`Trials@uspto.gov
`571-272-7822
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` Paper No. 71
`Entered: December 13, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`APPLE INC.,
`Petitioner,
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`v.
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`MASIMO CORPORATION,
`Patent Owner
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
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`Held: November 17, 2023
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`
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`BEFORE: JOSIAH C. COCKS, GEORGE R. HOSKINS, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
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`
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`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
`
`
`NICK STEPHENS, ESQUIRE
`Fish & Richardson P.C.
`60 South 6th Street, Suite 3200
`Minneapolis, MN 55402
`612-335-5070
`nstephens@fr.com
`
`W. KARL RENNER, ESQUIRE
`Fish & Richardson P.C.
`1000 Maine Avenue SW
`Washington, D.C. 20024
`202-626-6447
`renner@fr.com
`
`KIM LEUNG, ESQUIRE
`Fish & Richardson P.C.
`12860 El Camino Real Suite 400
`San Diego, CA 92130858-678-4713
`leung@fr.com
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JEREMIAH HELM, ESQUIRE
`Knobbe, Martens, Olson, & Bear, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`jeremiah.helm@knobbe.com
`949-760-0404
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`The above-entitled matter came on for hearing on November 17, 2023,
`commencing at 1:00 p.m., via video teleconference.
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`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
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`P R O C E E D I N G S
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`- - - - -
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`JUDGE HOSKINS: This is Administrative Patent Judge George
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`Hoskins. We're here today for oral argument in two related IPR proceedings
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`that are challenging the same patent. So the proceedings are IPR2022-
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`01291, and IPR2022-01465. And the Patent is U.S. Patent Number
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`10,687,745. Our Petitioner here today is Apple Inc., and our Patent Owner
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`is Masimo Corporation. And I am joined by my two panel colleagues,
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`Judges Josiah Cocks, and Robert Pollock today. So, with that introduction,
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`let me get some introductions into the record from our parties. And we'll
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`start with counsel for Petitioner, please.
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`MR. STEPHENS: Thank you, Your Honors. This is Nick
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`Stephens from Fish & Richardson on behalf of Petitioner, Apple Inc. I'm
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`here with my colleagues, Karl Renner, and Andrew Patrick. And Kim
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`Leung is joining us remotely from our San Diego office.
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`JUDGE HOSKINS: Thank you, Mr. Stephens and welcome to the
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`Board, well, re-welcome to the Board this afternoon. And so, an appearance
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`from Patent Owner, please.
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`MR. HELM: Hello, Your Honor. Jeremiah Helm on behalf of
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`Masimo. I'm from the firm of Knobbe, Martens, and I'm here with Carol
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`Pitzel Cruz, Brian Claassen and Daniel Kiang, my partners here at Knobbe.
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`JUDGE HOSKINS: Thank you, Mr. Helm, and also welcome to
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`the Board here today. So, I guess particularly with respect to Mr. Helm, we
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`intend to do this afternoon under the same procedure that we did this
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`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
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`morning. And so, I'm not inclined to go through the whole procedure, but
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`even though it was the same firm from Patent Owner here this morning, it
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`wasn't you. So do you have any questions or concerns about how we're
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`going to proceed today?
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`MR. HELM: No, Your Honor. If I may just confirm my
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`understanding, the first session will be the public session, and then we'll
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`move on to the confidential session. In each case, Patent Owner will go
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`second.
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`JUDGE HOSKINS: That is correct.
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`MR. HELM: Thank you very much, Your Honor.
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`JUDGE HOSKINS: And also importantly, we're not going to ask
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`for a reservation of time up front for either the reply portion of Petitioner's
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`argument in each session, or up front now for a reservation for the second
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`session. We're just going to let you talk and when you want to stop, you can
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`stop, and then whatever is left over, you have then left over for the
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`remaining sessions. The difference, I guess, from this case to the case this
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`morning was you each have 75 minutes in this case as opposed to 60 in the
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`morning. So, with that, let me just -- I think we're ready to go and I can turn
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`it over to Petitioner unless, Mr. Stephens, you have any questions about how
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`procedure-wise we're going to proceed today.
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`MR. STEPHENS: No questions. Thank you, Your Honor.
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`JUDGE HOSKINS: Okay. Well, then, when you are ready to
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`begin, you may begin. And, you know, please keep track of your own time.
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`We'll also be keeping track of your time. And when you do begin, we'll start
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`the clock on our end. So, thank you very much.
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`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
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`MR. STEPHENS: May it please the Board. Good afternoon, Your
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`Honors. I'll be starting the open session today on behalf of Petitioner,
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`Apple. As I mentioned earlier during our appearances, Kim Leung is also
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`with us. And Kim, I'll be transitioning to Kim for the second half of our
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`open proceeding. And then during the closed session, we intend to, for Karl
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`Renner to present with respect to issues involving confidential information.
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`The 1291 Petition challenges three Independent Claims of the '745
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`Patent. Claims 1, 15, and 20. Specifically, Grounds 1A through 1B,
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`challenge Claim 1 as obvious based on Iwamiya and Sarantos, and Claims
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`15 and 20 are challenged as obvious based on the combination of Iwamiya,
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`Sarantos, and Ventkatraman. The 1465 Petition then challenges claims that
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`depend from each of these Independent Claims and thus addresses
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`obviousness of the limitations of 1, 15 and 20 in the same manner as the
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`1291 Petition. During trial, Masimo's not disputed that almost all of the
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`limitations in Independent Claims 1, 15 and 20 are disclosed or rendered
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`obvious by the applied prior art. We'd be happy to address any questions
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`from Your Honors today regarding the prior art mappings or any of the
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`limitations, but unless there's specific questions, we intend to focus our time
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`on the limitations that have been disputed, and we'll leave our arguments
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`with respect to the other limitations and Dependent Claim 25 to the papers.
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`So, with that, I'd like to turn to slide 11 of our demonstratives.
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`And the first limitation that's been disputed appears in both Independent
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`Claims 1 and 20. These claims require a surface comprising a dark-colored
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`coating, the surface configured to be positioned between the plurality of
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`photodiodes and the tissue when the physiological monitoring device is in
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`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
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`use. We show that this limitation would be obvious based on the teachings
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`of Iwamiya in view of Sarantos. Turning to slide 12 of our demonstratives,
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`we can see that Iwamiya discloses a light-shielding frame 18 to surround a
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`light-receiving unit 9. The light-shielding frame being highlighted in pink in
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`the figure depicted on slide 12, and the light receiving unit 9 in yellow.
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`While a single light receiving unit 9 is shown in this figure, the text also
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`explains that photodiode 9 would consist of -- include a plurality of
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`photodiodes 9. Slide 13. Sarantos teaches a dark colored coating to shield
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`light. For the details of materials with optical properties that would achieve
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`Iwamiya's desired light shielding function, the Petition explains that a
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`POSITA would turn to these teachings in Sarantos. And we can see that
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`Sarantos discloses in Figure 22 the use of a dark colored coating 2276 that
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`Sarantos refers to as an in-mold label, which may be black or otherwise
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`opaque, and which is also positioned between the photodiodes 2212 and the
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`patient's tissue in use. And Sarantos explains that the in-mold label prevents
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`light from entering or exiting the PPG sensor except through window
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`regions 2226, and it also prevents stray light from other sources, e.g.,
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`ambient light, from reaching the photodetector elements.
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`Slide 14. With respect to the combination, the Petition and Dr.
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`Anthony explained that it would be obvious to combine the teachings of
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`Iwamiya and Sarantos, specifically by integrating an in-mold label or other
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`black or opaque material as disclosed by Sarantos in the light shielding
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`frame 18 of Iwamiya to serve the purpose indicated by the component's
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`name, shielding the photodiodes 9 from stray light and thereby ensuring the
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`accuracy of the sensor. And on slide 16, we see the analysis from Dr.
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`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
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`Anthony's declaration, where he indicates that the in-mold label, or a dark
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`color coating as taught in Sarantos, would be obvious to apply further for
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`limiting reflections in the device of Sarantos -- of Iwamiya. And limiting
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`reflections is an important benefit that would be achieved by the use of a
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`dark color coating as taught in Sarantos. If we go to slide 15, there's a figure
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`depicted, a cross-section of Iwamiya's sensor, and we can see that around the
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`exterior of the light-shielding frame 18, highlighted in red on slide 15,
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`there's a cavity in which light that reflects from the tissue may be directed to
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`this cavity surrounding the light-shielding frame 18. So, one of the reasons
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`that a POSITA would look to a dark-colored coating, as taught in Sarantos,
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`to be applied to the exterior of the light shielding frame 18 would be to limit
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`reflections and thereby mitigate the effect of multiple scattering that could
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`occur with an otherwise reflective material, for example. So, any light that
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`is initially reflected from the patient's tissue into the cavity surrounding the
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`light shielding frame 18, with the use of a dark-colored coating, the light
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`would be absorbed and there would be less opportunity for that light to
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`reflect back to the patient's tissue and then again in through the optical filter
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`to the photodetector.
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`The concept of multiple scattering was known long before the '745
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`Patent. Slides 18 and 19, sorry 17 and 18, we've provided various pieces of
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`corroborating evidence that disclose this concept. It's also discussed in the
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`background section and elsewhere in the '745 Patent. And Dr. Anthony
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`explained again that the application of a dark-colored coating to the light
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`shielding frame would both provide a material that would be obvious to
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`serve the function indicated by the name of the light shielding frame, but
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`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
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`also to reduce the reflections and multiple scattering. We would briefly just
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`note that Masimo has contested whether there would be any benefit to the
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`use of a dark-colored coating as applied to Iwamiya. But if we look at the
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`evidence they've submitted to that effect, Dr. Duckworth failed to account
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`for the possibility, this is on slide 19, I apologize, for the possibility of
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`multiple scattering in Iwamiya's device. So, he was focused on light that
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`would simply reflect within the cavity and be directed solely through the
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`optical filter 17. But what we see beneath, the optical filter 17, shaded in
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`blue, is what Iwamiya refers to as the scattered light taking unit 8. And
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`that's simply a transparent lens made out of glass or a plastic resin. That
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`would allow light not just to reflect from the cavity back, you know, to the
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`photo detector 9 through the filter, but also back to the patient's tissue,
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`rendering it susceptible to multiple scattering.
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`Next, I'd like to turn to slide 23. And as to Independent Claim 15,
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`as highlighted on this slide, claim 15 requires a plurality of photodiodes,
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`where the plurality of photodiodes are arranged in an array having a spatial
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`configuration corresponding to a shape of the portion of the tissue
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`measurement site encircled by the light block. Claim 6 and 26, which are
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`challenged in the 1465 Petition, include similar language as we see in claim
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`15.
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`Turning to slide 28. In mapping this element of claim 15, we -- the
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`Petition cited to Iwamiya's teaching at column 14, lines 32 to 41, regarding
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`the plurality of light receiving units 9 being two-dimensionally disposed on
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`the same circumference centered on an optical axis of the scattered light-
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`taking unit 8. So, given a plurality of light receiving units 9 that are two-
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`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
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`dimensionally disposed on a, you know, quote, same circumference as
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`taught in Iwamiya. Iwamiya disposes and renders obvious an array having a
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`spatial configuration corresponding to the circular light block, exactly as
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`claim 15 describes.
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`JUDGE HOSKINS: Mr. Stephens, --
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`MR. STEPHENS: Yes.
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`JUDGE HOSKINS: -- this is Judge Hoskins. Can you point --
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`what is the light block in Iwamiya according to your mapping?
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`MR. STEPHENS: Yeah, thank you, Your Honor. The light block
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`is formed by the reflective layers 13 and 15 that surround the annular light
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`guiding unit 7. And I'm looking through our demonstratives to see if we
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`have a good figure of that available. Slide 15, for example. Looking at
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`Figure 4 in Iwamiya, you see the structure that's denoted 7, which contains
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`two components, there's an upper portion 11, and a lower portion 12. That
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`upper portion 7 is a formed of a transparent material like glass or plastic
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`resin, again. But the lower portion is kind of a milky resin that diffuses
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`light. But it's for the purpose of guiding the light from the LEDs to the
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`tissue. And --
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`JUDGE HOSKINS: So, if it's a block, the block is the outer layer
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`that we see there around those light carrying portions. I can't remember -- I
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`can't remember the number. But so, what shape is that? Because the claim
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`says that the array of our photo detectors have to have a -- I don't know if
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`shape is the right word, but a configuration that corresponds to the
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`configuration of the light block. And so those two, I'm having trouble
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`comparing those two things when I look here at Figure 4 of Iwamiya. So,
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`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
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`help me with that, please.
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`MR. STEPHENS: Certainly, Your Honor. The shape is circular.
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`If you look at the top view of the sensor, Iwamiya's sensor is a circular
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`sensor, and so that cross-sectional structure of the light block, those
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`reflective layers around the annular light-guiding unit 7, that's circular, and
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`that's how we get the circular shape. And that's the portion, so as a result of
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`that circular shape, the light from Iwamiya's LEDs are diffused or irradiated
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`around the tissue in a circular shape. And when we look at claim 15, the
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`language in claim 15 talks about a plurality of photodiodes being arranged in
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`an array, having a spatial configuration corresponding to a shape of the
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`portion of the tissue measurement site encircled by the light block. That
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`shape is simply circular.
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`JUDGE HOSKINS: How does the light block encircle in
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`Iwamiya? How does Iwamiya's light block encircle tissue?
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`MR. STEPHENS: Certainly. The -- in Figure 4, for example,
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`Iwamiya. The outer coating, for example, of that lower structure 12, the
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`ring, a radiating ring portion is, again, is in a circular shape. It's an annular
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`shaped ring that directs the light in a circular fashion onto the tissue. And so
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`that light line --
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`JUDGE HOSKINS: Annular, right, because it's got an inside
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`radius and an outside radius. So, right where the light comes out from our
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`device and goes into the tissue with those arrows that are pointing down,
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`that's an annular shape, correct?
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`MR. STEPHENS: That's correct, Your Honor.
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`JUDGE HOSKINS: Thank you.
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`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
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`MR. STEPHENS: Referring back to slide 28, we were looking at
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`Iwamiya's disclosure of the plural light receiving units 9 being two-
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`dimensionally disposed on the same circumference. And Masimo has
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`attempted to distinguish this disclosure by arguing that the disclosure of
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`plural light receiving units 9 is insufficient in Iwamiya because, their view,
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`at least six photodiodes would be required to correspond to a circular shape.
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`And this argument is premised on the prosecution history of an ancestor
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`application in this family. If we look at claim 25, or slide 25, apologies, the
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`top clip on slide 25 is the portion of the prosecution history of an ancestor
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`that Masimo relies upon for the notion that at least six photodiodes would be
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`required to demonstrate correspondence between the arrangement of the
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`photodiodes and a circular portion of the tissue measurement site. And it is
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`true, at one point the applicant did state with respect to a limitation in that
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`application that for example, six or more detectors could be arranged in an
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`annular shape and meet the recited limitation. But what Masimo did not
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`bring forward was that in that same response, the very next page, the
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`applicant argued to the examiner that the prior art the claim distinguished the
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`prior art that the examiner had applied because the prior art did not include
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`more than three detectors. So again, they're inconsistent. The -- Masimo was
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`arguing for six, but we looked in that same response and the applicant
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`identified as only three being necessary. Not only that, if we go to slide 26,
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`at the very end of that response in bold text, there's a very clear proclamation
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`of no disclaimers or disavowals. So to the extent that Masimo is relying on
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`the prosecution history to tell us that this limitation in Claim 15 requires at
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`least six photodiodes, that's inconsistent with the argument that they made
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`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
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`elsewhere in that same response, and it certainly doesn't constitute a
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`disclaimer or disavowal given the ambiguity, and the office action response
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`itself, as well as the applicant's own intent for it not to be a disclaimer in that
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`context. Nonetheless, that leaves us with the ordinary -- plain and ordinary
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`meaning of the word correspond. On slide 27 we've shown that correspond
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`means conform to be in agreement with. And Iwamiya's disclosure of plural
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`photodiodes disposed on a same circumference clearly shows that the
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`photodiodes conform and are in agreement with a circular shape. Indeed, we
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`look at Iwamiya's disclosure and it talks about the plural photodiodes 9
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`being two-dimensionally disposed on, you know, quote, a same
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`circumference, which is the circumference being a circular shape.
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`Finally, on slide 29, I'd note that both Dr. Anthony and Dr.
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`Duckworth in this proceeding illustrated how Iwamiya's plural photodiodes
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`9 would be disposed on a same circumference in a manner that meets the
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`claim limitations. On the left-hand side, we see Dr. Anthony's drawing
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`where he was showing how Iwamiya would render obvious the claim
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`limitation even if six photodiodes were required. And then Dr. Duckworth
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`in his sur-reply declaration put in the figure at the right where he actually,
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`drew four photodiodes disposed on the same circumference according to
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`Iwamiya's teachings. Next slide is to turn to slide 31. And with respect to
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`Dependent Claims 2, 9, 18, and 27, in the 1291 proceeding we've challenged
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`Dependent Claims 9 and 18, each of these requiring that the physiological
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`parameter referred to in the Independent Claims comprises oxygen
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`saturation. And relatedly in the 1465 proceeding, that claims 2 and 27 refer
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`to a device having photodiode or emitters that emit light at both the first
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`wavelength and a second wavelength.
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`JUDGE HOSKINS: Mr. Stephens?
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`MR. STEPHENS: Yes, Your Honor.
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`JUDGE HOSKINS: I think you've challenged claim 27 in the
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`1291 proceeding as well, is that right?
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`MR. STEPHENS: You are correct, Your Honor. I apologize for
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`that.
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`JUDGE HOSKINS: Okay. I just want to make sure. Thank you.
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`MR. STEPHENS: Nine, eighteen and twenty-seven, in the 1291
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`proceeding.
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`JUDGE HOSKINS: Thank you.
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`MR. STEPHENS: Your Honors, I intend to address just a few
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`initial points at this time, regarding the combination of light to address these
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`claims. But absent questions after this discussion, we'll reserve the balance
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`of our time to address issues related to reasonable expectation of success in
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`the closed session in light of the confidential material that's implicated by
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`that issue.
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`I refer to slide 37. In addressing these Dependent Claims, the
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`Petition proposed to integrate Sarantos' teaching of wrist-based pulse
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`oximetry into Iwamiya's wrist-based monitoring device so that the modified
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`Iwamiya device would perform the type of wrist-based SpO2 measurements
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`that are disclosed in Sarantos. So specifically, Iwamiya's original device
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`was designed to measure pulse rate using a single wavelength of light. And
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`Sarantos explains how it was known to use two wavelengths for calculating
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`blood oxygenation levels. And the combination integrates that teaching
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`from Sarantos into Iwamiya. The motivation for doing so is stated by Dr.
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`Anthony on the clip shown on slide 37, which would be to expand the range
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`of physiological parameters measured by Iwamiya’s sensors, thereby
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`improving the functionality and utility of the sensor. We're improving the
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`device by allowing Iwamiya not just to measure pulse rate, but also oxygen
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`saturation levels. Masimo challenges the combination, the motivation to the
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`combination, on several fronts. They first contend that Iwamiya teaches
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`away from adding a second wavelength. And the record doesn't support that
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`contention. On slide 33, you would note that Iwamiya focuses on red light
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`at 940 nanometers for the detection of pulse rate. And because pulse rate
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`requires only one wavelength, Iwamiya could naturally filter all of its light
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`below 900 nanometers. And indeed, it wanted to do so to obtain the cleanest
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`signal possible for just measuring pulse rate. All you need is the 940-
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`nanometer measurement. But Iwamiya never criticizes or disparages the use
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`of red light or other wavelengths of light for purposes of measuring oxygen
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`saturation levels. So, adding red light to expand the capabilities of
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`Iwamiya's device to measure not just pulse rate, but also oxygen saturation,
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`would be obvious and not contrary to Iwamiya's teachings.
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`Slide 34.
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`JUDGE HOSKINS: Mr. Stephens? Sorry.
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`MR. STEPHENS: Yes?
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`JUDGE HOSKINS: What does that portend then for the filter in
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`Iwamiya in terms of if you're going to do this, you're going to modify
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`Iwamiya to have the red and the infrared that seem to be required to measure
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`oxygen saturation. What does that portend for the filter in that Figure 4 of
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`Iwamiya?
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`MR. STEPHENS: Yes, Your Honor. The filter would need to be
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`adapted in some way to accommodate for the addition of a second
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`wavelength. As in Iwamiya's original design, we know that, that filter is
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`designed to cast light of only the infrared band above 900 nanometers. And
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`again, Iwamiya only needed to do that because it's only using a single
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`wavelength of light. But the filter is not critical to the operation of
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`Iwamiya's device. And we have evidence to that effect. If we look at Dr.
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`Anthony's declaration, supplemental declaration, that's Exhibit 1042, in
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`paragraphs 24 and 25, he talks about how it was known to have -- to
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`measure pulse rate and perform pulse oximetry even without filters. You
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`can get a sufficiently clean signal without the filter. But even if you were to
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`use a filter, which would, you know, enhance the performance, you can
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`adjust the cutoff frequency of that filter to encompass not just infrared and
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`red, you can also -- there were known solutions for multi-bandpass filters, so
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`you could effectively narrowly pass through just red band wavelength light
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`and infrared band wavelength light. But these were all known solutions to a
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`POSITA, and it certainly wouldn't render the device inoperable or teach
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`against the combination.
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`JUDGE HOSKINS: So if you widen up the filter’s passage to
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`something below 900, how does that then interface with the written
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`description in Iwamiya that says, you know, wavelengths around 600 are
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`problematic, relying on wavelengths around 600 nanometers are problematic
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`because of the melatonin in dark skin that absorbs that light so you don't get
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`it out. How do you throw that into how a POSITA would tackle this
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`problem?
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`MR. STEPHENS: Good question, Your Honor. I don't think it
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`interferes with that teaching at all because what we're doing with adding the
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`oxygen saturation capability into Iwamiya's device is adding a second
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`wavelength. We're not changing the original wavelength that was needed to
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`measure pulse rate per Iwamiya's teaching. So, we can still continue to use
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`940 nanometers for measuring pulse rate, just as Iwamiya envisioned. It's
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`just that we can use the combination of infrared light at 940 nanometers and
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`red light to expand the capability and, also, doing blood oxygen saturation
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`measurements. I'd also note, so beyond the optical filter, Masimo has also
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`challenged whether POSITA would know how to integrate LEDs that would
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`be necessary for a second wavelength of light. Dr. Anthony, with
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`corroborating evidence before the critical date of 745, explained how a
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`POSITA would know how to do this. So, we're looking at Iwamiya's device
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`being a circular sensor. In the original design, the infrared 940 nanometer
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`LEDs being placed at the 3:00 and 9:00 positions, we could integrate the
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`second LEDs for the red wavelengths in a variety of ways, whether it's
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`adjacent to the infrared LEDs at the 12:00 and 6:00 positions or otherwise.
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`So, in short, Masimo's challenges to the motivation to combine Iwamiya and
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`Sarantos to determine oxygen saturation are unfounded. But as noted, we'll
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`return to the reasonable expectation of success issue in the closed session.
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`JUDGE HOSKINS: Mr. Stephens, before we turn away from the
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`motivation issue, my recollection is in the ITC, both of those issues went in
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`Patent Owner's favor. The ITC found that they're -- that Apple had not
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`established a motivation and Apple had also not established reasonable
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`expectation of success. Do I have that correct in terms of the result of the
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`ITC?
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`MR. STEPHENS: It's a good question, Your Honor. I'd like to
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`look at exactly how the ITC characterized their finding. I would note here
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`that we have a different record and evidence available to us that shows that,
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`whatever challenges Masimo received in adding a second wavelength, those
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`are challenges that a POSITA would have known how to overcome in terms
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`of, like you mentioned earlier, the optical filter, for example.
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`JUDGE HOSKINS: It's the same art, though. It's the same
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`combination. It's Iwamiya and Sarantos. So, how does this record really
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`differ from the record that was presented to the ITC?
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`MR. STEPHENS: I believe the ALJ's writing in the record
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`presented to the ITC said that the evidence that had been presented was
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`insufficient to demonstrate that a POSITA would know how to modify the
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`device accordingly. And so, we've had Dr. Anthony come in and explain in
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`detail in response to those allegations by Masimo in its Patent Owner's
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`response, which shows that indeed, you know, not just, don't take Dr.
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`Anthony's word for it. Many pieces of corroborating references show that
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`this was, these were adaptations that a POSITA would know how to do. I
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`would also note on slide, excuse me, slide 39 that when we look at the broad
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`scope of these claims, which only indicates that the physiological parameter
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`is oxygen saturation, it's not calling for specific modifications to the
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`structures of the device itself. So, it's sufficient to look at the teachings of a
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`secondary reference like Sarantos that teaches measuring blood oxygenation
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`levels, and a POSITA knows how to integrate that teaching into the primary.
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`But to the extent there's any doubt, we have shown with detailed explanation
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`as to how a POSITA could do that.
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`With that, if there are no further questions on Ground 1, I'll turn it
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`over to my colleague Kim Leung to discuss Ground 2.
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`JUDGE HOSKINS: Okay. Thank you.
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`MS. LEUNG: Thanks Nick. Thank you, Your Honors. So, I'm
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`going to be discussing the issues on the Sarantos-Shie combinations, and
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`we'll be starting with slide 48. So, the only dispute with respect to
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`Independent Claims 1 and 20 is whether the Sarantos-Shie combination
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`renders obvious changing a first shape to a different second shape. And the
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`specific claim language at issue is highlighted on slide 49, which recites, the
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`material configured to change the first shape into a second shape by which
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`the light emitted from one or more of the plurality of light emitting diodes is
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`projected towards the tissue. So, on slide 50, we see that Sarantos describes
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`a translucent or transparent material in the region 2226 between the light
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`source 2208, which is highlighted in green, in the Figure 22 on the right, and
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`the tissue, which is above the region 2226. But Sarantos doesn't describe the
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`material as configured to change the first shape of light entering the material
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`from the light source 2208 to a different second shape of light exiting the
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`material towards the tissue. And so, turning to slide 51, we see that Shie
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`describes such material. Specifically, Shie describes various optical
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`elements that provide diffusing and shaping of the light output from a light
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`source. So, on this slide, for example, you can see that Shie repeatedly
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`describes that its optical elements shape the light output. And this is
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`underlined in four of the excerpts on this slide. Shie also discloses, as
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