`
`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
`