throbber
4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
` APPLE INC.,
`
`))
`
`Petitioner, ) US PATENT NO: 10,588,553
`) IPR NO. 2020-1536
`-against- )
`) US PATENT NO: 10,588,554
` MASIMO CORPORATION, ) IPR NO. 2020-1538
`)
`Patent Owner. )
`________________________)
`
`VIDEO-RECORDED DEPOSITION OF
`THOMAS WILLIAM KENNY, JR. PH.D.
`VOLUME 1
`Zoom Recorded Videoconference
`04/24/2021
`9:01 a.m. (PDT)
`
`REPORTED BY: AMANDA GORRONO, CLR
`CLR NO. 052005-01
`
`______________________________________________________
`DIGITAL EVIDENCE GROUP
`1730 M Street, NW, Suite 812
`Washington, D.C. 20036
`(202) 232-0646
`
`MASIMO 2008
`Apple v. Masimo
`IPR2020-01521
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
` 04/24/2021
` 9:01 a.m. (PDT)
`
`Page 2
`
` VIDEO-RECORDED DEPOSITION OF THOMAS WILLIAM
`KENNY, JR. Ph.D., VOLUME 1, held virtually via Zoom
`Videoconferencing, before Amanda Gorrono, Certified
`Live Note Reporter, and Notary Public of the State of
`New York.
`
`1
`2
`
`3 4
`
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 3
`
`A P P E A R A N C E S
`(Via Zoom Videoconferencing):
`
`ON BEHALF OF PETITIONER APPLE:
` Dan Smith, Esquire
` Fish & Richardson
` 1717 Main Street
` Suite 5000
` Dallas, Texas 75201
` PHONE: 214-292-4071
` E-MAIL: Dsmith@fr.com
` -AND-
` Andrew B. Patrick, Esquire
` Fish & Richardson
` 1000 Maine Avenue SW
` Washington, D.C. 20024
` PHONE: 202-626-7735
` E-MAIL: Patrick@fr.com
` -AND-
` Hyun Jin In, Ph.D., Esquire
` Fish & Richardson
` 1000 Maine Avenue SW
` Washington, D.C. 20024
` PHONE: 202-626-7765
` E-MAIL: In@fr.com
`
`1
`2
`
`34
`
`5
`
`6
`
`7
`8
`9
`
`10
`
`11
`
`12
`13
`
`14
`
`15
`
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 4
`
`A P P E A R A N C E S
`(Via Zoom Videoconferencing):
`
`ON BEHALF OF PATENT OWNER MASIMO:
` Stephen W. Larson, Esquire
` Knobbe Martens Olson & Bear
` 2040 Main Street
` Irvine, CA 92614
` PHONE: 949-721-5301
` E-MAIL: Stephen.larson@knobbe.com
` -AND-
` Jeremiah S. Helm, Ph.D., Esquire
` Knobbe Martens Olson & Bear
` 1717 Pennsylvania Avenue N.W.
` Washington, DC 20006
` PHONE: 202-640-6400
` E-MAIL: Jeremiah.helm@knobbe.com
` -AND-
` Jacob Peterson, Esquire
` Knobbe Martens Olson & Bear
` 925 4th Ave #2500
` Seattle, WA 98104
` PHONE: 206-405-2000
` E-MAIL: Jacob.peterson@knobbe.com
`
`ALSO PRESENT:
`Billy Fahnert, Legal Video Specialist/Trial Tech,
`Digital Evidence Group
`
`1
`2
`
`34
`
`5
`
`6
`
`7
`8
`
`9
`
`10
`
`11
`12
`13
`
`14
`
`15
`
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 5
`
` I N D E X
`
` WITNESS EXAMINATION
` THOMAS WILLIAM
` KENNY, JR. Ph.D.
` BY MR. LARSON 8
`
` E X H I B I T S
` EXHIBIT DESCRIPTION PAGE
` Exhibit 1024 Mendelson Measurement Site
` and Photodetector Size
` Considerations in Optimizing
` Power Consumption of a
` Wareable Reflectance Pulse
` Oximeter...................... 244
` Exhibit 2003 Mendelson Paper 2003 in
` IPR1536 and IPR1538........... 246
`
`1
`
`2 3
`
`4
`5
`6
`
`7 8
`
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 6
` PREVIOUSLY MARKED EXHIBITS IDENTIFIED
`
` EXHIBIT DESCRIPTION PAGE
` Exhibit 1003 Declaration of Dr. Thomas ... 12
` W. Kenny in IPR2020-1536,
` Exhibit 1003 Declaration of Dr. Thomas ... 17
` W. Kenny in IPR2020-1538
` Exhibit 1026 Nishikawa Patent ............ 75
` Application
` Exhibit 1017 Design and Evaluation of a .. 200
` New Reflectance Pulse
` Oximeter Sensor
` Exhibit 1018 Skin Reflectance Pulse ...... 201
` Oximetry In Vivo
` Measurements from the
` Forearm and Calf
`
`1
`
`2 3
`
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 7
` THE TECH: We are the record. This
`is the remote video deposition of Dr. Thomas W. Kenny
`in the matter of Apple Inc. versus Masimo
`Corporation, IPR Nos. 2020-1536 and 2020-1538 filed
`in the United States Patent and Trademark Office.
` My name is Billy Fahnert. I am the
`video technician today. The court reporter is
`Amanda Gorrono. Today's date is April 24, 2021. The
`time is 9:01 a.m. Pacific Daylight Time.
` Counsel, identify yourselves for the
`record and then the witness will be sworn in.
` MR. LARSON: This is Steve Larson of
`Knobbe Martens on behalf of Masimo. With me today
`are Jeremiah Helm and Jacob Peterson, the partners.
` MR. SMITH: Dan Smith from Fish &
`Richardson for Petitioner Apple, joined by my
`associate, Andrew Patrick.
`THOMAS WILLIAM KENNY, JR. Ph.D., called as a witness,
`having been first duly sworn by a Notary Public of
`the State of New York, was examined and testified as
`follows:
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 8
`
`EXAMINATION BY MR. LARSON:
` Q. Good morning, Dr. Kenny.
` A. Good morning.
` Q. Welcome back.
` A. Thank you.
` Q. So you were deposed the last
`two days, correct?
` A. That is correct.
` Q. Okay. So you remember the rules that
`I explained to you at the beginning of those two days
`of depositions, correct?
` A. I do.
` Q. And so you understand that you're
`under oath as though you were in a courtroom,
`correct?
` A. I do.
` Q. Is there any reason why you would be
`unable to give truthful and accurate testimony today?
` A. No.
` Q. Are you taking any medications that
`might affect your testimony today?
` A. No.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 9
` Q. Okay. Also a brief reminder, court
`reporter is here to take down the questions. Please
`give verbal responses, please wait until I've
`completed the question before answering and please
`let me know if you don't understand the question.
`You can ask for a break at any time. If there is a
`pending question, please answer before taking a
`break, okay?
` A. Okay.
` Q. You know, although I understand you
`may want to make particular points during this
`deposition today, if you could really please try to
`focus on my specific question and provide answers to
`those questions, I would really appreciate that.
` MR. SMITH: Objection. Objection;
`form.
` A. Certainly.
`BY MR. LARSON:
` Q. You submitted Declarations in
`IPR Nos. 2020-1536 and 2020-1538, correct?
` A. Correct.
` Q. And you understand your deposition
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 10
`today is directed to those two Declarations, correct?
` A. Yes.
` Q. All right. And so if for some reason
`you need to qualify or limit your answer to just one
`of those Declarations, will you please let me know?
` A. Certainly.
` Q. So we're doing this deposition
`remotely, and, you know, we'll bring up exhibits
`electronically as we go, but we also sent you hard
`copies of the exhibits so you're welcome to reference
`those as well, okay?
` A. Very good.
` Q. Before I direct you to those
`exhibits, let me just ask you about your preparation
`for this deposition. Yesterday you provided
`testimony about preparing for the depositions as a
`whole in these IPRs, correct?
` A. Yes.
` Q. And so that testimony applies equally
`here today?
` A. Sure, certainly.
` Q. Did you conduct any additional
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 11
`preparation yesterday evening or this morning with
`your attorneys?
` A. We had a discussion yesterday evening
`and another brief discussion this morning, just
`reviewing the Declarations that are the subject of
`today's proceedings.
` Q. And approximately how long did you
`spend meeting with your attorneys yesterday evening
`and this morning?
` A. Yeah, hour, hour and a half.
` Q. Did you do any additional preparation
`on your own?
` A. Yes.
` Q. And how, how long was that
`preparation?
` A. A few hours.
` Q. Can you describe to me how you
`prepared in that time?
` MR. SMITH: Objection to form.
` A. Reviewed the Declarations and some of
`the prior art examples.
`BY MR. LARSON:
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 12
` Q. All right. I'm going to ask you to
`take a look at your Declaration in IPR1536, and so
`I'll give you the, the Tab number and a moment for
`the hard copy. I believe it's going to be Tab 42.
` A. Okay.
` Q. All right. So this is -- should be
`previously marked Apple Exhibit 1003 in IPR2020-1536.
` (Whereupon, Exhibit 1003, Declaration
`of Dr. Thomas W. Kenny in IPR2020-1536, was
`identified.)
`BY MR. LARSON:
` Q. Do you have that exhibit in front of
`you?
` A. Yes.
` Q. Okay. Will you please turn to --
`okay. This Declaration is a Declaration you
`submitted regarding US Patent No. 10588553, correct?
` A. That's correct.
` Q. Do you mind if I refer to that patent
`as the '533 patent?
` A. That's fine.
` Q. Could you please turn to Paragraph 14
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 13
`
`of your Declaration?
` Do you see a table here entitled
`"Prior Art Reference"?
` A. I do.
` Q. And you reviewed these references,
`correct?
` A. That's correct.
` Q. And the first listed prior art
`reference you identified here is US Patent No.
`6,801,799 to Mendelson, correct?
` A. That's correct.
` Q. Do you mind if I refer to that as the
`Mendelson '799 patent?
` A. That's fine.
` Q. The second listed prior art is you
`analyze is US Patent Publication No. 2001/0056243,
`correct?
` A. That's correct.
` Q. And you've identified that with the
`short term Ohsaki, correct?
` A. That's correct.
` Q. Do you mind if I refer to that
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 14
`
`reference as Ohsaki?
` A. That's fine.
` Q. And there's additional references you
`listed in this table.
` Do you see those?
` A. Yes.
` Q. Do you mind if I refer to those
`references by the shorthand names you included in
`your table?
` A. So that would be Schulz, Griffin,
`Mendelson-2006, that's -- yes.
` Q. Did you give your best understanding
`of these references in the Declarations that were, in
`your Declaration?
` A. Yes.
` Q. And did you try as much as you could
`to be accurate in describing those references?
` A. I did.
` Q. And after preparing for your
`deposition, is there anything you want to change
`about your analysis of those references?
` A. Not at this time.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 15
` Q. Did you discover any errors in your
`Declaration?
` A. No.
` Q. Did you discover any errors in your
`analysis of the prior art?
` A. No.
` Q. And throughout this deposition, we
`may refer to "a person of ordinary skill in the art."
`When we use that term, we'll, we'll be referring to
`your view of a person of ordinary skill of the art as
`of what you've identified as the critical date,
`July 3, 2008; is that okay?
` A. Yes, that's my understanding.
` Q. And we may also here and there refer
`to that person as a POSITA; is that okay?
` A. That's fine.
` Q. Your table mentions Ohsaki. That was
`one of the references we discussed yesterday,
`correct?
` A. Yes.
` Q. And so your understanding of Ohsaki
`hasn't changed between your -- the last two days of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 16
`
`the deposition and today, correct?
` A. That's correct.
` Q. In the last couple of days, we also
`under -- had a lot of discussions about a person of
`skill in the art's understanding of more general
`scientific principles, correct?
` A. We did.
` Q. And your understanding of a POSITA's
`understanding of those principles hasn't changed
`between the last two days and today, has it?
` A. No, it has not.
` Q. So if I were to ask you the same
`questions about what would be known to a person of
`skill in the art as I did the last two days, would
`you give me the same answers?
` MR. SMITH: Objection; form.
` A. I will, yes, that would be my intent.
`BY MR. LARSON:
` Q. Okay. Let's take a look at your
`Declaration, the other Declaration at issue here that
`you submitted. This is going to be previously marked
`Apple Exhibit 1003 in IPR1538 and let's see. Maybe
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 17
`
`Tab No. 1- -- 1112, 1112.
` (Whereupon, Exhibit 1003, Declaration
`of Dr. Thomas W. Kenny in IPR2020-1538, was
`identified.)
` A. Yes.
` Q. So this is a Declaration you
`submitted concerning US Patent No. 10,588,554,
`correct?
` A. That's correct.
` Q. Do you mind if I refer to that patent
`as the '554 patent?
` A. That's fine.
` Q. All right. Could you please take a
`look at Paragraph 14 of that Declaration?
` A. Uh-huh.
` Q. Do you see a table here entitled
`"Prior Art Reference"?
` A. Yes.
` Q. And the first entry in that table
`references US Patent No. 6,801,799 to Mendelson,
`correct?
` A. Correct.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 18
` Q. That's 7- -- Mendelson '799 -- '799
`reference we discussed in, in the Declaration we just
`looked at in IPR1536, correct?
` A. That's correct.
` Q. So it's okay for me to refer to this
`reference also as Mendelson '799?
` A. Certainly.
` Q. Or if we simply say Mendelson, maybe
`this will be the primary reference we would need; is
`that fair?
` A. You might want to be careful.
`There's a Mendelson-2006 coming, so, you know, can
`just keep the numbers to be clear.
` Q. You know, if I say Mendelson and we
`don't specify, let's, let's try to specify then,
`okay?
` A. Okay. Same for me.
` Q. And you analyzed US Publication No.
`2001/0056243, correct?
` A. Yes.
` Q. And that's the same Ohsaki reference
`that you discussed in the IPR -- in your Declaration
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 19
`
`for IPR1536, correct?
` A. That's correct.
` Q. Is it okay for me to refer to that
`reference as Ohsaki?
` A. Certainly.
` Q. And are you okay if I refer to the
`other references in this table by the short names you
`provided?
` A. Those would be Schulz and
`Mendelson-2006, yes.
` Q. Okay. You tried to be, you tried to
`be -- you tried your best to be consistent in your
`understanding of Mendelson '799 across all of your
`Declarations, correct?
` MR. SMITH: Objection; form.
` A. Certainly, yes.
`BY MR. LARSON:
` Q. And you try to be consistent in your
`understanding of Ohsaki across all of your
`Declarations, correct?
` A. I did, yes.
` MR. SMITH: Objection; form.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 20
`
`BY MR. LARSON:
` Q. Okay. You can put aside that
`Declaration. All right. Let's go back to your
`Declaration in IPR1536. This will be previously
`marked Apple 1003 in IPR1536.
` Do you have that in front of you?
` A. I do.
` Q. And so if you look at the table of
`contents, which is on -- it's the second page of your
`Declaration but it's tabled as 1, 2 and 3.
` Do you see that?
` A. Where are you looking?
` Q. Just the table of contents in your
`Declaration.
` A. Yes.
` Q. I just wanted you to look at that.
` Do you see here, starting with
`Section 7 it says, "Ground 1." It says, "Claims 1-3,
`5, 6, 9-18, 20-24, and 29 are Rendered Obvious by
`Mendelson '799 and Ohsaki?"
` A. Yes.
` Q. So Ground 1 is an obviousness
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 21
`combination based on Mendelson '799 and Ohsaki,
`correct?
` A. That's correct.
` Q. If you go down to the next page, you
`see Ground 2. It says, "Claims 4, 18, 24 are
`Rendered Obvious by Mendelson '799 Ohsaki, and
`Schulz," correct?
` A. That's correct.
` Q. And so Ground 2 is another
`obviousness combination that's based on Mendelson
`'799 and Ohsaki and has a third reference called
`Schultz, correct?
` A. That's correct.
` Q. Ground 2 only involves three claims,
`right?
` A. Yes.
` Q. And Ground 3, you go -- look down
`your table of contents, there is another obviousness
`combination that's again based on Mendelson '799 and
`Ohsaki and it has as third called Griffin, correct?
` A. That's correct.
` Q. And Ground 3 address as a single
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 22
`
`claim, Claim 25?
` A. Yes.
` Q. And if you go down your table of
`contents to Ground 4, Ground 4 is another obviousness
`combination that's based on Mendelson '799 and Ohsaki
`and has a third reference, Mendelson-2006, correct?
` A. Correct.
` Q. Ground 4 involves two claims,
`Claims 7 and 19, correct?
` A. Correct.
` Q. Ground 5, is your last obviousness
`combination that's again based on Mendelson '799 and
`Ohsaki and adds Griffin and Mendelson, let's see,
`also based on Mendelson and Ohsaki and adds
`Mendelson-2006 and Griffin, correct?
` A. I'm -- yes, that's what I see on the
`table.
` Q. Okay. Ground 5 only involves four
`claims, correct, 26 -- actually three claims 8, 26,
`27, and 28, correct?
` A. That is correct.
` Q. So is it fair to say that Mendelson
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 23
`'799 and Ohsaki are the foundation for all of your
`obviousness combinations?
` MR. SMITH: Objection; form.
` A. I believe so.
` Q. So -- and you show the result of that
`combination in the pictures below Paragraph 88,
`correct, at least that's one place?
` A. Yes, one of many I think but, yes.
` Q. So did you create the figure below
`Paragraph 88 in your Declaration?
` A. I did.
` Q. Did you create it yourself or was it
`together with your team of attorneys?
` A. It was a collaborative process with
`my team.
` Q. Okay. Does this figure accurately
`reflect your opinion about how a POSITA would have
`combined Mendelson '799 and Ohsaki?
` A. Yes.
` Q. So why would a person of ordinary
`skill in the art reading Mendelson '799 and Ohsaki be
`led to this specific combination? I realize that's a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 24
`more difficult question. You might want to read a
`little so let me ask simpler questions first.
` Let's talk about what's in that
`figure. So I want to know the features of the device
`that you opine is a result of the combination of
`Ohsaki and Mendelson '799.
` A. Uh-huh.
` Q. So in your opinion the result of
`combining Ohsaki and Mendelson '799, it results in a
`centrally positioned light source, correct?
` MR. SMITH: Objection; form.
` A. Do you mind if I pull those
`references out of the boxes we have on my floor?
`Just -- I want to be sure.
` Q. You can have your references handy.
`To be clear, I'm asking about your combinations of
`those references, what you actually drew in your
`picture here.
` A. Yes, I understand. Do you mind if I
`pull the references just to examine?
` Q. Sure.
` A. Thank you. So I'm going pull Ohsaki
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 25
`
`and Mendelson.
` Q. Okay.
` A. Okay. Sorry about that.
` Q. No, no problem. You can have those
`handy. All right. But my question is about what you
`have in this figure here to begin with.
` So illustrated in this figure, it's
`your opinion that a person of ordinary skill in the
`art combining Ohsaki and Mendelson would put together
`a device with a centrally positioned light source,
`correct?
` A. So the drawing here actually
`indicates three light sources, in the -- maybe the
`upper view of that, but they are positioned in the
`center of this illustration. That's correct.
` Q. Okay. Yeah, you're right. Let me
`revise that.
` It's not shown in the bottom figure,
`but when you look at this top figure, you can see the
`three LEDs side by side, correct?
` A. That's correct.
` Q. All right. So -- and you illustrate
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 26
`in this figure, it's your opinion that a person of
`ordinary skill in the art combining Ohsaki would have
`put together a device with centrally positioned light
`sources, correct?
` A. Yes.
` Q. And as illustrated in this figure, in
`your opinion, a person of ordinary skill in the art
`combining Ohsaki and Mendelson would put together a
`device with a circular array of detectors positioned
`around the peripheral edge of the device, correct?
` For the record, are you reviewing
`your Declaration?
` A. Yes.
` Q. Let me know when you're ready for me
`to repeat the question.
` A. Uh-huh. Okay. If you could repeat
`the question.
` Q. Sure. As illustrated in this figure,
`a person of ordinary skill in the art, in your
`opinion, would combine Ohsaki and Mendelson and put
`together a device with a circular array of detectors
`positioned around the peripheral edge of the device;
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 27
`
`is that correct?
` MR. SMITH: Objection; form.
` Q. For the record, are you reading your
`Declaration again?
` A. That's correct. What I'm focused on
`is the requirement in your question that it be a
`circular array and I'm just wanting to be sure that's
`consistent with the descriptions in the prior art and
`in my Declarations.
` And I -- so, so Paragraph 111, one of
`ordinary skill would have understand that, although
`the ray depicted in Mendelson features two concentric
`rings that are arranged in radial asymmetric manner
`around the central lighting in the elements, they are
`all in the same substrate.
` So what we understand from all of
`this is that the combination would be at least four
`detectors, including perhaps six or 12 evenly, evenly
`spaced from one another on a substrate and I think
`arrayed radially from the center so maybe -- I'm
`sorry, I think that's a long-winded way of answering
`your question, sorry.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 28
` Maybe just to clean the record, could
`you ask the question one more time? I'll try to give
`a more compact answer.
` Q. Sure. As illustrated in this figure,
`a person of ordinary skill in the art on your team
`would combine Ohsaki, Mendelson put together a device
`with a circular array of detectors positioned around
`the peripheral edge of the device; is that correct?
` MR. SMITH: Objection; form.
` Q. And for the record, are you reviewing
`your Declaration again?
` A. That's correct.
` Q. Is there any part of my question that
`you're -- that's causing you to hesitate?
` A. Just the requirement to be circular,
`and I think I can say yes to your question.
` Q. And you used the term "radially
`arrayed," correct, a few moments ago?
` A. Uh-huh.
` Q. What is radially arrayed? Does that
`mean circular or something else?
` MR. SMITH: Objection to form.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 29
`
` A. I guess circular array is a
`reasonable description of what we have here.
` Q. Okay. And the other part of my
`question was whether -- the other part of my question
`is --
` MR. LARSON: Let me repeat my
`question again.
` Q. The main part of my question is that
`the detectors are positioned around the peripheral
`edges of the device. And so with that in mind, let
`me ask the question again.
` As illustrated in this figure a
`person of ordinary skill in the art would combine
`Ohsaki and Mendelson put together a device with a
`circular detector positioned around the peripheral
`edge of the device.
` Do you agree with all of that or is
`there some of it you dispute?
` MR. SMITH: Objection; form.
`Objection; argumentative.
` A. So "around the peripheral edge" seems
`to be unnecessarily narrow. I don't think there's
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 30
`anything in these disclosures that specifies the
`position as being necessarily around the radial edge,
`just that they need to be out board of the emitter in
`the center.
` Q. And so the combination, in the
`combination that you propose, the detectors could be
`anywhere from directly next to the LEDs all the way
`out to the edge? Or is there some additional
`limitation?
` MR. SMITH: Objection; form.
` A. So, I think the spacing between the
`emitters and the detectors is a variable that one
`would choose based on one's understanding of the
`circumstances and objectives of the sensor design.
`One of ordinary skill in the art.
` Again, these are illustrations not
`detailed specified drawings where the dimensions are
`intended as literal. They are figurative.
` Q. And can you, so, one of skill in the
`art, considering that variable n the context of this
`combination, would end up with, with what device, is
`my question. Where would the radially arrayed
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 31
`
`detectors?
` MR. SMITH: Objection; form.
` A. They would be somewhere along the
`axis between the emitter and the edge of the housing.
` Q. And can you tell me where along that
`axis they would be?
` MR. SMITH: Objection; form.
` A. Do you want an answer specifying in
`millimeters? Or in -- I guess I don't understand how
`you would like me to answer that question.
` The position would depend on the
`details of the other elements of the design.
` Q. What, what other elements of the
`design would impact the position of the detectors and
`your combination that you assert the result of Ohsaki
`and Mendelson '799?
` A. The overall size, for example.
` Q. Anything else?
` A. The height of the housing.
` Q. Anything else?
` A. The expected depth in the tissue of
`the corpuscles that would be the target that would
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`

`

`4/24/2021
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D.
`
`Page 32
`likely be reflecting light from the emitter back
`towards the detectors.
` Q. Anything else?
` A. The size of the detector elements
`that were available to me at this time.
` Q. And rather than me continuing to say
`"anything else," could you just list for me anything
`else you can think of?
` A. I mean, you know, it's all of -- I
`mean, this is an illustration, really, some intended
`tod convey the idea but not the specific shapes and
`sizes and locations of elements. It's -- all of the
`choices

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


Or .

Accessing this document will incur an additional charge of $.

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

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket