`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1521-628@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01521
`U.S. Patent 10,292,628
`
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION .................................................................................... 1
`
`II. MASIMO’S PIONEERING TECHNOLOGY ......................................... 4
`
`A.
`
`B.
`
`C.
`
`The ’628 Patent .............................................................................. 4
`
`Introduction To Independent Claims ............................................. 6
`
`The ’628 Patent Prosecution .......................................................... 9
`
`III. THE PETITION’S PROPOSED COMBINATIONS ............................... 9
`
`IV. CLAIM CONSTRUCTION ................................................................... 10
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART .................................... 10
`
`VI. LEGAL STANDARD ............................................................................ 11
`
`VII. GROUNDS 1A-1D DO NOT ESTABLISH OBVIOUSNESS ............. 12
`
`A.
`
`Introduction To Ground 1A .......................................................... 12
`
`1.
`
`2.
`
`3.
`
`Aizawa Uses Peripheral Detectors Around A Single
`Centrally Located LED ...................................................... 12
`
`Inokawa Uses Peripheral LEDs Around A Single
`Centrally Located Detector ................................................ 14
`
`Petitioner’s Proposed Combination Of Aizawa And
`Inokawa .............................................................................. 14
`
`B. Ground 1A Does Not Establish Obviousness .............................. 16
`
`1.
`
`A POSITA Would Not Have Been Motivated To
`Combine Inokawa’s Lens With Aizawa’s Sensor ............. 16
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`a)
`
`b)
`
`c)
`
`d)
`
`Petitioner Admits Inokawa’s Lens Directs
`Light To The Center Of The Sensor ........................ 16
`
`A POSITA Would Not Have Been Motivated
`To Direct Light Away From Aizawa’s
`Detectors And Would Have No Reasonable
`Expectation Of Success When Doing So ................ 19
`
`Dr. Kenny’s New Opinions Are Improper,
`Contradict His Declaration And Undermine
`Petitioner’s Obviousness Challenge ........................ 23
`
`Petitioner’s Obviousness Challenge Also
`Improperly Relies On References Not
`Identified As Part Of Ground 1A Without An
`Articulated Motivation To Combine Or
`Expectation Of Success ........................................... 32
`
`2.
`
`Petitioner Identifies No Credible Basis To Add A
`Second LED To Aizawa .................................................... 35
`
`C.
`
`The Remaining Challenged Dependent Claims Are
`Nonobvious Over Ground 1A ...................................................... 41
`
`D. Ground 1B Fails For The Same Reason As Ground 1A And
`For Additional Reasons ................................................................ 41
`
`1.
`
`2.
`
`Ohsaki Does Not Fix The Problems With Petitioner’s
`Proposed Combination ....................................................... 42
`
`A POSITA Would Have Understood That Ohsaki’s
`Board Would Not Prevent Slippage With Aizawa’s
`Sensor ................................................................................. 43
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`E.
`
`The Challenged Dependent Claims Are Nonobvious Over
`Ground 1B .................................................................................... 45
`
`F.
`
`Grounds 1C-1D Fail For The Same Reasons As Ground 1A ...... 45
`
`VIII. GROUNDS 2A-2B DO NOT ESTABLISH OBVIOUSNESS .............. 45
`
`A.
`
`Introduction To Ground 2A .......................................................... 45
`
`1. Mendelson-1988 Uses Detectors Around Centrally
`Located LEDs .................................................................... 46
`
`2.
`
`Petitioner’s Proposed Combination Of Mendelson-
`1988 And Inokawa ............................................................. 47
`
`B. Ground 2A Does Not Establish Obviousness .............................. 48
`
`1.
`
`2.
`
`There Would Have Been No Motivation To Combine
`And No Reasonable Expectation Of Success .................... 48
`
`Petitioner’s Proposed Ground 2A Combination Does
`Not Include The Claimed Cover ........................................ 51
`
`3. Mendelson-1988 And Inokawa Do Not Have A
`“Circular Housing” With A “Light Permeable Cover”
`(Claim 7) ............................................................................ 54
`
`4.
`
`The Petition Improperly Relies On References Not
`Identified As Part Of Ground 2A With No Analysis
`Of Any Motivation To Combine ....................................... 56
`
`C.
`
`The Challenged Dependent Claims Are Nonobvious Over
`Ground 2A .................................................................................... 59
`
`D. Ground 2B Fails For The Same Reason As Ground 2A .............. 59
`
`-iii-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`IX. CONCLUSION ....................................................................................... 59
`
`
`
`
`
`-iv-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ................................................................... 11
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ................................................................... 11
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) ....................................................... 41, 45, 59
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ..................................................................... 11
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ................................................................... 34
`
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ................................................................... 55
`
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ................................................................... 58
`
`Kennametal, Inc. v. Ingersoll Cutting Tool Co.,
`780 F.3d 1376 (Fed. Cir. 2015) ................................................................... 45
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ................................................................... 11
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ................................................................... 12
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ................................................................... 12
`
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................... 28, 29
`
`-iv-
`
`
`
`TABLE OF AUTHORITIES
`(Cont’d)
`
`Page No(s).
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ................................................... 10
`
`In re Royka,
`490 F.2d 981 (C.C.P.A. 1974) ..................................................................... 11
`
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ................................................................... 12
`
`In re Stepan Co.
`868 F.3d 1342 (Fed. Cir. 2017) ................................................................... 32
`
`Whitserve, LLC v. Computer Packages, Inc.,
`694 F.3d 10 (Fed. Cir. 2012) ....................................................................... 37
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 312 ........................................................................................... 34, 42
`
`37 C.F.R. § 42.6 ................................................................................................ 61
`
`37 C.F.R. § 42.8 ................................................................................................ 60
`
`37 C.F.R. § 42.24 .............................................................................................. 60
`
`37 C.F.R. § 42.100 ............................................................................................ 10
`
`37 C.F.R. §42.104 ............................................................................................. 42
`
`
`
`
`
`-v-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`Declaration of Jeremiah S. Helm in Support of Pro Hac Vice
`Motion
`
`Declaration of William R. Zimmerman in Support of Pro Hac
`Vice Motion
`
`Reserved
`
`Declaration of Dr. Vijay K. Madisetti
`
`Curriculum Vitae of Dr. Vijay K. Madisetti
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01520, IPR2020-01537, IPR2020-01539
`(April 22, 2021)
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01520, IPR2020-01537, IPR2020-01539
`(April 23, 2021)
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01536, IPR2020-01538 (April 24, 2021)
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01536, IPR2020-01538 (April 25, 2021)
`
`Frank H. Netter, M.D., Section VI Upper Limb, Atlas of Human
`Anatomy (2003), Third Edition (“Netter”)
`
`Declaration of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01536
`
`Webster, Design of Pulse Oximeters (1997)
`
`Reserved
`
`Exhibit List, Page 1
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`Exhibit No.
`
`Description
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Petition for Inter Partes Review IPR2020-01520
`
`Declaration of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01520
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`U.S. Pat. No. 10,258,265 (“Poeze”)
`
`Exhibit List, Page 2
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`I.
`
`INTRODUCTION
`
`Petitioner’s combinations all suffer from the same fundamental flaw.
`
`Petitioner seeks to add a convex lens taught by Inokawa to sensor configurations
`
`taught by either Aizawa or Mendeslson-1988 to improve “light collection
`
`efficiency.” But Inokawa increases light collection efficiency by using a convex
`
`lens to condense light to a centrally located detector:
`
`Emitter
`
`Detector
`
`Emitter
`
`Lens
`Inokawa Fig. 2 (color added)
`
`
`
`In contrast, both Aizawa and Mendelson-1988 have peripherally located detectors:
`
`
`
`Emitter
`
`Plate
`
`
`
`
`
`
`
`Detector
`Detector
` Aizawa Fig. 1B
`
` (color added)
`
`
`
`
`
`
`
`
`Detector
`Emitters
`Detector
`
` Mendelson-1988 Fig. 2B
` (color added)
`
`Adding Inokawa’s convex lens to Aizawa and Mendelson-1988 as proposed by
`
`Petitioner would direct light away from the detectors. That would decrease light
`
`-1-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`collection efficiency and seriously undermine the operation of Aizawa and
`
`Mendelson-1988’s sensors. A person of ordinary skill in the art (POSITA) would
`
`not be motivated to make Petitioner’s erroneous combinations:
`
`
` Ground One Combination Ground Two Combination
`
`
`
`
`
`Petitioner completely overlooks this fundamental deficiency. Nowhere does
`
`Petitioner explain why a POSITA would diminish the performance of the Aizawa
`
`and Mendelson-1988 sensors by directing light away from their detectors.
`
`Petitioner’s declarant, Dr. Kenny, confirmed at his deposition for related IPRs
`
`that Inokawa’s convex lens would indeed direct light toward the center of the
`
`underlying structure. See, e.g., Ex. 2006 202:11-204:20. Confronted with this
`
`critical flaw, Dr. Kenny resorted to contradicting his previous opinions and
`
`improperly asserting new opinions. For example, Dr. Kenny attempted to downplay
`
`the importance of light collection, identifying it as merely one consideration. Ex.
`
`2006 108:21-109:14. Dr. Kenny even argued a POSITA might want to decrease
`
`light collection. Id. But that contradicts Dr. Kenny’s declaration and the Petition’s
`
`only stated motivation to combine. Id; Ex. 1003 ¶94. Dr. Kenny also jettisoned his
`
`own illustration of the proposed combinations, claiming he had not intended to
`
`-2-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`illustrate a particular structure in any detail. Ex. 2006 51:14-52:16. Dr. Kenny
`
`instead argued the optics of a sensor are complicated and that a POSITA would
`
`arrive at a particular design through “trial and error [by] trying out different shapes,
`
`different detector positions, different spacings and so on.”1 Ex. 2006 189:11-190:13.
`
`None of Dr. Kenny’s new and improper opinions can fix the fundamental flaw
`
`in Petitioner’s combinations. Indeed, if anything, Dr. Kenny’s new arguments
`
`underscore the complexity of combining different physiological sensor designs.
`
`Such complexity alone undermines Petitioner’s obviousness arguments. In fact, Dr.
`
`Kenny testified Inokawa’s purported benefit would not be clear when used with a
`
`different configuration of emitters and detectors:
`
`I think one of ordinary skill in the art would understand
`that in Inokawa[,] the objective is to concentrate light at
`the detector, which is in the center axis of the drawing
`and that the lens is capable of providing that benefit. If
`we're going to move the lenses and the LEDs and detectors
`around and ask different questions, it’s -- it isn’t so obvious
`that Inokawa is specifically considering those scenarios.
`It’s a little more hypothetical.
`Ex. 2006 86:19-87:6. Dr. Kenny is correct. “[I]t isn’t so obvious” that Inokawa’s
`
`convex lens would improve “light collection efficiency” of the peripheral detector
`
`arrangement of Aizawa or Mendelson-1988. To the contrary, a POSITA would have
`
`
`1 Emphasis supplied unless otherwise noted.
`
`-3-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`believed that Inokawa’s convex lens would direct light away from such peripherally
`
`located detectors.
`
`Petitioner’s obviousness challenge also suffers from many additional flaws,
`
`as explained in detail below. The Board should affirm the patentability of all the
`
`challenged claims.
`
`II. MASIMO’S PIONEERING TECHNOLOGY
`
`Masimo is a global medical device technology company that develops and
`
`manufactures innovative patient monitoring technologies, medical devices, and a
`
`wide array of sensors. Inventor Joe Kiani founded Masimo in 1989 as a garage start-
`
`up that revolutionized noninvasive monitoring. Today, Masimo is publicly traded
`
`and employs over 6,300 people worldwide, with annual revenues of over $1.1
`
`billion. A host of manufacturers use Masimo’s technology in their devices,
`
`including Philips, Atom, Mindray North America, GE Medical, Spacelabs, and Zoll.
`
`A. The ’628 Patent
`
`Masimo’s U.S. Patent No. 10,292,628 (the “’628 Patent”) discloses and
`
`claims an optical physiological measurement sensor or device that uses a novel
`
`design to improve detection efficiency.
`
` Masimo’s claimed physiological
`
`measurement sensor or device uses multiple detectors, multiple emitters, and a cover
`
`with a protruding surface that together dramatically enhance the sensor’s or device’s
`
`effectiveness. For example, the protruding surface thins out the measurement site,
`
`-4-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`resulting in less light attenuation by the measured tissue. Ex. 1001 7:38-41. The
`
`protruding surface further increases the area from which attenuated light can be
`
`measured. Ex. 1001 7:41-43. The multiple detectors allow for an averaging of
`
`measurements that can reduce errors due to variations in the path of light passing
`
`through the tissue. Ex. 1001 9:7-12; see also id. 3:6-16, 4:8-18. The inventors
`
`discovered that these different components work together to provide greater noise
`
`cancellation and an order of magnitude increase in signal strength. Ex. 1001 9:7-12,
`
`20:4-20; see also id. 3:6-16, 4:8-18.
`
`The Examiner agreed during prosecution that the claimed combination of
`
`features—including multiple detectors in conjunction with a cover comprising a
`
`protruding surface—provided a patentable advance unique in the field. Ex. 1002 at
`
`282-283. Petitioner’s references do not differ significantly from the prior art the
`
`Examiner already considered and found does not teach or suggest the claimed
`
`invention. None of Petitioner’s references disclose a cover with a protruding surface
`
`positioned over multiple detectors (let alone combined with the other claimed
`
`features).
`
`-5-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`B.
`
`Introduction To Independent Claims
`
`The ’628 Patent has three independent claims: claims 1, 7, and 20.2 Each
`
`claims an optical physiological measurement sensor or device that includes, among
`
`other things, (1) a plurality of emitters, (2) at least four detectors, and (3) a cover
`
`that comprises a protruding surface arranged to cover the at least four detectors.
`
`Claim 1 reads:
`
`1. A noninvasive optical physiological sensor comprising:
`
`a plurality of emitters configured to emit light into tissue of a
`
`user;
`
`a plurality of detectors configured to detect light that has been
`
`attenuated by tissue of the user, wherein the plurality of detectors
`
`comprise at least four detectors;
`
`a housing configured to house at least the plurality of detectors;
`
`and
`
`a light permeable cover configured to be located between tissue
`
`of the user and the plurality of detectors when the noninvasive optical
`
`physiological sensor is worn by the user, wherein the cover comprises
`
`
`2 Appendix A reproduces the challenged claims with bracketed labels for
`
`convenience.
`
`-6-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`an outwardly protruding convex surface configured to cause tissue of
`
`the user to conform to at least a portion of the outwardly protruding
`
`convex surface when the noninvasive optical physiological sensor is
`
`worn by the user and during operation of the noninvasive optical
`
`physiological sensor, and wherein the plurality of detectors are
`
`configured to receive light passed through the outwardly protruding
`
`convex surface after attenuation by tissue of the user.
`
`Claim 7 reads:
`
`7. An optical physiological measurement device comprising:
`
`a plurality of emitters configured to emit light into tissue of a
`
`user;
`
`a circular housing including a planar surface;
`
`at least four detectors arranged on the planar surface of the
`
`circular housing, wherein the four detectors are arranged in a grid
`
`pattern; and
`
`a light permeable cover of the circular housing, and wherein at
`
`least a portion of the cover comprises a protruding surface that is
`
`arranged to allow passage of light to the at least four detectors after
`
`attenuation by tissue of the user.
`
`Claim 20 reads:
`
`-7-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`20. A noninvasive optical physiological sensor comprising:
`
`a plurality of emitters configured to emit light into tissue of a
`
`user;
`
`a plurality of detectors configured to detect light that has been
`
`attenuated by tissue of the user, wherein the plurality of detectors
`
`comprise at least four detectors;
`
`a housing configured to house at least the plurality of detectors;
`
`and
`
`a light permeable cover configured to be located between tissue
`
`of the user and the plurality of detectors when the noninvasive optical
`
`physiological sensor is worn by the user, wherein the cover comprises
`
`an outwardly protruding surface configured to cause tissue of the user
`
`to conform to at least a portion of the outwardly protruding surface
`
`when the noninvasive optical physiological sensor is worn by the user
`
`and during operation of the noninvasive optical physiological sensor,
`
`and wherein the outwardly protruding surface is further configured to
`
`allow passage of light to the plurality of detectors after attenuation by
`
`tissue of the user.
`
`-8-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`C. The ’628 Patent Prosecution
`
`During prosecution, the Examiner agreed that the claimed combination of
`
`features—including multiple detectors in conjunction with a cover comprising a
`
`protruding surface—provided a patentable advance unique in the field. Ex. 1002 at
`
`255-259. The Examiner understood that the prior art included physiological sensors
`
`with multiple emitters and detectors. Id. at 258-259. The Examiner also understood
`
`that the prior art included physiological sensors with a single detector under a
`
`protrusion. Id. However, the Examiner concluded that the prior art did not suggest
`
`creating a physiological sensor using multiple detectors positioned under a cover
`
`with a protruding surface in combination with the other claimed elements. Id. The
`
`Examiner recognized the technological advance of the claimed invention and
`
`correctly allowed the claims.
`
`III. THE PETITION’S PROPOSED COMBINATIONS
`
`Petitioner presents six grounds. Grounds 1A-1D (the “Aizawa grounds”)
`
`combine at least Aizawa (Ex. 1006) and Inokawa (Ex. 1007, translation at Ex. 1008).
`
`Pet. 1-2. Grounds 2A-2B (the “Mendelson grounds”) combine at least Mendelson-
`
`1988 (Ex. 1015) and the same Inokawa reference. Pet. 2.
`
`Aizawa and Mendelson-1988 share the same general arrangement of
`
`peripheral detectors positioned around a central light source. Ex. 1006 Figs. 1A-1B;
`
`Ex. 1015 Figs. 2A-2B. In contrast, Inokawa arranges two LEDs on the periphery of
`
`-9-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`its sensor and one detector in the center. Ex. 1008 Fig. 2. Petitioner nevertheless
`
`asserts a POSITA would have incorporated Inokawa’s lens into Aizawa and
`
`Mendelson-1988’s sensor, which both have periphery-located detectors, to “increase
`
`the light-gathering ability.” Pet. 15, 64.
`
`IV. CLAIM CONSTRUCTION
`
`Petitioner identified no terms for construction. The Board should give the
`
`claim terms their ordinary and customary meaning, consistent with the specification,
`
`as a POSITA understands them. 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415
`
`F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner asserts that a POSITA “would have been a person 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.”
`
`Pet. 3-4. Alternatively, Petitioner asserts a POSITA could have “a Master of Science
`
`degree in a relevant academic discipline with less than a year of related work
`
`experience in the same discipline.” Id. 4.
`
`-10-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`Masimo notes that Petitioner’s asserted level of skill (1) requires no
`
`coursework, training or experience with optics or optical physiological monitors; (2)
`
`requires no coursework, training or experience in physiology; and (3) focuses on
`
`data processing and not sensor design. Id. 3-4. For this proceeding, Masimo
`
`nonetheless applies Petitioner’s asserted level of skill. Ex. 2004 ¶¶36-39.
`
`VI. LEGAL STANDARD
`
`A petition based on “obviousness requires a suggestion of all limitations in a
`
`claim.” CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
`
`(citing In re Royka, 490 F.2d 981, 985 (C.C.P.A. 1974)). A patent claim is not
`
`obvious unless “a skilled artisan would have been motivated to combine the
`
`teachings of the prior art references to achieve the claimed invention, and that the
`
`skilled artisan would have had a reasonable expectation of success in doing so.”
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed.
`
`Cir. 2012). To prevail on any obviousness ground, a petitioner may not simply
`
`identify individual claim components—it must show why a “skilled artisan, with no
`
`knowledge of the claimed invention, would have selected these components for
`
`combination in the manner claimed.” In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir.
`
`2000). The petitioner must support even simple modifications with some motivation
`
`to make the change. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
`
`-11-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`An appropriate obviousness inquiry cannot involve even a “hint of hindsight.”
`
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir. 2011).
`
`A petitioner may not “simply retrace[] the path of the inventor with hindsight,
`
`discount[] the number and complexity of the alternatives, and conclude[] that the
`
`invention ... was obvious.” Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520
`
`F.3d 1358, 1364 (Fed. Cir. 2008). Likewise, “[c]are must be taken to avoid hindsight
`
`reconstruction by using the patent in suit as a guide through the maze of prior art
`
`references, combining the right references in the right way so as to achieve the result
`
`of the claims in suit.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (internal
`
`quotations omitted).
`
`VII. GROUNDS 1A-1D DO NOT ESTABLISH OBVIOUSNESS
`
`A.
`
`Introduction To Ground 1A
`
`Ground 1A combines two references: Aizawa and Inokawa.
`
`1.
`
`Aizawa Uses Peripheral Detectors Around A Single Centrally
`Located LED
`
`Aizawa discloses a sensor with four periphery-located photodetectors (22)
`
`around a single centrally located LED (21). Ex. 1006 Abstract, Fig. 1B.
`
`-12-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`DETECTOR
`
`LED
`
`DETECTOR
`
`Aizawa Fig. 1B (cross-sectional view, color added)
`
`
`
`Aizawa’s Features
` Green: central emitter
`(21)
` Red: peripheral
`detectors (22)
`
`
`
`
`
`Aizawa Fig. 1A (top-down view, color added)
`
`Aizawa uses this specific configuration of multiple detectors arrayed around a single
`
`LED to ensure at least one detector is near the measurement site, improving
`
`measurement consistency. Id. ¶[0027]. Aizawa detects signals on the inner side of
`
`the wrist and explains that as long as “one of the photodetectors 22 is located near
`
`the artery 11,” it is “possible to detect a pulse wave accurately.” Id. ¶¶[0026]-[0027],
`
`Fig. 2. Aizawa includes a flat transparent plate (6) that improves adhesion between
`
`-13-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`the detector and the wrist, which purportedly improves the detection efficiency. Id.
`
`[0030]. Aizawa’s sensor does not use a lens. Ex. 2004 ¶¶41-42.
`
`2.
`
`Inokawa Uses Peripheral LEDs Around A Single Centrally
`Located Detector
`
`In contrast to Aizawa, Inokawa uses a convex lens (27) to focus light from
`
`LEDs (21, 23) on the periphery of a sensor to a single detector (25) in the center.
`
`Ex. 1008 ¶[0058], Fig. 2.
`
`Inokawa’s Features
` Green: peripheral emitters
`(21, 23)
` Red: central detector (25)
` Blue: convex lens (27)
` Arrows showing direction of
`light in original, highlighted
`in yellow added
`
`
`
`
`
`Inokawa Fig. 2 (color added)
`
`As illustrated above, light reflects off the body and passes through the lens, which
`
`directs incoming light to the centrally located detector. Ex. 1008 ¶[0058]. Thus,
`
`Inokawa’s convex lens focuses incoming light away from the periphery and towards
`
`the sensor’s center, where the detector is located. Ex. 2004 ¶¶43-44.
`
`3.
`
`Petitioner’s Proposed Combination Of Aizawa And Inokawa
`
`Claim 1 of the ’628 Patent requires “a light permeable cover configured to be
`
`located between tissue of the user and the plurality of detectors when the noninvasive
`
`-14-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`optical physiological sensor is worn by the user, wherein the cover comprises an
`
`outwardly protruding convex surface.” Ex. 1001 Claim 1. Claim 7 requires “a light
`
`permeable cover of the circular housing, and wherein at least a portion of the cover
`
`comprises a protruding surface that is arranged to allow passage of light to the at
`
`least four detectors.” Id. Claim 7. Claim 20 requires “a light permeable cover
`
`configured to be located between tissue of the user and the plurality of detectors
`
`when the noninvasive optical physiological sensor is worn by the user, wherein the
`
`cover comprises an outwardly protruding surface.” Id. Claim 20.
`
`Petitioner admits Aizawa does not disclose a cover with a protruding surface
`
`as the claims require. Pet. 14. Petitioner thus argues a POSITA would have replaced
`
`Aizawa’s flat plate for adhesion with Inokawa’s convex lens “to enhance light
`
`collection efficiency, specifically by modifying the light permeable cover of Aizawa
`
`to include a convex lens.” Id. Petitioner argues: “[t]he lens of Inokawa provides
`
`precisely such a benefit to Aizawa’s device by refracting/concentrating incoming
`
`light signals reflected by the blood.” Pet. 15. Thus, Petitioner’s motivation for this
`
`alteration is increasing the amount of light reaching the detectors. Petitioner
`
`illustrates its proposed combination as follows:
`
`-15-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`
`Petitioner’s Proposed Combination (Pet. 16)
`
`
`
`But neither Petitioner nor Dr. Kenny explains why a POSITA would have believed
`
`that Inokawa’s convex lens, which concentrates light to a central detector, would
`
`enhance light collection in Aizawa’s sensor (and the illustrated combination) with
`
`peripheral detectors. Id. 15-16 (citing Ex. 1003 ¶¶93-94); Ex. 2004 ¶¶45-49.
`
`B. Ground 1A Does Not Establish Obviousness
`1.
`
`A POSITA Would Not Have Been Motivated To Combine
`Inokawa’s Lens With Aizawa’s Sensor
`a)
`
`Petitioner Admits Inokawa’s Lens Directs Light To
`The Center Of The Sensor
`
`Petitioner and Dr. Kenny both admit a convex cover condenses light towards
`
`the center of the sensor and away from the periphery. Petitioner admits in its Petition
`
`in IPR2020-01520 (Ex. 2019) filed against related patent U.S. Pat. No. 10,258,265
`
`(Ex. 2025) that “the lens/protrusion of Inokawa ... serves a condensing function and
`
`thus, as with any other lens, refracts light passing through it.” Ex. 2019 at 44; see
`
`also Ex. 2025. Petitioner illustrates this condensing function using “the drawing
`
`below which compares the length of non-refracted light ... bouncing off an artery
`
`with that of refracted light.” Id. at 44-45. Petitioner’s figure (below) illustrates a
`
`-16-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`POSITA’s understanding that Inokawa’s convex lens, as implemented in Aizawa’s
`
`sensor, would direct light toward the center of the sensor. Id.
`
`
`
`Petitioner’s Illustration of Inokawa’s Light-Redirection (Ex. 2019 at 45)
`
`Dr. Kenny similarly included the above illustration in his declaration in IPR2020-
`
`01520 (Ex. 2020) and explained that, when using a protruding surface such as
`
`Inokawa’s lens, “the incoming light is ‘condensed’ toward the center.” Ex. 2020 at
`
`69-70; Ex. 2004 ¶¶50-52. Dr. Kenny confirmed at his deposition for IPR2020-01520
`
`that the protruding surface would result in “more light in the center than at the outer
`
`edge in this example.” Ex. 2006 204:1-13. Dr. Kenny agreed “that’s because light’s
`
`being directed towards the center and away from the edge….” Ex. 2006 204:14-
`
`20.
`
`Petitioner’s and Dr. Kenny’s admissions are consistent with Inokawa’s
`
`disclosure. Ex. 2004 ¶53. As shown in Figure 2 (below), Inokawa illustrates that
`
`the protruding surface condenses light towards the central detector 25. Ex. 1008
`
`¶[0058], Fig. 2. The protruding surface in Inokawa works with the particular
`
`-17-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`configuration of emitters and detectors: Inokawa increases light collection by
`
`increasing the amount of light that reaches the centrally located detector. Id.; Ex.
`
`2004 ¶54.
`
`Inokaw