UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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 knowledge are 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 my opinionsin the future to respond to any
`arguments or positions Apple may raise, taking account of new information as it
`
`Yo Vu
`
`R. James Duckworth, Ph.D
`
`MASIMO 2002
`
`Apple v. Masimo
`IPR2022-01466
`
`becomesavailable to me.
`
`Dated:
`
`!4/12/2020
`
`ha
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`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 knowledge are 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 my opinionsin the future to respond to any
`arguments or positions Apple may raise, taking account of new information as it
`
`Yo Vu
`
`R. James Duckworth, Ph.D
`
`MASIMO 2002
`
`Apple v. Masimo
`IPR2022-01466
`
`becomesavailable to me.
`
`Dated:
`
`!4/12/2020
`
`ha
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`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.
`
`-1-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`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-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`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.)
`
`-3-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`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)
`
`-4-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`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
`
`-5-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`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,
`
`-6-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`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
`
`research and development of systems for personnel location and tracking,
`
`movements, physiological and environment status monitoring, and command and
`
`control. The PPL project brought together diverse technical capabilities from other
`
`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.
`
`-7-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`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
`
`-8-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`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-
`
`-9-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`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.
`
`-10-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`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
`
`-11-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`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
`
`-12-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`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
`
`-13-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`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
`
`-14-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`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
`
`-15-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`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
`
`art at the time of the invention of the ’745 Patent as:
`
`[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.
`
`1465 Petition at 4-5; see also 1466 Petition at 5.
`
`32.
`
`I have applied Petitioner’s description of the level of ordinary skill in
`
`performing my analysis herein. I note, however, that Petitioner’s description of the
`
`-16-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`level of ordinary skill does not appear to require any coursework, training, or
`
`experience with optics, optical physiological sensors, or physiology. Petitioner’s
`
`description also appears to focus on data processing rather than the design of
`
`sensor hardware.
`
`33.
`
`I understand the capabilities of a POSITA as of July 2015. Indeed, I
`
`possessed and exceeded those capabilities myself before, during, and after that
`
`time. As a professor of electrical and computer engineering for over three decades,
`
`I have taught many such POSITAs and understand the level of knowledge and skill
`
`that persons with such academic experience would have possessed in July 2015.
`
`Through my education and decades of experience, such as teaching relevant
`
`engineering courses and working with Professor Yitzhak Mendelson in designing
`
`and developing pulse oximetry devices, I am familiar with what a POSITA would
`
`have understood in July 2015 and qualified to provide opinions from the
`
`perspective of a POSITA at the relevant time.
`
`VI. CLAIM CONSTRUCTION
`“Second shape” (Independent Claims 1, 20)
`A.
`34.
`I have been asked to provide my opinions regarding the construction
`
`of the term “second shape” as it appears in independent claims 1 and 20 of the ’745
`
`Patent and their dependent claims, including challenged claims 2-6, 8, 10-14, and
`
`21-26.
`
`-17-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`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
`
`prosecution history, and the prior disputes about this term. I understand that the
`
`parties already briefed the claim construction of the term “second shape” in the
`
`ITC Investigation and came to an agreement regarding the meaning of that term.
`
`Specifically, I understand that Apple and Masimo agreed that “a mere difference in
`
`size is neither necessary nor sufficient to change a first shape into a ‘second
`
`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
`
`spreads the optical radiation over a wide, donut-shaped area.”2 EX1001 at 10:65-
`
`11:2 (emphasis added).
`
`
`2 All emphases in this declaration are added, unless stated otherwise.
`
`Annotations in drawings are shown in color, unless stated otherwise.
`
`-18-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`
`
`
`EX1001 at FIG. 7B. As another example, the ’745 Patent explains that a diffuser
`
`304 can “distribut[e] 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), and with a substantially uniform intensity profile and energy
`
`distribution.” Id. at 8:9-14. Thus, a POSITA would understand that the
`
`’745 Patent uses the term “shape” to refer to geometric shapes like rectangles,
`
`squares, circles, and donuts. See also id.at 3:8-14, FIGS. 3, 7A. I understand that
`
`Masimo and Apple agreed on this point during the ITC Investigation. See EX2054
`
`at 22 (“The specification describes the ‘shape’ of light according to the ordinary
`
`meaning of shape, describing rectangles, squares, and circles.”), EX2052 at 142
`
`-19-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`(“The ’745 patent refers to shapes in terms of various geometric shapes, e.g.,
`
`rectangle, square, donut, annular.”).
`
`37.
`
`Independent claims 1 and 20 contain the terms “first shape” and
`
`“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
`
`the term “shape” consistent with the specification that refers to geometric shapes.
`
`Thus, the claims require a “first shape” that is emitted from the LEDs and a
`
`different “second shape” after the light has interacted with a material positioned
`
`between the LEDs and the tissue on the user’s wrist.
`
`38. The prosecution history of a parent application to the ’745 Patent
`
`provides further details regarding the “first shape” and “second shape” that a
`
`POSITA would consider.
`
` U.S. Patent Application 16/532,065
`
`(“’065
`
`Application”) is a parent application to the ’745 Patent. During prosecution of that
`
`application, Masimo added a claim 2 which included the limitation: “a material
`
`-20-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`positioned between the plurality of emitters and the tissue measurement site, the
`
`material configured to alter a shape of the light emitted from one or more of the
`
`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,
`
`2019 Office Action at 3-4, 13-15). In the office action, the Examiner cited to
`
`lenses in Fei and Scharf as disclosing the “material configured to alter a shape of
`
`the light.” Id. at 59.
`
`40.
`
`In a November 14, 2019 response to the office action, Masimo
`
`amended the relevant portion of claim 2 as follows:
`
`EX2056 at 82 (Nov. 14, 2019 Amendment at 2).
`
`41. Then, on January 7, 2020, Masimo filed a supplemental amendment
`
`that further amended claim 2 as follows:
`
`
`
`-21-
`
`MASIMO 2002
`Apple v. Masimo
`IPR2022-01466
`
`
`
`IPR2022-01465, -01466
`Apple Inc. v. Masimo Corporation
`
`
`
`Id. at 113 (Jan. 7, 2020 Amendment at 2).
`
`42. An interview summary filed on March 23, 2020 shows that Masimo
`
`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,
`
`“Agre
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
