`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner,
`
`V.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`Case Nos. IPR2022-01465, IPR2022-01466
`U.S. Patent 10,687,745
`
`DECLARATION OF R. JAMES DUCKWORTH
`
`I declare that all statements made herein on my own knowledgeare true and
`
`that all statements made on information and belief are believed to be true, and
`
`further, that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`I reserve the right to supplement myopinionsin the future to respond to any
`
`arguments or positions Apple may raise, taking account of new information asit
`
`becomesavailable to me.
`
`Dated:
`
`12] 12] 202
`
`.
`
`R. James Duckworth, Ph.D
`
`MASIMO 2002
`
`Apple v. Masimo
`IPR2022-01465
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`MASIMO 2002
`Apple v. Masimo
`IPR2022-01465
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`I, R. James Duckworth, declare and state as follows:
`
`I.
`
`INTRODUCTION
`1. My name is R. James Duckworth, Ph.D. I have been retained by
`
`Knobbe, Martens, Olson & Bear, LLP, counsel for Patent Owner Masimo
`
`Corporation (“Masimo”). I am making this declaration at the request of Masimo in
`
`the matters of Inter Partes Review Nos. IPR2022-01465 and IPR2022-01466, both
`
`of which concern dependent claims 2-6, 8, 10-14, 17, 19, and 21-26 of U.S. Patent
`
`10,687,745 (“the ’745 Patent”). I understand that IPR2022-01465 and -01466 also
`
`present arguments on independent Claims 1, 15, and 20 of the ’745 Patent, but that
`
`Apple is not challenging those claims in these two petitions. I understand that
`
`Apple’s Apple Watch Series 6 and Series 7 and later are accused by Masimo of
`
`infringing claims 9 and 27 of the ’745 Patent in the parties’ parallel ITC
`
`investigation (Investigation No. 337-TA-1276, the “ITC Investigation”). I
`
`understand that those claims were addressed in earlier-filed IPR petitions IPR2022-
`
`01291 and IPR2022-01292. I understand that this Declaration is being submitted
`
`in each of the above-captioned proceedings as Exhibit 2002.
`
`2.
`
`I am being compensated by Masimo for my work in this matter at my
`
`standard hourly rate for expert consulting services. My compensation in no way
`
`depends on the outcome of this proceeding. I have no financial interest in any of
`
`the parties to these matters.
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`-1-
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`MASIMO 2002
`Apple v. Masimo
`IPR2022-01465
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`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`INFORMATION AND MATERIALS CONSIDERED
`II.
`I have been asked to provide technical expert opinions relating to the
`3.
`
`validity of the claims of the ’745 Patent. In conducting the analyses and forming
`
`the opinions set forth in this Declaration, I have reviewed and considered the ’745
`
`Patent’s claims, specification, and file history. I have also reviewed and
`
`considered Apple’s petitions for IPR2022-01465 (“1465 Petition”) and IPR2022-
`
`01466 (“1466 Petition”), the prior art references that Apple relies on, the
`
`declarations of Dr. Brian Anthony (EX1003), and all other exhibits1 that Apple
`
`attached to the 1465 Petition and 1466 Petition. I understand that, except for the
`
`Anthony declarations (EX1003), the exhibits that Apple attached to the 1465
`
`Petition and 1466 Petition refer to the same exhibits. To distinguish between the
`
`two declarations that Dr. Anthony provided in the 1465 Petition and 1466 Petition,
`
`I will refer to the Anthony declarations as EX1003-1465 and EX1003-1466,
`
`respectively. I further understand that Apple filed corrected petitions that
`
`addressed clerical errors. The changes in the corrected petitions do not affect my
`
`opinions. Citations to the petitions refer to the corrected petitions.
`
`
`1 I understand Apple’s Exhibits 1023-1030 are placeholder exhibit numbers
`
`with no accompanying exhibits. I also understand that Apple included Exhibits
`
`1019-1022 only in IPR2022-01465.
`
`-2-
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`MASIMO 2002
`Apple v. Masimo
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`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`I have also reviewed and considered at least the following materials in
`4.
`
`preparing this declaration:
`
`Exhibit
`No.
`
`2004
`
`Description
`
`Y. Mendelson et al., “A wearable reflectance pulse oximeter for remote
`physiological monitoring,” Proceedings of the 28th IEEE EMBS Annual
`International Conference, pp. 912-915, 2006
`
`2005
`
`R.J. Duckworth et al., “Field Testing of a Wireless Wearable
`Reflectance Pulse Oximeter,” American Telemedicine Association
`Annual Conference, 2006
`
`2006
`
`Y. Mendelson, “Wearable Wireless Pulse Oximetry for Physiological
`Monitoring,” Worcester Polytechnic Institute Precise Personnel Location
`Workshop, 2008
`2008 Masimo Corp. et al. v. Apple Inc., June 6-10, 2022 Public Hearing
`Transcript, ITC Inv. No 337-TA-1276
`2011 Masimo Corp. et al. v. Apple Inc., Masimo’s June 27, 2022 Public Initial
`Post-Hearing Brief, ITC Inv. No 337-TA-1276
`
`2019 U.S. Patent Pub. No. 2017/0325744
`
`2020
`
`January 3, 2013 Masimo Press Release Regarding iSpO2
`
`2021 October, 2013 Marcelo Lamego Email to Apple CEO Tim Cook
`
`2022 U.S. Patent No. 10,524,671
`
`2023 U.S. Patent No. 10,247,670
`
`2024 U.S. Patent No. 11,009,390
`
`2025 U.S. Patent No. 10,219,754
`2027 Masimo Corp. et al. v. Apple Inc., Public Order Regarding Masimo’s
`Motion for Preliminary Injunction, Case No. 8:20-cv-00048 (C.D. Cal.)
`
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`IPR2022-01465
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`Apple Inc. v. Masimo Corporation
`Exhibit
`No.
`2028 Apple Webpage Titled “Apple Watch Series 6”
`
`Description
`
`2029 Apple Watch Series 6 Video
`2050 Respondent Apple Inc.’s Post-Hearing Brief (publicly filed July 13,
`2022 in the Investigation)
`2051 Complainants’ Reply Post-Hearing Brief (publicly filed July 25, 2022 in
`the Investigation)
`2052 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,
`filed in the Investigation
`
`January 27, 2022 Complainants’ Opening Claim Construction Brief,
`filed in the Investigation
`
`February 10, 2022 Respondent Apple Inc.’s Rebuttal Markman Brief,
`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
`
`2062
`
`September 15, 2020 Apple Press Release Regarding Apple Watch Series
`6
`
`2063
`
`Andrew Griffin, “Apple Watch Series 6: Why Apple Added a Sensor to
`Tell How Much Oxygen Is in Your Blood as Its Big New Feature – 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-b513807.html)
`
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`IPR2022-01465
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`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`Exhibit
`No.
`
`Description
`
`2064
`
`Brian Chen, “The New Apple Watch Measures Your Blood Oxygen.
`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)
`
`2065 Excerpts of Webster’s New Collegiate Dictionary (1980)
`
`2066 Masimo 2014 Annual Report
`2067 Marcelo Lamego LinkedIn Profile
`(https://www.linkedin.com/in/marcelo-lamego-72564454)
`
`2068
`
`Findings of Fact & Conclusions of Law, Masimo Corp. v. True
`Wearables, Inc., No. 8:18-cv-02001-JVS-JDE, Dkt. 600 (C.D. Cal. Nov.
`7, 2022)
`2069 Eric W. Weisstein, Annulus, Wolfram MathWorld (Dec. 1, 2022, 3:20
`PM), https://mathworld.wolfram.com/Annulus.html
`To the extent not listed above, I have also reviewed any other materials I discuss or
`
`cite herein. To be clear, I have not been provided with any documents or
`
`testimony referenced in ITC briefing that remains confidential.
`
`5.
`
`In preparing this Declaration, I have considered my own knowledge
`
`and experience, including my work in the fields of electrical and computer
`
`engineering; my experience teaching within those subjects; my experience working
`
`with others involved in those fields; and the materials identified herein. I
`
`understand my analyses and opinions, including my review of any materials cited
`
`herein, should be made from the perspective of one of ordinary skill in the art
`
`related to the ’745 Patent at the relevant time (i.e., a “POSITA”). I understand the
`
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`relevant time is July 2, 2015. Accordingly, my analyses and opinions are made
`
`from that relevant perspective. My testimony herein refers to the knowledge of a
`
`POSITA as of July 2, 2015, unless indicated otherwise.
`
`6.
`
`Any figures appearing in this Declaration were prepared with the
`
`assistance of counsel and reflect my understanding of the ’745 Patent and the
`
`materials discussed herein.
`
`III. EXPERIENCE AND QUALIFICATIONS
`7. My academic and professional background is in electrical and
`
`computer engineering. I obtained a Bachelor’s of Engineering degree in Electrical
`
`and Electronic Engineering from the University of Bradford, England and a Ph.D.
`
`Degree in Electrical and Electronic Engineering from the University of
`
`Nottingham, England. My Ph.D. thesis work concerned increasing the speed of
`
`data processing using multiple processing elements to complete computations in
`
`parallel and triggering computations based on the availability of data. After
`
`completing my Ph.D., I was a lecturer in the university’s Computer Science
`
`Department for two years.
`
`8.
`
`For more than 40 years, I have studied, designed, and worked in these
`
`fields. My experience includes over 35 years of teaching and research, including
`
`in the fields of pulse oximetry and other physiological monitoring technologies,
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`low powered wireless sensor design, embedded system design, wearable
`
`technology, and indoor location tracking for first responders, among others.
`
`9.
`
`I have been a professor of electrical and computer engineering at
`
`Worcester Polytechnic Institute (WPI) in Worcester, MA for over 35 years. I
`
`joined WPI in January 1987 as an Assistant Professor of Electrical Engineering
`
`and was an Associate Professor of Electrical and Computer Engineering from July
`
`1991 to June 2021. Presently, I am a Professor Emeritus of Electrical and
`
`Computer Engineering at WPI.
`
`10. More recently, my research work has centered on Precision Personnel
`
`Location (PPL) for First Responders. This project started as a result of a tragic
`
`incident in Worcester in 1999, when six firefighters lost their lives in a warehouse
`
`fire. The overall goal of the PPL project is to protect the lives of emergency
`
`responders and to enhance their ability to accomplish their missions through
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`research and development of systems for personnel location and tracking,
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`movements, physiological and environment status monitoring, and command and
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`control. The PPL project brought together diverse technical capabilities from other
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`centers and laboratories at WPI to address important problems for emergency
`
`responders, the most critical of which is precise location and path tracking for each
`
`person in a building.
`
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`11. From 2005 through 2008, I worked extensively with my colleague at
`
`WPI, Professor Yitzhak Mendelson, Ph.D., to research, publish papers about,
`
`design, and make, wearable pulse oximetry devices. In 2007, I formed a company
`
`with Professor Mendelson called Advanced Body Sensing to design and build
`
`small battery-powered wearable pulse oximeter devices that could be mounted on
`
`the forehead with a strap. Our final device design allowed for a number of vital
`
`signs to be measured including oxygen saturation (SpO2) and heart rate (HR). Our
`
`device had the potential for use in combat casualty care, such as for remote triage,
`
`and by first responders. It was used as part of the PPL project and by the United
`
`States Air Force. Due to a change in direction by the principals of the company,
`
`Advanced Body Sensing was closed in 2014. My significant experience relating to
`
`pulse oximetry sensors and involving Professor Mendelson is discussed in more
`
`detail in the “Technological Background” section below.
`
`12. For over 30 years, I developed and taught courses at WPI relevant to
`
`the technology disclosed in the ’745 Patent. The classes I developed and taught
`
`included associated laboratory exercises and projects, which I also developed. As
`
`reflected in my curriculum vitae (Exhibit 2003), I developed and taught at least the
`
`following relevant courses: (1) Microprocessor System Design; (2) Modeling and
`
`synthesis of digital system using Verilog and VHDL; (3) VHDL for Modeling and
`
`Synthesis; (4) Computer System Design; (5) Multi-processor and Distributed
`
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`Systems; (6) Advanced Computer System Design; and (7) Advanced Digital
`
`System Design with FPGAs. All of these courses pertain to the technology
`
`disclosed in the ’745 Patent. For example, the “Advanced Digital System Design
`
`with FPGAs” course required students to interface peripheral sensors such as a
`
`light sensor with an analog-to-digital converter to read information from the
`
`sensors and a digital-to-analog converter to convert sensed data into waveforms for
`
`processing.
`
`13.
`
`In the course of my work at WPI, I have advised hundreds of
`
`engineering students in B.S. and M.S. programs and advised or co-advised
`
`approximately ten Ph.D. students that have completed Ph.D. degrees.
`
`14. Additionally, I have authored or co-authored dozens of technical
`
`papers in refereed journals and conference proceedings and given many conference
`
`presentations in the fields I have taught, researched, and worked.
`
`15. Aside from my work at WPI, I have years of experience working with
`
`portable, battery powered sensors. During leave in approximately 2000 from WPI,
`
`I was the Vice President of Engineering for Adaptive Instruments. At Adaptive
`
`Instruments, I was responsible for designing and manufacturing a line of wireless
`
`industrial sensors for use in industrial process control. As a consultant, I helped
`
`program a small, battery powered device used to count the number of times an
`
`inhaler had been used. Also as a consultant, I helped design and program a wrist-
`
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`worn device that reminded the user throughout the day of the medications that
`
`needed to be taken. My work on the wrist-worn device led to the patent I obtained
`
`on a “Low Power Infrared Communication System,” U.S. Patent No. 6,091,530.
`
`16.
`
`In addition to U.S. Patent No. 6,091,530, I am a named co-inventor on
`
`several relevant patents, including:
`
`•
`
`U.S. Patent No. 7,292,189, issued in 2007, titled “Methods and
`
`Apparatus for High Resolution Positioning”
`
`•
`
`U.S. Patent No. 9,476,963, issued in 2016, titled “Search and Rescue
`
`Method and System”
`
`•
`
`U.S. Patent No. 9,658,309, issued in 2017, titled “Precision Location
`
`Method and System”; and
`
`•
`
`U.S. Patent No. 9,846,042, issued in 2017, titled “Gyroscope Assisted
`
`Scalable Visual Simultaneous Localization and Mapping.”
`
`17.
`
`I have provided above a short summary of my education and
`
`experience that I believe is most relevant to the analyses and opinions I have
`
`expressed in this Declaration. A copy of my curriculum vitae, which describes in
`
`further detail my qualifications, responsibilities, employment history, honors,
`
`awards, professional associations, presentations, publications, and patents is
`
`included as Exhibit 2003.
`
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`IV. APPLICABLE LEGAL STANDARDS
`I am an electrical and computer engineer by training and profession.
`18.
`
`The opinions I express in this Declaration involve the application of my knowledge
`
`and experience to the evaluation of the ’745 Patent and certain prior art to the ’745
`
`Patent.
`
`19. Although I have been involved as a technical expert in patent matters
`
`before, I am not an expert in patent law. Therefore, I have been advised of certain
`
`principles of patent law applicable in this matter, which I have used in arriving at
`
`my determinations and opinions. The paragraphs below express my understanding
`
`of the legal requirements I have used in forming my opinions.
`
`A. Claim Construction
`I understand that, in assessing the patentability of a patent claim, the
`20.
`
`Patent Office generally construes claim terms by giving them their ordinary and
`
`customary meaning, as they would have been understood by a POSITA at the time
`
`of the invention in view of the intrinsic record (patent specification and file
`
`history). However, I understand that the inventors may, in the patent specification,
`
`expressly define a claim term to have a meaning that differs from the term’s
`
`ordinary and customary meaning. I also understand that the inventors may
`
`disavow or disclaim certain claim scope, thereby departing from the ordinary and
`
`customary meaning, when the intrinsic record demonstrates that a clear and
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`unambiguous disavowal or disclaimer has occurred. I understand that extrinsic
`
`evidence, such as relevant technical literature and dictionaries, may be useful in
`
`ascertaining how a POSITA would have understood a claim term, but the intrinsic
`
`record is the primary source for determining the meaning of claim terms. For the
`
`purposes of this review, and to the extent necessary, I have interpreted each claim
`
`term in accordance with the principles set forth in this paragraph.
`
`B. Obviousness
`I understand that a claim is unpatentable as “obvious” under 35 U.S.C.
`21.
`
`§ 103 if the claimed subject matter as a whole would have been obvious to a
`
`POSITA at the time of the invention. I also understand that an obviousness
`
`analysis takes into account the following factors, which are sometimes referred to
`
`as the Graham factors: (1) the scope and content of the prior art, (2) the differences
`
`between the claimed subject matter and the prior art, (3) the level of ordinary skill
`
`in the art at the time of the invention, and (4) “objective indicia of non-
`
`obviousness,” also referred to as secondary considerations of non-obviousness. I
`
`understand that these objective indicia include considerations such as whether
`
`there was: (i) any unexpected result(s); (ii) skepticism of the invention; (iii) a
`
`teaching away from the invention; (iv) failure of others to find the solution(s)
`
`provided by the claimed invention; (v) copying by other companies; (vi)
`
`commercial success due to the merits of the claimed invention; (vii) praise by
`
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`others for the invention; and (viii) a long-felt need in the industry for the claimed
`
`invention.
`
`22.
`
` In determining the scope and content of the prior art, it is my
`
`understanding that a reference is considered appropriate prior art if it falls within
`
`the field of the inventor’s endeavor. In addition, a reference is appropriate prior art
`
`if it is reasonably pertinent to the particular problem with which the inventor was
`
`involved. A reference is reasonably pertinent if it logically would have
`
`commended itself to an inventor’s attention in considering his or her problem. If a
`
`reference relates to the same problem as the claimed invention, that supports use of
`
`the reference as prior art in an obviousness analysis.
`
`23. To assess the differences between prior art and the claimed subject
`
`matter, it is my understanding that 35 U.S.C. § 103 requires the claimed invention
`
`to be considered as a whole. This “as a whole” assessment requires showing that a
`
`POSITA at the time of invention, confronted by the same problems as the inventor
`
`and with no knowledge of the claimed invention, would have selected the elements
`
`from the prior art and combined them in the claimed manner.
`
`24.
`
`It is my further understanding that the Supreme Court has recognized
`
`several rationales for combining references or modifying a reference to show
`
`obviousness of claimed subject matter. Some of these rationales include:
`
`combining prior art elements according to known methods to yield predictable
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`results; simple substitution of one known element for another to obtain predictable
`
`results; a predictable use of prior art elements according to their established
`
`functions; applying a known technique to a known device (method or product)
`
`ready for improvement to yield predictable results; choosing from a finite number
`
`of identified, predictable solutions, with a reasonable expectation of success; and
`
`some teaching, suggestion, or motivation that would have led a POSITA to modify
`
`the prior art reference or to combine prior art reference teachings to arrive at the
`
`claimed invention.
`
`25.
`
`I understand that the obviousness analysis must be performed from the
`
`perspective of a POSITA at the time of the alleged invention. I understand this
`
`requirement is to help avoid using impermissible hindsight in the analysis. I
`
`further understand that the claims of the patent-at-issue must not be used to provide
`
`a road map for obviousness; instead, the claims would have been obvious only if a
`
`POSITA, without knowledge of the patent-at-issue, would have been motivated to
`
`combine the teachings of the prior art to arrive at the claimed invention and had a
`
`reasonable expectation of success in doing so.
`
`26.
`
`I understand that an assessment of what a reference discloses or
`
`teaches—for purposes of an anticipation analysis or an obviousness analysis—
`
`must be conducted from the perspective of a POSITA at the time of the invention.
`
`In other words, a reference discloses or teaches a claim limitation if a POSITA
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`would, at the relevant time, interpret the reference as expressly, implicitly, or
`
`inherently disclosing the claim limitation. I further understand that a reference
`
`does not need to use the exact language of the claim to disclose a claim limitation.
`
`I also understand that something is only “inherent in,” and therefore taught by, the
`
`prior art if it necessarily flows from the explicit disclosure of the prior art. I
`
`understand the fact that a certain result or characteristic may be present in the prior
`
`art is not sufficient to establish inherency.
`
`27.
`
`I understand that the obviousness analysis also must show that the
`
`prior art, taken as a whole, enables a POSITA to make and use the claimed
`
`invention.
`
`28. Applying these legal standards to the challenged claims of the ’745
`
`Patent, I believe the challenged claims would not have been obvious to a POSITA
`
`based on the grounds asserted by Apple in its petitions, as discussed below.
`
`V. LEVEL OF ORDINARY SKILL IN THE RELEVANT ART
`I understand that obviousness must be evaluated from the perspective
`29.
`
`of what would have been known or understood by a person of ordinary skill in the
`
`art (“POSITA”) at the time of the invention. I have been informed by counsel and
`
`understand that the priority date of the ’745 Patent is July 2, 2015. I understand
`
`that date to be the time of the invention for my analysis. I have been informed that
`
`the level of ordinary skill in the art may be determined by various factors
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`including: (a) the type of problems encountered in the art, (b) prior art solutions to
`
`those problems, (c) the rapidity with which innovations are made, (d) the
`
`sophistication of the technology, and (e) the educational level of active workers in
`
`the field.
`
`30. The field of art relevant to the ’745 Patent is devices and sensors for
`
`the non-invasive measurement of physiological parameters, such as oxygen
`
`saturation. See EX1001 at 1:23-27.
`
`31.
`
`I understand that Apple has defined a person of ordinary skill in the
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`art at the time of the invention of the ’745 Patent as:
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`[A] person with a working knowledge of physiological monitoring
`technologies. The person would have had a Bachelor of Science
`degree in an academic discipline emphasizing the design of electrical,
`computer, or software technologies, in combination with training or at
`least one or two years of related work experience with capture and
`processing of data or information, including but not limited to
`physiological monitoring technologies. … Alternatively, the person
`could have also had a Master of Science degree in a relevant academic
`discipline with less than a year of related work experience in the same
`discipline.
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`1465 Petition at 4-5; see also 1466 Petition at 5.
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`32.
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`I have applied Petitioner’s description of the level of ordinary skill in
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`performing my analysis herein. I note, however, that Petitioner’s description of the
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`level of ordinary skill does not appear to require any coursework, training, or
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`experience with optics, optical physiological sensors, or physiology. Petitioner’s
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`description also appears to focus on data processing rather than the design of
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`sensor hardware.
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`33.
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`I understand the capabilities of a POSITA as of July 2015. Indeed, I
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`possessed and exceeded those capabilities myself before, during, and after that
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`time. As a professor of electrical and computer engineering for over three decades,
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`I have taught many such POSITAs and understand the level of knowledge and skill
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`that persons with such academic experience would have possessed in July 2015.
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`Through my education and decades of experience, such as teaching relevant
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`engineering courses and working with Professor Yitzhak Mendelson in designing
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`and developing pulse oximetry devices, I am familiar with what a POSITA would
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`have understood in July 2015 and qualified to provide opinions from the
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`perspective of a POSITA at the relevant time.
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`VI. CLAIM CONSTRUCTION
`“Second shape” (Independent Claims 1, 20)
`A.
`34.
`I have been asked to provide my opinions regarding the construction
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`of the term “second shape” as it appears in independent claims 1 and 20 of the ’745
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`Patent and their dependent claims, including challenged claims 2-6, 8, 10-14, and
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`21-26.
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`I understand that Apple stated in the petition that “no claim terms
`35.
`
`need to be construed to resolve issues of controversy in the present Petition.” 1465
`
`Petition at 5; see also 1466 Petition at 6. I disagree based on the ’745 Patent, its
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`prosecution history, and the prior disputes about this term. I understand that the
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`parties already briefed the claim construction of the term “second shape” in the
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`ITC Investigation and came to an agreement regarding the meaning of that term.
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`Specifically, I understand that Apple and Masimo agreed that “a mere difference in
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`size is neither necessary nor sufficient to change a first shape into a ‘second
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`shape.’” EX2053 at 3 n.1.
`
`36. The ’745 Patent uses the term “shape” when describing light
`
`according to the ordinary meaning of shape, e.g., rectangles, squares, circles, and
`
`donuts. For example, the ’745 Patent explains that in Figure 7A, a “light diffuser
`
`704 receives the optical radiation emitted from the emitter 702 and homogenously
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`spreads the optical radiation over a wide, donut-shaped area.”2 EX1001 at 10:65-
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`11:2 (emphasis added).
`
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`2 All emphases in this declaration are added, unless stated otherwise.
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`Annotations in drawings are shown in color, unless stated otherwise.
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`EX1001 at FIG. 7B. As another example, the ’745 Patent explains that a diffuser
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`304 can “distribut[e] the emitted light on the surface of a plane (e.g., the surface of
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`the tissue measurement site 102) in a predefined geometry (e.g., a rectangle,
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`square, or circle), and with a substantially uniform intensity profile and energy
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`distribution.” Id. at 8:9-14. Thus, a POSITA would understand that the
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`’745 Patent uses the term “shape” to refer to geometric shapes like rectangles,
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`squares, circles, and donuts. See also id.at 3:8-14, FIGS. 3, 7A. I understand that
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`Masimo and Apple agreed on this point during the ITC Investigation. See EX2054
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`at 22 (“The specification describes the ‘shape’ of light according to the ordinary
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`meaning of shape, describing rectangles, squares, and circles.”), EX2052 at 142
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`(“The ’745 patent refers to shapes in terms of various geometric shapes, e.g.,
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`rectangle, square, donut, annular.”).
`
`37.
`
`Independent claims 1 and 20 contain the terms “first shape” and
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`“second shape.” Specifically, claim 1 recites in relevant part:
`
`a plurality of light-emitting diodes configured to emit light in a first
`shape;
`
`a material configured to be positioned between the plurality of light-
`emitting diodes and tissue on a wrist of a user when the physiological
`monitoring device is in use, the material configured to change the
`first shape into a second shape by which the light emitted from one
`or more of the plurality of light-emitting diodes is projected towards
`the tissue;
`
`EX1001 at Claim 1. Claim 20 contains a very similar limitation. The claims use
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`the term “shape” consistent with the specification that refers to geometric shapes.
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`Thus, the claims require a “first shape” that is emitted from the LEDs and a
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`different “second shape” after the light has interacted with a material positioned
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`between the LEDs and the tissue on the user’s wrist.
`
`38. The prosecution history of a parent application to the ’745 Patent
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`provides further details regarding the “first shape” and “second shape” that a
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`POSITA would consider.
`
` U.S. Patent Application 16/532,065
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`(“’065
`
`Application”) is a parent application to the ’745 Patent. During prosecution of that
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`application, Masimo added a claim 2 which included the limitation: “a material
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`positioned between the plurality of emitters and the tissue measurement site, the
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`material configured to alter a shape of the light emitted from one or more of the
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`plurality of emitters before the light reaches the tissue measurement site.” EX2056
`
`at 40 (Sept. 16, 2019 Preliminary Amendment at 4).
`
`39. On October 21, 2019, the Patent Office issued an office action
`
`rejecting claim 2 based on two prior art references, Fei (U.S. Pat. App.
`
`2014/0361147) and Scharf (U.S. Pat. 5,830,137). Id. at 59-60, 69-71 (Oct. 21,
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`2019 Office Action at 3-4, 13-15). In the office action, the Examiner cited to
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`lenses in Fei and Scharf as disclosing the “material configured to alter a shape of
`
`the light.” Id. at 59.
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`40.
`
`In a November 14, 2019 response to the office action, Masimo
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`amended the relevant portion of claim 2 as follows:
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`EX2056 at 82 (Nov. 14, 2019 Amendment at 2).
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`41. Then, on January 7, 2020, Masimo filed a supplemental amendment
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`that further amended claim 2 as follows:
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`Id. at 113 (Jan. 7, 2020 Amendment at 2).
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`42. An interview summary filed on March 23, 2020 shows that Masimo
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`interviewed the application with the Examiner on February 13, 2020. Id. at 162
`
`(March 23, 2020 Summary of Interview at 1). The interview summary stated,
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`“Agreement was