UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`MASIMO CORPORATION,
`Patent Owners
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`Case IPR2020-01521
`Patent 10,292,628
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`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE TO PETITION
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`MASIMO CORPORATION,
`Patent Owners
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`Case IPR2020-01521
`Patent 10,292,628
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`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE TO PETITION
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`Case No. IPR2020-01521
`Attorney Docket: 50095-0008IP1
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II. GROUNDS 1A-1D RENDER OBVIOUS THE CHALLENGED CLAIMS . 2
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`A.
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`Inokawa’s lens enhances the light-gathering ability of Aizawa ........... 2
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`1. Masimo ignores the well-known principle of reversibility ........ 4
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`2. Masimo ignores the behavior of scattered light in a reflectance-
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`type pulse sensor ......................................................................... 8
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`3.
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`A lens’s ability to direct light “toward the center” supports
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`Petitioner’s position .................................................................. 19
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`B. A POSITA would have been motivated to add a second LED to
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`Aizawa ................................................................................................. 21
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`A. A POSITA would have been motivated to modify Aizawa in view of
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`Ohsaki to include a convex protrusion ................................................ 24
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`III. GROUNDS 2A-2B RENDER OBVIOUS THE CHALLENGED CLAIMS
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`.......................................................................................................................26
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`A. A POSITA would have been motivated to modify Mendelson-1988
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`with Inokawa to add a lens .................................................................. 27
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`B. Mendelson-1988 in view of Inokawa includes the claimed cover ...... 27
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`C. Mendelson-1988 in view of Inokawa renders obvious a “circular
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`housing” ............................................................................................... 30
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`D. Nishikawa is a supporting reference ................................................... 31
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`IV. CONCLUSION .............................................................................................. 32
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`LIST OF EXHIBITS
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`Description
`Exhibit No.
`APPLE-1001 U.S. Patent No. 10,292,628 to Poeze, et al. (“the ’628 patent”)
`APPLE-1002 Excerpts from the Prosecution History of the ’628 Patent (“the
`Prosecution History”)
`APPLE-1003 Declaration of Dr. Thomas W. Kenny
`APPLE-1004 Curriculum Vitae of Dr. Thomas W. Kenny
`APPLE-1005 Masimo Corporation, et al. v. Apple Inc., Complaint, Civil Action
`No. 8:20-cv-00048 (C.D. Cal.)
`APPLE-1006 U.S. Pub. No. 2002/0188210 (“Aizawa”)
`APPLE-1007
`JP 2006-296564 (“Inokawa”)
`APPLE-1008 Certified English Translation of Inokawa and Translator’s
`Declaration
`APPLE-1009 U.S. Pat. No. 7,088,040 (“Ducharme”)
`APPLE-1010 U.S. Pat. No. 8,177,720 (“Nanba”)
`APPLE-1011 U.S. Pat. No. 6,669,632 (“Nanba-632”)
`APPLE-1012 RESERVED
`APPLE-1013 RESERVED
`APPLE-1014 U.S. Pub. No. 2001/0056243 (“Ohsaki”)
`APPLE-1015 Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic Institute,
`Biomedical Engineering Program, Worcester, MA 01609;
`Association for the Advancement of Medical Instrumentation,
`vol. 22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`“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”)
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`APPLE-1016
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`APPLE-1017 RESERVED
`APPLE-1018
`“Acrylic: Strong, stiff, clear plastic available in a variety of
`brilliant colors,” available at
`https://www.curbellplastics.com/Research-
`Solutions/Materials/Acrylic
`APPLE-1019 U.S. Pat. No. 7,031,728 (“Beyer”)
`APPLE-1020 U.S. Pat. No. 7,092,735 (“Osann, Jr.”)
`APPLE-1021 U.S. Pat. No. 6,415,166 (“Van Hoy”)
`APPLE-1022 QuickSpecs; HP iPAQ Pocket PC h4150 Series
`APPLE-1023 U.S. Pat. App. Pub. No. 2007/0145255 (“Nishikawa”)
`APPLE-1024
`“Measurement Site and Photodetector Size Considerations in
`Optimizing Power Consumption of a Wearable Reflectance Pulse
`Oximeter,” Y. Mendelson, et al.; Proceedings of the 25th IEEE
`EMBS Annual International Conference, 2003; pp. 3016-3019
`(“Mendelson-2003”)
`APPLE-1025 U.S. Pat. No. 6,801,799 (“Mendelson-’799”)
`APPLE-1026 Declaration of Jacob Munford
`APPLE-1027 U.S. Pub. No. 2007/0093786 (“Goldsmith”)
`APPLE-1028 U.S. Pub. No. 2004/0138568 (“Lo”)
`APPLE-1029 Wikipedia: The Free Encyclopedia, “Universal asynchronous
`receiver-transmitter” at
`https://en.wikipedia.org/wiki/Universal_asynchronous_receiver-
`transmitter, last accessed 08/27/2020
`APPLE-1030 RESERVED
`APPLE-1031
`Scheduling Order, Masimo v. Apple et al., Case 8:20-cv-00048,
`Paper 37 (April 17, 2020)
`Stipulation by Apple
`APPLE-1032
`APPLE-1033 Telephonic Status Conference, Masimo v. Apple et al., Case 8:20-
`cv-00048, Paper 78 (July 13, 2020)
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`APPLE-1034
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`APPLE-1035
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`APPLE-1044
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`APPLE-1045
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`APPLE-1046
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`Case No. IPR2020-01521
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`Joseph Guzman, “Fauci says second wave of coronavirus is
`‘inevitable’”, TheHill.com (Apr. 29, 2020), available at:
`https://thehill.com/changing-america/resilience/natural-
`disasters/495211-fauci-says-second-wave-of-coronavirus-is
`“Tracking the coronavirus in Los Angeles County,”
`LATimes.com (Aug. 20, 2020), available at
`https://www.latimes.com/projects/california-coronavirus-cases-
`tracking-outbreak/los-angeles-county/
`APPLE-1036 Order Granting Motion to Stay in Masimo Corporation et al. v.
`Apple Inc., Civil Action No. 8:20-cv-00048-JVS-JDE, October
`13, 2020
`APPLE-1037 RESERVED
`APPLE-1038
`Second Declaration of Jacob Robert Munford
`APPLE-1039 Declaration of Gordon MacPherson: Mendelson-2006
`APPLE-1040 Declaration of Gordon MacPherson: Mendelson-2003
`APPLE-1041 Deposition Transcript of Dr. Vijay Madisetti in IPR2020-01520,
`IPR2020-01537, IPR2020-01539, Day 1 (August 1, 2021)
`APPLE-1042 Deposition Transcript of Dr. Vijay Madisetti in IPR2020-01520,
`IPR2020-01537, IPR2020-01539, Day 2 (August 2, 2021)
`APPLE-1043 Deposition Transcript of Dr. Vijay Madisetti in IPR2020-01536,
`IPR2020-01538 (August 3, 2021)
`“Refractive Indices of Human Skin Tissues at Eight Wavelengths
`and Estimated Dispersion Relations between 300 and 1600 nm,”
`H. Ding, et al.; Phys. Med. Biol. 51 (2006); pp. 1479-1489
`“Analysis of the Dispersion of Optical Plastic Materials,” S.
`Kasarova, et al.; Optical Materials 29 (2007); pp. 1481-1490
`“Noninvasive Pulse Oximetry Utilizing Skin Reflectance
`Photoplethysmography,” Y. Mendelson, et al.; IEEE Trans-
`actions on Biomedical Engineering, Vol. 35, No. 10, October
`1988; pp. 798-805 (“Mendelson-IEEE-1988”)
`Second Declaration of Dr. Thomas W. Kenny
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`APPLE-1047
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`APPLE-1048 Declaration of Dr. Thomas W. Kenny from IPR2020-01539
`APPLE-1049 Eugene Hecht, Optics (4th Ed. 2002)
`APPLE-1050 Excerpt from Merriam-Webster Dictionary
`APPLE-1051 Third Declaration of Jacob Robert Munford
`APPLE-1052 Eugene Hecht, Optics (2nd Ed. 1990)
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`I.
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`INTRODUCTION
`Apple Inc. (“Petitioner”) submits this Reply to Patent Owner’s Response
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`(“POR”) to the Petition for Inter Partes Review (“IPR”) of U.S. Patent No.
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`10,292,628 (“the ’628 patent”) filed by Masimo Corporation (“Patent Owner” or
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`“Masimo”).
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`Patent Owner and their expert Dr. Madisetti—who acknowledges his lack of
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`knowledge in the most fundamental concepts of optics applicable to an “optical
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`physiological sensor”—criticize Petitioner’s reliance on Inokawa by pursuing a
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`technically flawed interpretation of Inokawa’s lens that violates basic principles of
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`optics and sensor design.1 APPLE-1001, Claim 1; APPLE-1041, 89:12-19.
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`Unable to provide rational support for their theories, Masimo resorts to
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`mischaracterizing cherry-picked testimony from Petitioner’s expert in an attempt to
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`obfuscate Inokawa’s plain teaching that, for pulse detectors, a “lens makes it
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`possible to increase the light-gathering ability of the LED.” APPLE-1008, [0015].
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`In addition, as detailed below, Masimo misunderstands the teachings of Ohsaki and
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`Petitioner’s reliance on the same for providing a second and independent reason
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`for adding a protrusion to Aizawa and Mendelson-1988. Regarding the addition of
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`a “second LED” to Aizawa based on the teachings of Inokawa, Masimo ignores
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` All emphasis added unless otherwise noted.
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`well-established legal principles in disregarding the merits of the combination
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`advanced in the Petition.
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`In its Institution Decision, the Board found that Petitioner established a
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`reasonable likelihood that the Challenged Claims of the ’628 patent are
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`unpatentable. As explained herein, POR arguments fail to rebut the positions
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`advanced in the Petition. See APPLE-1047, ¶¶1-64; APPLE-1051. Accordingly,
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`the Board should echo the reasoning and holding from its Institution Decision in its
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`Final Written Decision, and find the Challenged Claims unpatentable.
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`II. GROUNDS 1A-1D RENDER OBVIOUS THE CHALLENGED
`CLAIMS
`As shown in the Petition and further clarified below in response to Masimo’s
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`arguments, claims 1-15, 17, 20-26, and 28 are rendered obvious by the
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`combination of Aizawa and Inokawa (Ground 1A). For additional reasons as
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`explained in the Petition and below, those same claims are further rendered
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`obvious by the combination of Aizawa, Inokawa, and Ohsaki (Ground 1B).
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`Masimo has not provided additional rebuttals to Grounds 1C-1D directed to claims
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`18, 19, 29, and 30. POR, 45.
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`A.
`Inokawa’s lens enhances the light-gathering ability of Aizawa
`Inokawa generally discloses a “lens [that] makes it possible to increase the
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`light-gathering ability” of a reflectance-type pulse sensor, APPLE-1008, [0015],
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`[0058], FIG. 2, and, based on this disclosure, a POSITA would have been
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`motivated to incorporate “an Inokawa-like lens into the cover of Aizawa to
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`increase the light collection efficiency....” Petition, 14-16; APPLE-1003, ¶¶91-96.
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`Yet Masimo contends that Inokawa’s lens is somehow designed specifically to
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`direct all light “to the center of the sensor” and that, as a result, it would “direct
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`light away from the periphery-located detectors” as in Aizawa, thereby
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`discouraging the above-noted motivation to combine. POR, 16, 20; see also
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`APPLE-1041, 40:4-11 (“...as I describe in my Declaration...if you have a convex
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`surface...all light reflected or otherwise would be condensed or directed towards
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`the center.”).
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`Masimo’s misinformed understanding of Inokawa’s lens—not to mention
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`lenses in general—is demonstrated by their description of Inokawa’s lens 27 as
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`“focus[ing] light from LEDs...to a single detector (25) in the center” and
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`“direct[ing] incoming light to the centrally located detector.” POR, 14; see also
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`APPLE-1042, 170:12-20 (“To be precise, my opinion is that...Inokawa’s convex
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`lens 27...would redirect light from the...measurement site towards the center.”).
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`A correct understanding of Inokawa’s lens as well as of reflectance-type
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`pulse sensors in general (like those disclosed by Aizawa, Inokawa, and Mendelson-
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`1988) readily exposes Masimo’s flawed rationale. Indeed, a POSITA would
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`understand that Inokawa’s lens generally improves “light concentration at pretty
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`much all of the locations under the curvature of the lens,” as opposed to only at a
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`single point at the center as asserted by Masimo. Ex. 2006, 164:8-16; see also
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`APPLE-1010, FIG. 1B, 8:45-50; APPLE-1011, FIG. 2, 3:35-41; APPLE-1047,
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`¶¶3-5, 19-23.
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`1. Masimo ignores the well-known principle of reversibility
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`The well-known optical principle of reversibility, which is related to the
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`even more fundamental Fermat’s principle, quickly dispels Masimo’s claim that
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`reversing the LED/detector configuration of Inokawa by placing the detectors
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`around centrally located LEDs would cause Inokawa’s lens to send less light to the
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`detectors, thereby rendering Inokawa’s lens ineffective when applied to Aizawa.
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`APPLE-1052, 87-92; APPLE-1049, 106-111; APPLE-1047, ¶¶31-39.
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`Based on the principle of reversibility, “a ray going from P to S will trace
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`the same route as one from S to P.” APPLE-1052, 92; APPLE-1049, 110. This is
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`because, as illustrated below using Snell’s law, the refracting property of light does
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`not depend on the direction of travel:
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`APPLE-1052, 84; APPLE-1049, 101; APPLE-1043, 80:20-82:20; APPLE-1047,
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`¶32.
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`To illustrate the relevance of this principle, with reference to Masimo’s
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`annotated version of Inokawa FIG. 2 below, two example ray paths from the LEDs
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`(green) to the detector (red) can be seen:
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`POR, 14, 18, 21; APPLE-1047, ¶33.
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`By flipping the LED/detector configuration as in Aizawa and applying the
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`principle of reversibility (while keeping other factors the same for sake of clarity),
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`it is readily observed that the two example ray paths shown above would merely
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`reverse their directions when traveling through the lens, such that any
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`condensing/directing/focusing benefit achieved by Inokawa’s lens (blue) under the
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`original configuration would similarly be achieved under the reversed
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`configuration:
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`APPLE-1047, ¶34.
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`When confronted with this basic principle of reversibility during deposition,
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`Dr. Madisetti refused to acknowledge it, even going so far as to express ignorance
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`of “Fermat’s principle, whatever that is.” APPLE-1041, 89:12-19. Yet Fermat’s
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`principle, which states that a path taken by a light ray between two points is one
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`that can be traveled in the least time, is one of the most fundamental concepts in
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`optics/physics and plainly explains the principle of reversibility. APPLE-1052, 87-
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`92; APPLE-1049, 106-111; APPLE-1047, ¶¶31, 36-37. Dr. Madisetti further tried
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`to brush way the applicability of this principle as being a “new theory.” Id., 84:2-
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`85:7.
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`But far from being a new theory, this core concept forms the basis of all
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`Aizawa-based combinations. See APPLE-1003, ¶54 (explaining that Aizawa
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`would operate in the same manner even with “a centrally located detector
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`[surrounded] by a plurality of emitters.”); APPLE-1048, ¶79 (“Indeed, Aizawa
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`itself recognizes this reversibility, stating that while the configurations depicted
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`include a central emitter surrounded by detectors, the ‘same effect can be obtained
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`when…a plurality of light emitting diodes 21 are disposed around the
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`photodetector 22.’”); APPLE-1047, ¶¶35-37.
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`Indeed, the company behind Inokawa (i.e., Denso Corporation) expressly
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`recognized in other publications that adding a lens can help improve light
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`collection efficiency in pulse sensor configurations where the detector is not
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`positioned at the center:
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`APPLE-1010, FIG. 1B (left, annotated); APPLE-1011, FIG. 2 (right, annotated);
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`APPLE-1047, ¶38 (citing APPLE-1010, 8:45-50; APPLE-1011, 3:35-41).
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`In short, based at least on the principle of reversibility, a POSITA would
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`have understood that both configurations of LEDs and detectors—i.e., with the
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`LED at the center as in Aizawa or with the detector at the center as in Inokawa—
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`would similarly benefit from the enhanced light-gathering ability of an Inokawa-
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`like lens. Petition, 15, 45, 64; APPLE-1047, ¶39.
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`2. Masimo ignores the behavior of scattered light in a reflectance-
`type pulse sensor
`Because Inokawa is a reflectance-type pulse detector that receives diffuse,
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`backscattered light from the measurement site, its lens cannot focus all incoming
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`light at a single point. APPLE-1047, ¶6; Ex. 2006, 163:12-164:2 (“A lens in
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`general, when placed in the view of a diffuse optical source, doesn’t produce a
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`single focal point.”). Indeed, as Dr. Kenny explained, “light entering and returning
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`from the tissue will follow many different random paths,” and there are “variations
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`in the path associated with the randomness of the scattering.” Ex. 2020, ¶128.
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`Reflectance-type sensors, as in Aizawa, Inokawa, and Mendelson-1988, work in
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`this manner by detecting light that has been “partially reflected, transmitted,
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`absorbed, and scattered by the skin and other tissues and the blood before it
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`reaches the detector.” Ex. 2012, 86. In other words, as a POSITA would have
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`understood, light that backscatters from the measurement site after diffusing
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`through tissue reaches the active detection area from various random directions and
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`angles. APPLE-1047, ¶¶6-9; APPLE-1046, 803 (“The incident light emitted from
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`the LED’s diffuses in the skin in all directions. This is evident from the circular
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`pattern of backscattered light surrounding the LED’s”); Ex. 2012, 90 (“In a
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`reflectance oximeter, the incident light emitted from the LEDs diffuses through the
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`skin and the back scattered light forms a circular pattern around the LEDs”), 52
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`(“Light scattering causes the deviation of a light beam from its initial direction.”).
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`As illustrated by the green arrows below, light emitted from Inokawa’s
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`LEDs 21, 23 is backscattered from the measurement site before it can go through
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`lens 27:
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`APPLE-1008, FIG. 2 (modified/annotated); APPLE-1047, ¶7. Such backscattered
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`light cannot all be focused by Inokawa’s lens at a singular, central location (i.e.,
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`detector 25). APPLE-1047, ¶8.
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`
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`Basic laws of refraction, namely Snell’s law, dictate this behavior of light.
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`APPLE-1052, 84 (“This is the very important law of refraction, the physical
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`consequences of which have been studied…for over eighteen hundred years.”);
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`APPLE-1049, 101; Ex. 2012, 52, 86, 90; APPLE-1047, ¶¶9-10. Even Dr.
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`Madisetti agrees that Snell’s law should apply. See APPLE-1043, 80:20-82:20.
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`Referring to Masimo’s annotated version of Inokawa FIG. 2, which has been
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`further modified below to show additional rays of light emitted from LED 21, it is
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`clearly seen how some of the reflected/scattered light from the measurement site
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`(shown in red) does not reach the centrally located detector 25 of Inokawa:
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`POR, 18 (showing APPLE-1008, FIG. 2); APPLE-1047, ¶11. A similar drawing is
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`shown below for additional light rays emitted from LED 23:
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`POR, 18; APPLE-1047, ¶12.
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`For these and countless other rays that are not shown, there is simply no way
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`for Inokawa’s lens 27 to focus all light at the center of the sensor device. APPLE-
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`1047, ¶13. Indeed, the type of refraction that would require all scattered light to
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`somehow bend back toward and focus at the centrally located detector 25 is
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`physically impossible since all rays must follow Snell’s law:
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`APPLE-1052, 84; APPLE-1049, 101; APPLE-1043, 80:20-82:20; APPLE-1047,
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`¶10. For example, referring to the region highlighted in purple below where
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`various rays emitted from the LEDs are shown, only the black ray will refract
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`toward the central detector according to Snell’s law. The red ray could not do so
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`without violating the fundamental laws of physics.
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`APPLE-1047, ¶14.
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`Further referring to Dr. Kenny’s illustrative example below, it is clearly seen
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`how Snell’s law determines the direction of the backscattered ray within the lens,
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`providing a stark contrast to Masimo’s assertions that all such rays must be
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`redirected toward a central detector:
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`APPLE-1047, ¶¶15-16.
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`This basic and commonsensical understanding of Inokawa’s lens stands in
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`stark contrast to the position taken by Dr. Madisetti, who repeatedly and
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`incontrovertibly stated during deposition that Inokawa’s lens redirects, condenses,
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`and focus all light from the measurement site at the center. See APPLE-1042,
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`166:12-182:3 (“My testimony...to avoid any doubt, is that a POSA viewing the
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`teachings of Inokawa Figure 2 would understand that the convex lens 27 of Figure
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`2 would redirect, condense, and focus light toward the center from the
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`measurement site.”); APPLE-1041, 40:4-11 (“...as I describe in my Declaration...if
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`you have a convex surface...all light reflected or otherwise would be condensed or
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`directed towards the center.”). Simple ray tracing based on Snell’s law, as seen
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`above, handily debunks this theory. APPLE-1047, ¶17.
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`Indeed, far from focusing light to the center as Masimo contends, Inokawa’s
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`lens provides at best a slight refracting effect, such that light rays that otherwise
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`would have missed the detection area are instead directed toward that area as they
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`pass through the interface provided by the lens. APPLE-1047, ¶18. This is
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`especially the case in configurations like Aizawa’s where light detectors are
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`arranged symmetrically about a central light source, so as to enable backscattered
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`light to be detected within a circular active detection area surrounding that source.
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`Ex. 2012, 86, 90. The slight refracting effect is further confirmed by the similar
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`14
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`Case No. IPR2020-01521
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`indices of refraction between human tissue and a typical lens material (e.g.,
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`acrylic). APPLE-1047, ¶18 (citing APPLE-1044, 1486; APPLE-1045, 1484).
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`As Dr. Kenny clarified during his deposition, “given the arrangement of the
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`corpuscles as the reflecting objects in the space all around underneath [Inokawa’s
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`lens]...there would be some improvement in the light concentration at pretty much
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`all of the locations under the curvature of the lens.” Ex. 2006, 164:8-16.
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`Moreover, due to its protruded shape, Inokawa’s lens “provides an opportunity to
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`capture some light that would otherwise not be captured.” Id., 204:21-205:12. In
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`short, Inokawa’s lens improves the light-gathering ability of Aizawa’s sensor by
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`allowing a larger fraction of the backscattered light to reach the areas covered by
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`the lens. APPLE-1047, ¶¶19-22 (citing Ex. 2012, 86, 90; APPLE-1046, 803).
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`As further clarified by Dr. Kenny below, dotted lines are added indicating
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`the approximate orientation of a line orthogonal to the surface at various locations
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`from the center to the edge, a POSITA would understand that the incoming light
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`rays are refracted in a way that refracts incoming rays toward these orthogonal
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`lines:
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`15
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`APPLE-1047, ¶¶20-22. That is, due to the curvature of the convex lens, more light
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`overall is directed toward the detectors than otherwise would have absent the
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`convex lens shape, namely compared to a flat plate with no curvature. Id.
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`
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`Indeed, in a manner fully consistent with the analysis above, the only
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`disclosure Inokawa includes about its lens—which Petitioner and Dr. Kenny relied
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`on consistently—is that its “lens makes it possible to increase the light-gathering
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`ability of the LED.” Inokawa at [0015]; Petition, 11-12, 14-16; APPLE-1003,
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`¶¶60, 93-95; APPLE-1047, ¶23. This general benefit of Inokawa’s lens would be
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`applicable to all pulse measuring devices, not only those whose LEDs and sensors
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`are arranged in the exact manner as shown on FIG. 2 of Inokawa. See Ex. 2006,
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`88:21-89:1 (“The lens provides a general benefit of light concentration, not just at
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`the center.”); id., 89:21-90:3 (“...one would understand that light coming in from
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`all angles is not going to be concentrated to a single location by a convex lens.”);
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`see also APPLE-1010, FIG. 1B, 8:45-50; APPLE-1011, FIG. 2, 3:35-41.
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`16
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`To support the misguided notion that Inokawa’s lens focuses all incoming
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`light at the center, Masimo repeatedly points to FIG. 14B of the ’628 patent, shown
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`below, as allegedly showing how a convex lens focuses all light at the center:
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`POR, 19, 24 (showing APPLE-1001, FIG. 14B); APPLE-1041, 127:22-128:18
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`(“...a POSA viewing [FIG. 14B]...would understand that light, all light, light from
`
`the measurement site is being focused towards the center.”); APPLE-1047, ¶¶24-
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`25. Dr. Madisetti, when asked during deposition to justify why he believes
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`Inokawa’s lens would focus all measured light at the center, likewise pointed to
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`FIG. 14B of the ’628 patent, explaining that “Figure 14B and associated
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`text...support my opinions.” APPLE-1042, 171:20-172:17; see also id., 179:3-16,
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`181:11-182:3.
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`17
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`Masimo’s reliance on FIG. 14B for justification of their understanding of
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`
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`Inokawa, however, is a red herring. While Inokawa, Aizawa, and Mendelson-1988
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`are each directed to a reflectance-type pulse sensor that detects light backscattered
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`from the measurement site, FIG. 14B shows a transmittance-type configuration
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`where light is “attenuated by body tissue,” not backscattered. APPLE-1001,
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`35:62-64; APPLE-1047, ¶26. Indeed, FIG. 14I of the ’628 patent puts FIG. 14B in
`
`proper context, showing how light from the emitters is transmitted through the
`
`entire finger/tissue before being received by the detectors on the other side:
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`APPLE-1047, ¶26 (showing APPLE-1001, FIG.14I).
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`Thus, even if the lens shown in the ’628 patent is presumed to show focusing
`
`of all light at the center, such effect only occurs due to the collimated nature of the
`
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`18
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`light coming from the emitters located on the other side of the measurement site.
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`APPLE-1047, ¶27; see also Ex. 2007, 287:12-289:5, 291:3-292:9. Backscattered
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`light collected by a reflectance-type sensor as in Inokawa, Aizawa, and
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`Mendelson-1988, on the other hand, would result in a “completely different
`
`situation” as each ray of this diffuse light source “will have a different path as a
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`result of the lens.” Ex. 2007, 287:12-289:5; APPLE-1047, ¶¶27-28.
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`
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`Masimo and Dr. Madisetti’s reliance on Petitioner’s drawings provided in
`
`the Petition filed in IPR2020-01520 (Ex. 2019) at page 39 and in the
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`accompanying Kenny Declaration (Ex. 2020) in paragraphs 119-120 for
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`justification of their understanding of Inokawa’s lens is similarly misplaced. POR,
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`16-17, 23; APPLE-1041, 41:7-22, 60:7-61:6. Far from demonstrating the false
`
`notion that a convex lens directs all light to the center, these drawings provided by
`
`Dr. Kenny are merely simplified diagrams included to illustrate, for claim 12, one
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`example scenario (based on just one ray and one corpuscle) where a light
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`permeable cover can “reduce a mean path length of light traveling to the at least
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`four detectors.” Ex. 2019, 39; Ex. 2020, ¶¶119-120; APPLE-1047, ¶¶29-30.
`
`3.
`A lens’s ability to direct light “toward the center” supports
`Petitioner’s position
`During deposition, Dr. Madisetti at one point tried to rationalize Masimo’s
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`illogical assertion that Inokawa’s lens somehow focuses all light at a central point.
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`
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`19
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`Case No. IPR2020-01521
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`POR, 14, 16. More specifically, Dr. Madisetti noted that Inokawa focuses light
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`“towards the center” as opposed to “to the center.” APPLE-1041, 135:3-11. He
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`also clarified that “center” may not be a specific point but rather a “general area.”
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`Id., 133:19-135:2.
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`Yet a convex lens’s general ability to direct light “toward” a “general area”
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`is a concept that supports—not contradicts—Petitioner’s position that the addition
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`of a convex lens allows more light to be gathered generally, including at the non-
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`centrally located detectors as found in Aizawa. Inokawa at [0015]; Petition, 11-12,
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`14-16; APPLE-1003, ¶¶60, 93-95; APPLE-1047, ¶¶40-41.
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`For example, referring to a version of the modified Aizawa device (below)
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`that is further shown with the backscattered rays from the measurement site as
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`discussed above in Section II.A.2, it is demonstrated how a convex lens’s ability to
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`direct light “toward the center” (i.e., in a direction shown via red arrows) would
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`allow the detector to capture light that otherwise would have been missed by the
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`detectors without the convex lens, regardless of their location within the sensor
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`device:
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`APPLE-1047, ¶¶42, 19-23.
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`20
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`As further corroborated through Masimo’s own cited reference, the
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`condensing function performed by the lens will allow overall a larger fraction of
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`light randomly backscattered from tissue to be detected within the active detection
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`area surrounding that source. Ex. 2012, 86, 90; APPLE-1047, ¶43.
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`Indeed, as Dr. Kenny previously made clear, “the convex shape [of
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`Inokawa’s lens] allows light that might have been just specularly reflected off of
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`the flat plate to be captured and refracted inwards. And in the region where there’s
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`curvature, it allows the light to be concentrated, and in this case...in the
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`neighborhood of the detectors and inwards.” Ex. 2006, 191:4-14. That is, the
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`addition of a convex lens allows the detectors to capture some of the reflected light
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`that otherwise would have missed them completely by effectively increasing the
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`detection area. APPLE-1047, ¶44.
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`B. A POSITA would have been motivated to add a second LED to
`Aizawa
`As laid out in detail in the Petition and through the original declaration of
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`Dr. Kenny, a POSITA would have been motivated to add a second emitter
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`operating at a different wavelength to Aizawa in order to “allow for a more reliable
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`pulse measurement that takes into account and corrects for inaccurate readings
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`stemming from body movement.” Petition, 18-22, 24-25; APPLE-1003, ¶¶75-78;
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`APPLE-1047, ¶45.
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`21
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`Masimo, however, suggests that such motivation is flawed because
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`“Aizawa...expressly states that it provides a “device for computing the amount of
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`motion load from the pulse rate.’” POR, 37. Yet Masimo fails to explain—and
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`Aizawa itself is certainly silent—regarding how Aizawa senses and computes
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`motion load. Moreover, while Masimo contends that Aizawa “account[s] for”
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`motion, Aizawa is silent on whether it uses the computed motion load to improve
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`the detection signal. Id.; APPLE-1047, ¶46. Patent Owner further does not rebut
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`that adding a second LED having a second wavelength, as per Inokawa, will
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`“allow for a more reliable” reading that compensates for body motion. Petition,
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`19; APPLE-1003, ¶76. Indeed, as Dr. Kenny explained during his deposition,
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`adding a second LED at a different wavelength to Aizawa’s single LED design
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`would allow it to obtain a more reliable pulse measurement by allowing the system
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`to “measur[e] pulse rate and motion load during the same time” by operating a
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`separate LED dedicated to sensing motion. Ex. 2007, 401:11-402:4; APPLE-1047,
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`¶46. As Dr. Kenny further explains, having two separate signals that are
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`respectively dedicated to measuring pulse and body motion, as per Inokawa, will
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`allow Aizawa’s system to “take into account and correct for inaccurate readings
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`related to body movement” by subtracting the “signal component corresponding to
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`body movement [] from the pulse signal to help better isolate the desired pulse
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`date.” APPLE-1003, ¶76. Because different wavelengths have different
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`22
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`Case No. IPR2020-01521
`Attorney Docket: 50095-0008IP1
`sensitivities to pulse and body motion, collecting two separate signals will allow
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`noise arising from body motion to be bett
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