`
`Filed: October 2, 2023
`
`By:
`
`Filed on behalfof:
`Patent Owner Masimo Corporation
`Brian C. Claassen (Reg. No. 63,051)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Daniel Kiang (Reg. No. 79,631)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.:
`(949) 760-0404
`Fax:
`(949) 760-9502
`E-mail:
`AppleIPR745-3@knobbe.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`
`Petitioner,
`
`Vv.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`Case IPR2022-01465
`U.S. Patent 10,687,745
`
`PATENT OWNER SUR-REPLY
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`INTRODUCTION .................................................................................... 1
`I.
`II. WAIVER .................................................................................................. 2
`III. CLAIM CONSTRUCTION ..................................................................... 3
`IV. ARGUMENT ............................................................................................ 4
`A.
`Iwamiya-Sarantos Combinations ................................................... 4
`B.
`Sarantos-Shie Combinations ........................................................ 13
`1.
`Shie Does Not Disclose a Material Used in
`Physiological Sensors ........................................................ 13
`A POSITA Would Not Have Been Motivated to
`Make Sarantos-Shie ........................................................... 14
`Sarantos’s Figures 22-25 Are Not “Cohesive” .................. 17
`Sarantos-Shie Does Not Render Obvious the Claimed
`Spatial Configuration ......................................................... 19
`Claim 12 ............................................................................. 19
`5.
`C. No Expectation of Success ........................................................... 19
`1.
`The Newly Cited References Do Not Establish a
`Reasonable Expectation of Success ................................... 21
`A POSITA’s Knowledge of All Art Does Not
`Establish an Expectation of Success .................................. 27
`Apple Witness Testimony and Documents Are
`Highly Probative ................................................................ 28
`Apple’s Enablement Arguments Are Irrelevant ................ 32
`4.
`CONCLUSION ....................................................................................... 34
`
`V.
`
`-i-
`
`2.
`
`3.
`4.
`
`2.
`
`3.
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Ariosa Diagnostics v. Verinata Health,
`805 F.3d 1359 (Fed. Cir. 2015) ..................................................................... 2
`Fromson v. Advance Offset Plate, Inc.,
`755 F.2d 1549 (Fed. Cir. 1985) ..................................................................... 2
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ................................................................... 32
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ....................................................................................... 6
`In re Rouffet,
`149 F.3d 1350 (Fed. Cir. 1998) ................................................................... 27
`In re Wands,
`858 F.2d 731 (Fed. Cir. 1988) ..................................................................... 32
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) ................................................................... 25
`OTHER AUTHORITIES
`35 U.S.C. §312 .................................................................................................. 27
`37 C.F.R. §42.6 ........................................................................................... 15, 25
`
`
`-ii-
`
`
`
`No.
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
` Exhibit
`
`2006
`
`2007
`
`2008
`
`2009-
`
`2010
`
`2011
`
`2012
`
`2013
`
`
`
`EXHIBIT LIST
`
`Description
`
`Declaration of Jeremiah S. Helm in Support of Pro Hac Vice Motion
`
`Declaration of Professor R. James Duckworth, Ph.D.
`
`Curriculum Vitae of Professor R. James Duckworth, Ph.D.
`
`Y. Mendelsonetal., “A wearable reflectance pulse oximeter for
`
`remote physiological monitoring,” Proceedings of the 28th IEEE
`
`EMBSAnnualInternational Conference, pp. 912-915, 2006
`
`R.J. Duckworthetal., “Field Testing of a Wireless Wearable
`Reflectance Pulse Oximeter,” American Telemedicine Association
`Annual Conference, 2006
`
`Y. Mendelson, “Wearable Wireless Pulse Oximetry for Physiological
`Monitoring,” Worcester Polytechnic Institute Precise Personnel
`Location Workshop, 2008
`
`RESERVED
`
`Masimo Corp.et al. v. Apple Inc., June 6-10, 2022 Public Hearing
`Transcript, ITC Inv. No 337-TA-1276
`
`RESERVED
`
`MasimoCorp.et al. v. Apple Inc., Masimo’s June 27, 2022 Public
`Initial Post-Hearing Brief, ITC Inv. No 337-TA-1276
`
`Masimo Corp.et al. v. Apple Inc., Masimo’s August 18, 2022 Motion
`to Modify Protective Order, ITC Inv. No 337-TA-1276
`
`Masimo Corp.et al. v. Apple Inc., Apple’s August 29, 2022
`Opposition to Masimo’s Motion to Modify Protective Order, ITC Inv.
`No 337-TA-1276
`
`-lll-
`
`
`
`
`
`
`
`Exhibit
`No.
`
`or
`Description
`
`014 Masimo’s September 20, 2022 Email to Board Requesting
`Authorization to File Motions for Additional Discovery
`
`Apple’s September 19, 2022 Email to Masimo Opposing Masimo’s
`015
`~|Request for Additional Discovery
`
`2016-|RESERVED
`
`2018
`
`2019|US. Patent Pub. No. 2017/0325744
`
`2020|January 3, 2013 MasimoPress Release Regarding iSpO2
`
`2021|October 2, 2013 Marcelo Lamego Email to Apple CEO Tim Cook
`
`2022
`
`|U-S. Patent No. 10,524,671
`
`2023|US. Patent No. 10,247,670
`
`2024|US. Patent No. 11,009,390
`
`2025|US. Patent No. 10,219,754
`
`2026|RESERVED
`
`
`
`
`
`
`
`Masimo Corp.et al. v. Apple Inc., Public Order Regarding Masimo’s
`2027|Motion for Preliminary Injunction, Case No. 8:20-cv-00048 (C.D.
`Cal.)
`
`2028|Apple Webpage Titled “Apple Watch Series 6”
`
`2029|Apple Watch Series 6 Video
`
`2030-
`049
`
`050
`
`RESERVED
`
`Respondent Apple Inc.’s Post-Hearing Brief (publicly filed July 13,
`2022 in the Investigation)
`
`-IV-
`
`
`
`
`
`
`
`
`
`or
`Description
`
`No.
`
`051
`-
`
`052
`-
`
`Respondent Apple Inc.’s Corrected Pre-Hearing Brief (publicly filed
`May 27, 2022 in the Investigation)
`
`2053
`
`2054
`
`2055
`
`February 23, 2022 Updated Joint Proposed Claim Construction Chart,
`.
`Ct
`filed in the Investigation
`
`January 27, 2022 Complainants’ Opening Claim Construction Brief,
`.
`or
`filed in the Investigation
`
`February 10, 2022 Respondent Apple Inc.’s Rebuttal MarkmanBrief,
`.
`-
`filed in the Investigation
`
`2056|Excerpts of the File History of App. No. 16/532,065
`
`2057|Excerpts of the File History of App. No. 15/195,199
`
`2058
`
`August 31-September 27, 2022 Email Chain between Masimo’s
`;
`_
`.
`counsel and Apple’s counsel regarding Petition correction
`
`2059|PCT Publication WO 02/28274
`
`Complainants’ Reply Post-Hearing Brief (publicly filed July 25, 2022
`in the Investigation)
`
` Exhibit
`
`
`
`060
`
`Redlined comparison of text ofMendelson-799 and PCT Publication
`WO02/28274
`
`2061|U.S. Pat. App. Pub. No. 2014/0107493
`
`062
`
`September 15, 2020 Apple Press Release Regarding Apple Watch
`Series 6
`
`Andrew Griffin, “Apple Watch Series 6: Why Apple Added a Sensor
`to Tell How Much OxygenIs in Your Blood as Its Big New Feature —
`2063|And What It Means,” Independent, Oct. 7, 2020
`(https://www.independent.co.uk/tech/apple-watch-series-6-blood-
`oxygen-pulse-oximetry-red-light-heart-rate-vo2-max-b5 13807 .html)
`
`-V-
`
`
`
`
`
`No.
`
`or
`Description
`
`2065|Excerpts of Webster’s New Collegiate Dictionary (1980)
`
`2066|Masimo 2014 AnnualReport
`
`067 Marcelo Lamego LinkedIn Profile
`(https://www.linkedin.com/in/marcelo-lamego-72564454)
`
`Findings of Fact & Conclusions of Law, Masimo Corp. v. True
`2068|Wearables, Inc., No. 8:18-cv-02001-JVS-JDE, Dkt. 600 (C.D. Cal.
`Nov. 7, 2022)
`
`Brian Chen, “The New Apple Watch Measures Your Blood Oxygen.
`064 Now What?,” New York Times, Sept. 17, 2020
`(https://www.nytimes.com/2020/09/17/technology/personaltech/new-
`apple-watch-blood-oxygen-level-review.html)
`
` Exhibit
`
`
`
`069
`
`Eric W. Weisstein, Annulus, Wolfram MathWorld (Dec. 1, 2022, 3:20
`PM), https://mathworld.wolfram.com/Annulus.html
`
`Declaration of Professor R. James Duckworth, Ph.D. in Support of
`2070 _
`Masimo’s Patent Owner Responses
`
`3071
`
`Transcript ofMarch 24, 2023 Deposition ofDr. Brian W. Anthony and
`Exhibits 1-3 Thereto
`
`2072|Excerpt of Webster’s II New College Dictionary (2001)
`
`073
`
`Encyclopedia Britannica, Light, the visible spectrum,
`https://www.britannica.com/science/light (last visited May 19, 2023)
`
`Nonconfidential Excerpt of Page 65 from June 6-10, 2022 Hearing
`2074|Transcript, Masimo Corp. et al. v. Apple Inc., ITC Inv. No 337-TA-
`1276
`
`February 13, 2023 Respondent Apple Inc.’s Response to
`2075|Complainants’ Petition for Review (Public Version), filed in Masimo
`Corp. et al. v. Apple Inc., ITC Inv. No 337-TA-1276
`
`-Vi-
`
`
`
`
`
`No.
`
`or
`Description
`
`CONFIDENTIAL~—Transcript of Testimony of Brian Land from June
`2076|6-10, 2022 Hearing Transcript, Masimo Corp.et al. v. Apple Inc., ITC
`Inv. No 337-TA-1276
`
`CONFIDENTIAL- Transcript of Testimony of Dr. Paul Mannheimer
`2077|from June 6-10, 2022 Hearing Transcript, Masimo Corp.et al. v.
`Apple Inc., ITC Inv. No 337-TA-1276
`
`CONFIDENTIAL-—Transcript of Testimony of Dr. Stephen Waydo
`2078|from June 6-10, 2022 Hearing Transcript, Masimo Corp.et al. v.
`Apple Inc., ITC Inv. No 337-TA-1276
`
`CONFIDENTIAL — Transcript of Testimony of Dr. Vivek Venugopal
`2079|from June 6-10, 2022 Hearing Transcript, Masimo Corp.et al. v.
`Apple Inc., ITC Inv. No 337-TA-1276
`
`080
`
`081
`
`5082
`
`083
`
`2084
`
`CONFIDENTIAL — ITC Exhibit CX-0289C — Designated Portions of
`February 10, 2022 Deposition of Paul Mannheimer
`
`CONFIDENTIAL — ITC Exhibit CX-0299C — Designated Portions of
`February 18, 2022 Deposition of Stephen Waydo
`
`CONFIDENTIAL — ITC Exhibit CX-0007C — Email from Brian Land
`to Paul Mannheimeretal.
`
`CONFIDENTIAL — ITC Exhibit CX-0175C — Apple Organization
`Chart
`
`
`
` Exhibit
`
`CONFIDENTIAL— ITC Exhibit CX-0295C — Designated Portions of
`February 11, 2022 Deposition of Tao Shui
`
`2085|CONFIDENTIAL — ITC Exhibit CX-0177C — Apple Presentation
`
`2086|CONFIDENTIAL — ITC Exhibit CX-0185C — Apple Presentation
`
`-Vll-
`
`
`
`
`
`or
`Description
`
`
`No.
`
`087
`
`Kim, Gina, “Masimo Wants $3B From Apple Over Smartwatch IP,
`Jury Told.” Law360, April 5, 2023
`(https://www.law360.com/articles/1593689/masimo-wants-3b-from-
`apple-over-smartwatch-ip-jury-told)
`
`ITC Exhibit CX-1616 — Fowler, Geoffrey, “The new Apple Watch
`says my lungs maybesick. Or perfect. It can’t decide.” Washington
`2088|Post, September 23, 2020
`(https://www.washingtonpost.com/technology/202
`
`0/09/23/apple-watch-oximeter/)
`
`2089|CONFIDENTIAL — ITC Exhibit CX-1793C — Apple Presentation
`
`2090
`
`CONFIDENTIAL — ITC Exhibit CX-1800C — Email from Adnan
`.
`.
`Perica to Steve Hotelling,etal.
`
`William, Andrews, “Fitbit Update Lets You Quickly Check Your
`Blood Oxygen Saturation.” Forbes, Sept. 9, 2020
`2091|(https://www.forbes.com/sites/andrewwilliams/2020/09/09/fitbit-
`update-lets-you-quickly-check-your-blood-oxygen-
`saturation/?sh=S5d6ecb55e76a)
`
`092
`
`“Track Your SpO2 to Uncover Changes in Your Wellbeing,” Fitbit,
`Sept. 7, 2020 (https://blog.fitbit.com/track-your-spo2/)
`
`2093|CONFIDENTIAL — ITC FinalInitial Determination
`
`2094|RESERVED
`
`2095|Declaration of Daniel C. Kiang (served only)
`
`
`
` Exhibit
`
`Transcript of Telephonic Hearing before the Panel, dated September1,
`2023
`
`2096
`
`2097-
`2099
`
`RESERVED
`
`-Vill-
`
`
`
`
`
`ae
`Description
`
`CONFIDENTIAL- Declaration of Dr. R. James Duckworth in
`Support of Patent Owner’s Sur-Reply
`
`No.
`
`100
`
`7101
`
`
`
` Exhibit
`
`CONFIDENTIAL — Transcript of September 15, 2023 Deposition of
`Dr. Brian W. Anthony
`
`2102|Transcript of September 27, 2023 Telephonic Hearing before the Panel
`
`-1X-
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Applefiled an underdeveloped Petition that did not addressall claim elements
`
`and instead proposed incomplete or
`
`inoperable combinations.
`
`Apparently
`
`recognizing the flawsin its Petition, Apple submitted a Reply with twice the number
`
`of substantive exhibits that it submitted with the Petition (thirty-seven new exhibits)
`
`and a ninety-six-page expert declaration. But the Reply does notfix the Petition’s
`
`problemsbecause the new theories conflict with the references themselves, would
`
`result in worse sensors, and still do not establish all claimed elements. Apple’s
`
`shifting theories demonstrate that it worked backward from the claims and attempted
`
`to cobble together disparate features.
`
`Apple also cites a hodgepodge of new references to support its reasonable
`
`expectation of success arguments. But those references identify an aspirational goal
`
`of determining oxygen saturation at the wrist, without evidence that goal was ever
`
`realized. Apple also trivializes its own engineers’ testimony explainingthe difficulty
`
`of determining oxygensaturationat the wrist as ignorant, misinformed,orirrelevant.
`
`Apple relies on its expert’s hindsight re-imagination of that evidence and his
`
`speculation that the engineers’ testimonyrelated to non-existent design goals. At no
`
`point did Apple’s expert, Anthony, speak with the Apple engineers who could have
`
`corrected his misunderstanding. He presents no reason to depart from the ITC’s
`
`determinations that were grounded in evaluating live testimony and supporting
`
`
`
`
`
`evidence. And Apple still does not squarely address the ITC’s finding that the
`
`Iwamiya-Sarantos combination had no reasonable expectation of success for Claims
`
`9, 18, and 27. EX2093, 230, 235-236, 240.
`
`Apple tries to prove obviousness by pointing to unconnected pieces in
`
`different references. But “[o]nly God works from nothing. Men must workwith old
`
`elements.” Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549, 1556 n.3 (Fed.
`
`Cir. 1985). That the Reply includes so many new references and an enormous
`
`declaration yet still struggles to patch together the claimed invention in a coherent
`
`manner underscoresthat the claims are not obvious.
`
`Il. WAIVER
`
`Apple’s Petition failed to establish a primafacie case of obviousness because
`
`it (1) ignored evidence that underminedits arguments, (2) did not support its position
`
`with evidence, and (3) proposed incomplete or inoperable combinations. Apple’s
`
`Reply includes 37 new exhibits and a 96-page declaration. As discussed below,
`
`Apple’s Reply also includes new terms to be construed (Section II]) and new
`
`combinations and modifications of prior art (Sections IV.A, IV.B.1-5). But
`
`providing new evidence or new theories beyondthe Petition is not within the proper
`
`scope of a Reply and fails to establish a prima facie case. Ariosa Diagnostics v.
`
`Verinata Health, 805 F.3d 1359, 1367 (Fed. Cir. 2015). Indeed, Anthonyrepeatedly
`
`testified that the new material was “not necessary.” EX2101, 19:5-12, 27:1-17,
`
`-2-
`
`
`
`
`
`99:21-100:12. Accordingly,
`
`the Board should not consider the Reply’s new
`
`evidence and arguments.
`
`Ill. CLAIM CONSTRUCTION
`
`The Reply raises the construction of “determine. ..oxygen saturation.” Apple
`
`argues the claim “could be satisfied by” unspecified “rudimentary functions.”
`
`Reply, 19-20. Anthony suggests “determine...oxygen saturation” “might not even
`
`need to be a measurement”and could instead be an “indication of whether a signal
`
`sufficient for measuring oxygen saturation has been obtained....”” EX1042 941. The
`
`°745 Patent, however, explains the processor “receive|s] the transmitted signal” and
`
`“determine[s]...arterial oxygen saturation...in the tissue measurement
`
`site.”
`
`EX1001, 2:66-3:4; 3:46-61; 13:37-40.
`
`“Determine...oxygen saturation” thus
`
`requires more than “a signal sufficient for”; it requires calculating oxygensaturation.
`
`EX2100, 98-10. Anthony conceded that the claims require calculating oxygen
`
`saturation, consistent with a POSITA’s understanding. EX2101, 69:4-9.
`
`The Reply also raises a dispute about the term “corresponding,” which Apple
`
`argues “has broader meanings than those represented by the applicant to the Office
`
`during prosecution of the parent application.” Reply, 8-9. But the intrinsic evidence
`
`explains “corresponding,” e.g., in the context of Claim 15, requires a sufficient
`
`numberof detectors to match or represent the relevant shape. POR 24; EX2100,
`
`-3-
`
`
`
`
`
`411. Apple’s approach, which ignores the intrinsic evidence, was rejected by
`
`Phillips.
`
`IV. ARGUMENT
`
`A.
`
`Iwamiya-Sarantos Combinations
`
`Iwamiya’s goal is to obtain pulse rate measurements without interference
`
`from pigment and ambient light. POR, 29-33. Iwamiya’s design requires:
`
`e LEDs “configured to emit infrared light (Ap=940 nm) where absorbance
`
`of melanine pigment containedin the skin...is low,”
`
`e
`
`a photodetector “with spectral sensitivity characteristic of reacting
`
`strongest with light of a specific wavelength band of about A=940 nm,”
`
`and
`
`e an optical filter “configured to transmit light of a specific wavelength
`
`band of 900 nm or moreandshield light of a wavelength band of 900
`
`nm orless.”
`
`EX1004, 6:31-34, 8:29-31, 8:42-47. Every Iwamiya embodimentrequires these
`
`features, which Iwamiya teaches work together to provide a usable signal and avoid
`
`“unnecessary light included in the external light such as the sunlight.” EX1004,
`
`8:38-47, 13:1-23; EX2100, 934.
`
`The Petition proposed a non-functional modification that added a red emitter
`
`but kept Iwamiya’s other features. The Reply does not contest the original
`
`4.
`
`
`
`
`
`obviousness theory was inoperable.
`
`Instead, the Reply asserts a new theory that
`
`alleges “predictable adaptations” (Reply, 11-12), which Iwamiya teaches are
`
`undesirable.
`
`First, the Reply argues that using a dark-colored coating was “common
`
`practice” and therefore obvious. Reply, 2. But noneofthe references cited by Apple
`
`apply a dark coating to anything like Iwamiya’s light shield/filter design. EX2100,
`
`416. A POSITA would have understoodthat in Iwamtya’s design (below), the light
`
`taking unit (light blue) passes scattered “observation light” from the skin into the
`
`cavity (yellow) where the detector receivesit. Jd.; EX1004, Fig. 4 (below), 7:50-61;
`
`8:20-23. It would have been desirable to funnel as much of the “observation light”
`
`entering the cavity to the detector as possible. EX2100, 417. Apple admits the
`
`“absorptive material” in Iwamiya-Sarantos “would reduce the amount of
`
`scattered/reflected light from the space surrounding frame 18 from reflecting back
`
`through optical filter 17 to the photodiodes.” Reply, 4. This reduces the signal
`
`reaching the detector. EX2100, 417. The Reply criticizes Masimo’s expert,
`
`Duckworth, for analyzing Iwamiya’s use ofreflective surfaces for similar structures.
`
`Reply, 4-5; POR 18-19; EX2100, 9914-15. Although Iwamiya doesnot expressly
`
`discuss the material for “light shielding frame 18,” it specifically discloses “metal
`
`with a light shielding property.”. EX1004 8:38-42, 18:61-64. The specification
`
`associates the frame and the property with the same “light shielding” language. A
`
`
`
`
`
`POSITA would naturally use that disclosed material with the light shielding property
`
`for the light shielding frameto achievethe benefits discussed above. EX2100, 413.
`
`Light shielding—_photodetector
`frame 18
`Light emitter
`sclt 7 te
`\
`|
`
`17 9fize 812
`|
`|
`
`3c
`
`
`EENoatf
`KZ.
`ARNE CINE
`
`LLLARNIANS
`
`
`
`
`Ltt2 —s
`;
`7
`
`
`Light emitter
`
` 6
`
`Ee’
`
`8
`
`Scattered
`light taking
`unit 8
`
`EX1004, Fig. 4 (annotated).
`
`Second, Apple misapplies KSR’s “routine design choice” by sidestepping the
`
`“design need...to solve a problem.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`402 (2007).! Apple arguesthat “scattered/reflected light” in Iwamiya’s cavity would
`
`increase noise. Reply, 4 (citing EX1042, 499, 12). The only support is Anthony’s
`
`declaration, which cites references discussing (1) scattered/reflected light in tissue
`
`or (2) detectors receiving emitted light which bypassedthe tissue (light piping).
`
`EX1042, 99; EX2100, §§18-20.
`
`Tissue scattering/reflection is a different
`
`' Emphasesaddedunless noted.
`
`-6-
`
`
`
`
`
`phenomenonthat is inapplicable to Iwamiya’s sensor cavity because there is no
`
`tissue or blood to absorb and change the signal. Jd., 419.
`
`Iwamiyaalso addressed
`
`light piping with its design. Jd. Reflections within Iwamiya’s measurement cavity
`
`improvesignal by directing light from the body, throughair, to the photodiode. Jd.;
`
`EX2100, 4919-20.
`
`Third, Apple argues a POSITA would add a coating to block light from
`
`bypassing Iwamiya’s optical filter (Reply, 2) but later inconsistently proposes
`
`removing Iwamiya’s filter altogether, thereby eliminating the alleged reason for the
`
`coating. Reply, 12; EX2100, §§21-22. Apple’s inconsistentposition reveals it relied
`
`on hindsight analysis to salvage an inoperable combination.
`
`Indeed, the Reply
`
`asserts an extensive series ofnew changes to Iwamiya. Reply, 12. But those changes
`
`destroy Iwamiya’s benefits, no longer avoid pigmentor ambientlight, increase noise
`
`and optical interference, and generally conflict with Iwamtya’s teachings to avoid
`
`light below 900nm (such as red). EX2100, 934-36; POR, 29-33, 20-21.
`
`Fourth, Apple justifies its modification with an illusory “design tradeoff.”
`
`Reply, 13. Apple asserts a POSITA would want to “expand the capabilities of
`
`Iwamiya’s device...to measure oxygensaturation....” Jd. But, as discussed (POR
`
`36-40; EX2070, 920-34:
`
`infra, Section IV.C), a POSITA would have no
`
`expectation of determining oxygen saturation with Iwamiya’s wrist-sensor. It is not
`
`-7-
`
`
`
`
`
`a design trade-off to destroy Iwamiya’s functions and advantages without any
`
`reasonably expected benefit. EX2100, 423, 37.
`
`Fifth, lwamiya teaches away from using non-infrared wavelengths. Iwamiya
`
`detects only infrared light to (1) avoid pigment in the skin and (2) remove
`
`“unnecessary light included in the external light such as the sunlight.” See, e.g.,
`
`EX1004, 1:62-2:6, 6:31-34, 10:34-38; EX2070, 9914, 46-47, 63. For those reasons,
`
`Iwamiya discourages detecting visible light, including red light. EX2070, 994.
`
`Apple does not address this teaching away. Reply, 14-15. And Anthony admits skin
`
`pigmentation was a key source of error. EX1042, §62. Nevertheless, Anthony
`
`argues that adding red LEDs to Iwamiya was a mere “design choice.” EX1042, 925.
`
`But Anthony’s proposed designsirradiate different tissue locations with different
`
`wavelengths of light, which would result in noisy or unusable signals. EX2100,
`
`431-33.
`
`That Anthony proposes such flawed arrangements underscores his
`
`erroneous analysis.
`
`Sixth, Apple argues that using six photodiodes in Iwamiya would “achieve
`
`knownbenefits such as increasing the detection area andlight sensitivity.” Reply 7-
`
`8. A POSITA, however, would have understood that Apple’s modification
`
`substantially decreases the detection area, and corresponding signal strength.
`
`EX2100, 924-26. As illustrated below, Iwamiya’s existing detection area (left,
`
`-8-
`
`
`
`
`
`green) is substantially larger than Apple’s modification (red, center); Apple’s
`
`modification no longer covers the area shownin orange(right). EX2100, 426.
`
`
`
`Left/Right: EX2100, 26; Middle: Reply, 7 (Apple’s annotated EX1004, Fig. 2).
`
`The modification decreases signal strength by 50% or more—the opposite of
`
`Apple’s alleged benefit and a very undesirable result, particularly for weak signals
`
`at the wrist. EX2100, 9925-26.
`
`Apple’s alleged “knownbenefits” rely on a completely different sensor design
`
`that positions detectors around a perimeter and captures light emitted from a central
`
`emitter reflected outward. Reply, 7-8; EX1042, 917; see, e.g., EX1008, Fig. 7
`
`(annotated below, central emitters/peripheral detectors); EX2100, §27.
`
`-9-
`
`
`
`
`
`Iwamiya-Sarantos does the opposite: peripheral emitters direct light inward towards
`
`the center. EX2100, 27 (annotating EX1004, Fig. 4, below).
`
`Light emitter
`
`Central photodetector
`
`TTT
`
`RRR
`
`LL SS LS J Lf J
`
`Photodetectors
`Light emitter
`
`Light directed towards central
`photodetector
`
`FIG.4
`
`The different configuration meansa circular arrangementin the center necessarily
`
`creates a gap in Iwamiya-Sarantos’s detection area (below) that reduces signal
`
`strength—the opposite ofApple’s proposed motivation. EX2100, 4925, 27; EX2070,
`
`4100, 102-104.
`
`-10-
`
`
`
` Empty spot
`
`EX2100, 425.
`
`Apple rationalizes its modification based on Iwamiya’s reference to a
`
`“circumference.” Reply, 5-6. Apple is wrong that Iwamiyadiscloses the claimed
`
`design.
`
`Reply, 9.
`
`A POSITA would have understood that
`
`Iwamiya’s
`
`“circumference” defines the detectors’ relative location, and not a circular array.
`
`EX2100, §28. For example,
`
`the detector arrangement below is on the same
`
`circumference centered on the optical axis and captures light over the entire
`
`detection area.
`
`
`
`EX2100, 928-29. Apple’s circular arrangementis not a design tradeoff, and would
`
`result in a substantially worse signal. Jd.
`
`-|]-
`
`
`
`
`
`Apple argues the ’745 Patent should have identified “a minimum orcritical
`
`numberof photodiodes,” and asserts the claims involve optimizing ranges. Reply,
`
`8. But the claims are not directed to a range.
`
`Instead, they recite a particular
`
`structural arrangement (not disclosed by Iwamiya) that is defined by a sufficient
`
`numberof detectors. POR, 23-24; EX2057, 322; EX2100, 430.
`
`Seventh, Apple argues that a symmetrical ring nevertheless has a different
`
`length and width. Reply, 21-22. Apple, however, inconsistently identifies different
`
`features as the “length” (outer diameter) and “width”(annular radius). Jd.; EX2100,
`
`§[38-40. Iwamiya-Sarantos’s symmetric shape does not meet Claim 25’s limitation.
`
`Finally, Apple asserts that Sarantos “discloses and renders obvious measuring
`
`oxygen saturation at the wrist.” Reply 10-11. Apple relies on Sarantos’s alleged
`
`“alternative embodiments for measuring blood oxygen levels at col. 13:36-14:22.”
`
`Reply, 11. But that portion of Sarantos is, at best, a speculative invitation for
`
`experimentation. EX2070, 4957, 88. Sarantos later confirms its disclosed sensors
`
`were “not tailored for use in other spectrums, such as the red or infrared spectra.”
`
`EX1005 18:35-51; POR 33-36; EX2070, §§]57. Fitbit (Sarantos’s assignee) could
`
`not implement oxygen saturation determinations at the wrist for many years and
`
`recognized such determinations as a “hard technical problem.” EX2070, 9954-55;
`
`-|2-
`
`
`
`EX2079, 834:5-14, 836:3-837:18, 838:4-22, 845:7-16; EX2100, §{]55-57. As
`
`discussed, Iwamiya would have discouraged, and teaches away from, the proposed
`
`combination. POR 29-35. But, regardless, there was no expectation that adding
`
`emitters to Iwamiya would result in successful oxygen saturation determinations.
`
`B.
`
`Sarantos-Shie Combinations
`
`1.
`
`Shie Does Not Disclose a Material Used in Physiological Sensors
`
`Apple argues that Shie “discloses both cylindrical and Fresnel-type lenses,”
`
`and it “would have been obviousto transform light from a first shape to a second
`
`shape.” Reply, 23-24.
`
`Shie, however, has nothing to do with physiological
`
`monitoring but instead discusses, e.g., “automotive applications” such as “trailer
`
`lights.” EX1007 6:8-11; EX2100, 441. Apple instead relies on a new exhibit and
`
`arguesthat lenses are “used routinely”in “optical instrumentation.” Reply, 24. But
`
`the new exhibit (1) identifies many optical elements; (2) does not suggest any change
`
`in shape; and (3) involves “a fiber optic sensor” (below) irrelevant to Sarantos.
`
`EX1046, 10 (below); EX2100, 942.
`
`-13-
`
`
`
`
`
`That optical elements could be used in some instrumentation does not suggest a
`
`POSITA would have lookedto Shie, or specifically selected a cylindrical or Fresnel-
`
`type lens for use with Sarantos. EX2100, 942.
`
`Anthony’s analysis also conflicts with Apple’s ITC arguments. Anthony
`
`relies on his assumptionthat light from a square LED is square, with “no change in
`
`shape between the LEDsandthe diffuser.” EX1042, 953,58. But before the ITC,
`
`Apple argued that light from a square LED “changes from a square to a circular
`
`shape without passing through any material....”. EX2050, 160, 166-168. Apple
`
`cannot credibly maintain such inconsistent positions.
`
`2.
`
`A POSITA Would Not Have Been Motivated to Make Sarantos-
`
`Shie
`
`Apple argues that the Petition “identified multiple reasons” motivating the
`
`Sarantos-Shie combination. Reply, 24. Masimo rebutted these motivations,
`
`explaining they would decrease Sarantos’s
`
`signal
`
`strength and were self-
`
`contradicting and unsupported. POR, 45-54; EX2070, §]78-87. The Reply does not
`
`-14-
`
`
`
`
`
`address Masimo’s arguments butinstead asserts, without explanation, that Masimo
`
`used an “incomplete understanding.” Reply, 25. Apple also references “design
`
`tradeoffs” without any hint of what they are. Jd. Apple’s Reply thus includes no
`
`explanation why a POSITA would pluck a cylindrical or Fresnel-type lens from the
`
`universe of optical elements.
`
`Instead, Apple improperly incorporates Anthony’s
`
`declaration. Reply 25 (citing EX1042, §]60-64): 37 C.F.R. §42.6(a)(3).
`
`Anthony first asserts a cylindrical or Fresnel lens would direct more light to
`
`the photodiodes. EX1042 461. Anthony, however, identified no deficiency in
`
`Sarantos’s optimized detectors. EX2100, 951. Anthony drawsan arbitrary oval or
`
`square on Sarantos’s figures (below) and alleges a lens could provide suchprecise
`
`patterns:
`
`—
`
`Optical AC Power Beam
`_
`
`x (mm
`first shape (circle) pgs
`
`4
`
`Optical AC Power Beam
`
`8re 4
`
`APPLE-1005, FIG. 6 (annotated)
`
`APPLE-1005, FIG. 6 (annotated)
`
`EX1042, 464. But these figures illustrate light that passed through tissue that
`
`reflects, refracts, and absorbs it. EX1005, 6:5-8; 10:51-11:3; EX2100, 947-48.
`
`Light scattered and reflected by the body will not maintain its shape, and there is no
`
`evidence that the shape ofreflected light will track the first and second shapes of
`
`
`
`
`
`emitted light. EX2100, 449. A POSITA would not have understood that Sarantos-
`
`Shie could result in the precise shapes Anthony requires. Jd.
`
`Anthonyalso argues Fresnel or cylindrical lenses would distribute light over
`
`a wider area (the opposite of his first argument) to reduce the effect of skin
`
`aberrations. EX1042 961-62. The cited references do not recognize such an effect.
`
`EX2100, 952. Anthony further argues a POSITA would have modified Sarantos for
`
`cosmetic reasons, something neither Sarantos nor Shie suggests. EX1042 463 (citing
`
`EX1074). A POSITA would not have made cosmetic changes expected to reduce
`
`Sarantos’s signal. EX2100, 953; EX2070, 987.
`
`Apple’s experience emphasizesits hindsight-driven arguments are wrongfi
`ee
`ee
`Po Apple concluded:
`
`a e
`
`“conventional sensing methods do not result in waveforms that are
`
`consistent enough for SpO2 measurements at the wrist;”
`
`ee
`
`e “[ijnvention is required”
`
`EX2085, 7, 9, 12, 13: see also EX2076, 981:19-983:12; EX2100, 457.
`
`-16-
`
`
`
`
`I, 2X2079. 834:5-14, 834:20:24, 836:3-6; 837:4-18; 845:7-16.
`
`A POSITAwould not have added a Fresnelor cylindrical lens to Sarantos. EX2100,
`
`9951, 57.
`
`Claim 25 (Reply, 29) is nonobvious for the same reasons. EX2100, 954.
`
`Apple’s arguments additionally fail because it relies on the reflected light’s
`
`dimensions (Reply, 29-30) instead of emitted light, as claamed. EX2100, 448.
`
`3.
`
`Sarantos’s Figures 22-25 Are Not “Cohesive”
`
`The Reply asserts Sarantos’s Figures 22-25 are “cohesive.” Reply, 25. But
`
`Sarantos distinguishes between HAR (Figures 22-24) and non-HAR(Figures 25-26)
`
`embodiments. EX1005, 19:22-32; EX2100, 4958-59. Apple is wrong that “no
`
`combination was required to show unpatentability,” and the Reply impermissibly
`
`combines those embodiments forthe first time. Reply, 25-26. Apple further argues
`
`that it would have been obvious to combine Sarantos’s Figures 22 and 25, but the
`
`alleged result is a structure that breaks Sarantos’s single annular detector into many
`
`small detectors (below). Reply, 26-27.
`
`-|7-
`
`
`
`
`
`light block
`
`FIG. 25
`
`Sarantos teaches that either HARor ring-shaped detectors would capture morelight
`
`than small detectors, and thus discourages the modification. EX2100, 461-62;
`
`EX1005, 9:48-10:15, 19:21-32. A POSITAinstead would have followed Sarantos’s
`
`teachings and used HAR detectors in, e.g., a square or triangular arrangement
`
`(below). EX2100, 62; EX1005, Figs. 17, 18.
`
`1708
`
`WN
`
`
`
`1712
`1712
` WSSS
`
`\Wi
`
`
`SY
`
`
`
`
`FIG. 17
`
`-18-
`
`
`
`
`
`4.
`
`Sarantos-Shie Does Not Render Obvious the Claimed Spatial
`Configuration
`
`The Petition did not adequately address Claims6, 15, and 26’s “array” with a
`
`“spatial configuration corresponding to a shape” requirement. POR, 62-63. The
`
`Reply impermissibly gap-fills that deficiency by relying on its new modification of
`
`Sarantos’s Figure 25 (above). Reply, 26; EX2100, 60. Sarantos-Shie does not
`
`teach the claimed photodiode arrangement.
`
`Instead, a POSITA would have
`
`implemented HARdetectors in, e.g., a triangular shape, which does not meet the
`
`limitations. EX2100, {{[60-62.
`
`5.
`
`Claim 12
`
`Apple relies on square LEDsemi
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