`Trials@uspto.gov
`571-272-7822
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`___________
`
`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`___________
`
`Record of Oral Hearing
`Held: December 7, 2021
`_____________
`
`
`
`
`Paper # 41
`Entered: 1/06/2022
`
`
`
`
`
`
`
`Before GEORGE R. HOSKINS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
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`
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`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`W. KARL RENNER, ESQUIRE
`ROBERTO DEVOTO, ESQUIRE
`ANDREW PATRICK, ESQUIRE
`Fish & Richardson, PC
`1000 Maine Avenue, S.W.
`Washington, D.C. 20004
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`STEPHEN JENSEN, ESQUIRE
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main Street
`14th Floor
`Irvine, CA 92614
`
`
`The above-entitled matter came on for hearing on Tuesday,
`December 7, 2021, commencing at 11:00 a.m., EDT, at the U.S. Patent and
`Trademark Office, by video/by telephone, before Julie Souza, Notary Public.
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`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`
`
` PROCEEDINGS
`JUDGE HOSKINS: Good morning. This is Administrative Patent
`
`Judge George Hoskins. I’m joined on the panel today by my colleagues
`Judge Amanda Wieker and Judge Robert Kinder. We’re here today with the
`parties for oral arguments in five related proceedings challenging three
`different patents. The common Petitioner is Apple Inc., in these cases and
`the common Patent Owner is Masimo Corporation. So with that
`introduction let me ask counsel to introduce themselves and make a -- if you
`want to introduce anybody else participating or listening in today that would
`be great and also if you plan on splitting the argument among the
`proceedings among different people give us an idea about how that’s going
`to look, if you would. So let me start with counsel for Petitioner, please.
`
`MR. RENNER: Yes, Your Honor. This is Karl Renner from Apple’s
`bench. I’m joined today by Roberto Devoto and Andrew Patrick. They’re
`here with me in the room and we will be splitting the presentation between
`the three of us in fact. (Indiscernible) you’ll see there’s a series of issues
`there four strong. The first issue (indiscernible) --
`
`JUDGE HOSKINS: Thank you.
`
`MR. RENNER: -- you’re welcome. The first, there’s three sub parts
`and I’ll be handling 1A and 1C before turning it over to Mr. Devoto for 1B
`and 2, and then Andrew Patrick will finish out with issues 3 and 4.
`
`JUDGE HOSKINS: Okay. Thank you very much, and so how about
`Patent Owner?
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`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`
`MR. JENSEN: For Patent Owner, this is Steve Jensen with Knobbe
`
`Martens representing the Patent Owner and I’ll be addressing all the issues.
`Briefly with me in the room today is Joe Re who was designated lead
`counsel. We did have something come up yesterday and he will not be able
`to stay with us and so I will be handling the entirety of the hearing as we
`informed the Board previously.
`
`JUDGE HOSKINS: Okay. Thank you. So the order of arguments is
`going to be as set forth in our Order so it’s going to start with Petitioner
`addressing Petitioner’s case and then Patent Owner will have a chance to
`make its argument, and then Petitioner will have the opportunity for rebuttal
`and Patent Owner will have the opportunity for surrebuttal. We’ve granted
`each party a total of 75 minutes across that entire spectrum of argument with
`the opportunity to reserve time initially for the rebuttal or the surrebuttal. So
`let me ask then, Mr. Renner, do you wish to reserve time in advance for your
`rebuttal?
`
`MR. RENNER: Yes, Your Honor. We want to reserve 30 minutes,
`please.
`
`JUDGE HOSKINS: Thank you. And Mr. Jensen, do you have any
`reservations for surrebuttal that you want to make at this time?
`MR. JENSEN: Yes, I would as well like to reserve some time and I’d
`like to reserve 25 minutes.
`JUDGE HOSKINS: Thank you. So the panel has the entirety of the
`record before them on our computer screens as well as the parties’
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`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
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`demonstratives. I would encourage you to refer to your demonstratives by
`number as you go through so that we can follow along easily and also so that
`the record is clear, and so before I then turn it over to Mr. Renner to begin
`let me just ask does anybody have any questions about the procedure today
`before we start the argument?
`MR. RENNER: None here, Your Honor.
`MR. JENSEN: None from us, Your Honor.
`JUDGE HOSKINS: Okay. So thank you very much. Then, Mr.
`Renner, you can begin when you are ready and when you start we’ll start a
`clock and we’ll let you know as you near the end of your initial I guess 45
`minutes of time.
`MR. RENNER: Thank you, Your Honor. Appreciate that. So let’s
`turn if we could please to slide 2 in our presentation deck and from the
`record briefing I think it’s clear the question of combinability is central to
`the dispute between the parties in these proceedings and with this in mind,
`and shown by our table as mentioned a moment ago, our presentation is
`really organized to address the rationale offered on the record to justify
`integration for features for which combinability was called into question
`during the proceedings.
`As noted I’ll be handling 1A and 1C first but before digging into those
`issues I wanted to call your attention to a rather unusual aspect of this case,
`specifically the prior art not only teaches us the four features that in fact are
`central to the dispute but it sets forth explicit motivations integrating these
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`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
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`specific features and on that level it sounds like a typical meat and potatoes
`kind of a combinability case but if you look further into those motivations
`we see something that’s rather unique.
`When considering how the secondary references motivate we see that
`they first acknowledge the very structures that exist in the base references
`that are on this record. In several instances they look right into the base
`reference and they see exactly what’s there and then they tell us and they
`explain how those references are being improved by inclusion of features
`that are in the secondary references and this isn’t typical, it’s not even
`necessary for obviousness. I mean, it’s one thing for the prior art to
`celebrate some new feature it brings to the table and maybe leave it the
`POSITAs or people to figure out how they’re going to integrate and whether
`they’re going to integrate it, but here what you have is quite another story.
`You have the prior art here identifying the very structures that exist within
`that base reference and then telling us that they would be modified and
`there’s benefits that would flow from that and we’re going to explain that as
`we walk through the issues. So I think that puts forth a rather unique
`context.
`(Indiscernible) again and again and I’ll highlight right now before I
`get deep into the issues where we see this, the fingerprints of it. First issue
`1A for instance we’ll talk about in detail in a few minutes but the Ohsaki
`reference tells us that several benefits flow from changing what is a flat
`surface found in the conventional covers like the one that’s in Aizawa to a
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`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
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`protruding convex surface like the ones that are found in each of Ohsaki or
`Inokawa. Likewise, regarding issue two you see Inokawa tell us that several
`benefits flow when replacing or augmenting transmitters like those that are
`arguably described in the primary base reference Aizawa to a second emitter
`capable of optical data transmission for instance to a base station and yet
`again in issue 3, we see this with respect to Mendelson 2006 which
`encourages a POSITA to transmit data between base stations and
`conventional computing devices. These things aren’t -- they’re in the
`conventional art and they’re also shown in Inokawa but tells us here’s a
`wireless transmission to enable communications in all computing devices.
`Now, Masimo reacts to this by not disputing the existence or presence
`or absence of the four features. You can see that everything in their patent is
`actually in the prior art. They stay with the focus on motivations but even
`there they don’t focus on the lack of some motivations that exist. They talk
`about trivial design differences between the primaries and the secondaries
`akin to a teaching away, and again we’ll look at that as well.
`There is no teaching away here. This is simply a matter of a POSITA
`looking at a secondary reference, understanding from it there’s some
`benefits that flow from some of the features in it and that they actually are
`pertaining to specific structures in the primary reference that’s also in their
`awareness (phonetic) and bringing those forward. So with that and without
`further ado, I bring this into issue 1 please if I could.
`So slide 3. One more matter of housekeeping. You’ll notice on slide
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`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
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`3 and any transition slide between 1 or 2 or 3 or 4, I tried to make it
`convenient for Your Honors to know what the arguments will pertain to. So
`on slide 3 you can see identification of the proceedings and the patents that
`are implicated by issue 1 and you see that again when we transition to the
`slide for issue 2 later and 3 and 4 if that’s helpful.
`Additionally, again housekeeping. Slides 86 to 88, they give a
`breakdown of a table we thought Your Honors might benefit from of what
`ground pertains to what proceedings and where the claims are met there. So
`hopefully you’ll find those helpful.
`Slide 4. We get into a context for issue 1. Mind you I’ll be handling
`1A and 1C first and then we’ll transition 1B but we present slides 4 and 5 for
`that matter to show you that the record evidence holds out three different
`motivations for bringing a cover that has a protruding convex surface, the
`kind that’s found in Ohsaki and also Inokawa into the likes of Aizawa and
`Mendelson ’799. There’s three that are listed in paragraph 87 here at the top
`left of slide 4 of Kenny’s declaration that’s reproduced and we color coded
`them to try to help distinguish between the three and make it a little more
`manageable. Purple, orange and green you can is used to highlight the first
`purple adhesion. There’s a benefit that we’ll talk a lot about and in effect
`there’s some sub-benefits to increased adhesion that’s benefited -- that
`comes along when you bring in that convex protrusion under the surface.
`Second in orange efficiency, a drive like gathering efficiency. We’ll
`talk a little bit about that, my colleague Roberto Devoto will and third in
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`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
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`green protection. You can imagine exposed sensors aren’t really all that
`advantageous. You might have damage and other things can happen to them
`so a cover can provide protection and then Mendelson ’799 you can see
`there isn’t a cover described and therefore it would be motivated to bring
`one in here.
`If we go to slide 5 you can see the same rationale expressed with
`respect to the Aizawa reference and that’s with respect to paragraph 7 of Dr.
`Kenny’s declaration.
`Finally, we run into issue 1A the first of those, the adhesion. If I
`could go to slide 6, please with you we can see the transition here. This is
`going to relate really to the Ohsaki reference and we’re going to turn to and
`we’re going to cast this in light of the Aizawa primary reference just to make
`it more efficient for us. Mendelson ’799 similarly benefit in every way but
`we wanted just to streamline the conversation so we’ll focus on the Aizawa
`reference in talking about this. But this relates to the fact that when you pull
`at a cover that has a protruding convex surface you end up with better
`adhesion. That was the first of the items that was listed in that group of
`three we focused upon a moment ago. So we’ll talk about this.
`Slide 7, please. You can see Dr. Kenny’s declaration, paragraph 84,
`part of it’s reproduced here in the upper left. The reason it’s here is to
`demonstrate to you that in fact you have the improved adhesion between the
`subject’s wrist a soft tissue, the rest of the skin on the wrist and the surface
`of the sensor. You can see in the Aizawa reference on the right how Aizawa
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`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
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`was presented in the original form upper right with a flat surface that
`interfaces with the skin of the body. So the sensor in Aizawa sits on top in
`this figure, the wrist or the body on the bottom and in between is what is
`outlined there shaped as a flat surface on the sensor cover. What we
`transition to in the combination is in the bottom picture and you can see
`there the convex protrusion that comes off the bottom and invades, if you
`will, the space where the skin would exist. The soft skin relative to the hard
`sensor makes for an indentation, pressure and therefore stabilization. Stands
`to reason it’s almost like cleat. You hold something more fast and hold more
`true if you have it digging in or at least interfacing more aggressively with
`the surface, the softness of the skin in fact and Dr. Kenny’s declaration there
`at paragraph 84 explains this. Now he doesn’t just rely on his own intuition,
`he cites to Ohsaki when he does this. You can see him citing to paragraph
`25 and when we turn to slide 8 we get greater context, the full version of
`paragraph 84 as well as 85 to follow from his declaration and when we look
`at this we can see in it referenced a few things. First, reduced slippage flows
`from adhesion so this increased adhesion isn’t an end to itself, it actually has
`some benefits and the first one I’ve hinted at a bunch of times now. It’s the
`slippage that is reduced which stands, again, to reason that you’d have
`reduced slippage because after all the protrusion, it would lead to pressure
`causing the adherence and therefore almost a friction fitting and given that
`friction or that pressure you’d have less movement, less slippage.
`Second though, and he cites to it here is you’d have a suppression in
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`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
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`something that he references as a variation in the amount of reflected light.
`Now this comes straight out of Ohsaki again but he’s talking about this
`reflective light, the variations in the reflective light. Not that he’s talking
`about how much you capture, that’s 1B. This is about the variations in light
`go down when you have this kind of convex lens. That’s according to
`Ohsaki.
`So we’re going to turn to paragraph 25 because you can see it’s cited
`again and again and it’s a central part of the teaching of Ohsaki that we
`focus upon. If we go to slide 9, please, you can see it reproduced here. I
`want to focus on the next two slides, this slide and the next on this
`paragraph. First we’re going to talk, there’s two sections of this that are
`independent and that work really well frankly to demonstrate the points
`we’ve been talking about. So I’ll read the first sentence in this, the first two
`sentences because that’s the first piece of it that’s shown and focused upon
`here. It says the detecting element 2 from Ohsaki is arranged on the user’s
`wrist so that the convex surface of the translucent board -- so this is the
`convex surface of that board -- is said to be in intimate contact with the
`surface of the user’s skin. This is the reference’s teaching mind you.
`Thereby, so it’s crediting what’s the thereby referring to -- it’s talking about
`a contact, an intimate contact in that convex surface and that soft skin --
`thereby it’s prevented that the detecting element slips off the detecting
`position of the user’s wrist.
`Now if you read the full Ohsaki reference you’ll see him talking about
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`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
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`the goal of comfort but additionally slippage itself just means you don’t slip
`off the detecting spot; right? You’re going to keep things held fast in part
`because of the feature he shows you here with respect to this figure and
`Figure 4A and B we’ll talk about and that is an end of its own. That itself is
`a motivation and one that isn’t addressed well in the briefs by our
`counterpart. After all, if I get a watch that’s jingling around you might want
`that watch to be held fast to your wrist, wherever you put it on; right? You
`want to have it tight and this is something that Ohsaki recognized and says
`we can reduce slippage and there’s some benefits to doing so by giving
`adherence tight, okay, and then you do that with a convex shaped protrusion
`of the surface of the sensor or cover.
`Now if we turn to slide 10 we look further into paragraph 25 to see the
`second of the two advantages that come with that increased adhesion and
`this is the highlighted text that’s here and again, I’m sorry to be so laborious
`about it but it’s just one paragraph that really I think captures the essence if
`you will of some of the teachings in the Ohsaki reference. So if we spend
`some time it really is incredibly insightful. The first sentence tells us that
`it’s going to contrast, as we foreshadowed in the opening, the structure of
`Aizawa. Remember it had a flat surface on its cover? It’s going to contrast
`and recognize that as something that exists and it’s going to contrast until
`you can prove it. It says specifically, “[i]f the translucent board has a flat
`surface”, well, there it is like in Aizawa, “the detected pulse is adversely
`affected by the movement of the user’s wrist.”
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`As shown in Figure 4B. It goes so far as to actually show you the
`effect of having a flat surface. If you look at 4B you can see it’s labeled as
`flat and you can see the characteristic of the signal that’s detected on the
`sensor. Under that circumstance both in still times, that’s on the left side of
`Figure 4B and then after the dashed line you can see the top of 4A and 4B it
`says in motion. So it’s demonstrating that when you have the wrist in
`motion well, then what happens to the sensation coming out of the sensor?
`In that sense you can see a great amount of variation. Now that’s the
`variation that we just heard about from Ohsaki that is suppressed and sure
`enough if you read on it tells us however, in the case that the translucent
`board has a convex surface like the right but not necessarily the one that’s
`shown in the implementation of Ohsaki but like that it’s convex in its surface
`shape. The variation amount, that amount that’s shown there in the side of
`Figure 4B of the reflected light which is emitted from the light element and
`reaches the element sensing, is suppressed. I’m reading from Ohsaki; right?
`And then it says it’s also prevented that noise and other things from, for
`instance, ambient light are also reduced.
`So there’s advantages being attributed to the convex protrusion here
`by the secondary reference in acknowledgement of prior teachings of a flat
`surface and we think that this record demonstrates through that teaching the
`obviousness of motivation and a combination that integrates that convex
`surface. It’s a big picture but Ohsaki motivates twice over with
`(indiscernible) --
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`
`JUDGE KINDER: This is Judge Kinder and you’re on a roll and I
`hate to interrupt you but I’ve looked at this paragraph a few times and to me
`there seems to be a distinction between the first part which is the intimate
`contact in slippage first to the second part. The second part’s clear that it’s
`contrasting the flat surface and the potential distinction there and the
`advantages but the first part to me almost as far as the slippage it just says
`the convex surface is in intimate contact so why isn’t that just saying that,
`look, if you have any surface if it’s in intimate contact, if it’s tight, it’s going
`to prevent the slippage. Why does the convexivity, if that’s the correct
`word, have to do with the increased adhesion in preventing slippage?
`MR. RENNER: Thank you, Your Honor. I appreciate your pausing
`there and I can get on a roll so thank you for doing that. So yes, we believe
`that the reference in that second sentence to the convex nature of the surface
`shape is there for a reason; right? When the author wrote here the detecting
`element is arranged on the wrist so that -- so it’s arranged so that the convex
`surface of it is in intimate contact and we know, just we know from physics
`and just general knowledge that when you have something that digs in it’s
`going to become even more intimately in contact. I mean I grant you it’s a
`good question that you would have if you have any tightness then this
`benefit would in fact and to some extent exist but it’s going to be enhanced
`by the fact that it’s a convex shape and the author tells us or makes reference
`to -- and they even use the words so that to try to suggest that this convex
`has meaning or has an impact we believe. It is in the context of the
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`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`
`paragraph as well that’s all, it’s all -- it’s a transition Figure 3A and 3B were
`about the position of the sensor being, you know, in the front or the back.
`Here you transition over to a discussion that’s really about convex in the
`same paragraph, if you continue on we believe that the person of skill
`reading this, as Kenny tells us, would therefore attribute that functionality to
`the (audio interference) nature. Does that help?
`JUDGE KINDER: Yes, thank you.
`JUDGE HOSKINS: Yes. Mr. Renner, before we move on from this
`slide just a very quick question. You know, one of the things I think we’re
`going to hear from Patent Owner with respect to Ohsaki is this difference
`between front and back. These Figures that you have on this slide, Figure
`4A and 4B, is there any express disclosure in Ohsaki that you know of that
`tells us whether that data came from the front or the back of the user’s wrist
`and I understand your position is it’s a general disclosure that could apply
`either way, I understand that. I’m just wondering if you have any -- if
`you’re aware of any specific disclosures in Ohsaki that tell us where this
`data came from in that respect?
`MR. RENNER: You flushed out some of our arguments for sure that
`it is --
`JUDGE HOSKINS: Feel free to table that discussion if you want.
`MR. RENNER: No, that’s quite all right. No, this is great. I’d love
`to talk about this. So the No. 1 position we have is there is nothing in
`Ohsaki teaching otherwise. There is quite clearly we believe a cabin in
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`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`
`discussion with respect to 3A and 3B and though they don’t say this is the
`end of discussion of where things are but they don’t also attribute anything
`further and then they have a second -- there’s two different ways that you
`can increase we believe the adhesion effect for instance and these are the
`benefits.
`One, it is talked about with respect to 3A and 3B, the other 4A and 4B
`and there’s no reason to see in Ohsaki any transition between those two that
`would suggest that you have to that Ohsaki attributes only these benefits to
`the one side or the other and our view is that when it talks about that convex
`surface being intimately in contact with the skin, that is going to happen
`regardless of where you contact it with the skin so whether that skin is
`located on one side of the wrist or the other side or the forearm for instance,
`and we see in Ohsaki not long after this paragraph -- let me get you the right
`paragraph so you can have it -- if you look at paragraph 28, so we’re in 25
`right now, if you look at 28 you can see Ohsaki itself calls for modifications.
`It tells us that much like most disclosures do it’ll say we can modify things
`and we the author anticipate you might want to. Paragraph 30, as part of that
`discussion, they reference to the fact you might put it on the forearm and
`Ohsaki is not about putting it one specific place, Ohsaki is about where
`putting the convex shape next to skin which is pliable and much like a cleat
`does to earth grabs on to something and holds on to something, we believe.
`So the last two, maybe two more points on that. One is when we look
`at the claims themselves we see a few things. So if we look at slide 20,
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`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
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`please. In the claims what you can see is again reference to the forearm as a
`possible location in addition to the wrist and we know that claim 6, we don’t
`show it here, but claim 6 is the first time you see convex show up
`in the claims. So the claim structure isn’t really about where you’re putting
`it, it’s about the convex would have worked no matter where you put it
`whether it be forearm, front wrist, back wrist, and one of ordinary skill is
`being asked this following question. Would you integrate the convex shape
`of this reference into something that happens to be put on the other side, the
`palm side? The answer is that’s even softer tissue. So if it’s going to grab
`on to tissue because it’s softer for instance, then you might want to locate it
`anywhere you have that including the forearm.
`Finally, I’d say that Figure 4A if you look at 3A and 3B relative to 4A
`and 4B, I’m going to try to make this just a little more complicated a part of
`the explanation, but if you look at those Figures what you’ll find is in 3A
`and 3B you can see that on the front side versus the back side you have a
`difference in the end motion. This is with regard to where you put the watch
`or the sensor and you’ll see that there’s even greater variation shown here
`even in the discussion of where you put the sensor before you get to convex.
`You have a spiking going on as it relates to the palm side. So this is a side
`that even Ohsaki, a person of ordinary skill would see would draw out the
`benefits that it discloses in the very next, you know, two paragraphs later for
`the convex lens.
`In other words, the quieting of those variations that it described a few
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`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`
`moments ago in paragraph 25 that has even a greater effect over Ohsaki
`when that device is located on the palm side because those perturbances are
`greater on that palm side. So the very motivations that it puts in paragraph
`25 we have on record that the person of ordinary skill would see that and
`they would recognize that these are independent, they’re listed separately,
`they’re sequentially listed and actually the things said in 25 would do the
`most work and lead a person of ordinary skill in the art to try them out on
`that wrist side or the palm side.
`JUDGE WIEKER: Mr. Renner, can I ask you a follow-up question to
`that answer?
`MR. RENNER: Yes.
`JUDGE WIEKER: You pointed us to Figures 3A and B and I believe
`your position is that those graphs are obtained with a flat sensor. I believe
`Patent Owner points us to some testimony from each party’s expert that says
`that no, in fact that Figure 3A graph comes with a convex sensor board.
`What’s your response to that argument and the testimony of both experts?
`MR. RENNER: Thank you, Judge Wieker. Our view is that’s a red
`herring candidly, that we don’t believe that matters. We think that the
`disclosure here in this reference is clearly talking about different
`embodiments and a specific implementation, it’s got different features but
`what this reference is doing like a lot of references do they will talk about
`one part of the advantage gained through the different aspects of an
`implementation and in 3A and 3B we believe they’re talking about the
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`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
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`position and in 4A and 4B they’re talking about the impact of the convex
`lens, Your Honor.
`JUDGE WIEKER: Thank you.
`MR. RENNER: I want to do just one more thing before, because this
`is a very important obviously part of the 1A discussion, I want to look at if I
`could the however sentence. If you go to
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