UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable Monica Bhattacharyya
` Administrative Law Judge
`
`In the Matter of
`
`CERTAIN LIGHT-BASED PHYSIOLOGICAL
`MEASUREMENT DEVICES AND
`COMPONENTS THEREOF
`
`Inv. No. 337-TA-1276
`
`RESPONDENT APPLE INC.’S REBUTTAL MARKMAN BRIEF
`
`MASIMO 2055
`Apple v. Masimo
`IPR2022-01465
`
`

`

`TABLE OF CONTENTS
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`Page
`
`INTRODUCTION ...............................................................................................................1 
`
`U.S. PATENT NO. 10,687,745 ...........................................................................................2 
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`U.S. PATENT NO. 7,761,127 .............................................................................................4 
`
`U.S. PATENT NOS. 10,912,501, 10,912,502, and 10,945,648 ..........................................6 
`
`A. 
`
`B. 
`
`The Asserted Claims Are Indefinite ........................................................................7
`
`Complainants’ Proposed Construction Is Unsupported .........................................10 
`
`CONCLUSION ..................................................................................................................14 
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`
`
`
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`V. 
`
`
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`
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`MASIMO 2055
`Apple v. Masimo
`IPR2022-01465
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`

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`
`Cases
`
`TABLE OF AUTHORITIES
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`
`
`Page(s)
`
`Bio-Rad Laboratories, Inc. v. International Trade Commission,
`998 F.3d 1320 (Fed. Cir. 2021)................................................................................................14
`
`Chef America, Inc. v. Lamb-Weston, Inc.,
`358 F.3d 1371 (Fed. Cir. 2004)................................................................................................14
`
`Liqwd, Inc. v. L’Oreal USA, Inc.,
`No. CV 17-14-JFB-SRF, 2019 WL 1977367 (D. Del. May 2, 2019) ......................................11
`
`On Demand Machine Corp. v. Ingram Industries,
`442 F.3d 1331 (Fed. Cir. 2006)..................................................................................................9
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..........................................................................3, 4, 6
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`MASIMO 2055
`Apple v. Masimo
`IPR2022-01465
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`I.
`
`INTRODUCTION
`
`In all instances, Complainants proposed constructions clash with the intrinsic evidence.
`
`For U.S. Patent No. 10,687,745 (“’745 patent”), Complainants now agree that a mere difference
`
`in size is neither necessary nor sufficient to change a first shape into the claimed “second shape.”
`
`But Complainants have declined to abandon the erroneous implication that any other difference,
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`besides a mere difference in size, automatically changes the first shape into the “second shape.”
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`That implication should be rejected because it is unsupported, contrary to the plain and ordinary
`
`meaning of “second shape,” and contradicted by the intrinsic evidence.
`
`For U.S. Patent No. 7,761,127 (“’127 patent”), Complainants offer no reason to depart
`
`from Apple’s plain and ordinary construction of “plurality of operating wavelengths” and the
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`separate limitation in claim 7 that already requires “the operating wavelengths dependent on the
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`bulk temperature.” Notably, Complainants argue and cite evidence that the operating wavelengths
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`vary as a function of “the bulk temperature,” which only confirms that it is confusing to add
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`Complainants’ proposed language requiring a single “operating wavelength that varies with
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`temperature.”
`
`For asserted U.S. Patent Nos. 10,912,501 (“’501 Patent”), U.S. Patent No. 10,912,502
`
`(“’502 Patent”) and U.S. Patent No. 10,945,648 (“’648 Patent”) (collectively, the “Asserted Poeze
`
`Patents”), the patent’s description of a “bulk measurement” is fatally inconsistent with the use of
`
`this term in the claims. Complainants attempt to save the claims by redefining a “bulk
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`measurement” as a “baseline measurement,” but have failed to set forth any intrinsic or other
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`support for this construction. Rather, the patents’ use of “bulk measurement” in the asserted claims
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`remains irreconcilably inconsistent with the specification, rendering the term indefinite.
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`MASIMO 2055
`Apple v. Masimo
`IPR2022-01465
`
`

`

`
`
`II.
`
`U.S. PATENT NO. 10,687,745
`
`Claim Term
`
`Proposed Constructions
`
`“second shape”
`
`(’745 patent, cls. 1, 20)
`
`
`Complainants’ Construction: “A shape that is
`different from the first shape beyond a change in size
`of the first shape”
`
`Apple’s Construction: Plain and ordinary meaning
`(i.e., a shape different than the first shape)
`
`
`
`Complainants and Apple agree that intrinsic evidence from the prosecution of the parent
`
`U.S. Patent Application No. 16/532,065 (“’065 application”) confirms that the “second shape”
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`limitation is not met when the “material . . . positioned between the plurality of light-emitting
`
`diodes and tissue on a wrist of a user” merely changes the size of the first shape. See Complainants
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`Br. at 24 (applicants’ interview summary “unambiguously exclude[s] a mere change in size from
`
`the first shape”); Apple Br. at 9-10 n.2 (noting that the applicants’ interview summary
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`“memorializes the applicant’s disclaimer that a change in size is not sufficient to produce a change
`
`in shape” (original emphasis)). Complainants also concede that any construction of “second
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`shape” should not “imply that there must be at least a change in size for the second shape to be
`
`different from the first shape; in other words, if there is no change in area or size, Complainants’
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`language implies there is no difference between the first shape and second shape.” Apple Br. at
`
`9.1 On February 3, 2022, Complainants offered to amend their proposed construction to eliminate
`
`that erroneous implication:
`
`Specifically, there appears to be some confusion regarding the word “beyond” in
`Masimo’s proposed construction. Apple criticized Masimo’s construction as
`implying that: “if there is no change in area or size, Complainants’ language
`implies there is no difference between the first shape and second shape.” (Page 9.)
`To remove any such implication, Masimo proposes that the parties agree to a
`
`1 All emphasis added unless otherwise stated.
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`construction of “second shape” to be “a shape that is different from the first shape,
`where a different size, without any other difference, is not a shape different from
`the first shape.”
`
`Ex. 8 (2/3/2022 Email from K. Loebbaka). Thus, the parties appear to agree that a mere change
`
`in size is neither necessary nor sufficient “to change the first shape into a second shape.”
`
`
`
`However, Complainants’ amended proposed construction did not withdraw or address the
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`second, expressio unius implication Apple identified in Complainants’ proposed construction: that
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`any other differences, besides differences in size, necessarily result in a second shape that is
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`different from the first shape. Apple Br. at 9. As Apple explained, that second implication is
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`contrary to the plain and ordinary meaning of “second shape.” Two images can be different in
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`ways other than size—e.g., color, brightness, polarization—without being different in shape. Id.
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`That second implication is also firmly contradicted by the specification. See, e.g., ’745 patent, cl.
`
`2 (distinguishing a “first wavelength” and “second wavelength” of light from the “first shape” and
`
`“second shape” of light); 8:9-16 (distinguishing the “efficiency, or the amount of light transmitted
`
`by the diffuser 304,” from the “geometry (e.g., a rectangle, square, or circle)”).
`
`Complainants’ brief, and the reports by Complainants’ expert Dr. Madisetti, cite no
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`evidence supporting that second erroneous implication.2 Rather, Complainants quote the same
`
`
`2 Complainants assert that “Apple did not submit a rebuttal expert report to respond to Dr.
`Madisetti” and therefore “Apple does not support its purported ‘plain and ordinary meaning’
`construction.” Complainants Br. at 24. Apple did not require expert testimony and Dr. Madisetti’s
`report required no rebuttal. First, the intrinsic evidence was clear overrides any contrary extrinsic
`evidence Dr. Madisetti could offer. See Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir.
`2005) (en banc) (“[A] court should discount any expert testimony ‘that is clearly at odds with the
`claim construction mandated by the claims themselves, the written description, and the prosecution
`history, in other words, with the written record of the patent.’” (citation omitted)). Second, Dr.
`Madisetti’s report as to the “second shape” term did not even fulfill the normal function of expert
`testimony, such as “explain[ing] how an invention works” or “establish[ing] that a particular term
`in the patent or the prior art has a particular meaning in the pertinent field.” Id. at 1318. Instead,
`Dr. Madisetti’s report merely recites the prosecution history of the ’065 application. Complainants
`Br., Ex. 1 [Madisetti Opening Rpt.] ¶¶ 61-73. No expert testimony was required to present or rebut
`a recitation of intrinsic evidence. Phillips, 415 F.3d at 1319 (cautioning against “undue reliance
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`portions of the specification as Apple that describe different “geometry” of light on the surface of
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`the tissue measurement site—and not differences in non-shape parameters such as color,
`
`brightness, or polarization. See Complainants Br. at 22 (quoting ’745 patent at 8:9-12 (“In an
`
`embodiment, the diffuser 304 is capable of distributing the emitted light on the surface of a plane
`
`(e.g., the surface of the tissue measurement site 102) in a predefined geometry (e.g., a rectangle,
`
`square, or circle).”); 3:8-14 (“In some embodiments the diffuser is further configured to define a
`
`surface area shape by which the emitted spread light is distributed onto a surface of the tissue
`
`measurement site. The defined surface area shape can include, by way of non-limiting example, a
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`shape that is substantially rectangular, square, circular, oval, or annular, among others.”)
`
`(Complainants’ added emphasis)); Apple Br. at 8-9. The Administrative Law Judge should reject
`
`Complainants’ apparent implication that any other differences, besides merely changes in size,
`
`necessarily result in a change in shape.
`
`III. U.S. PATENT NO. 7,761,127
`
`Claim Term
`
`Proposed Constructions
`
`“plurality of operating wavelengths”
`
`(’127 patent, cl. 7)
`
`Complainants’ Construction: “operating wavelength
`that varies with temperature”
`
`Apple’s Construction: Plain and ordinary meaning
`(i.e., two or more operating wavelengths)
`
`
`
`The plain language of claim 7 already requires: “the operating wavelengths dependent on
`
`the bulk temperature” of the thermal mass. ’127 patent, cl. 7. Complainants’ brief simply cites
`
`
`on extrinsic evidence” to “change the meaning of claims in derogation of the ‘indisputable public
`records consisting of the claims, the specification and the prosecution history’” (citation omitted).
`Likewise, Mr. Goldberg’s report required no rebuttal because it only recited intrinsic evidence and
`offered conclusory assertions without reasoning.
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`more evidence from the specification that the claimed operating wavelengths are dependent on the
`
`“bulk temperature.” But Complainants fail to provide any explanation for why their redundant
`
`language is required, what added purpose their different language would serve in the claim, or why
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`they have read the word “plurality” out of the claim. Complainants’ confusing and unjustified
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`departure from the plain language of the claims should be rejected.
`
`First, Complainants argue that “each LED’s operating wavelength varies as a function of,
`
`among other things, the bulk temperature of the thermal mass.” Complainants Br. at 25.
`
`Complainants’ argument is confusing because it does not even support their proposed construction.
`
`For example, Complainants apparently understand that the claimed operating wavelengths vary as
`
`a function of “the bulk temperature of the thermal mass,” yet their proposed construction notably
`
`omits the “bulk temperature” term. Complainants’ specification citations suffer from the same
`
`flaw. Complainants cite the specification’s statement that “[a] temperature sensor 1230 is
`
`thermally coupled to the thermal mass 1220, wherein the temperature sensor 1230 provides a
`
`temperature sensor output 1232 responsive to the bulk temperature 1202 so that the wavelengths
`
`are determinable as a function of the drive currents 1210 and the bulk temperature 1202.” Id.
`
`(citing ’127 patent, 10:27-39). That much is clear from the claim language itself and ordinary
`
`English grammar. Claim 7 already requires “a plurality of light emitting sources … having a
`
`corresponding plurality of operating wavelengths” and “the operating wavelengths dependent on
`
`the bulk temperature” of the thermal mass. ’127 patent, cl. 7. In other words, according to claim
`
`7, each of the plurality of light emitting sources has a corresponding operating wavelength, and
`
`each of the two or more operating wavelengths is dependent on the bulk temperature of the thermal
`
`mass—that is not in dispute and is consistent with Apple’s plain meaning construction.
`
`Second, Complainants fall back on “extrinsic evidence,” in the form of the report of Mr.
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`Goldberg, to argue that “a POSA would have understood from the specification that each LED has
`
`an operating wavelength that varies with temperature.” Complainants Br. at 26. But extrinsic
`
`evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning
`
`of claim language.” Phillips, 415 F.3d at 1317 (internal quotation marks and citation omitted).
`
`Mr. Goldberg’s testimony also fails to justify any addition to the claim language—which already
`
`recites “the operating wavelengths dependent on the bulk temperature.” ’127 patent, cl. 7. For
`
`example, Mr. Goldberg states that the “‘temperature sensor’ limitation specifies that the
`
`temperature sensor determines ‘the bulk temperature for the thermal mass’ and that the determined
`
`bulk temperature is used to ascertain the specific temperature-dependent operating wavelength of
`
`each light emitting source.” Complainants Br., Ex. 3 [Goldberg Rpt.] ¶ 25. Mr. Goldberg also
`
`cites the specification’s teachings that “‘the operating wavelengths are dependent on the bulk
`
`temperature’” and “‘the substrate 1200 also provides a bulk temperature measurement so as to
`
`calculate the operating wavelengths for the light emitting sources.’” Id. ¶ 26 (quoting ’127 patent,
`
`3:2-12, 6:40-43).3 No departure from the claim language is warranted based on Mr. Goldberg’s
`
`conclusory testimony.
`
`IV.
`
`U.S. PATENT NOS. 10,912,501, 10,912,502, AND 10,945,648
`
`Claim Term
`
`Proposed Constructions
`
`“bulk measurement”
`
`(’501 patent, cl. 13)
`(’502 patent, cl. 12)
`(’648 patent, cls. 2, 21)
`
`Complainants’ Construction: “baseline measurement”
`
`Apple’s Construction: Indefinite
`
`3 Mr. Goldberg also cites the specification’s description of EQ. 3 and EQ. 4 which describe
`embodiments measuring the Tb “bulk temperature” or Ta “temperature,” respectively.
`Complainants Br. Ex. 3 [Goldberg Rpt.] ¶ 26 (citing ’127 patent, 10:21-48). However, as noted in
`Apple’s opening brief (at 2), only EQ. 3, involving the Tb “bulk temperature,” embodies claim 7;
`EQ. 4 does not determine the “bulk temperature” for the thermal mass as required by the claim.
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`A.
`
`The Asserted “Bulk Measurement” Claims Are Indefinite.4
`
`As Apple explained in its opening brief, the term “bulk measurement” in the Asserted
`
`Poeze Patents is indefinite because its use in the asserted claims is fatally inconsistent with the
`
`disclosures in the shared specification. Apple’s expert Dr. Warren confirms that the term “bulk
`
`measurement” would not have had (and does not have) a commonly understood meaning to a
`
`POSITA. Apple Br., at Ex. 3 [Initial Expert Claim Construction Report of Steven Warren, Ph.D.]
`
`(“Initial Warren Rpt.”)] ¶ 50; Apple Br., Ex. 4 [Rebuttal Expert Claim Construction Report of
`
`Steve Warren, Ph.D. (“Rebuttal Warren Rpt.”)] ¶ 14. Neither Complainants nor their expert Dr.
`
`Madisetti suggest otherwise. Thus, a POSITA would have had to consult the intrinsic record for
`
`meaning. But the intrinsic record is irreconcilable.
`
`The specification describes a “bulk measurement” as one obtained from multiple detectors
`
`and thereby multiple signals. See e.g., ’501 patent, 34:49-51 (stating that “the use of multiple-
`
`detectors in a spatial configuration allow for a bulk measurement”); see also 9:18-25. According
`
`to the specification, multiple detectors arranged in a spatial configuration provide a diversity of
`
`path lengths which allow for “measurements that are robust,” the benefits of which would be lost
`
`if the system acquired only one signal from one detector. Apple Br., Ex. 3 [Initial Warren Rpt.] ¶
`
`54; see e.g., ’501 patent, 9:18-25. Thus, the specification discloses that a “bulk measurement”—
`
`whatever that means—is obtained from multiple signals from multiple detectors.
`
`The asserted claims, however, recite that a “bulk measurement” can be obtained from as
`
`few as one signal from one photodiode. See ’648 patent, cl. 2 (requiring “one or more signals to
`
`4 Complainants appear to suggest that the ALJ should defer resolution of indefiniteness “until a
`complete record has been presented.” Complainants Br. at 19 n.1. Yet, Complainants fail to
`explain how the record is incomplete with regards to the indefiniteness of “bulk measurement.”
`Complainants raised “bulk measurement” for construction and both sides have submitted expert
`reports in support of their positions. This issue is accordingly ripe for resolution.
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`determine a bulk measurement” where the “one or more signals [are] from at least one of the
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`photodiodes” in independent claim 1), cl. 21; ’501 patent, cl. 13; ’502 patent, cl. 12. The
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`specification fails to explain how a “bulk measurement” could be obtained from as few as one
`
`signal from one photodiode. A POSITA would not have understood what the claims mean by a
`
`“bulk measurement” that can be taken from as few as a single signal from a single photodiode.
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`Apple Br., Ex. 3 [Initial Warren Rpt.] ¶¶ 49-62. Thus, claim 13 of the ’501 patent, claim 12 of the
`
`’502 patent, and claims 2 and 21 of the ’648 patent are each indefinite.
`
`Complainants’ brief offers nothing to salvage the claims. First, Complainants contend that
`
`“a POSA would understand how to determine a bulk measurement from a single signal.”
`
`Complainants Br. at 19. Complainants’ brief, however, provides no explanation whatsoever as to
`
`why a POSITA would have had this understanding or how a POSITA would have accomplished
`
`such a measurement. Complainants cite to Dr. Madisetti’s rebuttal report, but he also fails to
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`explain how a “bulk measurement” can be obtained from a single signal from a single photodiode.
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`Instead, Dr. Madisetti provides an opinion regarding the normalization of signals, a separate
`
`concept entirely unrelated to obtaining a “bulk measurement.”5
`
`Second, Complainants argue that “Dr. Warren improperly attempts to limit the claim [sic]
`
`to a single disclosed embodiment which he also mischaracterizes.” Complainants Br. at 19.
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`Complainants are mistaken on both accounts. The specification’s only disclosed embodiment of
`
`a “bulk measurement” requires using multiple signals from multiple detectors to obtain the “bulk
`
`measurement.” See e.g., ’501 patent, 34:49-54, 9:13-20. Complainants do not identify any portion
`
`of the specification that discloses otherwise. Thus, Dr. Warren is not improperly limiting his
`
`analysis to a single embodiment but is instead relying upon the only disclosure from the
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`5 The specification never references signal normalization when addressing a “bulk measurement.”
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`IPR2022-01465
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`specification of what is meant by a “bulk measurement.” See On Demand Mach. Corp. v. Ingram
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`Indus., 442 F.3d 1331, 1340 (Fed. Cir. 2006) (“[T]he claims cannot be of broader scope than the
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`invention that is set forth in the specification.”).
`
`Complainants are also incorrect that Dr. Warren has ignored the surrounding context for
`
`the specification’s discussion of a bulk measurement. Complainants highlight the following
`
`statement in the specification:
`
`Some embodiments can employ a bulk, non-pulsatile measurement
`in order to confirm or validate a pulsatile measurement. In addition,
`both the non-pulsatile and pulsatile measurements can employ,
`among other things, the multi-stream operation described above in
`order to attain sufficient SNR. In particular, a single light source
`having multiple emitters can be used to transmit light to multiple
`detectors having a spatial configuration.
`
`’501 patent, 34:35-43. However, the specification is merely stating that both pulsatile and non-
`
`pulsatile measurements can have a multi-stream characteristic. Contrary to Complainants
`
`allegation, this is entirely consistent with Dr. Warren’s view that a “bulk measurement” as
`
`described in the specification is not synonymous with “non-pulsatile” but could describe either a
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`pulsatile or non-pulsatile measurement. Apple Br., Ex. 4 [Rebuttal Warren Rpt.] ¶ 17.
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`Third, Complainants argue that Dr. Warren improperly “focuses on the use of the bulk
`
`measurement to ‘confirm or validate that the sensor is positioned correctly.” Complainants Br. at
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`20. But it is entirely appropriate for Dr. Warren to rely on this portion of the specification because
`
`it directly corresponds to the relevant claim language reciting that “one or more signals” are used
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`“to determine a bulk measurement responsive to [or indicating] a positioning of the user-worn
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`device.” ’501 patent, cl. 13 (depending from cl. 1); ’502 patent, cl. 12 (depending from cl. 1); ’648
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`patent, cl. 2 (depending from cl. 1), cl. 21 (depending from cl. 20).
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`In short, the disclosure of a “bulk measurement” in the specification is impossible to
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`reconcile with the claims. A POSITA would not understand what a “bulk measurement” is or how
`
`a single signal from a single photodiode could be used to obtain a “bulk measurement.” The
`
`asserted claims are therefore invalid as indefinite.
`
`B.
`
`Complainants’ Proposed Construction Is Unsupported.
`
`Complainants contend that a “bulk measurement’ is a DC component of a signal, that a
`
`“baseline measurement” is a DC component of a signal, and therefore, that a “bulk measurement”
`
`should be defined to mean “baseline measurement.” As Apple explained in its opening brief, this
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`argument fails both as a matter of logic and because Complainants’ underlying premises are
`
`inconsistent with the intrinsic and extrinsic evidence.
`
`First, Complainants base their argument on a fundamentally flawed syllogism – equivalent
`
`to arguing that if a Ford is a car, and a Chevy is a car, then a Ford must be a Chevy. Complainants’
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`logic fails at every step. In this case, (1) a “bulk measurement” is not a DC component of a signal
`
`and (2) a “baseline measurement” is not a DC component of a signal. But even if Complainants
`
`were right, which they are not, this still would not mean that a “bulk measurement” is the same as
`
`a “baseline measurement.”
`
`Second, Complainants’ contention that a “bulk measurement” means a non-pulsatile
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`measurement or the DC component of a signal is simply not supported by the evidence.
`
`Complainants contend that “[t]he specification repeatedly equates a ‘bulk measurement’ with a
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`‘non-pulsatile’ measurement.” Complainants Br. at 15. But the specification never defines a “bulk
`
`measurement” as a “non-pulsatile” measurement. Instead, Complainants rely on the following two
`
`disclosures:
`
`Some embodiments can employ a bulk, non-pulsatile measurement
`in order to confirm or validate a pulsatile measurement. In addition,
`both the non-pulsatile and pulsatile measurements can employ,
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`among other things, the multi-stream operation described above in
`order to attain sufficient SNR.
`
`’501 patent, 34:35-40.
`
`For example, as noted, the non-pulsatile, bulk measurements can
`be combined with pulsatile measurements to more accurately
`measure analytes like glucose. In particular, the non-pulsatile, bulk
`measurement can be used to confirm or validate the amount of
`glucose, protein, etc. in the pulsatile measurements taken at the
`tissue at the measurement site(s) 1302. The pulsatile measurements
`can be used to measure the amount of glucose, hemoglobin, or the
`like that is present in the blood. Accordingly, these different
`measurements can be combined to thus determine analytes like
`blood glucose.
`
`’501 patent, 35:41-50. As Apple explained in its opening brief, these disclosures do not equate
`
`“bulk” and “non-pulsatile” but rather describe measurements with two distinct characteristics:
`
`“bulk” and “non-pulsatile.” If the two had the same meaning, then the disclosures in the
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`specification of a “bulk, non-pulsatile measurement” would mean a “non-pulsatile, non-pulsatile
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`measurement.” It does not make sense that the applicant would consecutively use synonymous
`
`and interchangeable adjectives to describe a single characteristic of a measurement.
`
`Complainants argue that is it a “common practice” to use “multiple synonymous
`
`adjectives” to describe “the same feature to emphasize that feature.” Complainants Br. at 18. But
`
`taking Complainant’s examples, “old” is not the same as “ancient,” “hard” is not the same as
`
`“forceful,” and “cold” is not the same as “freezing.” Complainants Br. at 18. Even more
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`importantly, Complainants would have the ALJ believe that patent specifications are written akin
`
`to a fiction novel, but that is simply not the case. A patent is a legal document, written for the
`
`purpose of informing POSITAs of the invention in a manner that is clear and definite, and as the
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`Federal Circuit has repeatedly confirmed, each word is assumed to have a separate meaning. See
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`Liqwd, Inc. v. L’Oreal USA, Inc., No. CV 17-14-JFB-SRF, 2019 WL 1977367, at *3 (D. Del. May
`
`2, 2019), aff’d sub nom. Olaplex, Inc. v. L’Oreal USA, Inc., 845 F. App’x 943 (Fed. Cir. 2021)
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`MASIMO 2055
`Apple v. Masimo
`IPR2022-01465
`
`

`

`(“Different words in a patent have different meanings and the same words have the same meaning.”
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`(citation omitted)). As Dr. Warren has explained, a POSITA would understand that “bulk” and
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`“non-pulsatile” are both used as adjectives to describe two separate characteristics of the
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`measurement—that the measurement is bulk (i.e., it is taken from multiple signals of multiple
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`detectors) and that it is taken in non-pulsatile form. Apple Br., Ex. 4 [Rebuttal Warren Rpt.] ¶ 17;
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`see also ’501 patent, 9:18-22, 34:49-51. The specification does not use “bulk” and “non-pulsatile”
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`interchangeably, but instead uses them to describe two different characteristics of a measurement.
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`Complainants also cite the following from the specification:
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`In certain embodiments, multiple detectors are employed and
`arranged in a spatial geometry. This spatial geometry provides a
`diversity of path lengths among at least some of the detectors and
`allows for multiple bulk and pulsatile measurements that are
`robust.
`
`’501 patent, 9:18-22. Yet, nothing in this passage suggests that a “bulk measurement” is a “non-
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`pulsatile” measurement, or for that matter, a “baseline measurement.” Apple Br., Ex. 4 [Rebuttal
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`Warren Rpt.] ¶ 19.
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`Third, Complainants’ attempt to equate a “non-pulsatile measurement” with a “baseline
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`measurement” is equally unsupported. Complainants state that “a POSA would understand that a
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`‘bulk measurement’ refers to the DC-component of a signal, which is a baseline measurement.”
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`Complainants Br. at 18. Complainants’ brief provides no explanation whatsoever for why a
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`POSITA would understand a “baseline measurement” to be a DC component of a signal.
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`Complainants cite to Dr. Madisetti’s opening report in support, but as Dr. Warren confirms, Dr.
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`Madisetti’s analysis is flawed. Dr. Madisetti relies upon two extrinsic references as allegedly
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`describing a “baseline measurement” as the DC component of a signal. Apple Br., Ex. 2 [Expert
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`Report of Vijay K. Madisetti, Ph.D. Regarding Claim Construction (“Opening Madisetti Rpt.”)]
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`¶¶ 54-55. Tellingly, neither reference says anything about a “bulk measurement.” And, as Dr.
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`
`MASIMO 2055
`Apple v. Masimo
`IPR2022-01465
`
`

`

`Warren confirms, neither reference equates a “baseline measurement” with the DC component of
`
`a signal. To the contrary, the references Dr. Madisetti relies on distinguish a “baseline component”
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`of a signal from the DC component. See Apple Br. at Ex. 4 [Rebuttal Warren Rpt.] ¶¶ 23-30.
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`Dr. Madisetti’s rebuttal report also appears to set forth a different definition of “baseline
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`measurement” than his original position. Dr. Madisetti states in his rebuttal report that “the
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`baseline measurement is responsive to the baseline volume of the user’s tissue.” Apple Br., Ex. 5
`
`[Rebuttal Madisetti Rpt.] ¶ 11. In contrast, Dr. Madisetti’s stated in his earlier opinion that the
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`“baseline measurement” is the DC component of a signal. Apple Br., Ex. 2 [Opening Madisetti
`
`Rpt.] ¶ 43. Dr. Madisetti does not explain how a “baseline volume of the user’s tissue” is related
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`to a DC component of a signal. Regardless, both definitions are improper, neither is supported by
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`the intrinsic record, and neither has any relevance to the meaning of a “bulk measurement” in the
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`asserted claims. The inconsistencies between Dr. Madisetti’s reports further highlights that the
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`meaning of “bulk measurement” is unclear, and ultimately indefinite, as used in the asserted
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`claims.
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`In short, Complainants’ two-step approach to claim construction serves no logical purpose
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`other than to redraft the claims, which is impermissible. If Masimo had intended “bulk
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`measurement”
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`to mean a “DC component,” a “non-pulsatile signal” or a “baseline
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`measurement”—all terms they claim were well-known in the art—it could have used one of those
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`terms when it drafted the claims. Instead, Masimo claimed a “bulk measurement.” There is no
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`basis for its attempt to rewrite the claims, which if permitted, would introduce legal error. See
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`Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (“This court, however,
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`repeatedly and consistently has recognized that courts may not redraft claims, whether to make
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`them operable or to sustain their validity. . . . Thus, in accord with our settled practice we construe
`
`- 13 -
`
`MASIMO 2055
`Apple v. Masimo
`IPR2022-01465
`
`

`

`the claim as written, not as the patentees wish they had written it.”); Bio-Rad Lab’ys, Inc. v. Int’l
`
`Trade Comm’n, 998 F.3d 1320, 1331 (Fed. Cir. 2021) (“Inventors are masters of their claims, and
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`the words they use to describe and claim their invention are decisive and binding.”). Because a
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`POSITA would not understand how to obtain a “bulk measurement” from as few as a single signal
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`from a single photodiode, the asserted claims are indefinite.
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`V.
`
`CONCLUSION
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`For the reasons set forth above, Apple’s proposed constructions should be adopted.
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`Dated: February 10, 2022
`
`Respectfully Submitted,
`
`/s/ Sarah R. Frazier
`Mark D. Selwyn
`WILMER CUTLER PICKERING HALE AND
`DORR LLP
`2600 El Camino Real
`Suite 400
`Palo Alto, CA 94306
`Telephone: (650) 858-6031
`
`Joseph J. Mueller
`Richard Goldenberg
`Sarah R. Frazier
`WILMER CUTLER PICKERING HALE AND
`DORR LLP
`60 State Street
`Boston, MA 02109
`Telephone: (617) 526-6000
`
`Michael D. Esch
`David Cavanaugh
`WILMER CUTLER PICKERING HALE AND
`DORR LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Telephone: (202) 663-6000
`
`Counsel for Respondent Apple Inc.
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`
`MASIMO 2055
`Apple v. Masimo
`IPR2022-01465
`
`

`

`EXHIBIT 8
`EXHIBIT 8
`
`MASIMO 2055
`Apple v. Masimo
`IPR2022-01465
`
`MASIMO 2055
`Apple v. Masimo
`IPR2022-01465
`
`

`

`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Kendall.Loebbaka <Kendall.Loebbaka@knobbe.com>
`Thursday, February 3, 2022 3:24