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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 RESPONSE TO EXPERT TESTIMONY
`PROFFERED WITH PATENT OWNER’S SUR-REPLY
`
`
`
`
`
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`
`
`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`TABLE OF CONTENTS
`
`B.
`
`B.
`
`B.
`
`
`I.
`
`II.
`
`III.
`
`CLAIM CONSTRUCTION ............................................................................ 1
`A.
`“determine a physiological parameter … wherein the physiological
`parameter comprises oxygen saturation (Claims 9, 18) ........................ 1
`“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” (Claim 15) .................. 1
`IWAMIYA-SARANTOS GROUNDS ............................................................ 2
`A.
`Iwamiya-Sarantos Renders Obvious “a dark-colored coating”
`(elements [1.4] and [20.4]) .................................................................... 3
`Iwamiya-Sarantos Renders Obvious the Claimed Photodiode
`Arrangement (element [15.4] and claims 6 and 26) .............................. 4
`Iwamiya-Sarantos Combination ............................................................ 6
`C.
`SARANTOS-SHIE GROUNDS...................................................................... 7
`A. A POSITA Would Have Been Motivated to Combine Sarantos and
`Shie and Would Have Reasonably Expected Success .......................... 7
`Sarantos-Shie Renders Obvious a “light bock having a circular shape”
`(element [15.3]) and the Photodiode Array (element [15.4]) ............... 7
`IV. REASONABLE EXPECTATION OF SUCCESS (“REOS”) IN
`DETERMINING OXYGEN SATURATION AT THE WRIST .................... 8
`A.
`The Corroborating References Demonstrate REOS ............................. 8
`B.
`The Apple Engineers’ ITC Testimony Regarding Development of the
`Apple Watch is not Probative of REOS .............................................. 10
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`Case No. IPR2022-01465
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`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”)
`
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`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 Writ-
`ten Decision) (PTAB May 5, 2022) (the “’695 FWD”)
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`Case No. IPR2022-01465
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`APPLE-1019 – 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 Addi-
`tional Discovery
`
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`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”))
`
`
`APPLE-1039 ITC Inv. No. 337-TA-1276 Exhibit RX-0504 (Austin Wareing,
`Optimization of Reflectance-Mode Pulse Oximeter Sensors)
`
`
`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 An-
`thony
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`APPLE-1043 Excerpt of The American Heritage Dictionary of the English Lan-
`guage, Fifth Edition, Houghton Mifflin Harcourt Publishing Com-
`pany (2011)
`
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`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, An-
`esthesiology, Vol. 76, No. 6 (June 1992)
`
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`APPLE-1049 Duffy, MIO Alpha BLE Review, PC Magazine (Jan. 28, 2013)
`available at https://www.pcmag.com/reviews/mio-alpha-ble
`
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`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)
`
`
`APPLE-1052 U.S. Patent Application Publication No. 2006/0253010 to Brady et
`al.
`
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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 Biomedi-
`cal Engineering and Informatics (BMEI 2010)
`
`International Publication No. WO 2001/17421 to Lindberg et al.
`
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`APPLE-1054
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`APPLE-1055 Maattala et al., Optimum Place for Measuring Pulse Oximeter Sig-
`nal in Wireless Sensor-Belt or Wrist-Band, 2007 International
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`Conference on Convergence Information Technology, IEEE
`(2007)
`
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`APPLE-1056 Fontaine et al., Reflectance-Based Pulse Oximeter for the Chest
`and Wrist, Worchester Polytechnic Institute (April 2013) available
`at https://digital.wpi.edu/show/6969z2326
`
`
`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-re-
`view/
`
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`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)
`
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`APPLE-1060 Mendelson et al., A Wearable Reflectance Pulse Oximeter for Re-
`mote Physiological Monitoring, Proceedings of the 28th IEEE
`EMBS Annual International Conference (Sept. 3, 2006)
`
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`APPLE-1061
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`International Publication No. WO 2011/051888 to Ackermans et
`al.
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`APPLE-1062 U.S. Patent Application Publication No. 2005/0116820 to
`Goldreich
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`APPLE-1063
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`APPLE-1064 U.S. Patent No. 7,650,176 to Sarussi et al.
`
`APPLE-1065 U.S. Patent Application Publication No. 2002/0095092 to Kondo
`et al.
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`International Publication No. WO 2012/140559 to Shmueli et al.
`
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`APPLE-1066 U.S. Patent Application Publication No. 2015/0355604 to Fraser et
`al.
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`APPLE-1067 U.S. Patent No. 6,580,086 to Schulz et al.
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`APPLE-1068 U.S. Patent Application Publication No. 2013/0267854 to Johnson
`et al.
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`APPLE-1069
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`ITC Inv. No. 337-TA-1276 Exhibit RX-0498 (Takatani et al., Opti-
`cal Oximetry Sensors for Whole Blood and Tissue, IEEE Engi-
`neering in Medicine and Biology (June/July 1994))
`
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`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.
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`APPLE-1072 U.S. Patent No. 9,316,495 to Suzuki et al.
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`APPLE-1073 U.S. Patent Application Publication No. 2014/0051955 to Tiao et
`al.
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`APPLE-1074 U.S. Patent Application Publication No. 2016/0058312 to Han et
`al.
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`APPLE-1075 U.S. Patent Application Publication No. 2010/0261986 to Chin et
`al.
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`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 Edi-
`tion, Taylor & Francis Group, LLC (2014)
`
`
`APPLE-1078 Lee et al., Micro-LED Technologies and Applications, Information
`Display (June 2016)
`
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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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`APPLE-1081 Transcript of the Deposition of Dr. R. James Duckworth (October
`18, 2023)
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`Case No. IPR2022-01465
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`In accordance with the Board’s order of September 5, 2023, Apple submits
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`this Response to Expert Testimony proffered with PO’s Sur-reply. Paper 43, 5.
`
`I.
`
`CLAIM CONSTRUCTION
`A.
`“determine a physiological parameter … wherein the physiologi-
`cal parameter comprises oxygen saturation (Claims 9, 18)
`Duckworth’s assertion that Apple’s Reply and Anthony proposed a new con-
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`struction for this limitation is false. EX2100, ¶7. The Reply properly responded to
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`Masimo’s and Duckworth’s arguments regarding reasonable expectation of success,
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`which requires consideration of the appropriate scope of the claimed invention.
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`EX1042, ¶41; cf. EX1081, 80:16-81:13. In this context, Anthony noted that the
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`claims specify no minimum level of accuracy or quality for the determined oxygen
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`saturation—i.e., a point that Duckworth does not dispute. Id. Duckworth nonetheless
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`proposes that this limitation requires “calculating the user’s oxygen saturation.”
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`EX2100, ¶¶8-9. Apple submits that no construction is necessary and disagrees with
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`Duckworth’s departure from the plain language to import a “calculation” step, but
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`even if calculation were required, Anthony explained that “oxygen saturation is be-
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`ing calculated” even if “that’s not the parameter that is being displayed or used”
`
`(EX2101, 55:14-69:3) in the disputed example from his declaration (EX1042, ¶41).
`
`B.
`
`“plurality of photodiodes are arranged in an array having a spa-
`tial configuration corresponding to a shape of the portion of the
`tissue measurement site encircled by the light block” (Claim 15)
`Duckworth’s overly narrow construction of this limitation as requiring at least
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`“six photodiodes” to “‘match,’ ‘have a close similarity,’ or ‘represent’” a circular
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`shape is at odds with the intrinsic evidence. EX2100, ¶¶30, 11. Duckworth could
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`not rely on the plain language of the limitation to support his construction, but his
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`assertion that the “[t]he prosecution history informs a POSITA that six photodiodes”
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`are required is incorrect as well. Other portions of the prosecution history contradict
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`Duckworth’s assertion, and at a minimum, the prosecution history lacks the requisite
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`“clarity and precision” to support disclaimer. Northern Telecom Ltd. v. Samsung
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`Electronics Co., 215 F.3d 1281, 1295 (Fed. Cir. 2000); Mass. Inst. of Tech. v. Shire
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`Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016) (“clear and unmistakable”).
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`More specifically, Duckworth cherry picks one argument made during prose-
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`cution of an ancestor (EX2057, 322; EX2100, ¶11) but fails to acknowledge other
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`portions of the same response where Masimo argued that only “more than three
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`detectors,” rather than “six or more,” are required and expressly represented that
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`Masimo made no disclaimers or disavowals of claim scope. EX2057, 323, see also
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`324-325 (same arguments for claims 18, 26, and 32); EX2057, 325-326. No “clear
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`and unmistakable” disclaimer exists in this context. More, Duckworth never disputes
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`that the plain meaning of “correspond” is broader than Masimo’s alleged represen-
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`tation during prosecution of the ancestor application. EX1042, ¶19.
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`II.
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`IWAMIYA-SARANTOS GROUNDS
`To start, Duckworth’s testimony regarding Iwamiya is not reliable, as he could
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`not confirm that the opinions in his declaration were based on an understanding of
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`Iwamiya’s device. EX1081, 17:6-18:9, 19:6-21:3, 22:13-25:7, 28:9-13, 30:20-31:4.
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`A.
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`Iwamiya-Sarantos Renders Obvious “a dark-colored coating” (el-
`ements [1.4] and [20.4])
`Duckworth continued to rely on Iwamiya’s disclosure of reflective materials
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`for components that are different from the light shielding frame 18. EX2100, ¶¶12-
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`15. However, Iwamiya never once states that frame 18 is reflective, and the portions
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`of Iwamiya that Duckworth cites for reflective materials never refer to frame 18.
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`EX1004, 6:62-7:3, 7:41-49, 18:61-65, 28:64-29:1, 39:20-25; EX1059, 88:12-94:8.
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`Regardless, Duckworth’s focus on whether Iwamiya’s original design in-
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`cluded reflective materials for frame 18 is immaterial to whether “a dark-colored
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`coating” would have been an obvious option for implementing frame 18 in the Iwa-
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`miya-Sarantos combination. Iwamiya certainly does not teach away from a dark-
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`colored coating, and indeed, Duckworth could identify no statements in Iwamiya
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`that criticize or disparage the use of a light absorbing material on frame 18. EX1081,
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`37:14-40:6. Duckworth even conceded that an absorbing material would effectively
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`serve the function of shielding light from the photodetector. EX1081, 37:6-13.
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`Duckworth criticized Sarantos and corroborating references for not resem-
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`bling Iwamiya’s structure. EX2100, ¶16. But the dark-colored coatings described in
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`those references serve the same purpose and perform the same function of blocking
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`unwanted light from reaching the photodetector as Iwamiya’s light shielding frame
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`18. Also, Duckworth’s additional criticism of Schulz improperly focuses on an op-
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`tional embodiment and ignores Schulz’s explicit teaching of “black, opaque mate-
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`rial” on the “entire upper and lower surface elements.” EX1067, 9:58-10:23.
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`Duckworth’s rebuttal to Anthony’s explanation that a light-absorbing material
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`on frame 18 would reduce the “risk of multiple scattering and pathlength variations”
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`has no merit. EX1042, ¶12; EX2100, ¶¶17-19. Critically, in his declaration, Duck-
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`worth failed to acknowledge that light within Iwamiya’s cavity would not all be
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`“funneled” directly through filter 17 but would instead re-enter the tissue through
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`transparent light taking unit 8. EX1081, 27:10-32:8; EX1004, 7:53-61. Indeed, if
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`only reflective materials were used in the cavity and frame 18 as Duckworth pro-
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`posed, nothing would prevent light in the cavity from reflecting back to the tissue
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`through light taking unit 8, thereby causing the light to interact with the tissue a
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`second time and introducing pathlength variation in light that reflects back from the
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`tissue to the detector. The ’745 Patent refers to this phenomenon as “multiple scat-
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`tering” and recognizes that it reduces measurement accuracy. EX1001, 8:54-9:10.
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`The proposed dark-colored coating mitigates this problem. EX1042, ¶12-13.
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`B.
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`Iwamiya-Sarantos Renders Obvious the Claimed Photodiode Ar-
`rangement (element [15.4] and claims 6 and 26)
`Duckworth submitted an illustration of Iwamiya’s “plural light receiving units
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`9” that he conceded is “consistent with Iwamiya’s description” (EX2100, ¶¶28-29),
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`but which he failed to recognize meets the requirements of limitation [15.4] accord-
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`ing to its plain language. During deposition, Duckworth agreed that the “four smaller
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`square photodetectors [are] disposed on the same circumference” and he provided
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`the following annotation showing the “circumference” in his example. EX1081,
`circumference
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`57:9-59:1. The four-detector array, with the cen-
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`ter of each detector disposed on the same circum-
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`ference (circle), has a spatial configuration that
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`corresponds to, e.g., is “in agreement, harmony,
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`or conformity,” with a circular-shaped light
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`block. EX1042, ¶19; supra, Section I.B.
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`Duckworth criticized Anthony’s example for “substantially decreas[ing] the
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`ability of the sensor to detect light” (EX2100, ¶¶24-27), but Iwamiya explicitly dis-
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`closes an embodiment with “plural light receiving units 9… two-dimensionally dis-
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`posed … on the same circumference centered on an optical axis of the scattered light
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`taking unit 8” (EX1004, 14:36-41), and thus no modification of Iwamiya’s design is
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`necessary to meet this limitation. EX1042, ¶¶16, 20. Also, the outer circumferential
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`portion of the detection area would receive a greater intensity of reflected light than
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`a middle portion of the detection area. EX1004, 7:55-61; EX1005, 14:23-35.
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`Beyond misplaced criticisms of Anthony’s alleged modification of Iwamiya’s
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`design (which he did not modify), Duckworth notably never disputes that Iwamiya’s
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`disclosure of plural light receiving units 9 as illustrated by Anthony meets the claim
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`limitation recited in [15.4]. Nor does Duckworth dispute Anthony’s testimony re-
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`garding the disclosure of this claim limitation in the ’745 specification. EX1042,
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`¶18. Notably, apart from the ’745 Patent at 11:38-43 and FIGS. 7A-7B, Duckworth
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`confirmed that there was no additional description pertinent to this limitation.
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`EX1081, 43:3-45:1. But Iwamiya’s description of “plural light receiving units 9 …
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`disposed on the same circumference” is even more description of the recited claim
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`limitation than the portion of the ’745 specification that Duckworth identified in
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`connection with this limitation, which merely states that “a plurality of detectors 710
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`can be arranged in an array with a spatial configuration corresponding to the irradi-
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`ated surface area … to capture the reflected light from the tissue measurement site.”
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`EX1001, 11:38-43. The ’745 specification does not specify a minimum number of
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`detectors 710, limit the meaning of “correspond[],” or even specify that the array’s
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`spatial configuration corresponds to any “shape” of the irradiated surface.
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`C.
`Iwamiya-Sarantos Combination
`Duckworth criticized Anthony’s first two examples but never even addresses
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`Anthony’s third example illustrated in EX1042, ¶25. EX2100, ¶¶32-33. In all three
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`examples, Iwamiya’s “annular light guide unit 7” would guide the red and infrared
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`light to irradiate the same tissue (EX1004, 6:10-14, 7:14-24).
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`III. SARANTOS-SHIE GROUNDS
`A. A POSITA Would Have Been Motivated to Combine Sarantos
`and Shie and Would Have Reasonably Expected Success
`Contrary to Duckworth’s assertions, Shie does not limit the use of lenses to
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`“automotive applications” but rather describes “many types of optical elements use-
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`ful for an endless number of current and new applications.” EX1007, 1:16-17.
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`Further, Sarantos describes at least one example with respect to FIG. 14 that in com-
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`bination with Shie meets the limitations of claim 1 and in combination with Shie and
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`Venkatraman meets the limitations of claim 20, and would benefit from a cylindrical
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`or Fresnel lens that changes the shape of emitted light by, e.g., spreading the light in
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`one direction or changing the shape from a circle to a square, to direct more light to
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`the detectors. Duckworth does not dispute that a Fresnel lens would change the shape
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`of emitted light. Duckworth’s reliance on Apple’s decision to not use a Fresnel lens
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`in its oximeter (EX2100, ¶¶44, 51) is misplaced given the Watch’s different design.
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`B.
`
`Sarantos-Shie Renders Obvious a “light bock having a circular
`shape” (element [15.3]) and the Photodiode Array (element [15.4])
`As Anthony explained, a “POSITA would have viewed FIG. 25 and its corre-
`
`sponding disclosure as a natural extension of and incorporating the features of FIG.
`
`22, not a distinct disclosure requiring combination to show unpatentability.”
`
`EX1042, ¶65 (citing EX1005, 16:60-62, 19:31-35). Sarantos also explicitly discloses
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`the combination of FIGS. 22 and 25. EX1005, 21:3-11. Sarantos further explicitly
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`contemplates FIG. 25 having multiple photodetectors, and three and four photode-
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`tectors “arranged in a circular array.” EX1042, ¶72; EX1005, 3:62-4:2, 14:60-64,
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`20:52-57 (“any of the implementations discussed above”), FIGS. 15, 16.
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`IV. REASONABLE EXPECTATION OF SUCCESS (“REOS”) IN DE-
`TERMINING OXYGEN SATURATION AT THE WRIST
`A. The Corroborating References Demonstrate REOS
`Duckworth’s arguments dismissing the relevance of numerous corroborating
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`references that Apple submitted, which disclose many solutions for determining ox-
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`ygen saturation at the wrist before the ’745 Patent, are not credible in view of the
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`double standard that he applies in requiring far more from the corroborating refer-
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`ences to demonstrate REOS than from the specification of the ’745 Patent itself.
`
`EX1059, 17:19-22; EX1081, 86:14-87:6. For example, Duckworth dismissed
`
`Maatala (EX1055) for allegedly not disclosing “actual SpO2 readings,” dismissed
`
`Cai (EX1053) for allegedly not explaining “how ‘R’ was calculated” from “experi-
`
`mental data results,” dismissed Li (EX1051) for allegedly “not present[ing] any ox-
`
`ygen saturation data,” and dismissed Pang (EX1050) for allegedly lacking “actual”
`
`data in which waveforms “are time correlated.” EX2100, ¶¶66-72. Duckworth’s crit-
`
`icisms cannot be squared with his opinion that a POSITA would have REOS deter-
`
`mining oxygen saturation based on the disclosure of the ’745 Patent, which plainly
`
`lacks any real-world studies or empirical data—let alone any of the specific disclo-
`
`sures that Duckworth contended would be necessary for the corroborating references
`
`
`
`8
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`
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`Case No. IPR2022-01465
`
`Attorney Docket: 50095-0045IP3
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`to demonstrate REOS. EX1081, 90:5-21. Duckworth’s nitpicking of the corroborat-
`
`ing references is also at odds with the legal standard for REOS, which does not re-
`
`quire absolute or scientific certainty. PAR Pharm., Inc. v. TWI Pharms., Inc., 773
`
`F.3d 1186, 1198 (Fed. Cir. 2014); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364
`
`(Fed. Cir. 2007) (“only a reasonable expectation of success, not a guarantee, is
`
`needed”).
`
`Duckworth’s contentions that the corroborating references somehow fail to
`
`disclose teachings relevant to determining oxygen saturation is also wrong on the
`
`merits. Cai (EX1053), for example, does not just detect “changes” in oxygen satura-
`
`tion as Duckworth alleged in his declaration (EX2100, ¶67), but in fact also provides
`
`recorded ‘R’ values indicative of oxygen saturation over time in its “EXPERIMENTAL
`
`RESULTS.” EX1053, 4; see also EX2101, 41:19-45:8. Yet, when asked about Cai’s
`
`conclusion that its “oximeter can obtain oxygen saturation” (EX1053, 4), Duckworth
`
`answered “that is not something I provided an opinion on in my declaration.”
`
`EX1081, 76:14-77:21. Likewise, regarding Pang (EX1050), Anthony explained that
`
`it “demonstrates the ability to actually get the measurements that you need at the
`
`wrist in order to calculate pulse ox” (EX2101, 79:16-84:16), and Pang itself confirms
`
`that it “relates to a genuine wrist pulse oximeter … that can measure … oxygen
`
`saturation …” (EX1050, Abstract). Regarding Mattala (EX1055), Anthony ex-
`
`plained that “they are determining oxygen saturation at the wrist and reporting its
`
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`9
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`variability.” EX2101, 70:11-72:11. Regarding Li (EX1051), Anthony explained that
`
`“this reference talks about … the ability to collect the data required [for determining
`
`oxygen saturation] at the wrist.” EX2101, 38:20-40:14. Anthony confirmed that the
`
`corroborating references demonstrate REOS. EX1042, ¶33; EX2101, 16:14-17:13.
`
`B.
`
`The Apple Engineers’ ITC Testimony Regarding Development of
`the Apple Watch is not Probative of REOS
`Duckworth argued that the ITC testimony of Apple’s engineers that he relied
`
`upon were directed to aspects of the pulse oximetry feature in the Apple Watch not
`
`“unrelated to the claims,” but Duckworth never interviewed the engineers to test his
`
`assumptions or attempt to better understand their testimony. EX1081, 94:10-18.
`
`Duckworth also failed to explain how the testimony of Apple’s engineers are
`
`relevant to assessing REOS when no evidence exists that they were aware of the
`
`many prior art references of record which contain successful demonstrations of the
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`feasibility of determining oxygen saturation at the wrist before the ’745 Patent—i.e.,
`
`references of which a POSITA would have known but which Duckworth conceded
`
`that he was not aware of before the present dispute. EX1081, 92:13-93:19. A
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`POSITA also could not possibly have known of the alleged challenges in the engi-
`
`neers’ development of the pulse oximetry feature in the Apple Watch, especially
`
`where the development of that feature was not in the public domain and the alleged
`
`challenges that Duckworth identifies principally involve events that had not even
`
`occurred by the earliest priority date of the ’745 Patent.
`
`
`
`10
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`
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`Dated: 10/27/2023
`
`Case No. IPR2022-01465
`Attorney Docket: 50095-0045IP3
`
`Respectfully submitted,
`
`/Nicholas W. Stephens/
`W. Karl Renner, Reg. No. 41,265
`Nicholas Stephens, Reg. No. 74,320
`Andrew B. Patrick, Reg. No. 63,471
`Kim Leung, Reg. No. 64,399
`Patrick J. Bisenius, Reg. No. 63,893
`Patrick J. King, Reg. No. 60,816
`Fish & Richardson P.C.
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`
`
`
`Case No. IPR2022-01465
`Attorney Docket: 50095-0045IP3
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned certi-
`
`fies that on October 27, 2023, a complete and entire copy of this Petitioner’s Re-
`
`sponse to Expert Testimony Proffered with Patent Owner’s Sur-Reply and exhibits
`
`were provided via email to the Patent Owner by serving the email correspondence
`
`addresses of record as follows:
`
`Brian C. Claassen (Reg. No. 63,051)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Daniel C. Kiang (Reg. No. 79,631)
`Jeremiah S. Helm (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
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street
`Minneapolis, MN 55402
`pacheco@fr.com
`
`
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