throbber
Filed: October 5, 2021
`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`William R. Zimmerman (admitted pro hac vice)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1536-553@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01536
`U.S. Patent 10,588,553
`
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO REPLY
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION .................................................................................... 1
`
`II. ARGUMENT ............................................................................................ 3
`
`A. Ground 1 ......................................................................................... 3
`
`1.
`
`A POSITA Would Have Understood That Ohsaki’s
`Board Is Longitudinal And Even Small Changes
`Result In Slippage ................................................................ 3
`
`a)
`
`b)
`
`Ohsaki’s Board Is Longitudinal ................................. 3
`
`Petitioner’s Additional Arguments Regarding
`Ohsaki Are Unpersuasive .......................................... 8
`
`Petitioner Incorrectly Asserts That Ohsaki’s Board
`Prevents Slipping “At Virtually Any Measurement
`Location” ............................................................................ 11
`
`A Convex Cover Does Not Enhance Mendelson
`’799’s Light-Gathering Ability .......................................... 15
`
`a)
`
`b)
`
`Petitioner Contradicts Its Admissions And
`Evidence .................................................................. 15
`
`A POSITA Would Have Avoided Ohsaki’s Air
`Gaps ......................................................................... 20
`
`Petitioner Does Not Dispute That A Convex Cover
`Would Be More Prone To Scratches ................................. 22
`
`Petitioner Fails To Show A Reasonable Expectation
`Of Success .......................................................................... 23
`
`2.
`
`3.
`
`4.
`
`5.
`
`-i-
`
`

`

`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`6.
`
`Petitioner’s Proposed Combination Includes Still-
`Unexplained Changes Impacting The Proposed
`Combination’s Functionality ............................................. 24
`
`B. Ground 2 ....................................................................................... 25
`
`C. Ground 3 Is Likewise Based On Hindsight Reconstruction ........ 28
`
`D. Ground 4 Is Contrary To The Teachings Of The References
`As A Whole .................................................................................. 28
`
`E.
`
`Ground 5 ....................................................................................... 29
`
`III. CONCLUSION ....................................................................................... 29
`
`
`
`
`
`-ii-
`
`

`

`TABLE OF AUTHORITIES
`
`Page No(s).
`
`ActiveVideo Networks, Inc. v. Verizon Commuc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ................................................................... 23
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) ................................................................... 10
`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) ................................................................... 22
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) ..................................................................... 9
`TQ Delta, LLC v. CISCO Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ..................................................................... 9
`OTHER AUTHORITIES
`37 C.F.R. § 42.6 ................................................................................................ 31
`37 C.F.R. § 42.8 ................................................................................................ 30
`37 C.F.R. § 42.24 .............................................................................................. 30
`
`
`
`-iii-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`EXHIBIT LIST
`
`Exhibit
`No.
`2001 Declaration of Jeremiah S. Helm in Support of Pro Hac Vice Motion
`2002 Declaration of William R. Zimmerman in Support of Pro Hac Vice
`Motion
`
`Description
`
`2003
`
`“Measurement Site and Photodetector Size Considerations in Optimizing
`Power Consumption of a Wearable Reflectance Pulse Oximeter,” Y.
`Mendelson, et al., Proceedings of the 25th IEEE EMBS Annual
`International Conference, 2003, pp. 3016-3019 (“Mendelson 2003”)
`
`2004 Declaration of Dr. Vijay K. Madisetti
`
`2005 Curriculum Vitae of Dr. Vijay K. Madisetti
`
`2006
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01520, IPR2020-01537, IPR2020-01539 (April 22,
`2021)
`
`2007
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01520, IPR2020-01537, IPR2020-01539 (April 23,
`2021)
`2008 Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01536, IPR2020-01538 (April 24, 2021)
`2009 Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01536, IPR2020-01538 (April 25, 2021)
`
`2010
`
`Frank H. Netter, M.D., Section VI Upper Limb, Atlas of Human
`Anatomy (2003), Third Edition (“Netter”)
`
`2011 Reserved
`
`2012 Reserved
`
`2013 Declaration of Carol Peterson
`
`Exhibit List, Page 1
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`Exhibit
`No.
`
`Description
`
`2014
`
`2015
`
`2016
`
`2017
`
`Printout of Worcester Polytechnic Institute webpage,
`https://web.wpi.edu/Pubs/E-project/Available/E-project-042413-160152,
`last accessed May 28, 2021
`
`“Reflectance-Based Pulse Oximeter For The Chest And Wrist,” A.
`Fontaine, et al., A Major Qualifying Project Report: Submitted to the
`Faculty of the Worcester Polytechnic Institute, submission date April 24,
`2013 (“Fontaine”)
`
`“Should You Trust Apple’s New Blood Oxygen Sensor?,” Tekla S. Perry,
`IEEE Spectrum, https://spectrum.ieee.org/view-from-the-
`valley/biomedical/devices/should-you-trust-apples-new-blood-oxygen-
`sensor, published September 21, 2020, last accessed May 28, 2021
`
`“Measurement Site and Applied Pressure Consideration in Wrist
`Photoplethysmography,” E. Geun, et al., The 23rd International Technical
`Conference on Circuits/Systems, Computers and Communications (ITC-
`CSCC 2008), pp. 1129-1132 (“Geun”)
`
`2018
`
`“Reflectance Pulse Oximetry: Practical Issues And Limitations,” H. Lee,
`et al., ICT Express 2 (2016), pp. 195-198 (“Lee”)
`
`2019
`Petition for Inter Partes Review IPR2020-01520
`2020 Declaration of Dr. Thomas W. Kenny in Apple Inc. v. Masimo Corp.,
`IPR2020-01520
`
`2021 Reserved
`
`2022 Reserved
`
`2023
`
`Second Declaration of Carol Peterson [Served Only]
`
`2024
`
`Printout of Institute of Electronics, Information and Communication
`Engineers (IEICE) webpage,
`https://www.ieice.org/publications/proceedings/summary.php?iconf=ITC-
`CSCC&session_num=P1&number=P1-32&year=2008, last accessed June
`21, 2021 [Served Only]
`
`Exhibit List, Page 2
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`Exhibit
`No.
`2025 Reserved
`
`2026 Reserved
`
`Description
`
`2027
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01520, IPR2020-01536, IPR2020-01537, IPR2020-
`01538, IPR2020-01539 (September 18, 2021)
`
`Exhibit List, Page 3
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`I.
`INTRODUCTION
`Petitioner attempts to rewrite a flawed petition that misunderstood the cited
`
`references and basic optical principles. Petitioner’s new arguments are inconsistent
`
`with its prior positions, conflict with the cited references, and constitute a hindsight-
`
`driven reconstruction of Masimo’s claims.
`
`Petitioner asserts that Masimo did not respond to Petitioner’s three purported
`
`motivations to combine Mendelson ’799 and Ohsaki. Reply 1. That is incorrect.
`
`Petitioner’s first motivation was to “improve adhesion.” Id. Masimo directly
`
`responded, pointing out that Petitioner’s proposed combination has a shape that
`
`Ohsaki indicates would tend to slip. Patent Owner Response (“POR”) 17-22. Rather
`
`than substantively respond, Petitioner argues Ohsaki has no particular shape and that
`
`Ohsaki’s benefit of reduced slipping would apply to any shaped sensor used at any
`
`body location. Reply 9-10. That contradicts Ohsaki, which illustrates its sensor’s
`
`long shape and explains how even slightly changing the sensor’s orientation or
`
`measurement location results in slipping. Ex. 1009 Figs. 1, 2, ¶¶[0019], [0023].
`
`Petitioner has no response to these teachings in Ohsaki and thus simply ignores them.
`
`Petitioner’s first motivation fails.
`
`Masimo also responded to Petitioner’s second motivation, a purported
`
`motivation to “improve detection efficiency.” Reply 1. As Masimo explained,
`
`Petitioner admitted that adding a convex cover to Mendelson ’799’s sensor would
`
`-1-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`direct light away from the sensor’s peripherally located detectors. POR 31-36.
`
`Thus, a POSITA would have understood that Petitioner’s proposed combination
`
`decreases optical signal strength and detection efficiency—the opposite of
`
`Petitioner’s alleged motivation. Thus, Petitioner’s second motivation fails.
`
`Petitioner’s third motivation is to “provide additional protection to the
`
`elements” in the housing. Reply 1. As Masimo explained, a POSITA would have
`
`viewed a convex surface as inferior to a flat surface due to an increased risk of
`
`scratching. POR 38-40. Petitioner now apparently agrees, conceding the
`
`disadvantage of scratching but arguing “multiple advantages” would “outweigh any
`
`possibility of scratching.” Reply 19-20. Petitioner establishes no advantages for a
`
`convex surface in the proposed combination, let alone multiple advantages.
`
`Moreover, Petitioner’s declarant acknowledged that a convex cover would have
`
`been one of many different alternatives to protect the components of a sensor. Ex.
`
`2009 394:18-396:17. Petitioner never explains why a POSITA would have chosen
`
`an alternative leading to undesirable scratching.
`
`Accordingly, none of Petitioner’s asserted motivations demonstrate that a
`
`POSITA would have been led to Masimo’s innovative claimed technology. The
`
`Board should affirm the patentability of Masimo’s claims.
`
`-2-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`II. ARGUMENT
`
`A. Ground 1
`1.
`A POSITA Would Have Understood That Ohsaki’s Board Is
`Longitudinal And Even Small Changes Result In Slippage
`a) Ohsaki’s Board Is Longitudinal
`The petition argued Ohsaki’s rectangular board (blue, below) “would simply
`
`be placed over the components” of Mendelson ’799’s circular sensor. Pet. 27.1
`
`Ohsaki Fig. 1 (left) & Fig. 2 (right) (annotated, POR 10-11)
`
`Petitioner asserted the proposed combination would result in a circular convex cover
`
`(below) over the optical components of Mendelson ’799’s sensor. Pet. 26.
`
`
`
`
`1 All emphasis is added unless otherwise noted.
`
`-3-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`
`Petitioner’s Combination (Pet. 26)
`
`
`
`Petitioner never explained how or why a POSITA would change Ohsaki’s
`
`longitudinal board into a circular cover. That change would eliminate the
`
`longitudinal shape that Ohsaki indicates prevents slipping. POR 17-22.
`
`Lacking any credible basis to change the shape of Ohsaki’s board, Petitioner
`
`asserts that Ohsaki’s board has no particular shape. Reply 6-7. Petitioner thus
`
`embraces the vague testimony of its declarant, Dr. Kenny, who refused to specify
`
`any particular three-dimensional structure for Ohsaki’s board or the proposed
`
`combination. See, e.g., Ex. 2008 57:19-58:16, 59:18-60:9, 213:17-214:11, 215:8-
`
`14. Dr. Kenny testified he did not know the shape of Ohsaki’s board and that the
`
`board could be “circular or square or rectangular.” Id. 68:21-70:1, 71:7-72:10; Ex.
`
`2027 162:15-20. But Petitioner cannot allege that Ohsaki’s board has no geometry
`
`while also arguing the board “would simply be placed over the components” in
`
`Mendelson ’799’s circular sensor. Pet. 27.
`
`-4-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`Regardless, Ohsaki refutes Petitioner’s position. Ohsaki describes its
`
`detecting element (2) as having one side (Figure 2, below left in purple) longer than
`
`the other (Figure 1, below center in purple). POR 14-16; Ex. 1009 ¶[0019].
`
`
`
`Ohsaki Fig. 2 (left) & Fig. 1 (center) (Ex. 1009 ¶[0019], color added)
`(showing long and short directions, respectively);
`Plan view illustrating board’s shape (right) (Ex. 2004 ¶¶38-42)
`
`Ohsaki’s Figure 2 (above left) shows the “long” side of the detecting element (2)
`
`(purple) and illustrates the board (8) (blue) spanning most of that “long” side.
`
`Ohsaki’s Figure 1 (above center) shows the “short” side of the detecting element (2)
`
`(purple) and illustrates the board (8) (blue) as spanning only a small part of that
`
`“short” side. A POSITA would have concluded that Ohsaki’s board (8) and
`
`detecting element (2) both have a longitudinal shape (exemplified above right). POR
`
`14-16; Ex. 2004 ¶¶39-42.
`
`Petitioner argues “Ohsaki never specifies that FIGS. 1 and 2 are different
`
`views of the same device.” Reply 9. But Ohsaki never describes Figures 1 and 2 as
`
`illustrating different devices and instead discusses them in connection with each
`
`other. See Ex. 1009 ¶¶[0016]-[0027]. Regardless, even considered separately,
`
`-5-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`Figures 1 and 2 illustrate a longitudinal board. Figure 1 shows a convex board that
`
`is much thinner than the “short” side of a detecting element. Figure 2 shows a
`
`convex board nearly the same length as the “long” side of a detecting element. Ex.
`
`2004 ¶¶38-42. Petitioner cannot maintain these figures illustrate no geometry at all
`
`for the board. Reply 8-10.
`
`Ohsaki even explains why its sensor’s longitudinal shape and intended
`
`placement is important. Ohsaki teaches that even small changes in its sensor’s
`
`orientation or body location results in “a tendency to slip.” Ex. 1009 ¶¶[0019],
`
`[0023], Figs. 3A-3B. Masimo and its declarant, Dr. Madisetti, explained that
`
`Ohsaki’s shape and intended placement take advantage of the forearm/wrist area’s
`
`particular bone structure to prevent slipping. POR 18-19; Ex. 2004 ¶¶52-53. As
`
`illustrated below, Ohsaki’s longitudinal structure sits within the forearm/wrist area’s
`
`anatomy when properly oriented (below left), but tends to slip when rotated away
`
`from this orientation (below right). Id.
`
`-6-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`
`
`
`Interaction of Ohsaki’s longitudinal structure with wrist/forearm (Ex. 2004 ¶52)
`
`Ohsaki expressly states that aligning its longitudinal shape across the wrist
`
`(above right)—as opposed to up and down the arm (above left)—results in “a
`
`tendency to slip.” Ex. 1009 ¶[0019]. As Dr. Madisetti explained, changing Ohsaki’s
`
`longitudinal shape to a circular structure, as Petitioner proposes, would result in
`
`slippage because a circular sensor would not fit into the anatomical opening in the
`
`wrist/forearm. Ex. 2004 ¶54-55; POR 20-22. Petitioner has no answer to these
`
`arguments.2
`
`
`2 Dr. Kenny admitted a POSITA would have considered anatomical details
`
`“such as…the illustrations that Dr. Madisetti provided” when designing a convex
`
`surface that prevents slipping, but included no such anatomical figures with any of
`
`his opinions. Ex. 2027 248:18-249:6; 254:17-255:11. Dr. Kenny likewise agreed
`
`user anatomy plays a role in preventing motion. Ex. 158:16-159:8.
`
`-7-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`b)
`Petitioner’s Additional Arguments Regarding Ohsaki Are
`Unpersuasive
`Petitioner’s additional arguments regarding Ohsaki’s shape are unpersuasive.
`
`First, Petitioner argues there is nothing “requiring” Ohsaki’s board to have a
`
`longitudinal shape. Reply 9. But the issue is not what Ohsaki requires—the issue
`
`is what Ohsaki teaches to a POSITA. Ohsaki teaches that its longitudinal shape is
`
`necessary to prevent slipping, directly undermining Petitioner’s alleged motivation.
`
`Indeed, Ohsaki teaches that even small changes in sensor orientation or measurement
`
`location result in slippage. Ex. 1009 Ex. 1009 ¶¶[0019], [0023]; POR 17-22. Thus,
`
`Ohsaki would have taught a POSITA that Petitioner’s proposed circular convex
`
`cover would not improve adhesion.
`
`Second, Petitioner asserts “nowhere does Ohsaki describe the ‘translucent
`
`board 8’ and ‘detecting element 2’ as having the same shape.” Reply 7. But Masimo
`
`never argued Ohsaki discloses that its “translucent board 8” and “detecting element
`
`2” must have an identical shape. Masimo explained why a POSITA would
`
`understand Ohsaki’s board has a longitudinal shape and why a POSITA would not
`
`have been motivated to use a longitudinally shaped board in Petitioner’s proposed
`
`combination that has a circular structure. POR 14-16, 18-25.
`
`Third, Petitioner retreats to generic “inferences and creative steps” to allege
`
`obviousness without identifying what those inferences and creative steps might be
`
`or how they would yield any benefit. Reply 4. Unsupported and conclusory
`
`-8-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`arguments “[u]ntethered
`to any
`
`supporting evidence, much
`
`less any
`
`contemporaneous evidence, … ‘fail to provide any meaningful explanation for why
`
`one of ordinary skill in the art would be motivated to combine these references at
`
`the time of this invention.’” TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1362
`
`(Fed. Cir. 2019).
`
`Fourth, Petitioner argues “a person of ordinary skill is also a person of
`
`ordinary creativity,” and Ohsaki’s features need not be “bodily incorporated.” Reply
`
`6. But putting aside Petitioner’s failure to explain how a POSITA would place
`
`Ohsaki’s longitudinal board onto Mendelson ’799’s circular sensor, Petitioner’s
`
`resulting combination eliminates the longitudinal directionality Ohsaki describes as
`
`important to avoid slipping. POR 17-22. Petitioner ignores Ohsaki’s teachings and
`
`thus violates the fundamental rule that “a prior patent must be considered in its
`
`entirety, i.e., as a whole.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568
`
`(Fed. Cir. 1987).
`
`Fifth, Petitioner claims Masimo argued it “is not the ‘convex surface’ that
`
`improves adhesion (i.e., reduces slippage) in Ohsaki,” but instead the “‘longitudinal
`
`shape.’” Reply 7. In reality, Masimo argued a POSITA would have understood
`
`Ohsaki’s convex board must also have a longitudinal shape oriented up-and-down
`
`the watch-side of the user’s wrist/forearm. POR 14-16, 18-22. Ohsaki explains that
`
`a sensor positioned across the user’s wrist “has a tendency to slip off.” Ex. 1009
`
`-9-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`¶[0019]. Ohsaki also explains that a convex surface on the palm-side of the user’s
`
`wrist “has a tendency to slip.” Id. ¶[0023], Figs. 3A-3B.3 A “tendency to slip” is
`
`the opposite of Petitioner’s asserted motivation of improving adhesion. “An
`
`inference of nonobviousness is especially strong where the prior art’s teachings
`
`undermine the very reason being proffered as to why a person of ordinary skill would
`
`have combined the known elements.” DePuy Spine, Inc. v. Medtronic Sofamor
`
`Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009).
`
`Sixth, Petitioner suggests Masimo’s arguments are limited to just the shape of
`
`Ohsaki’s board. Reply 7-10. That is also incorrect. Masimo additionally argued
`
`that the circular shape of Petitioner’s proposed combination leads to slipping. As
`
`illustrated below, Petitioner’s proposed circular sensor (and its convex surface) will
`
`negatively interact with the radius and ulna, resulting in slipping. POR 20-22; Ex.
`
`2004 ¶¶53-55.
`
`
`3 Both declarants agree that Figures 3A-3B (discussed in Ohsaki ¶¶[0023]-
`
`[0024]) compare a convex surface’s slipping on the back- and palm-side of the wrist,
`
`respectively. See Ex. 2008 157:5-158:1 (“I believe that the element being tested in
`
`Figure 3(a) and 3B has a convex cover”), 158:15-20; Ex. 2004 ¶56.
`
`-10-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`
`
`
`Ohsaki expressly states that its sensor helps prevent slipping when aligned with the
`
`user’s arm, but nevertheless slips when positioned across the user’s wrist. Ex. 1009
`
`¶[0019]; see also id. ¶¶[0006], [0024]. As Masimo explained, Petitioner’s proposed
`
`circular sensor cannot avoid anatomical interactions that result in slipping. POR 20-
`
`22. None of Petitioner’s arguments regarding the shape and orientation of Ohsaki’s
`
`board overcome Ohsaki’s express disclosures.
`
`2.
`
`Petitioner Incorrectly Asserts That Ohsaki’s Board Prevents
`Slipping “At Virtually Any Measurement Location”
`Petitioner also fails to overcome Ohsaki’s express disclosure that Ohsaki must
`
`be used on the wrist’s watch-side to prevent slipping. Ex. 1009 ¶[0023]. Petitioner
`
`argues that Ohsaki’s benefits are not specific to a particular side of the wrist. Reply
`
`10. But Ohsaki teaches the opposite: small changes in the measurement location,
`
`including from the wrist’s watch-side to the palm-side, cause “a tendency to slip.”
`
`Ex. 1009 ¶[0023]. Ohsaki illustrates this slipping in Figures 3A-3B, which the
`
`petition and reply both ignore. Ohsaki repeatedly emphasizes its “sensor is worn on
`
`-11-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`the back side of a user’s wrist.” Id. Abstract; see also id. Title, ¶¶[0008], [0009],
`
`[0014], [0016], [0023]-[0024].4
`
`A POSITA would have believed that the wrist’s watch-side would be an
`
`unsuitable measurement location for Mendelson ’799’s oximeter because the wrist’s
`
`watch-side provides a weak and unpredictable signal and is distant from the wrist’s
`
`palm-side arteries. POR 21-22, 26-31. Mendelson’s work demonstrated the wrist’s
`
`watch-side is a particularly unsuitable measurement location for a circular oximeter.
`
`See, e.g., Ex. 2003 at 3-4; POR 26-27. Petitioner fails to show why a POSITA
`
`starting with Mendelson ’799’s circular oximeter would look to Ohsaki’s board. As
`
`discussed, Ohsaki explains that its board only prevents slipping in a particular
`
`orientation on the wrist’s watch-side.5
`
`
`4 Moreover, contrary to Petitioner’s argument that Ohsaki’s sensor can be used
`
`anywhere, Dr. Kenny testified it would not “be practical to place [Ohsaki’s] elements
`
`on the forehead or the earlobe or the leg, I think that’s obvious.” Ex. 2027 140:14-
`
`141:16.
`
`5 Dr. Kenny likewise provided no analysis of Figures 3A-3B. Petitioner relies
`
`on Ohsaki’s paragraphs 15, 17, 25, and Figures 4A-4B, but Dr. Kenny confirmed
`
`those paragraphs and figures do not address Ohsaki’s measurement location, like
`
`Figures 3A-3B. Ex. 2027 136:12-140:13.
`
`-12-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`Petitioner acknowledges the difficulty of performing pulse oximetry on the
`
`watch-side, but argues that difficulty would have made a POSITA even more
`
`motivated to use Ohsaki’s convex cover. Reply 11. But Petitioner never explains
`
`why a POSITA would have been motivated—contrary to conventional wisdom—to
`
`use Mendelson ’799’s oximeter on the back side of the wrist in the first place. POR
`
`26-31. A POSITA would have believed that oximetry measurements at that location,
`
`far from the wrist’s arteries, would be weak, noisy, and require considerable pressure
`
`even to discern a signal. Id. Ohsaki’s design helps reduce movement-related
`
`artifacts, but Ohsaki does not purport to improve a weak and barely discernable
`
`signal. Compare Ex. 1009 Fig. 4A with Fig. 4B. Weak signal would be a significant
`
`issue because, as discussed below, Petitioner’s proposed combination erroneously
`
`places a convex surface over an oximeter with detectors at the oximeter’s periphery.
`
`POR 31-36.
`
`Petitioner asserts a POSITA would have “understood from Ohsaki that…a
`
`light permeable convex cover would have prevented slippage of Mendelson-’799’s
`
`sensor when placed, for example, on either side of a user’s wrist or forearm.” Reply
`
`12. But Ohsaki states the opposite—that a convex surface “has a tendency to slip”
`
`on the wrist’s palm-side. Ex. 1009 ¶[0023], Figs. 3A-3B (illustrating slipping on the
`
`wrist’s palm-side). Furthermore, another of Petitioner’s cited references confirms
`
`that a flat surface—not a convex surface—improves adhesion on the palm side of
`
`-13-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`the wrist. See, e.g., Ex. 1006 ¶[0013] (flat “plate-like member…makes it possible
`
`to improve adhesion between the senor and the wrist”); see also id. ¶¶[0026], [0030],
`
`[0034] (flat plate improves adhesion), Fig. 1B (illustrating flat surface); Ex. 2004
`
`¶81. Petitioner ignores these teachings and evidence.
`
`Petitioner instead cites, for the first time, Ohsaki’s claims. Reply 10.
`
`Petitioner first points to Ohsaki’s claim 1, which refers to the “back side of a user’s
`
`wrist or a user’s forearm.” Id. (emphasis in original). But Ohsaki discloses a
`
`“wristwatch-type” device (Ex. 1009 Title), and thus the “forearm” refers to the same
`
`anatomical junction—not some other measurement location. POR 26. A POSITA
`
`would have understood Ohsaki’s claim 1 refers to the backhand side (i.e., watch-
`
`side) of (1) the wrist or (2) the adjacent portion of the forearm connected to the wrist
`
`where the sensor fits between the bones of the forearm/wrist. Ex. 2004 ¶56.
`
`Petitioner also points to Ohsaki’s claim 3 and states that the claim does not mention
`
`“a backside of the wrist or forearm.” Reply 11. But Ohsaki’s claim 3 likewise does
`
`not mention a convex surface and is thus irrelevant.
`
`-14-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`As discussed, Ohsaki expressly discloses that a sensor with a convex surface
`
`tends to slip on the wrist’s palm-side—directly undermining Petitioner’s asserted
`
`motivation to combine. Ex. 1009 ¶[0023], Fig. 3.6 Indeed, there is no teaching in
`
`Ohsaki that a convex surface prevents slipping at any location other than the watch-
`
`side of the wrist/forearm. POR 10-11, 17-22. Accordingly, Ohsaki’s overall
`
`disclosure, including its claims, would have dissuaded a POSITA from pursuing
`
`Petitioner’s proposed combination.
`
`3.
`
`A Convex Cover Does Not Enhance Mendelson ’799’s Light-
`Gathering Ability
`a)
`Petitioner Contradicts Its Admissions And Evidence
`Petitioner’s proposed combination also makes no sense because it places a
`
`convex cover over Mendelson ’799’s peripherally located detectors. As Masimo
`
`explained, a convex cover would direct light away from Mendelson ’799’s
`
`peripheral detectors and decrease optical signal strength—the opposite of
`
`
`6 Ohsaki’s other claims similarly support Masimo’s position. For example,
`
`claims 1 and 2 specify a convex surface used on the back side of the wrist or forearm.
`
`Ex. 1009 Claims 1, 2. Claim 6 requires a longitudinal shape and orientation
`
`incompatible with Petitioner’s proposed circular sensor. See Ex. 1009 Claim 6
`
`(depending from claim 5), Claim 5 (requiring linear sensor arranged “in a
`
`longitudinal direction of the user’s arm”).
`
`-15-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`Petitioner’s asserted motivation of improving detection efficiency. POR 31-32.
`
`There should be no dispute on this. As Masimo explained (POR 31-32), Petitioner
`
`and Dr. Kenny both admitted a convex cover condenses light towards the sensor’s
`
`center and away from the sensor’s periphery. Petitioner illustrated this principle:
`
`
`Petitioner’s Illustration (IPR2020-01520, Ex. 2019 at 45)
`
`Dr. Kenny confirmed that when light enters a convex surface, “the incoming light is
`
`‘condensed’ toward the center.” Ex. 2020 at 69-70. Dr. Kenny also confirmed that
`
`the convex surface would cause “more light in the center than at the outer edge in
`
`this example.” Ex. 2006 204:1-13. Dr. Kenny agreed, “that’s because light’s being
`
`directed towards the center and away from the edge….” Id. 204:14-20; Ex. 2004
`
`¶¶71-72.
`
`None of Petitioner’s reply arguments overcome these admissions. First,
`
`Petitioner mischaracterizes Masimo’s position as asserting “that a convex cover
`
`would direct light to a point in the center of the combined sensor.” Reply 13. But
`
`-16-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`Masimo never argued that all incoming light condenses to a single point. Instead,
`
`Masimo explained that a convex surface would direct relatively more light towards
`
`the center and away from Mendelson ’799’s peripheral detectors. POR 31-34.
`
`Second, Petitioner dismisses the ’553 Patent’s Figure 14B as merely
`
`illustrating the path of light that is “collimated (i.e., traveling paths parallel to one
`
`another)” and not “an accurate representation of light that has been reflected from a
`
`tissue measurement site.” Reply 14-15. But Figure 14B illustrates how a POSITA
`
`would view a convex surface as generally directing light toward the sensor’s center.
`
`POR 32-33; Ex. 2004 ¶73.
`
`Third, Petitioner cites a new figure and argues that for collimated light,
`
`“focusing of light at the center only occurs if the light beam happens to be perfectly
`
`aligned with the axis of symmetry of the lens.” Reply 15. But, again, Masimo never
`
`argued that all light would be focused at the center. Moreover, Petitioner states that
`
`the backscattered light at issue would not be “collimated” and instead would be
`
`diffuse light that enters the lens from many directions. Reply 16; Ex. 2027 37:21-
`
`38:16. Light entering the convex surface from all angles would, on average, result
`
`in more light directed towards the center and less light at the periphery—as
`
`compared to a flat surface—and therefore less light at the peripherally located
`
`detectors. Ex. 2004 ¶¶70-75. Furthermore, Petitioner’s figure ignores the structure
`
`-17-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`of Petitioner’s proposed combination. Petitioner’s figure (below left) attempts to
`
`show the green rays will converge at a focal point away from the center of the lens:
`
`
`
`Petitioner’s “focal” figure (left, Reply 15)
`Petitioner’s “focal” figure (center, Reply 15) (annotated by Masimo)
`Petitioner’s proposed combination (right, Pet. 15)
`
`But unlike Petitioner’s figure, Petitioner’s proposed combination (above right)
`
`places detectors near the cover. As shown above (center), examining the light paths
`
`at points near the lens (as shown by the dotted line) reveals that the left green ray
`
`diverges to the right and closer to the center of the lens. The right green ray diverges
`
`to the left and closer to the center of the lens. Thus, Petitioner’s own figure confirms
`
`a convex surface will direct light toward the center of Petitioner’s combination.
`
`Fourth, Dr. Kenny makes additional technical arguments not discussed in the
`
`reply. See, e.g., Ex. 1047 ¶¶39-42. To the extent Petitioner intends to rely on those
`
`arguments, Petitioner improperly incorporates the arguments via citation. Reply 6,
`
`-18-
`
`

`

`IPR2020-01536
`Apple Inc. v. Masimo Corporation
`13, 16-17. Regardless, none of Dr. Kenny’s additional arguments change the
`
`conclusion that—as Dr. Kenny previously admitted—a POSITA would have
`
`understood a convex surface results in relatively less light at the periphery compared
`
`to a flat surface. See, e.g., Ex. 1047 ¶41.
`
`Fifth, Petitioner asserts that, because light “diffusing through tissue” reaches
`
`the convex surface “from various random directions and angles,” some “light rays
`
`that otherwise would have missed the detection area are instead directed toward that
`
`area.” Reply 16-17. But none of Petitioner’s accompanying citations support that
`
`assertion. Reply 18. Petitioner similarly cites Dr. Kenny’s new theory that “some
`
`light” could refract towards Mendelson ’799’s detectors instead of “being reflected
`
`off of a flat interface.” Reply 18 (citing Ex. 1047 ¶45). But Dr. Kenny cites no
`
`evidence supporting this theory. Petitioner nonetheless argues “a cover like
`
`Ohsaki’s would have been understood to increase Mendelson-799’s light-gathering
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket