Trials@uspto.gov
`571-272-7822
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`
`
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`
`Paper 42
`Entered: October 13, 2021
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`___________
`
` IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`___________
`
`Record of Oral Hearing
`Held: August 26, 2021
`_____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`
`
`
`
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`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 42
`Entered: October 13, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`___________
`
` IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`___________
`
`Record of Oral Hearing
`Held: August 26, 2021
`_____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`RUDOLPH TELSCHER, JR., ESQ.
`
`Husch Blackwell, LLP
`
`190 Carondelet Plaza
`
`Suite 600
`
`St. Louis, MO 63105
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`
`
`
`
`
`
`SHEILA SWAROOP, ESQ.
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main Street
`# 14
`Irvine, CA 92614
`
`
`The above-entitled matter came on for hearing on Thursday, August
`26, 2021, commencing at 1:00 p.m., EDT, by video/telephone.
`
`
`
`
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` 2
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`
`
`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`
`
`
`
`PROCEEDINGS
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`JUDGE KINDER: Good afternoon. This is Judge Kinder.
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`Good afternoon everyone and with me on the panel today are
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`Judges Cocks and Chagnon, and today we have four IPR
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`proceedings that we're going to hear oral argument in. Each IPR
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`is captioned Soter a Wireless as Petitioner versus Masimo
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`Corporation, Patent Own er and just for the record the IPR
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`numbers are IPR 2020 and the cases are 912, 954, 1015 and
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`1054. If we could real quick get a roll call. I want to see who's
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`on the line for Petitioner.
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`MR. TELSCHER: On the line for Petitioner is Rudy
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`Telscher of the law firm of Husch Blackwell.
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`JUDGE KINDER: All right. Mr. Telscher, did I say that
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`correctly?
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`MR. TELSCHER: It's Telscher but close enough.
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`JUDGE KINDER: Telscher, I apologize. Are you going to
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`be arguing today ?
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`MR. TELSCHER: I will be arguing, Y our Honor.
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`JUDGE KINDER: Great. Anybody else with your firm
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`today participating?
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`MR. TELSCHER: Well, with me is Nathan Sportel. If
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`there are going to be arguments over the Motions to Exclude he
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`would handle those. I guess there's a possibility he mi ght say
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`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`something but we're planning on me doing most or all of the
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`talking.
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`JUDGE KINDER: All right. Thank you. And Masimo for
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`Patent Owner, who's representing today?
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`
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`MS. SWAROOP: Good afternoon, Your Honor. This is
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`Sheila Swaroop of Knobbe, Marten s, Olson & Bear for Patent
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`Owner Masimo.
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`JUDGE KINDER: All right. Ms. Swaroop, did I say that
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`correctly?
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`MS. SWAROOP: You did, Your Honor.
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`JUDGE KINDER: Okay. Thank you very much. All right.
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`Anybody else with you today or is it going to be you ar guing all
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`day?
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`MS. SWAROOP: I will be presenting today, Your Honor.
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`JUDGE KINDER: All right. Great. And I do apologize.
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`I'm -- I think ragweed right now so my allergies are acting up so
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`I do apologize if my throat's a little scratchy. First I want to let
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`you all know that the hearing is open to the public. We did have
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`a request so I think we may have one or more people here from
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`the public actually watching in or listening to the hearing.
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`Today the parties are going to each be allotted 60 minutes. If at
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`any time during the proceeding you have technical issues let us
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`know. Obviously if you drop off you probably won't be able to
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`let us know but we will hopefully realize that as quickly as
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`
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`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`possible and will pause the proceeding. When we pause the
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`proceeding we won't count that against your time , obviously.
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`Hopefully, our team is really good and they usually get people
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`back up within three or four minutes so don't panic if we happen
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`to lose connection. It's not a big deal, it does happen and if fo r
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`some reason the video just isn't working we also have backup
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`telephone numbers for call in that you can use. So that will
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`hopefully not happen , but just to let you know sometimes it does.
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`So one thing that we try to do is everyone mut e themselves
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`until they go to talk and then we have the inevitable where we
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`always forget to unmute ourselves when we actually do start
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`talking. But for courtesy the judges and all the staff will try to
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`stay muted until we ask a question and then counsel, please mute
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`yourself if the other counsel is speaking. We have
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`demonstratives. Both sides did a good job of getting us those
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`demonstratives ahead of time and we appreciate that. When you
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`refer to those, please give the slide number that you're referring
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`to in your deck and give us maybe a second or two to pull it up.
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`We're going to be pulling things up on our work stations and we
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`want to follow you as closely as possible so a brief pause helps
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`to do that and this is probably more for us, the judges. We'll try
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`to identify ourselves each time we speak so our court reporter
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`can know who's talking and when.
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`So the Petitioner bears the ultimate burden of proof in this
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`
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`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`case and the Petitioner will go first to present their case and they
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`may also reserve some time for rebutta l arguments. So out of the
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`60 minutes looking at your time, Mr. Te lscher, how much time
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`would you like to reserve for your rebuttal?
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`MR. TELSCHER: Fifteen minutes, Your Honor.
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`JUDGE KINDER: All right. So you have 45 and 15. And
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`then after Petitioner 's initial presentation the Patent Owner will
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`argue its opposition and then present issue for which you might
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`bear the burden of proof. Patent Owner, Ms. Swaroop, how
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`much time would you like to allot for your rebuttal reply time?
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`MS. SWAROOP: I would l ike to reserve 15 minutes of
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`rebuttal for Patent Owner.
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`JUDGE KINDER: All right. So that's pretty easy for us to
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`remember. We will try to keep time ourselves. If you can keep
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`your own time as well, you know, we're going to be obviously
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`liberal with th e time just because we don't have an official clock
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`behind us so we are all going to be kind of tracking that. We'll
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`let you know when there's about three to five minutes left in your
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`opening time just so you have an idea.
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`Important for these four IPR pro ceedings, the parties have
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`agreed to a single transcript and a single hearing so that's
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`important. The transcript will be used in all four IPR
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`proceedings. If there's any specific issue that only applies to one
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`IPR, try to let us know the IPR number that you're arguing the
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`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`specific issue for. It makes things just easier at the end when we
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`have to go back and look at the transcripts and review your
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`arguments if you can.
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`All right. I think that concludes most of the formalities.
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`After the case is submitt ed and I say “off the record ,” I'd ask the
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`parties to stay on the line for just a few minutes so our court
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`reporter, Julie Souza, can ask you any questions about spellings
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`or any other things to make sure the transcript is as clear as
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`possible, and with th at are there any questions at this time before
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`we begin? All right.
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`MR. TELSCHER: None from Petitioner.
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`MS. SWAROOP: And from Patent Owner.
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`JUDGE KINDER: All right. Thank you. All right. Mr.
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`Telscher, I'll go ahead and let you begin and your time wi ll start
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`whenever you're ready to begin. Thank you.
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`MR. TELSCHER: Thank you, Your Honors and good
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`afternoon. Because the IPRs have so many issues in common
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`most of my arguments will be germane to also when I'm speaking
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`without referencing an IPR it woul d signal that I'm talking about
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`all of them. If there's a particular issue germane to one of the
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`particular IPRs I will mention the number.
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`I'd like to start with the patents themselves. So I have, you
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`know, one part which is kind of an introduction that I think
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`frames the issues. I'd like to start at slide 10 of our deck and
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`
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`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`then of course we will turn to the actual grounds in the petition
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`and why we believe each of the claims are obvious. So I'll give
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`you a moment to turn to slide 10 but that's where I'm starting
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`with the patents themselves and just by way of nomenclature I
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`might say '735 patent. Because all of these patents have a
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`common disclosure I'm referring to all of them for the most part
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`unless I specify otherwise, and let me know when you're ready.
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`JUDGE KINDER: I think we're there now. Thank you for
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`the pause.
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`MR. TELSCHER: So the first slide I think is a critical
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`slide. It shows you what the inventor thinks he invented. So if
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`you look to the left hand of the slide, they call it prior ar t and
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`you'll see that there's an S P02 sensor attached to the finger, that
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`was conventional. You'll see that there was a wire with a port
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`plugging into unit 160 around, you know, a receptacle I think it's
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`162 but you see plug 144. So there's been a lot of discussion in
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`this case about whether it would have been obvious to use a
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`sensor ported to an electronic device in a medical context.
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`The '735 patent and all of the patents here admit that ports
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`are prior art. In fact when you read these patents there ar e pages
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`of discussion from Mr. Oslan, their expert, talking about why
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`you wouldn't use ports in a medical device context, noise, cost,
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`things of that nature but right here in figure 1 the '735 patent
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`refers to a porting connection from a sensor to the elec tronic
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`
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`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`device as the prior art.
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`When you look to the right hand side of your screen you'll
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`see what the invention really was and the patent admits that
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`around this timeframe the idea of transmitting vital signs from
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`some kind of a remote monitor -- what we see here is a wrist
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`monitor but it could be something that straps to your belt -- the
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`idea of transmitting wirelessly from the patient in a monitor
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`there to the remote monitor 360 was no. The patent doesn't
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`debate that they came up with the idea of wirel ess transmission
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`for medical sensors and vital signs. What did they say they
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`invented, and it's the adaptor and you'll hear me throughout this
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`proceeding talking about an adaptor and that's what this patent
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`was all about. Go back and look. There were se ven patents that
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`predate the patents we're talking about and for fifteen years, the
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`patents were filed in 2002, for fifteen years the patents were
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`directed to the adaptor interface. The abstract, the spec, all of it
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`was directed to the adaptor interface a nd you'll see that the idea
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`was instead of plugging the remote sensor, the sensor the SP02
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`sensor into the remote monitor you would then -- if you look to
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`the right side of slide 10 -- you would plug it into the wrist
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`monitor. The wrist monitor could disp lay the vitals and then it
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`could wirelessly transmit to the adaptor and if you read this
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`patent I mean most of the figures, by far most of the discussion,
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`has to do with how do you transmit from that wrist monitor to
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`
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`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`the adaptor and that was the invention and if you're reading what
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`they were talking about and this probably was a good idea. What
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`Masimo said is look, we don't want hospitals to have to change
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`up all their equipment so instead of having the SP02 sensor
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`plugged directly into that piece of equip ment, the remote
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`monitor, we're going to use an adaptor and by using that adaptor
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`now, in this wireless system, we'll work with all the hospital's
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`existing equipment and again for fifteen years their claims were
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`directed to an adaptor interface. There wer e no claims directed
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`to ports for combination of analog and digital sensors. So that's
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`what went on for 15 years and now we've got -- and look, all of
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`us that are on this feed right now are aware that patent owners
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`change their claims, they broaden them, they narrow them,
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`there's nuances to them.
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`What happened in this case is 15 years later the claims
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`went in a completely different direction. They were not directed
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`to this adaptor interface and what happened during those 15
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`years is that our client entere d the scene in around 2013 or 2014.
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`There was a trade secret lawsuit that didn't work out as Masimo
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`wanted and in 2017 when that trade secret lawsuit ended they
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`prepared nine new patents, four of which are in this IPR. We
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`have another IPR proceeding comi ng up in a couple of weeks on
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`other patents. But these four were four of the ones brought in
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`2017 and so that's kind of the context for where we're at.
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`
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`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
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`Now, turning to slide 11. Slide 11, and as we all know
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`when you get to the new patents you can change the abstract, but
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`in continuation patents they couldn't change anything else. So
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`the spec's all the same, the summaries all the same, you know,
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`they can try to change the claims according to patent law but the
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`abstract is something th ey could change without creating new
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`matter and so when you look at the abstract it's different from
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`the abstract of the prior seven patents and what does it talk
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`about? It talks about wire management. So in 2017 the new
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`direction, they never tried to patent this b efore but this was the
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`new direction, was to have the wrist monitor 400, you've got
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`411, connecting to the SP02 sensor which is 310 and what they
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`said is by running that wire 420 perpendicularly down to the
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`SP02 sensor it prevented tangling, it was wire ma nagement and
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`this was the smarter better way of doing it.
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`Now again, for 15 years they never tried to patent anything
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`like this, but they did and I'm not saying they weren't entitled to
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`do that one way or the other, but flip to page 12. And , by the
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`way, on 11 there's no discussion about some signals are analog
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`and some are digital or ports are the big invention, it was about
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`that wire management concept we just discussed . And when you
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`switch to slide 12 , Goldberg shows the exact wire management
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`concept of running a wire from the front face down to an SPO2
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`sensor that's on the finger and the new concept was blown out of
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`
`
`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
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`the water. Akai shows the same exact thing, they're clearly prior
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`art.
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`Now again, one of the things that I mentioned is these
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`patents were never about combinations of A and D signals or
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`ports and I'm not asking the panel to take my word for it. Look
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`at the summary of the invention. I'm on slide 13, thank you.
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`Turning the page my colleague reminded me I did not signal a
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`QT, so I'll give yo u a moment for slide 13. Are you at slide 13?
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`Thank you. And so for slide 13 , again, they describe this
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`problem. And the problem was wireless transmission of these
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`vitals was known , but boy, the hospitals would have to change
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`all of the equipment . So the idea was an adaptor and if you
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`switch to page 14 , it's just more exemplary. I would invite the
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`panel to read the entire summary. I'm not going to go through it.
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`There is nothing in the summary of the invention that talks about
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`even wire management, analog and digital combinations, much
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`less specific sensors that have analog and specific sensors that
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`have digital. There's no discussion of any of that. It's all about
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`this adaptor transfer . And as I said, for 15 years seven patents
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`were all directed to that, that receiver interface . And our expert
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`goes into all of that in his expert report.
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`If you switch to slide 15. All that we're fighting about now
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`are ports, analog and digital signals, single or multi -sensor
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`embodiments, wrist monitor clipped on. When you read the
`
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` 12
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`
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`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`patent, I mean we have got four IPRs and more briefing that we
`
`can count, and if you read the patent the sum total of the
`
`disclosure is minimal on these points. Why? Because that was
`
`not the focus of the invention. But I want to point something
`
`else out when you read this. It's what I call the “this or that”
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`patent approach. When you start to get into details that don't
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`matter, well the signals can be analog or digital. It can be ports
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`or it can be hard wire. It could be wrist monit or or it could be
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`clipped on. It could be a single sensor or it could be multi -
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`sensor. So it's what I call “it could be this or that ” and when I
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`see patent owners doing the “this or that” it's because those are
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`details that don't matter; right? One skil led in the art would
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`know that you can hard wire or you could port it. One skilled in
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`the art would know you could use analog or digital signals. One
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`skilled in the art knows that if you want to measure one vital
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`sign use one sensor and one port. If you want to use multiple
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`vital signs which I think call it (audio interference) in the
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`medical context when you're monitoring certain conditions you
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`might need three to five vital signs being monitored.
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`The experts all talk about it, the prior art talks about it. So
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`the patents, and I'll give you an example. Say our client's device
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`in 2014 was hard wire. They could have delivered the same
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`claims to you and called them hard wire versus ported and they
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`would claim that was their invention because their pat ent talks
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` 13
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`
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`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`about it being either ports or hard wire. Just p oll (phonetic) the
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`options. Make it a list and it is all digital signals and they would
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`have pointed to the snippet here that says it could be analog,
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`digital or both and if our client's device wa s all digital they
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`would have drafted claims to all digital and then we would have
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`been on this chase to try to find prior art that specifically shows
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`these what I would consider basic design details and that's what
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`our expert testified to.
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`Slide 16. Ther e's been a lot of discussion in these IPRs
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`about an analog SP02 sensor connecting into a monitoring
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`device, a wrist monitoring device by a port. This patent on slide
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`16 says figures 1 and 2 illustrate a conventional post -oximetry
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`system used for the mea surement of blood oxygen and it shows a
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`conventional sensor plugging into a port. The sensor is typically
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`attached to the finger. If you read that first block on the left
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`hand side the sensor has a plug that inserts into a patient cable
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`socket. In this case Mr. Oslan has gone on for pages of
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`Declaration telling us why ports have noise, ports are costly,
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`they're too big but there is nothing in the '735 patent that talks
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`about any of those problems. In fact, the '735 patent says that
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`the use of ports on a medical device was known and if you look
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`to the right hand side of slide 16 from the patent again it says the
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`sensor's conventional and now here we are in an IPR arguing
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`about whether an analog SP02 sensor connecting to a port is
`
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`
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` 14
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`
`
`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`somehow a poi nt of novelty when the patent itself describes that
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`it is conventional activity.
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`You know, maybe Masimo's response to that would be our
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`claims are more detailed. When you look at claim 20 it requires
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`an analog SP02 sensor but it requires maybe a digital
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`temperature sensor and a digital EKG sensor. I would ask the
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`Board to read this patent. There is no disclosure of any
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`embodiment that it talks about an analog, digital or, excuse me,
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`SP02 analog sensor with a digital temperature sensor with a
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`digital EKG sensor. There's no disclosure of that anywhere and
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`I'm not making a 112 argument. I know this panel is not here to
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`consider 112. But the point is all the patent says about analog
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`and digital is that the conventional sensors can be analog, digital
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`or a combination of analog and digital. All of the experts that
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`are before you agree that conventional sensors could be analog or
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`digital or both. We all know that one skilled in the art when
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`they're monitoring patients they're going to choose do I want an
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`analog sensor, do I want a digital sensor and again I don't want
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`you to take my word for it. Look at their expert report at
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`paragraphs 110 to 115. He goes into a long description of how
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`one skilled in the art would know about analog sensors, digital
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`sensors, the benefits to one or the other and of course that's
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`right. I mean let's think about it for a second. We have analog
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`signals and digital signals. If we thought analog signals were the
`
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` 15
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`
`
`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`end-all-be-all there would be no digital signals and i f we thought
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`digital signals were by far the best there would be no analog
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`signals. But we live in a world where there are analog and
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`digital signals . You have two choices. One skilled in the art
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`would know about these choices.
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`When we turn to the conce pt of multi-parameter monitoring
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`and I'm on slide 18 now. I'll give you a moment.
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`JUDGE KINDER: Hi, this is Judge Kinder. You can just
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`pause for a brief second or two, you don't have to give us too
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`much time. We can catch up pretty quick.
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`MR. TELSCHER: Okay. Thank you. So I want you to
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`compare the disclosure of multi -parameter monitoring in the '735
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`13
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`patent with that of Goldberg. There's the same limited
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`disclosure in both. It's uncanny. When you look at the '735
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`patent figure 4A on the left, fig ure 4A shows an SP02 sensor
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`ported into a wrist monitor and you can see the wrist monitor
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`411. Might be (indiscernible) 450, 410 excuse me. So it' s
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`ported in. There is no figure in the '735 patent that talks about
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`how you would make three ports on the device shown in figure
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`4A. Goldberg is the same. Goldberg says exactly what the '735
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`patent says, that we can work -- and they describe seven
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`different vital sign sensors in Goldberg and they say at the top of
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`column 5, lines 3 to 8, "Our device will wor k with one, all or
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`some combination of that."
`
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` 16
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`
`
`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
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`Goldberg has the same general description as the '735
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`patent does and why is that? It's because one skilled in the art
`
`would know how to build a device that has a display that fits on
`
`your wrist that has at le ast three -- that's what the claims require
`
`at least three ports. But we've got page after page after page of
`
`Mr. Oslan telling this panel why one skilled in the art would not
`
`think to use ports on a wrist monitor device because it would be
`
`too costly. There would be noise. There would be size
`
`problems. The only problem with Mr. Oslan's arguments is he
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`10
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`ignores the '735 patent. It doesn't have any disclosure at all,
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`11
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`none about how you would build something with three ports.
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`12
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`The only thing it shows is w hat's in figure 4A.
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`13
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`So again, I'm not here to argue Section 112 to this panel.
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`14
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`That's for District Court , but I would submit to the panel that the
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`15
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`reason why '735 and Goldberg don't get into that level of detail
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`16
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`is because by 2002 one skilled in the art k new that they could
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`17
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`build a wrist monitor that would wirelessly transmit vitals to a
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`remote computer and you could put at least three sensors ported
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`to it and probably more. But they knew it, but let's say that it
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`20
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`was going to be the problem that Mr. Osla n says. Well, where
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`21
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`does the '735 patent explain the size, noise and cost issues with
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`22
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`this three port wrist monitor? And by the way when you look at
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`the left hand side of figure 4A on slide 18, I mean you can look
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`24
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`at that. I mean it's hard to image that you wouldn't have to make
`
`
`
`
` 17
`
`
`
`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`that bigger if you were going to put three ports on it. One
`
`skilled in the art is going to understand if you want to put three
`
`ports that it's going to get bigger and you're still going to put it
`
`to the wrist just as the '735 pa tent says. It doesn't show a three
`
`port embodiment, it just says in passing you can monitor more
`
`than one vital sign. I don't even think that it says three. I think
`
`that the claims talking about three is not something the patent is
`
`even talking about, i t's some magic number.
`
`JUDGE KINDER: This is Judge Kinder. Really quick
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`question.
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`MR. TELSCHER: Yes, sir.
`
`JUDGE KINDER: So I, and I'm thinking of the column in
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`Goldberg that talked about using multiple types of sensors and
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`one was I think pulse ox an d then it said it could at least be used
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`with others. Does it contemplate using two at once? At least two
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`different types of sensors at once?
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`MR. TELCHER: Yes, it does. So column 5, lines 3 to 8,
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`very short passage. It says, and by the way this is colu mn 5. If
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`you read the previous three to four paragraphs of Goldberg
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`starting on column 4 it describes EKG sensors, SP02 sensors,
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`respiratory sensors, all the common vital signs that doctors need
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`22
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`to monitor and then when it gets to the top of column 5 it s ays,
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`"Our invention will work with one, all or any combination
`
`of them."
`
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` 18
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`
`
`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
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`And that's exactly what really the '735 patent says. The
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`'735 patent gives no more detail than that. Why is it? Because
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`doctors think, let's be clear Masimo and Sotera are not tell ing
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`doctors what vital signs to monitor. You're a doctor and my
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`patient's got diabetes, I know the signals I've got to monitor. If
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`they've got a heart condition I know the signals they've got to
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`monitor. All that Goldberg, Masimo and even our client Sot era
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`are doing is delivering a device that allows them to plug in
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`sensors that allow them to monitor the vital signs they need. But
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`Goldberg is explicit that it could be all of them and he lists at
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`least seven and says others, and again this is what doctor s need.
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`I mean the invention of the '735 patent wasn't directed to new
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`sensors, it wasn't directed to combinations of sensors. There's
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`no disclosure of any of that. What was the '735 patent directed
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`to? An adaptor that allowed you to wirelessly connect to an
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`adaptor on a remote station so that the existing hospital
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`equipment could be used. Just one second. I'm getting a cite
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`here. And also from the '904 patent, Goldberg and it's column 4
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`there's another citation to what he's given. In column 4, line 50,
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`"The sensors 104 are positioned as to sense physiological
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`characteristics of the monitored person. In the preferred
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`embodiment the sensor 104 an be associated with one or more of
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`the monitored person's blood pressure, pulse, oxygen hemoglob in
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`saturation, glucose, body temperature, respiration and
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`
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` 19
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`
`
`IPR2020-00912 (Patent 10,213,108 B2)
`IPR2020-00954 (Patent 9,788,735 B2)
`IPR2020-01015 (Patent 9,795,300 B2)
`IPR2020-01054 (Patent 9,872,623 B2)
`
`electrolyte."
`
`So clearly Goldberg in at least two places now
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`contemplates monitoring multiple signals and again, Your Honor,
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`any system that would be usable in a hospital would have to
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`monitor more than one s ystem in a lot of applications. Does that
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`answer the question?
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`JUDGE KINDER: Yes, thank you. I know you'll probably
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`get into more of the size and configuration argument but you
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`would at least have to admit if it's going to be a wearable device
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`there probably is a limit though in the number of ports it could
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`have in the size; right?
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`MR. TELCHER: Of course there would be, Your Honor.
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`You know, and one skilled in the art is going to know what are
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`14
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`the size of ports, what are the electronics that it takes t o
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`interface and they're going to be able to figure that out. But I
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`want to point something out to you. When you look at figures 13
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`and 14 of the '735 patent which is their multi -port embodiment,
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`Masimo says sensor one, sensor two and then it's got sensor to
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`the nth degree. So Masimo in the '735 patent doesn't try to place
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`a limit on it. They says there could be the nth degree of sensors
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`in figures 13 to 14 and again the reason for it, it goes right to
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`your question. One skilled in the art is going to k now that if you
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`get to a certain number of ports that it's going to be too
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