IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
` Attorney Docket No.: 50095-00012IP1
`
`Jeroen Poeze et al.
`In re Patent of:
`10,588,553
`U.S. Patent No.:
`March 17, 2020
`Issue Date:
`Appl. Serial No.: 16,534,949
`Filing Date:
`August 7, 2019
`Title:
`MULTI-STREAM DATA COLLECTION SYSTEM FOR
`NONINVASIVE MEASUREMENT OF BLOOD
`CONSTITUENTS
`
`DECLARATION OF DR. THOMAS W. KENNY
`
`Declaration
`
`I declare that all statements made herein on my own knowledge are true and
`
`that all statements made on information and belief are believed to be true, and
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`further, that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable under Section 1001 of Title 18 of
`
`the United States Code.
`
`By: ________________________________
`
`Thomas W. Kenny, Ph.D.
`
`MASIMO 2011
`Apple v. Masimo
`IPR2020-01521
`
`1
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`

`

`Contents
`
`I. QUALIFICATIONS AND BACKGROUND INFORMATION ..................... 4
`
`II. OVERVIEW OF CONCLUSIONS FORMED ...............................................10
`
`III. LEVEL OF ORDINARY SKILL IN THE ART .............................................11
`
`IV. LEGAL STANDARDS ...............................................................................12
`
`A.
`
`Terminology .............................................................................................12
`
`B. Legal Standards for Anticipation .................................................................12
`
`C. Legal Standards for Obviousness .................................................................13
`
`V. THE ’553 PATENT .......................................................................................18
`
`A.
`
`Technical Background ..............................................................................18
`
`B. Overview of the ’553 Patent ........................................................................20
`
`C. Prosecution History of the ’553 Patent .........................................................26
`
`VI. SUMMARY OF THE PRIOR ART .............................................................26
`
`A. Overview of Mendelson ’799 ...................................................................26
`
`B. Overview of Ohsaki .....................................................................................33
`
`C. Overview of Schulz .....................................................................................35
`
`D. Overview of Griffin ..................................................................................37
`
`E. Overview of Mendelson 2006 ......................................................................39
`
`VII. GROUND 1 – Claims 1-3, 5, 6, 9-18, 20-24, and 29 are Rendered Obvious
`by Mendelson ’799 and Ohsaki .............................................................................41
`
`A.
`
`Combination of Mendelson ’799 and Ohsaki ............................................41
`
`1.
`
`Light permeable cover comprising a protruding convex surface ............43
`
`Strap configured to facilitate attachment of part of the physiological
`2.
`monitoring device to a user’s arm ..................................................................49
`
`B. Claim 1 ........................................................................................................52
`
`C. Claim 2 ........................................................................................................80
`
`D. Claim 3 .....................................................................................................80
`
`E. Claim 5 ........................................................................................................81
`
`F. Claim 6 ........................................................................................................82
`
`G. Claim 9 .....................................................................................................83
`
`1
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`2
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`

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`H. Claim 10 ...................................................................................................84
`
`I. Claim 11 ......................................................................................................93
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`J. Claim 12 ......................................................................................................95
`
`K. Claim 13 ......................................................................................................97
`
`L. Claim 14 ......................................................................................................99
`
`M. Claim 15 ................................................................................................. 100
`
`N. Claim 16 ................................................................................................. 101
`
`O. Claim 17 ................................................................................................. 102
`
`P. Claim 18 .................................................................................................... 103
`
`Q. Claim 20 ................................................................................................. 103
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`R. Claim 21 .................................................................................................... 110
`
`S. Claim 22 .................................................................................................... 112
`
`T. Claim 23 .................................................................................................... 112
`
`U. Claim 24 ................................................................................................. 113
`
`V. Claim 29 ................................................................................................. 114
`
`VIII. GROUND 2 – Claims 4, 18, 24 are Rendered Obvious by Mendelson ’799,
`Ohsaki, and Schulz ............................................................................................. 114
`
`A. Combination of Mendelson ’799, Ohsaki, and Schulz ............................ 114
`
`B. Claim 4 ...................................................................................................... 120
`
`C. Claim 18 .................................................................................................... 131
`
`D. Claim 24 ................................................................................................. 131
`
`IX. GROUND 3 – Claim 25 is Rendered Obvious by Mendelson ’799, Ohsaki,
`and Griffin .......................................................................................................... 132
`
`A. Combination of Mendelson ’799, Ohsaki, and Griffin ............................ 132
`
`B. Claim 25 .................................................................................................... 135
`
`X. GROUND 4 – Claims 7 and 19 are Rendered Obvious by Mendelson ’799,
`Ohsaki, and Mendelson 2006 .............................................................................. 139
`
`A. Combination of Mendelson ’799, Ohsaki, and Mendelson 2006 ............. 139
`
`1.
`
`Touch-screen display ........................................................................... 142
`
`2. Communication of information to PDA ................................................ 144
`
`B. Claim 7 ...................................................................................................... 148
`
`
`
`2
`
`3
`
`

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`C. Claim 19 .................................................................................................... 163
`
`XI. GROUND 5 – Claims 8 and 26-28 are Rendered Obvious by Mendelson
`’799, Ohsaki, Mendelson 2006, and Griffin ........................................................ 166
`
`A. Combination of Mendelson ’799, Ohsaki, Mendelson 2006, and Griffin 166
`
`B. Claim 8 ...................................................................................................... 166
`
`C. Claim 26 .................................................................................................... 170
`
`D. Claim 27 ................................................................................................. 171
`
`E. Claim 28 .................................................................................................... 171
`
`XII. CONCLUSION ......................................................................................... 172
`
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`3
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`4
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`I.
`
`QUALIFICATIONS AND BACKGROUND INFORMATION
`
`1. My education and experience are described more fully in the attached
`
`curriculum vitae (Exhibit 1004). For ease of reference, I have highlighted certain
`
`information below.
`
`2. My academic and professional background is in Physics, Mechanical
`
`Engineering, Sensing, and Robotics, with a research specialization focused on
`
`microfabricated physical sensors, and I have been working in those fields since the
`
`completion of my Ph.D. more than 30 years ago. The details of my background
`
`and education and a listing of all publications I have authored in the past 35 years
`
`are provided in my curriculum vitae, Exhibit 1004. Below I provide a short
`
`summary of my education and experience which I believe to be most pertinent to
`
`the opinions that I express here.
`
`3.
`
`I received a B.S. in Physics from University of Minnesota, Minneapolis in
`
`1983, and a Ph.D. in Physics from University of California at Berkeley in 1989. I
`
`was educated as a Physicist specializing in sensors and measurement. My Physics
`
`Ph.D. thesis involved measurements of the heat capacity of monolayers of atoms
`
`on surfaces, and relied on precision measurements of temperature and power using
`
`time-varying electrical signals, and also on the design and construction of
`
`miniature sensor components and associated electrical circuits for conditioning and
`
`conversion to digital format.
`
`
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`4
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`5
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`

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`4.
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`After completion of my Ph.D. in Physics at U.C. Berkeley in 1989, I joined
`
`the Jet Propulsion Laboratory (JPL) in Pasadena, CA, as a staff scientist, and began
`
`working on miniature sensors and instruments for small spacecraft. This work
`
`involved the use of silicon microfabrication technologies for miniaturization of the
`
`sensors, and served as my introduction to the field of micro-electromechanical
`
`systems (MEMS), or the study of very small mechanical sensors powered by
`
`electricity and used for detection of physical and chemical signals.
`
`5. While at JPL, we developed accelerometers, uncooled infrared sensors,
`
`magnetometers, seismometers, force and displacement sensors, soil chemistry
`
`sensors, miniature structures for trapping interstellar dust, and many other
`
`miniature devices. Some of these projects led to devices that were launched with
`
`spacecraft headed for Mars and for other interplanetary missions. Much of this
`
`work involved the use of physical sensors for detection of small forces and
`
`displacements using micromechanical sensors.
`
`6.
`
`I am presently the Richard Weiland Professor at the Department of
`
`Mechanical Engineering at Stanford University, where I have taught for the past 26
`
`years. I am also currently the Senior Associate Dean of Engineering for Student
`
`Affairs at Stanford.
`
`7.
`
`For 26 years, I have taught courses on Sensors and Mechatronics at Stanford
`
`University. The “Introduction to Sensors” course is a broad overview of all
`
`
`
`5
`
`6
`
`

`

`sensing technologies, from thermometers, to inertial sensors, ultrasound devices,
`
`flow sensors, optical and IR sensors, chemical sensors, pressure sensors, and many
`
`others, and has included sensors based on changes in capacitance, resistance,
`
`piezoelectricity. This course specifically included different mechanisms for
`
`sensing heart rate, blood pressure, blood chemistry, cardiovascular blood flow and
`
`pressure drops, intraocular pressure and other physiological measurements, as well
`
`as activity monitoring (step counting, stair-counting, etc). I first taught this course
`
`at Stanford in the Spring of 1994, and I offered this course at least annually until
`
`2016, when my duties as Senior Associate Dean made this impractical.
`
`8.
`
`The “Introduction to Mechatronics” course is a review of the mechanical,
`
`electrical and computing technologies necessary to build systems with these
`
`contents, which include everything from cars and robots to cellphones and other
`
`consumer electronics devices. In this class, we routinely use IR, LEDs, and
`
`photosensors as a way of detecting proximity to objects in the space around
`
`miniature robots. We also use inertial sensors to detect movement, and a number
`
`of sensors, such as encoders to measure changes in position and trajectory. I was
`
`one of the instructors for the first offering of this course in 1995, and this course
`
`has been offered at least once each year ever since, with plans already underway
`
`for the Winter 2021 offering. The 2020 offering was just completed, and was
`
`
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`6
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`7
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`

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`highly-successful with 120 undergraduate and graduate students from many
`
`engineering and science disciplines.
`
`9.
`
`I am co-author of a textbook titled “Introduction to Mechatronic Design,”
`
`which broadly covers the topic of integration of mechanical, electronic and
`
`computer systems design into “smart products.” This textbook includes chapters
`
`on Microprocessors, Programming Languages, Software Design, Electronics,
`
`Sensors, Signal Conditioning, and Motors, as well as topics such as Project
`
`Management, Troubleshooting, and Synthesis.
`
`10. My research group has focused on the area of microsensors and
`
`microfabrication—a domain in which we design and build micromechanical
`
`sensors using silicon microfabrication technologies. The various applications for
`
`these technologies are numerous.
`
`11.
`
`I have advised 69 Ph.D. students that have completed Ph.D. degrees and
`
`many more M.S. and B.S. students in Engineering during my time at Stanford.
`
`12.
`
`I have published over 250 technical papers in refereed journals and
`
`conferences in the field of sensors, MEMS, and measurements. I have further
`
`presented numerous conference abstracts, posters, and talks in my field. I am a
`
`named inventor on 50 patents in my areas of work.
`
`13.
`
`I have previously served as an expert on a patent infringement case
`
`involving the mounting and use of pressure sensors on guidewire catheters for
`
`
`
`7
`
`8
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`

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`cardiovascular procedures that included a number of sensing aspects, such as
`
`recording static and dynamic pressure signals, and compensating for electrical and
`
`mechanical errors. I have also previously served as an expert on a patent
`
`infringement case involving the design and use of miniature inertial sensors. That
`
`case involved the design and operations of micromechanical sensors, and
`
`particularly the use of inertial sensors for detection of states of movement and rest.
`
`I have also served as an expert in a patent infringement case involving the use of
`
`sensors on athletic shoes for determining athletic performance. More recently, I
`
`served as an expert in a patent infringement case involving optical proximity
`
`sensors in smartphones. My CV is attached as Exhibit A and includes a full listing
`
`of all cases in which I have testified at deposition or trial in the preceding four
`
`years.
`
`14.
`
`I have been retained on behalf of Apple Inc. to offer technical opinions
`
`relating to U.S. Patent No. 10,588,553 (“the ’553 Patent”) and prior art references
`
`relating to its subject matter. I have reviewed the ’553 Patent, relevant excerpts of
`
`the prosecution history of the ’553 Patent. I have also reviewed the following prior
`
`art references:
`
`
`
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`
`
`
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`8
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`9
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`Prior Art Reference
`
`U.S. Patent No. 6,801,799 to Mendelson (“Mendelson ’799”)
`
`U.S. Pub. No. 2001/0056243 to Ohsaki et al. (“Ohsaki”)
`
`U.S. Pub. No. 2004/0054291 to Schulz et al. (“Schulz”)
`
`U.S. Patent No. 7,658,613 to Griffin et al. (“Griffin”)
`
`“A Wearable Reflectance Pulse Oximeter for Remote Physiological
`Monitoring,” Y. Mendelson, et al.; Proceedings of the 28th IEEE
`EMBS Annual International Conference, 2006; pp. 912-915
`(“Mendelson 2006”)
`
`15. Counsel has informed me that I should consider these materials through the
`
`lens of one of ordinary skill in the art related to the ’553 Patent at the time of the
`
`earliest possible priority date of the ’553 Patent, and I have done so during my
`
`review of these materials. The application leading to the ’553 Patent was filed on
`
`August 7, 2019 and claims the benefit of priority to a provisional application filed
`
`July 3, 2008 (“the Critical Date”). Counsel has informed me that the Critical Date
`
`represents the earliest possible priority date to which the challenged claims of ’553
`
`Patent are entitled, and I have therefore used that Critical Date in my analysis
`
`below.
`
`16.
`
`I have no financial interest in the party or in the outcome of this proceeding.
`
`I am being compensated for my work as an expert on an hourly basis. My
`
`compensation is not dependent on the outcome of these proceedings or the content
`
`of my opinions.
`
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`9
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`10
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`17.
`
`In writing this declaration, I have considered the following: my own
`
`knowledge and experience, including my work experience in the fields of
`
`mechanical engineering, computer science, biomedical engineering, and electrical
`
`engineer; my experience in teaching those subjects; and my experience in working
`
`with others involved in those fields. In addition, I have analyzed various
`
`publications and materials, in addition to other materials I cite in my declaration.
`
`18. My opinions, as explained below, are based on my education, experience,
`
`and expertise in the fields relating to the ’553 Patent. Unless otherwise stated, my
`
`testimony below refers to the knowledge of one of ordinary skill in the fields as of
`
`the Critical Date, or before. Any figures that appear within this document have
`
`been prepared with the assistance of Counsel and reflect my understanding of the
`
`’553 Patent and the prior art discussed below.
`
`II. OVERVIEW OF CONCLUSIONS FORMED
`
`19. This declaration explains the conclusions that I have formed based on my
`
`analysis. To summarize those conclusions, based upon my knowledge and
`
`experience and my review of the prior art publications listed above, I believe that:
`
` Claims 1-3, 5, 6, 9-18, 20-24, and 29 are rendered obvious by Mendelson
`
`’799 and Ohsaki.
`
` Claims 4, 18, and 24 are rendered obvious by Mendelson ’799, Ohsaki, and
`
`Schulz.
`
`
`
`10
`
`11
`
`

`

` Claim 25 is rendered obvious by Mendelson ’799, Ohsaki, and Griffin.
`
` Claims 7 and 19 are rendered obvious by Mendelson ’799, Ohsaki, and
`
`Mendelson 2006.
`
` Claims 8 and 26-28 are rendered obvious by Mendelson ’799, Ohsaki,
`
`Mendelson 2006, and Griffin.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`20.
`
`In my opinion, a person of ordinary skill in the art relating to the subject
`
`matter of the ’553 Patent as of July 3, 2008 (“POSITA” or “one of ordinary skill”)
`
`would have been someone with a working knowledge of physiological monitoring
`
`technologies. The person would have had a Bachelor of Science degree in an
`
`academic discipline emphasizing the design of electrical, computer, or software
`
`technologies, in combination with training or at least one to two years of related
`
`work experience with capture and processing of data or information, including but
`
`not limited to physiological monitoring technologies. Alternatively, the person
`
`could have also had a Master of Science degree in a relevant academic discipline
`
`with less than a year of related work experience in the same discipline.
`
`21. Based on my experiences, I have a good understanding of the capabilities of
`
`one of ordinary skill. Indeed, I have taught, participated in organizations, and
`
`worked closely with many such persons over the course of my career. Based on
`
`my knowledge, skill, and experience, I have an understanding of the capabilities of
`
`
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`11
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`12
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`one of ordinary skill. For example, from my industry experience, I am familiar
`
`with what an engineer would have known and found predictable in the art. From
`
`teaching and supervising my post-graduate students, I also have an understanding
`
`of the knowledge that a person with this academic experience possesses.
`
`Furthermore, I possess those capabilities myself.
`
`IV. LEGAL STANDARDS
`A. Terminology
`
`22.
`
`I have been informed by Counsel and understand that the best indicator of
`
`claim meaning is its usage in the context of the patent specification as understood
`
`by one of ordinary skill. I further understand that the words of the claims should
`
`be given their plain meaning unless that meaning is inconsistent with the patent
`
`specification or the patent’s history of examination before the Patent Office.
`
`Counsel has also informed me, and I understand that, the words of the claims
`
`should be interpreted as they would have been interpreted by one of ordinary skill
`
`at the time of the invention was made (not today). Because I do not know at what
`
`date the invention as claimed was made, I have used the earliest possible priority
`
`date of the ’553 Patent as the point in time for claim interpretation purposes. That
`
`date was July 3, 2008, the Critical Date.
`
`B.
`
`Legal Standards for Anticipation
`
`23.
`
`I have been informed by Counsel and understand that documents and
`
`materials that qualify as prior art can render a patent claim unpatentable as
`
`
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`12
`
`13
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`

`anticipated. I am informed by Counsel and understand that all prior art references
`
`are to be looked at from the viewpoint of a person of ordinary skill in the art.
`
`24.
`
`I am informed by Counsel and understand that a challenged claim is
`
`unpatentable as “anticipated” under 35 U.S.C. § 102 if it is determined that all the
`
`limitations of the claim are described in a single prior art reference. I am informed
`
`by Counsel and understand that, to anticipate a claim, a prior art reference must
`
`disclose, either expressly or inherently, each and every limitation of that claim and
`
`enable one of ordinary skill in the art to make and use the invention.
`
`25.
`
`I have been informed by Counsel and understand that in an inter partes
`
`review, “the petitioner shall have the burden of proving a proposition of
`
`unpatentability,” including a proposition of anticipation, “by a preponderance of
`
`the evidence.” 35 U.S.C. §316(e).
`
`C. Legal Standards for Obviousness
`
`26.
`
`I have been informed by Counsel and understand that documents and
`
`materials that qualify as prior art can render a patent claim unpatentable as
`
`obvious. I am informed by Counsel and understand that all prior art references are
`
`to be looked at from the viewpoint of a person of ordinary skill in the art at the
`
`time of the invention, and that this viewpoint prevents one from using his or her
`
`own insight or hindsight in deciding whether a claim is obvious.
`
`
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`13
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`14
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`

`

`27.
`
`I have been informed by Counsel and understand that a claim is unpatentable
`
`for obviousness under 35 U.S.C. § 103 (in the pre-AIA form of that statute that
`
`applies to the ’553 Patent) “if the differences between the subject matter sought to
`
`be patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person having ordinary skill
`
`in the art to which said subject matter pertains.” I am informed by Counsel and
`
`understand that obviousness may be based upon a combination of references. I am
`
`informed by Counsel and understand that the combination of familiar elements
`
`according to known methods is likely to be obvious when it does no more than
`
`yield predictable results. However, I am informed by Counsel and understand that
`
`a patent claim composed of several elements is not proved obvious merely by
`
`demonstrating that each of its elements was, independently, known in the prior art.
`
`28.
`
`I am informed by Counsel and understand that when a patented invention is
`
`a combination of known elements, a court must determine whether there was an
`
`apparent reason to combine the known elements in the fashion claimed by the
`
`patent at issue by considering the teachings of prior art references, the effects of
`
`demands known to people working in the field or present in the marketplace, and
`
`the background knowledge possessed by a person having ordinary skill in the art.
`
`29.
`
`I am informed by Counsel and understand that a patent claim composed of
`
`several limitations is not proved obvious merely by demonstrating that each of its
`
`
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`14
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`15
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`

`limitations was independently known in the prior art. I am informed by counsel for
`
`the Patent Owner and understand that identifying a reason those elements would be
`
`combined can be important because inventions in many instances rely upon
`
`building blocks long since uncovered, and claimed discoveries almost of necessity
`
`will be combinations of what, in some sense, is already known. I am informed by
`
`Counsel and understand that it is improper to use hindsight in an obviousness
`
`analysis, and that a patent’s claims should not be used as a “roadmap.”
`
`30.
`
`I am informed by Counsel and understand that an obviousness inquiry
`
`requires consideration of the following factors: (1) the scope and content of the
`
`prior art; (2) the differences between the claims and the prior art; (3) the level of
`
`ordinary skill in the pertinent art; and (4) any objective indicia of non-obviousness,
`
`such as commercial success, long-felt but unresolved need, failure of others,
`
`industry recognition, copying, and unexpected results. I understand that the
`
`foregoing factors are sometimes referred to as the “Graham factors.”
`
`31.
`
`I have been informed by Counsel and understand that an obviousness
`
`evaluation can be based on a combination of multiple prior art references. I
`
`understand that the prior art references themselves may provide a suggestion,
`
`motivation, or reason to combine, but that the nexus linking two or more prior art
`
`references is sometimes simple common sense. I have been informed by Counsel
`
`and understand that obviousness analysis recognizes that market demand, rather
`
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`15
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`16
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`than scientific literature, often drives innovation, and that a motivation to combine
`
`references may be supplied by the direction of the marketplace.
`
`32.
`
`I have been informed by Counsel and understand that if a technique has been
`
`used to improve one device, and a person of ordinary skill at the time of invention
`
`would have recognized that it would improve similar devices in the same way,
`
`using the technique is obvious unless its actual application is beyond his or her
`
`skill.
`
`33.
`
`I have been informed by Counsel and understand that practical and common
`
`sense considerations should guide a proper obviousness analysis, because familiar
`
`items may have obvious uses beyond their primary purposes. I have been
`
`informed by Counsel and understand that a person of ordinary skill looking to
`
`overcome a problem will often be able to fit together the teachings of multiple
`
`prior art references. I have been informed by Counsel and understand that
`
`obviousness analysis therefore takes into account the inferences and creative steps
`
`that a person of ordinary skill would have employed at the time of invention.
`
`34.
`
`I have been informed by Counsel and understand that a proper obviousness
`
`analysis focuses on what was known or obvious to a person of ordinary skill at the
`
`time of invention, not just the patentee. Accordingly, I understand that any need or
`
`problem known in the field of endeavor at the time of invention and addressed by
`
`the patent can provide a reason for combining the elements in the manner claimed.
`
`
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`16
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`17
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`35.
`
`I have been informed by Counsel and understand that a claim can be obvious
`
`in light of a single reference, without the need to combine references, if the
`
`elements of the claim that are not found explicitly or inherently in the reference
`
`can be supplied by the common sense of one of skill in the art.
`
`36.
`
`I have been informed by Counsel and understand that secondary indicia of
`
`non-obviousness may include (1) a long felt but unmet need in the prior art that
`
`was satisfied by the invention of the patent; (2) commercial success of processes
`
`covered by the patent; (3) unexpected results achieved by the invention; (4) praise
`
`of the invention by others skilled in the art; (5) taking of licenses under the patent
`
`by others; (6) deliberate copying of the invention; (7) failure of others to find a
`
`solution to the long felt need; and (8) skepticism by experts. I understand that
`
`evidence of secondary indicia of non-obviousness, if available, should be
`
`considered as part of the obviousness analysis.
`
`37.
`
`I have been informed by Counsel and understand that there must be a
`
`relationship between any such secondary considerations and the invention, and that
`
`contemporaneous and independent invention by others is a secondary consideration
`
`supporting an obviousness determination.
`
`38.
`
`In sum, my understanding is that prior art teachings are properly combined
`
`where one of ordinary skill having the understanding and knowledge reflected in
`
`the prior art and motivated by the general problem facing the inventor, would have
`
`
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`17
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`18
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`been led to make the combination of elements recited in the claims. Under this
`
`analysis, the prior art references themselves, or any need or problem known in the
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`field of endeavor at the time of the invention, can provide a reason for combining
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`the elements of multiple prior art references in the claimed manner.
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`39.
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`I have been informed by Counsel and understand that in an inter partes
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`review, “the petitioner shall have the burden of proving a proposition of
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`unpatentability,” including a proposition of obviousness, “by a preponderance of
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`the evidence.” 35 U.S.C. §316(e).
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`V. THE ’553 PATENT
`A. Technical Background
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`40. The ’553 Patent describes and claims a purported improvement to a
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`“noninvasive optical physiological sensor”: a cover with “a single protruding
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`convex surface” that is configured to be located between “at least four” detectors
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`and user tissue, and that is operable to conform user tissue to the surface when the
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`sensor is worn. APPLE-1001, 14:3-10, 36:30-41, 44:50-67 (claim 1), FIGS. 1,
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`14D. Each detector “can be implemented using one or more photodiodes,
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`phototransistors, or the like,” “can capture and measure light transmitted from [an]
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`emitter … that has been attenuated or reflected from the tissue,” and can “output a
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`detector signal … responsive to the light ….” Id., 14:3-10. Placement of a cover
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`with a protrusion over the detectors is said to offer multiple benefits; the protrusion
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`18
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`19
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`may, for example, “penetrate[] into the tissue and reduce[] the path length of the
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`light ….” Id., 14:3-10, 24:16-35, 10:61-11:13.
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`41. But the claimed sensor was not new. To the contrary, the ’553 Patent was
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`granted without full consideration to the wide body of applicable prior art. See
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`generally APPLE-1002 (no office actions issued during the prosecution of the
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`application from which the ’553 Patent issued). And, as I explain in this
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`declaration with respect to the prior art applied in this Petition, noninvasive optical
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`physiological sensors such as pulse rate detectors and pulse oximeters commonly
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`included covers by the ’553 Patent’s earliest effective filing date, and a sensor
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`including each feature of the Challenged Claims would have been obvious to one
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`of ordinary skill. APPLE-1001, 44:50-47:22.
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`42. For example, Mendelson ’799 (APPLE-1012) discloses a “sensor for use in
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`an optical measurement device” featuring a sensor housing 17 that accommodates
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`a “light source 12” and an array of twelve “discrete detectors (e.g., photodiodes).”
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`APPLE-1012, Title, Abstract, 9:22-40, 10:16-37, FIGS. 7, 8. And, similar to the
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`’553 Patent, Ohsaki (APPLE-1009) describes an optical sensor that features a
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`cover with a protruding convex surface that is placed “in intimate contact with the
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`surface of the user’s skin” when the sensor is worn. APPLE-1009, Title, Abstract,
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`¶¶[0016], [0017], FIGS. 1, 2. Ohsaki is not alone, as Inokawa (APPLE-1007,
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`APPLE-1008) and other references likewise disclose covers with protruding
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`19
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`20
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`convex surfaces for use in optical sensors. APPLE-1008, ¶¶14-15, FIGS. 2, 3.
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`And, in my opinion and as I explain below in the following analysis, one of
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`ordinary skill would have found it obvious to utilize such a cover in Mendelson’s
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`’799 sensor.
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`43. Accordingly, one of ordinary skill would have understood the Challenged
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`Claims to be unpatentable b