
`
`I.
`
`IWAMIYA-SARANTOS RENDERS OBVIOUS CLAIMS 2-3, 5-6, 8,
`10-12, AND 14 (GROUND 1A) AND IWAMIYA-SARANTOS-
`VENKATRAMAN RENDERS OBVIOUS CLAIMS 4, 17, 19, AND 21-
`26 (GROUND 1B)
`A.
`Iwamiya-Sarantos renders obvious a “surface comprising a dark-
`colored coating” (elements [1.4] and [20.4])
`Masimo’s argument that the Iwamiya-Sarantos combination “rests on the
`
`unsupported assumption that Iwamiya’s light shielding frame 18 would not, in fact,
`
`provide the light shielding function disclosed in Iwamiya” is baseless.1 POR, 16.
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`Apple has never disputed that Iwamiya’s original frame 18 was intended to block
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`unwanted light from reaching the photodiodes. APPLE-1004, 8:38-42. Iwamiya
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`instead lacks express disclosure of materials that would be suitable to achieve the
`
`
`1 Masimo’s substantially similar argument on element [1.4] was also rejected at the
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`ITC, as it was in the Institution Decision. EX2093, 226-228; Decision, 26.
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`1
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`desired “light shielding” function of frame 18. Pet., 13-16; APPLE-1059, 88:12-
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`94:8. Iwamiya left the selection of a suitable material for frame 18 to a POSITA,
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`and the Petition specifically explained that “[a] POSITA would have been
`
`motivated to employ an in-mold label or other black or opaque material as
`
`disclosed by Sarantos in the light shielding frame 18 of Iwamiya to serve the
`
`purpose indicated by the component’s name: shielding the photodiodes 9 from
`
`stray light[] … .” Pet., 15.
`
`The use of dark-colored coatings for light shielding as taught in Sarantos
`
`was common practice well before the ’745 Patent. APPLE-1005, 17:1-25; see also
`
`APPLE-1013, 96-972, 111; APPLE-1067, 9:58-10:23; APPLE-1042 ¶7.
`
`Accordingly, a POSITA would have found it obvious to apply a dark-colored
`
`coating to Iwamiya’s frame 18 in any suitable manner that would ensure light is
`
`blocked from reaching the photodiodes except through the opening permitted by
`
`optical filter 17, e.g., by coating an exterior of the frame 18 with a dark, light-
`
`absorbing material. APPLE-1005, 17:1-25; APPLE-1042, ¶8.
`
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`2 Numbers refer to page numbers of the PDF document.
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`2
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`dark-colored coating on exterior surface of light shielding frame 18
`
`APPLE-1004, FIG. 43
`
`
`
`The selection of a light-absorbing material for frame 18 would have
`
`involved a merely routine design choice for a POSITA, especially given that light-
`
`shielding materials must either (1) absorb or (2) reflect light, and the use of a
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`“dark” coating would be particularly obvious to absorb the broadest spectrum of
`
`light. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“When… there are
`
`a finite number of identified, predictable solutions, a person of ordinary skill has
`
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`3 Annotations and color added to figures unless otherwise noted.
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`3
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`good reason to pursue the known options within his or her technical grasp.”);
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`APPLE-1042, ¶8; APPLE-1059, 94:14-95:10.
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`Masimo suggests in the POR that a POSITA would be led by Iwamiya to
`
`select a reflective rather than absorptive material for use on the light-shielding
`
`frame 18. POR, 18-22. But Masimo’s suggestion is wrong/unsupported, and Dr.
`
`Anthony explained in detail multiple reasons why this is so. APPLE-1042, ¶¶9-14.
`
`First, a dark-colored coating that absorbs light as taught in Sarantos would be
`
`preferable to a reflective material for shielding light with Iwamiya’s frame 18 since
`
`the absorptive material would reduce reflections and light scatter in the empty
`
`space surrounding frame 18. APPLE-1042, ¶¶9, 12. The dark-colored coating
`
`would reduce the amount of scattered/reflected light from the space surrounding
`
`frame 18 from reflecting back through optical filter 17 to the photodiodes, which
`
`would increase noise and risk reducing sensor accuracy. Id. Duckworth not only
`
`failed to address this issue but refused to even discuss it during his deposition.
`
`APPLE-1059, 95:11-96:17. Second, Masimo’s argument that a POSITA would
`
`select a reflective material for frame 18 merely because light guiding ring 11 and
`
`diffusion ring 12 include reflective layers 13, 15 does not follow. APPLE-1004,
`
`6:62-7:3, 7:41-49; see also id., 6:10-14, 7:14-24, 10:44-49, 11:55-12:36. Rings 11,
`
`12 are distinct from frame 18, and the reflective layers 13, 15 serve far different
`
`functions of preventing light leakage to an exterior of rings 11, 12 and guiding
`4
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`light through rings 11, 12 than the light shielding function of frame 18. APPLE-
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`1004, 6:67-7:3, 7:45-49; APPLE-1042, ¶10. Third, Masimo’s suggestion that
`
`light-shielding frame 18 must be reflective since holder portion 43 is reflective also
`
`does not follow. These components are not even used in the same embodiments,
`
`and differences in the structures of these embodiments confirms that frame 18 need
`
`not have a reflective exterior. APPLE-1004, 18:61-65, 28:64-29:1, 39:20-24,
`
`FIGS. 4, 13; APPLE-1059, 88:1-94:8; APPLE-1042, ¶¶11-13. Neither Masimo
`
`nor Mr. Duckworth acknowledges these differences. And even if design tradeoffs
`
`may exist between the selection of a dark-colored coating and a reflective material,
`
`these design tradeoffs would only render each option obvious; they would not
`
`preclude obviousness of the first option as Masimo would have it. Allied Erecting
`
`& Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir.
`
`2016) (“[A] given course of action often has simultaneous advantages and
`
`disadvantages, and this does not necessarily obviate motivation to combine.”);
`
`Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)
`
`(“should not nullify its use as a basis to modify”); APPLE-1042, ¶14.
`
`B.
`
`Iwamiya-Sarantos (with or without Venkatraman) renders
`obvious that “the plurality of photodiodes are arranged in an
`array having a spatial configuration corresponding to a shape of
`the portion of the tissue [measurement site encircled/bounded] by
`the light block” (element [15.4] and claims 6 and 26)
`That Iwamiya’s photodiodes 9 are arranged in a circular array having a
`
`
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`5
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`

`

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`spatial configuration corresponding to a shape of the portion of the tissue
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`Case No. IPR2022-01465
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`measurement site encircled by the circular light block is evident from the fact that
`
`the photodiodes are “disposed … on the same circumference centered on an
`
`optical axis” of the circular light taking unit 8.4 APPLE-1004, 14:36-41; APPLE-
`
`1042, ¶16; Pet., 20, 27-28.
`
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`4 Masimo’s substantially similar argument on element [15.4] was also rejected at
`
`the ITC, where the ALJ found that Iwamiya “clearly” discloses these features.
`
`EX2093, 232-233.
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`6
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`Case No. IPR2022-01465
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`photodiodes 9 arranged “on the same circumference centered on an optical
`axis” of the circular light taking unit 8
`
`light block
`
`
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`APPLE-1004, FIG. 2 (annotated according to Iwamiya’s teachings)
`
`Iwamiya never limits the number of photodiodes 9 that can be used in its
`
`device. APPLE-1042, ¶17. Iwamiya instead leaves the choice of the number of
`
`photodiodes to a POSITA, who would have known that more than just a “small
`
`plurality” of photodiodes (e.g., more than 2-3) were commonly employed in pulse
`
`oximeters before the ’745 Patent (and would have found it obvious to use a greater
`
`number of photodiodes (e.g., six or more) to achieve known benefits such as
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`7
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`increasing the detection area and light sensitivity)). Id.; see, e.g., APPLE-1013,
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`107; APPLE-1008, 4:6-9, 4:59-62; APPLE-1060, 4; APPLE-1068, [0022], FIG.
`
`1A.
`
`Notably, the ’745 specification also never expressly discloses a minimum or
`
`critical number of photodiodes that must be present to form the claimed array.
`
`APPLE-1042, ¶18. Masimo thus improperly seeks to hold the prior art to a higher
`
`standard of disclosure than the ’745 patent itself. APPLE-1001, 9:27-30, 11:38-43;
`
`APPLE-1059, 97:22-102:17. In any event, Masimo ignores that the specific
`
`number of photodiodes alleged to be required by the claims is not even a
`
`patentable distinction in the first place. E.I. du Pont de Nemours & Co. v. Synvina
`
`C.V., 904 F.3d 996, 1006 (Fed. Cir. 2018) (“‘where the general conditions of a
`
`claim are disclosed in the prior art, it is not inventive to discover the optimum or
`
`workable ranges by routine experimentation’”). Indeed, it is well settled law that a
`
`claimed range is rendered obvious both when the prior art range overlaps and even
`
`when it does not in the absence of criticality or unexpected results, as is the case
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`here. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); MPEP §2144.05.
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`Iwamiya’s disclosure of a plurality of photodiodes encompasses a range that
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`renders the claim limitation obvious.
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`The claim term “correspond” also has broader meanings than those
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`represented by the applicant to the Office during prosecution of the parent
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`application. APPLE-1043, 3; APPLE-1044, 3; APPLE-1045, 3. Iwamiya’s
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`photodiodes arranged “on the same circumference centered on an optical axis” of
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`circular light taking unit 8 is consistent with the plain meaning of “correspond” at
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`least because the photodiodes are in agreement, harmony, or conformity with the
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`circular shape of the light taking unit 8 bounded by the circular light block.
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`APPLE-1042, ¶19.
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`Masimo further argues that a POSITA would not have been motivated to
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`change Iwamiya as proposed because the detecting-area’s center would have no
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`photodetector coverage, resulting in a degraded optical signal that receives less
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`light due to gaps in coverage. POR, 27-28. This argument is a strawman. Apple
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`need not show any motivation, as Apple did not propose modifying Iwamiya. As
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`discussed, Iwamiya explicitly discloses a plurality of photodiodes arranged in an
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`array having a spatial configuration corresponding to a circular shape. APPLE-
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`1042, ¶20.
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`Masimo relies only on Duckworth’s unsupported declaration for this
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`argument, but evidence shows the contrary. A POSITA understood that in “a
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`reflectance oximeter, the incident light emitted from the LEDs diffuses through the
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`skin and the back scattered light forms a circular pattern” and thus, using “multiple
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`photodiodes placed symmetrically with respect to the [emitted light] instead of a
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`single photodiode, a large fraction of back scattered light can be detected and
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`therefore larger plethysmograms can be obtained.” APPLE-1013, 107; APPLE-
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`1008, 4:6-9 (“the total amount of backscattered light that can be detected by a
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`reflectance sensor is directly proportional to the number of photodetectors”), 4:59-
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`62 (“a radially-symmetric photodetector array can help to maximize the detection
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`of backscattered light from the skin and minimize differences from local tissue
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`inhomogeneity”); APPLE-1060, 4 (“a concentric array of either discrete PDs, or an
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`annularly-shaped PD ring, could be used to increase the amount of backscattered
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`light detected by a reflectance type pulse oximeter sensor”); APPLE-1042, ¶21.
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`C.
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`Iwamiya-Sarantos renders obvious adding a second wavelength
`(claim 2) to measure oxygen saturation at the wrist
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`Sarantos discloses and renders obvious measuring oxygen
`saturation at the wrist
`As an initial matter, the POR’s focus on whether Sarantos’s own device
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`measures oxygen saturation or just pulse rate is misdirected and legally irrelevant.
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`POR, 33-35. The Petition relied on Sarantos in claim 2 not for the structures of
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`Sarantos’s own device, but rather for its reference to well-known techniques for
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`measuring oxygen saturation using two wavelengths of light (i.e., red and infrared
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`wavelengths). Pet., 18-19 (citing APPLE-1005, 13:40-53); In re Etter, 756 F.2d
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`852, 859 (Fed. Cir. 1985) (en banc) (“the criterion [is] not whether the references
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`could be physically combined but whether the claimed inventions are rendered
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`obvious by the teachings of the prior art as a whole”); accord In re Mouttet, 686
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`F.3d 1322, 1332 (Fed. Cir. 2012); APPLE-1042, ¶22.
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`Nonetheless, Sarantos clearly contemplates embodiments where its device
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`would measure blood oxygenation levels using red and infrared light. APPLE-
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`1042, ¶23. This is evident from Sarantos’s express description of structural
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`adaptations that can be made to accommodate multiple LEDs of different
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`wavelengths. See, e.g., APPLE-1005, 13:34-36, 13:44-14:22.
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`Sarantos’s use of “green/yellow” light in preferred embodiments also does
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`not constitute a teaching away. Meiresonne v. Google, Inc., 849 F.3d 1379, 1382
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`(Fed. Cir. 2017) (“A reference that ‘merely expresses a general preference for an
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`alternative invention but does not criticize, discredit, or otherwise discourage
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`investigation into’ the claimed invention does not teach away.”). A POSITA
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`reviewing Sarantos’s alternative embodiments for measuring blood oxygen levels
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`at col. 13:36-14:22 would have understood and found obvious that the
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`ratios/dimensions of Sarantos’s HAR photodetectors could and would be suitably
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`optimized for the detection of red/infrared light. APPLE-1042, ¶23. Sarantos
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`never even expresses a preference, let alone criticizes, red/infrared light for
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`measuring blood oxygen levels. Id.
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`A POSITA would have known how to make predictable
`adaptations to Iwamiya’s device that would allow the device
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`in the Iwamiya-Sarantos combination to measure oxygen
`saturation
`The evidence here confirms that a POSITA would have known how to adapt
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`Iwamiya’s device to measure blood oxygen levels using red/infrared light as taught
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`in Sarantos. APPLE-1042, ¶25. Iwamiya’s device already includes 940 nm
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`infrared LEDs that would be suitable for measuring blood oxygen levels; it would
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`have been obvious and straightforward to augment the device with one or more
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`LEDs emitting red light, e.g., by adding one or more red LEDs or replacing one of
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`Iwamiya’s two original infrared LEDs with a red LED. Id. Likewise, Anthony
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`explains that optimizing sensitivity of the photodiodes for oxygen saturation,
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`adapting the optical filter to pass both red and infrared light (or implementing an
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`oximeter without such a filter), and performing basic signal processing algorithms
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`for calculating oxygen saturation were all known, obvious, and well within the
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`skill of a POSITA. Id.; see, e.g., APPLE-1013, 94, 96; APPLE-1070, Abstract;
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`APPLE-1071, [0052]; APPLE-1080, [0137].
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`
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`The POR mischaracterizes Iwamiya in asserting that it
`teaches away from measuring blood oxygen saturation
`using red and infrared light
`Iwamiya’s disclosed embodiments focus on detecting a pulse wave for
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`measuring a pulse rate (heart rate) using a single wavelength of infrared light at
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`940 nm. APPLE-1004, 1:62-2:6, 6:32-35. But Iwamiya never criticizes,
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`discredits, or otherwise discourages the use of two wavelengths of red and infrared
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`light for the purpose of measuring oxygen saturation. Meiresonne, 849 F.3d at
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`1382 (“criticize, discredit, or otherwise discourage”). A POSITA looking to adapt
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`Iwamiya to determine oxygen saturation would not have been led away from the
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`use of red and infrared LEDs (or from implementing any of the other obvious
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`adaptations previously discussed) that would allow the device to determine oxygen
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`saturation apart from pulse rate. APPLE-1042, ¶26. Indeed, Iwamiya’s preferred
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`940 nm wavelength light for pulse rate measurements could still be retained in the
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`Iwamiya-Sarantos combination since 940 nm light is also commonly used for
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`determining oxygen saturation. Id.; APPLE-1013, 16, 52, 62-63, 73, 79-80;
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`APPLE-1040, 4; APPLE-1056, 16; APPLE-1050, 1; APPLE-1053, 3-4; APPLE-
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`1052, [0007]. A POSITA’s desire to expand the capabilities of Iwamiya’s device
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`by adding a red wavelength to measure oxygen saturation in addition to pulse rate
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`would have justified any reasonably necessary design tradeoffs. Winner, 202 F.3d
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`at 1349 n.8.
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`
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`A POSITA would have reasonably expected success in
`modifying Iwamiya to measure oxygen saturation at the
`wrist
`Even apart from Sarantos, the record includes well over a dozen references
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`from before the ’745 Patent that describe solutions for determining oxygen
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`saturation at the wrist.5 Anthony reviewed these references—including references
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`that were entered into the record before the POR and others that Apple identified
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`responsive to Masimo’s POR arguments— and explained how they further
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`demonstrate that a POSITA would have reasonably expected success implementing
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`the combinations to determine oxygen saturation at the wrist before the ’745
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`Patent. APPLE-1042, ¶¶27-34 (citing APPLE-1039–APPLE-1041, APPLE-1050–
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`APPLE-1056, APPLE-1058, APPLE-1061–APPLE-1066). A POSITA would
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`have known of all these references since the law “presumes that all prior art
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`references in the field of the invention are available to this hypothetical skilled
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`artisan.” In re Carlson, 983 F.2d 1032, 1037-38 (Fed. Cir. 1993) (a POSITA “is
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`charged with knowledge of all the contents of the relevant prior art” and “is
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`presumed to know all the pertinent prior art”); In re Rouffet, 149 F.3d 1350, 1357
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`(Fed. Cir. 1998).
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`Notably, the evidence reviewed by Anthony includes engineering and
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`scientific papers describing actual studies and experimental results that confirm the
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`feasibility of determining oxygen saturation at the wrist before the ’745 Patent.
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`5 The bulk of these references—including Exhibits APPLE-1050–APPLE-1056,
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`APPLE-1058, APPLE-1061–APPLE-1066—were not previously submitted or
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`available to the ALJ at the ITC proceeding involving the ’745 Patent.
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`See, e.g., APPLE-1050, 2 (“we present another novel reflective wrist pulse
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`oximeter that has been developed in our laboratory.”); APPLE-1051, Abstract
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`(“This sensor has demonstrated an ability to gather high-integrity data at fingertip,
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`wrist, earlobe, palm, and temple locations from a group of 48 subjects (20 to 64
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`years old).”); APPLE-1053, Abstract (“The experimental results have confirmed
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`the feasibility of this wrist-band oximeter.’); APPLE-1055, 5 (“wireless integrated
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`pulse oximeter implanted in a … wrist band is possible to achieve with many
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`benefits and practical applications”). A POSITA would have known of these
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`references, yet Duckworth conceded that he was not aware of them when he
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`offered his opinions in his declarations cited in the POR. APPLE-1059, 49:17-
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`50:7, 59:17-60:2, 65:3-66:5, 70:18-77:20; APPLE-1042, ¶¶27-34.
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`Masimo’s arguments about the alleged shortcomings of the prior art stand
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`directly at odds with the limited disclosure of determining oxygen saturation at the
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`wrist in the ’745 Patent itself. APPLE-1042, ¶¶35-37. The ’745 Patent only
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`mentions the wrist as a possible tissue measurement site in passing, with no
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`acknowledgment of the alleged challenges of measuring at the wrist and no
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`solutions specifically tailored to addressing such challenges. See APPLE-1001,
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`2:58-59; 10:40-51; 12:18-20. For example, Duckworth conceded that the forehead
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`would provide a much stronger signal for measuring oxygen saturation than the
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`wrist (APPLE-1059, 37:6-8), and yet the ’745 Patent discloses no reflectance
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`sensor adaptations that would be made to successfully determine oxygen saturation
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`Case No. IPR2022-01465
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`from a weaker signal at the wrist. APP