UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MASIMO CORPORATION
`Petitioner,
`
`v.
`
`APPLE INC.
`Patent Owner.
`
`Case No. IPR2023-00745
`U.S. Patent No. US 10,076,257
`
`DECLARATION OF ALAN L. OSLAN IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 10,076,257
`
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`1 of 97
`
`

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`TABLE OF AUTHORITIES
`
`Page No(s).
`
`I.(cid:3)
`
`II.(cid:3)
`
`INTRODUCTION ....................................................................................... 1(cid:3)
`
`QUALIFICATIONS AND BACKGROUND ............................................. 2(cid:3)
`
`III.(cid:3)
`
`INFORMATION AND MATERIALS CONSIDERED ............................. 7(cid:3)
`
`IV.(cid:3) RELEVANT LEGAL STANDARDS ......................................................... 9(cid:3)
`
`A.(cid:3)
`
`Prior Art ............................................................................................. 9(cid:3)
`
`A.(cid:3) Anticipation ..................................................................................... 10(cid:3)
`
`B.(cid:3)
`
`B.(cid:3)
`
`C.(cid:3)
`
`Obviousness ..................................................................................... 10(cid:3)
`
`Claim Construction ......................................................................... 12(cid:3)
`
`Perspective of a Person of Ordinary Skill in the Art at the
`Time of the Claimed Invention ....................................................... 13(cid:3)
`
`D.(cid:3)
`
`Prior-Art Status of References ........................................................ 14(cid:3)
`
`V.(cid:3)
`
`LEVEL OF ORDINARY SKILL IN THE ART ....................................... 14(cid:3)
`
`VI.(cid:3) THE ’257 PATENT ................................................................................... 15(cid:3)
`
`A.(cid:3) Overview of ‘257 Patent ................................................................. 15(cid:3)
`
`B.(cid:3)
`
`Prosecution History of the ‘257 Patent ........................................... 17(cid:3)
`
`VII.(cid:3) CLAIM CONSTRUCTION ...................................................................... 17(cid:3)
`
`1.(cid:3)
`
`2.(cid:3)
`
`3.(cid:3)
`
`Embedded .............................................................................. 17(cid:3)
`
`Lead ....................................................................................... 19(cid:3)
`
`Pad ......................................................................................... 22(cid:3)
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
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`4.(cid:3)
`
`Pocket .................................................................................... 23(cid:3)
`
`VIII.(cid:3) OVERVIEW OF THE PRIOR ART ......................................................... 23(cid:3)
`
`A.(cid:3) Mills ................................................................................................. 23(cid:3)
`
`B.(cid:3) Markel.............................................................................................. 24(cid:3)
`
`IX.(cid:3) GROUNDS FOR UNPATENTABILITY ................................................. 25(cid:3)
`
`A.(cid:3) Ground 1: Claims 1-4, 8, 10, 11 and 14 are unpatentable as
`anticipated by Mills ......................................................................... 25(cid:3)
`
`1.(cid:3)
`
`2.(cid:3)
`
`3.(cid:3)
`
`4.(cid:3)
`
`5.(cid:3)
`
`6.(cid:3)
`
`Claim 1: “An electronic device for detecting a user’s
`cardiac signal, comprising” ................................................... 25(cid:3)
`
`Claim 2: “wherein the first portion and the second
`portion are located on opposite sides of the electronic
`device”................................................................................... 37(cid:3)
`
`Claim 3: “wherein the first portion is electrically
`isolated from the second portion” ......................................... 38(cid:3)
`
`Claim 4: “the first portion is separated from the
`second portion by a third portion of the enclosure; at
`least the third portion is constructed from a material
`having a first conductivity; and the first conductivity
`is insufficient to transmit the first electrical signal
`from the first pad to the second pad via the third
`portion” ................................................................................. 39(cid:3)
`
`Claim 8: “the enclosure further comprises at least one
`pocket underneath the exterior surface of the
`enclosure; and at least one of the first pad and the
`second pad is placed within the at least one pocket” ............ 41(cid:3)
`
`Claim 10: “the second lead is configured to detect the
`second electrical signal of the user's cardiac signal
`via the user's contact with the second portion of the
`enclosure” .............................................................................. 42(cid:3)
`
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`3 of 97
`
`

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`7.(cid:3)
`
`8.(cid:3)
`
`Claim 11: “the second lead is configured to detect the
`second electrical signal of the user's cardiac signal
`via the user's contact with the second lead” .......................... 43(cid:3)
`
`Claim 14: “an interior surface of the enclosure
`comprises an interior surface of the first portion,
`wherein the first pad is positioned on the interior
`surface of the first portion” ................................................... 43(cid:3)
`
`B.(cid:3)
`
`Ground 2: Claims 1-4 and 8-22 would be unpatentable
`because each claim would have been obvious in view of
`Markel in combination with Mills. .................................................. 44(cid:3)
`
`1.(cid:3)
`
`2.(cid:3)
`
`3.(cid:3)
`
`4.(cid:3)
`
`5.(cid:3)
`
`6.(cid:3)
`
`Claim 1: “An electronic device for detecting a user’s
`cardiac signal, comprising” ................................................... 44(cid:3)
`
`Claim 2: “the first portion and the second portion are
`located on opposite sides of the electronic device” .............. 57(cid:3)
`
`Claim 3: “wherein the first portion is electrically
`isolated from the second portion” ......................................... 59(cid:3)
`
`Claim 4: “the first portion is separated from the
`second portion by a third portion of the enclosure; at
`least the third portion is constructed from a material
`having a first conductivity; and the first conductivity
`is insufficient to transmit the first electrical signal
`from the first pad to the second pad via the third
`portion” ................................................................................. 60(cid:3)
`
`Claim 8: “the enclosure further comprises at least one
`pocket underneath the exterior surface of the
`enclosure; and at least one of the first pad and the
`second pad is placed within the at least one pocket” ............ 61(cid:3)
`
`Claim 9: “a display, wherein the enclosure supports
`the display, and wherein at least a portion of the
`exterior surface of the enclosure forms at least a
`portion of an exterior surface of the electronic device
`behind the display and a third lead embedded with
`the display, wherein the third lead is configured to
`
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`4 of 97
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`

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`detect a third electrical signal of the user’s cardiac
`signal via the user’s contact with at least one of the
`third lead and the display” .................................................... 61(cid:3)
`
`Claim 10: “wherein the second lead is configured to
`detect the second electrical signal of the user’s
`cardiac signal via the user’s contact with the second
`portion of the enclosure” ....................................................... 63(cid:3)
`
`Claim 11: “wherein the second lead is configured to
`detect the second electrical signal of the user’s
`cardiac signal via the user’s contact with the second
`lead” ...................................................................................... 65(cid:3)
`
`Claim 12: “wherein the first portion of the enclosure
`is a bezel” .............................................................................. 66(cid:3)
`
`7.(cid:3)
`
`8.(cid:3)
`
`9.(cid:3)
`
`10.(cid:3) Claim 13: “wherein the second portion of the
`enclosure is a bezel” .............................................................. 66(cid:3)
`
`11.(cid:3) Claim 14: “wherein an interior surface of the
`enclosure comprises an interior surface of the first
`portion, wherein the first pad is positioned on the
`interior surface of the first portion” ...................................... 67(cid:3)
`
`12.(cid:3) Claim 15: “An electronic device for detecting a user's
`cardiac signal, comprising: ................................................... 71(cid:3)
`
`13.(cid:3) Claim 16: “wherein the first lead is configured to
`detect the first electrical signal of the user's cardiac
`signal via the user's contact with the first lead” .................... 84(cid:3)
`
`14.(cid:3) Claim 17: “wherein the second lead is configured to
`detect the second electrical signal of the user’s
`cardiac signal via the user’s contact with the second
`lead” ...................................................................................... 85(cid:3)
`
`15.(cid:3) Claim 18: “wherein the second lead is configured to
`detect the second electrical signal of the user's
`cardiac signal via the user's contact with the display
`screen” ................................................................................... 86(cid:3)
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`5 of 97
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`16.(cid:3) Claim 19: “the first portion of the electronic device
`comprises a bezel of the enclosure; the electronic
`device further comprises a non-conductive
`component positioned between the bezel and the
`display screen for electrically isolating the first lead
`from the second lead” ........................................................... 86(cid:3)
`
`17.(cid:3) Claim 20: “wherein the first lead is configured to
`detect the first electrical signal of the user’s cardiac
`signal via the user’s contact with the first portion of
`the enclosure” ........................................................................ 87(cid:3)
`
`18.(cid:3) Claim 21: “wherein the second lead is configured to
`detect the second electrical signal of the user’s
`cardiac signal via the user’s contact with the second
`lead” ...................................................................................... 88(cid:3)
`
`19.(cid:3) Claim 22: “wherein the second lead is configured to
`detect the second electrical signal of the user's
`cardiac signal via the user's contact with the display
`screen” ................................................................................... 90(cid:3)
`
`X.(cid:3)
`
`SECONDARY CONSIDERATIONS ....................................................... 90(cid:3)
`
`XI.(cid:3) CONCLUSION .......................................................................................... 91(cid:3)
`
`
`
`
`
`
`
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`6 of 97
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`

`Masimo Corporation v. Apple Inc.
`IPR Petition – U.S. Patent No. 10,076,257
`I, Alan Oslan, do hereby declare:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I, Alan L. Oslan, MSBE, MBA, have been retained by Knobbe,
`
`Martens, Olson & Bear, LLP, counsel for Masimo Corporation (“Masimo” or
`
`“Petitioner”). I understand that Masimo is petitioning for inter partes review of U.S.
`
`Patent No. 10,076,257 (“the ’257 patent”; EX1001) and requests that the United
`
`States Patent and Trademark Office cancel Claims 1-4 and 8-20 of the ‘257 patent
`
`as unpatentable. The following discussion and analysis provide my opinion as to
`
`why Claims 1-4 and 8-20 would have been anticipated and/or obvious to a person of
`
`ordinary skill in the art (“POSITA”) in November of 2008. This declaration is
`
`provided after my review and analysis of the ’257 patent, the prior art, relevant
`
`background technology, and is also based on my education and experience, as well
`
`as additional materials identified herein.
`
`2.
`
`I am being compensated for my work in this matter at my standard
`
`hourly rate for consulting services. My compensation in no way depends on the
`
`outcome of this proceeding.
`
`3.
`
`The opinions set forth in this declaration are my independent opinions,
`
`formed after conducting significant analysis, over several days, related to whether
`
`the claims of the ’257 patent would have been obvious in view of the prior art
`
`discussed in this declaration. I have been assisted by attorneys in preparing my
`
`-1-
`
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`7 of 97
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`Masimo Corporation v. Apple Inc.
`IPR Petition – U.S. Patent No. 10,076,257
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`declaration in writing, based on my input and approval, and identifying the
`
`applicable legal standards that I applied in my analysis set forth in this declaration.
`
`4.
`
`I understand that Petitioner will cite and rely on significant portions of
`
`my testimony and analysis set forth in this declaration in support of its Petition
`
`challenging the patentability of the ’257 patent.
`
`II.
`
`QUALIFICATIONS AND BACKGROUND
`
`5.
`
`I am currently president of ElectroSurge LLC. I founded ElectroSurge
`
`in 2010 to consult for other companies based on my extensive experience in medical
`
`device development projects. As president of ElectroSurge, I have consulted for
`
`several medical device companies on device design and testing, NIH grant support,
`
`expert witness for medical device patent litigation including wearable monitoring
`
`devices, understanding electrical properties of body tissues, and surface electrodes
`
`for stimulation. Over the course of my career, I have worked at a variety of medical
`
`device companies ranging from small start-ups, to large mature companies, and have
`
`been involved with numerous technologies relating to a multitude of anatomical
`
`regions (1977 to present).
`
`6.
`
`I received a B.S. in the Electrical Engineering program from the
`
`University of Connecticut (1975) where I specialized in biomedical engineering
`
`principles. As an undergraduate, I worked in a metallurgy research lab on campus
`
`as a lab technician, in a United States Army research facility in Washington, D.C.,
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`8 of 97
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`Masimo Corporation v. Apple Inc.
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`on high-current pulsing of semiconductor devices, and in an on campus
`
`biobehavioral sciences research
`
`lab
`
`testing and repairing capacitive-based
`
`respiration monitors. Additionally, I did an independent study lab on using
`
`miniature electrodes to measure nerve signals of insects.
`
`7.
`
`I received my M.S. in Biomedical Engineering from Boston University
`
`in Boston, MA on a part-time basis (1980). I took courses including biomaterials,
`
`human anatomy, and electrical signal analysis. My thesis topic was measurement
`
`and analysis of electromyography signals (EMGs). EMGs are physiological signals
`
`produced by the body to cause muscles to contract. EMG signals are similar to ECG
`
`signals, except that ECG signals are produced specifically by the heart muscle. The
`
`electrodes for this EMG medical device were dry (pasteless) surface electrodes and
`
`they interfaced with a biometric device that I designed.
`
`8.
`
`I studied towards my Ph.D. in Electrical Engineering at the University
`
`of Connecticut with an anticipated thesis topic in medical ultrasound imaging (1980-
`
`81). I took courses in digital image processing and taught classes to junior-level
`
`electrical engineering undergraduate students in electrical signals and systems
`
`analysis. At the end of my first year, my academic advisor started a two-year
`
`sabbatical to obtain his M.D. degree, and I therefore decided not to continue my
`
`Ph.D. degree studies.
`
`-3-
`
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`9 of 97
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`Masimo Corporation v. Apple Inc.
`IPR Petition – U.S. Patent No. 10,076,257
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`
`9.
`
`I earned an M.B.A. degree, specializing in management of technology
`
`enterprises, from Babson College in Wellesley, MA (2013). While doing so, I took
`
`a course entitled “Patents and Licensing in the Life Sciences” and learned about
`
`analysis and management of manufacturing costs and other issues facing technology
`
`companies.
`
`10.
`
`I was a Biomedical Equipment Technician at New England Medical
`
`Center, a teaching hospital of Tufts University School of Medicine in Boston, MA
`
`(1977-78). Some of my responsibilities included performing scheduled maintenance
`
`and calibration of medical equipment including electrocardiogram (ECG) and
`
`respiratory monitoring equipment. I also responded to and resolved problems with
`
`equipment, including issues with ECG surface electrodes and respiration impedance
`
`electrodes, in use on patients in wards, ICUs, and surgery.
`
`11.
`
`I was a Research Engineer in a research lab at Children’s Hospital
`
`Medical Center, a teaching hospital of Harvard Medical School in Boston, MA
`
`(1978-80). My manager was an adjunct professor at Boston University and my lab
`
`project overlapped considerably with my M.S. thesis project discussed above,
`
`involving measurement and analysis of EMG signals using dry (pasteless) surface
`
`electrodes and designing a biomedical measuring device. At this time, I was also an
`
`advisor to a group of Boston University undergraduate students working towards
`
`their B.S. degrees in Biomedical Engineering.
`
`-4-
`
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`10 of 97
`
`

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`Masimo Corporation v. Apple Inc.
`IPR Petition – U.S. Patent No. 10,076,257
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`
`12.
`
`I was an Electrical Engineer for Corning Medical & Scientific in
`
`Medfield, MA (1981-83) where I worked on systems for spectrophotometric-based
`
`blood analysis of hemoglobin. I helped designed an ultrasonic driver and power
`
`supply used within the system that could accommodate varying worldwide voltages
`
`and frequencies.
`
`13.
`
`I was a Design Engineer for Zoll Medical Instrument Corp. in
`
`Cambridge, MA (1987) where I designed and tested a single package application-
`
`specific integrated circuit (ASIC) for a portable ECG/external pacemaker
`
`instrument. Additionally, I designed analog drive circuitry for magnetic deflection
`
`of a CRT display.
`
`14.
`
`I was a Project Engineer developing various medical devices based on
`
`microwave energy and sensing techniques at Microwave Medical Systems, a start-
`
`up company in Acton, MA (1988-92, 1996-97). As part of my responsibilities, I
`
`selected several connectors, with some containing alignment keys, for use with those
`
`medical devices. Additionally, I worked with a vacuum mold forming company to
`
`fabricate the plastic housing of a medical device.
`
`15.
`
`I worked at Boston Scientific, a large and successful medical device
`
`company in Natick, MA, as a Sr. Biomedical/Electrical Engineer and Program
`
`Manager (1992-96, 2005-06). In this role (1992-96), I led a multidisciplinary team
`
`to develop a catheter for diagnosing and treating cardiac arrhythmias that was
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`11 of 97
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`Masimo Corporation v. Apple Inc.
`IPR Petition – U.S. Patent No. 10,076,257
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`eventually released to the market. This catheter contained electrodes for measuring
`
`the ECG from within the heart. I explored printing conductive ink on an insulating
`
`substrate to reduce manufacturing costs.
`
`16.
`
`I was a technical Program Manager at Aurora Imaging Corp. (no longer
`
`in business), a start-up company (1997-98, 2000-03). In this role, I was the technical
`
`and clinical lead for a breast biopsy system for use on an Aurora MRI machine
`
`dedicated to breast imaging that was eventually released to the market. I was also a
`
`co-inventor on a patent (US Pat. No. 7,171,256) relating to this device.
`
`17.
`
`I was a technical Project Manager at Smith + Nephew (Endoscopy
`
`Division) in Andover, MA (1998-2000). In this role, I was the technical lead for an
`
`arthroscopic surgery device (used in joints such as shoulders and knees), which was
`
`eventually released to the market. The device included ceramic materials.
`
`18.
`
`I am a co-inventor of two U.S. patents and one pending U.S. patent
`
`application: (a) U.S. Patent No. 7,171,256, directed toward breast magnetic imaging
`
`systems; (b) U.S. Patent No. 5,833,688, directed toward sensing temperature with a
`
`plurality of catheter sensors; and (c) U.S. Patent Appl. No. 20040030330, directed
`
`toward electrosurgery systems.
`
`19.
`
`I am a member of Eta Kappa Nu (“HKN”) Electrical Engineering honor
`
`society, and the Institute of Electrical and Electronic Engineers (“IEEE”) subgroup
`
`Biomedical Engineering. I have been a member of the Medical Development Group
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`12 of 97
`
`-6-
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`Masimo Corporation v. Apple Inc.
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`("MDG”) and actively advise medical device start-up companies in Massachusetts
`
`Medical Device Development (“M2D2”) center accelerator programs.
`
`20.
`
`I am qualified to render an opinion regarding the design and
`
`development of electronic devices for monitoring or sensing biological parameters.
`
`Based on my expertise and qualifications, I am qualified to provide an opinion as to
`
`what a person of ordinary skill in the art would have understood, known, or
`
`concluded as of November 2008.
`
`21.
`
` A copy of my curriculum vitae, attached as Exhibit 1004, contains
`
`further details concerning my education, experience, publications, patents, and other
`
`qualifications to render an expert opinion in this matter.
`
`III.
`
`INFORMATION AND MATERIALS CONSIDERED
`
`22.
`
`I have considered the following list of materials in formulating my
`
`opinions in this matter:
`
`Exhibit No.
`
`Description
`
`1001
`
`U.S. Patent No. 10,076,257 (“the ’257 patent”)
`
`1002
`
`File history of the ’257 patent
`
`1005
`
`U.S. Pat. Pub. No. 2007/0021677, published January 25, 2007
`(“Markel”)
`
`-7-
`
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`13 of 97
`
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`Masimo Corporation v. Apple Inc.
`IPR Petition – U.S. Patent No. 10,076,257
`
`
`Exhibit No.
`
`Description
`
`1006
`
`U.S. Pat. No. 5,351,695, issued Oct. 4, 1994 (“Mills”)
`
`1007
`
`Reserved
`
`1008
`
`1009
`
`Leslie Cromwell et al., Biomedical Instrumentation and
`Measurements (1973)
`Reserved
`
`1010
`
`Reserved
`
`1011
`
`Reserved
`
`1012
`
`US Pat. Pub. No. 2008/015063
`
`1013
`
`US Pat. Pub. No. 2005/0033284
`
`ABS Plastic Properties, ADECRO PLASTICS (last visited March
`13,
`2023),
`
`www.adrecoplastics.co.uk/abs-plastic-
`properties/#:~:text=Finally%2C%20ABS%
`20has%20low%20heat,absorb%20shock
`%20effectively%20and%20reliably
`Carl R. Nave, Conductors and Insulators, HYPERPHYSICS (last
`visited March
`13,
`2023),
`http://hyperphysics.phy-
`astr.gsu.edu/hbase/electric/conins.html#c1
`Merriam-Webster’s Collegiate Dictionary (11th ed. 2004)
`
`1014
`
`1015
`
`1016
`
`-8-
`
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`14 of 97
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`Masimo Corporation v. Apple Inc.
`IPR Petition – U.S. Patent No. 10,076,257
`
`
`Exhibit No.
`
`Description
`
`1017
`
`Random House Unabridged Dictionary (2nd ed. 1993)
`
`The American Heritage Dictionary of the English Language (4th
`ed. 2000)
`Steven M. Kaplan, Wiley Electrical and Electronics Engineering
`Dictionary (2004)
`Stedman’s Medical Dictionary (28th ed. 2006)
`
`1018
`
`1019
`
`1020
`
`
`
`23.
`
`In addition to references specifically cited by Petitioner in the Petition,
`
`I have also reviewed all other documents and exhibits cited in my declaration, to the
`
`extent they are not listed above.
`
`IV.
`
`RELEVANT LEGAL STANDARDS
`
`24.
`
`I am not a lawyer. Therefore, in formulating my opinions and
`
`conclusions in this proceeding, I have been provided with an understanding of the
`
`relevant aspects of U.S. patent law that govern the issues of patent validity.
`
`A. Prior Art
`
`25.
`
`I understand that, in this IPR proceeding, the prior art to the ‘257 patent
`
`includes patents and printed publications in the relevant field(s) that predate the ‘257
`
`patent’s priority date.
`
`-9-
`
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`15 of 97
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`Masimo Corporation v. Apple Inc.
`IPR Petition – U.S. Patent No. 10,076,257
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`A. Anticipation
`26.
`I have been informed that a person cannot obtain a patent on an
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`invention if someone else had already made the same invention. I understand that 35
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`U.S.C. § 102 is the statute that governs the determination of anticipation. I
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`understand that under 35 U.S.C. § 102, a prior art reference anticipates a claim if
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`each and every element of a claim is found, either expressly or inherently, within the
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`single prior art reference. I understand that a reference anticipates a claim if all
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`elements of the claim are disclosed within the four corners of the reference in the
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`same arrangement as in the claim.
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`B. Obviousness
`27.
`I understand that a claim of a patent may be obvious to a person of
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`ordinary skill in the art if the differences between the subject matter set forth in the
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`patent claim and the prior art are such that the claimed subject matter as a whole
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`would have been obvious at the time of the invention.
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`28.
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`I understand that obviousness is a determination of law based on
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`various underlying determinations of fact. In particular, these underlying factual
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`determinations include (1) the scope and content of the prior art; (2) the level of
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`ordinary skill in the art at the time the claimed invention was made; (3) the
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`differences between the claimed invention and the prior art; and (4) the extent of any
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`proffered objective “indicia” of non-obviousness. I understand that the objective
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`-10-
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`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`16 of 97
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`

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`Masimo Corporation v. Apple Inc.
`IPR Petition – U.S. Patent No. 10,076,257
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`indicia, also known as secondary considerations, which may be considered in such
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`an analysis include, among other factors: the commercial success of the patented
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`invention (including evidence of industry recognition or awards), the existence of a
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`long-felt but unmet need in the field satisfied by the invention, the failure of others
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`to arrive at the invention, industry acquiescence and recognition of the invention,
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`initial skepticism of the invention by others in the field, the extent to which the
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`inventors proceeded in a direction contrary to the accepted wisdom of those of
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`ordinary skill in the art, and licensing of the patent.
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`29.
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`In determining the scope and content of the prior art, I understand a
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`reference is considered prior art for the obviousness analysis if it falls within the
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`inventors’ field of endeavor. Additionally, a reference is prior art for the
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`obviousness analysis, even if from a different field of endeavor, if it is reasonably
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`pertinent to the particular problem for which the invention was made. A reference
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`is reasonably pertinent if it is something a person of ordinary skill in the art would
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`have looked to when attempting to solve the problem.
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`30. While multiple prior art references or elements may be combined to
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`render a patent claim obvious, I understand that a patent claim composed of several
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`elements is not proven obvious merely by demonstrating that each of its elements
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`was, independently, known in the prior art. I understand that I should consider
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`whether there is an “apparent reason” or motivation to combine the prior art
`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`17 of 97
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`Masimo Corporation v. Apple Inc.
`IPR Petition – U.S. Patent No. 10,076,257
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`references or elements in the way the patent claims. It is my further understanding
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`that the law recognizes several rationales for combining references or modifying a
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`reference to show obviousness of claimed subject matter. Some of these rationales
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`include: combining prior art elements according to known methods to yield
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`predictable results; simple substitution of one known element for another to obtain
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`predictable results; a predictable use of prior art elements according to their
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`established functions; applying a known technique to a known method or product
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`ready for improvement; and choosing from a finite number of identified, predictable
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`solutions, with a reasonable expectation of success.
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`B. Claim Construction
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`31.
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`I have been informed the first step of a validity analysis is to construe
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`the claims. I have been informed that the Patent Trial and Appeal Board construes
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`the claims by giving the claim terms their ordinary and customary meaning, as they
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`would have been understood by a person of ordinary skill in the art (“POSITA”) at
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`the time of the invention in view of the intrinsic record (patent specification and file
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`history). For the purposes of this review, and to the extent necessary, I have
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`interpreted each claim term in accordance with its plain and ordinary meaning as it
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`would have been understood by a POSITA at the time of the invention, in view of
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`the intrinsic record.
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`-12-
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`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`18 of 97
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`Masimo Corporation v. Apple Inc.
`IPR Petition – U.S. Patent No. 10,076,257
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`32.
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`It is my understanding that an inventor may expressly define certain
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`terms used in a patent, and therefore may give a term a meaning that differs from the
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`term’s plain and ordinary meaning. However, I do not believe that the inventors
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`defined any claim terms whose construction is necessary for my analysis in a manner
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`inconsistent with their plain and ordinary meanings in view of the intrinsic record.
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`33.
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`I have been informed that, under 35 U.S.C. § 112(f), claim limitations
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`written in “means-plus-function” format must be construed as follows: (1) the
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`function specified in the claim, and the structure corresponding to the claimed
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`function, must be identified, (2) to be corresponding structure, the specification must
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`clearly link the structure with performance of the claimed function and the structure
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`must actually be able to perform the claimed function, and (3) once corresponding
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`structure is identified, the claim limitation is construed to cover the corresponding
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`structure and equivalent structures. However, I do not believe that any claim terms
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`whose construction is necessary for my analysis is written in “means-plus-function”
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`format.
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`C.
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`Perspective of a Person of Ordinary Skill in the Art at the Time of
`the Claimed Invention
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`34.
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`I have been informed that claim construction and patent validity is
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`generally analyzed from the perspective of a hypothetical person of ordinary skill in
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`the art of the invention (“POSITA”) as of the effective filing date. I have assumed
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`-13-
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`AliveCor Exhibit 1003
`AliveCor, Inc. v. Apple Inc.
`IPR2024-00169, U.S. Patent No. 10,076,257
`19 of 97
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`Masimo Corporation v. Apple Inc.
`IPR Petition – U.S. Patent No. 10,076,257
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`for purposes of my analysis that the effective filing date, also referred to herein as
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`the “relevant time,” is November 5, 2008.
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`35.
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`I have performed my analyses, and expressed my opinions, from the
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`perspective of the POSITA (as further described below) at the relevant time.
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`D.
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`36.
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`Prior-Art Status of References
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`I understand that the patent statute defines the requirements for a
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`reference to be considered prior art to the ’257 patent. However, while I understand
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`the references I have analyzed were published before November 5, 2008, I have not
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`been asked to assess their prior-art status. Rather, I have assumed, for purposes of
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`my analysis, that the references are prior art to the ’257 patent.
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`V.
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`LEVEL OF ORDINARY SKILL IN THE ART
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`37.
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`I understand that my opinion must be taken from the perspective of
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`what would have been known or understood by a person of ordinary skill in the art
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`at the time of the invention. I have been informed by counsel and it is my
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`understanding that the ’257 Patent claims priority to a provisional application filed
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`on November 5, 2008. I understand that date to be the time of the invention for my
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`analysis. I have been informed