Filed: November 12, 2021
`
`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’S SUR-REPLY TO REPLY
`
`
`
`
`
`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’S SUR-REPLY TO REPLY
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`ARGUMENT ................................................................................................... 2
`
`A. Grounds 1A-1E ...................................................................................... 2
`
`1.
`
`Petitioner’s New Evidence And Arguments Address
`An Argument Masimo Never Made ........................................... 2
`
`a)
`
`b)
`
`The Principle Of Reversibility Is Irrelevant To
`Petitioner’s Proposed Combination .................................. 7
`
`Petitioner’s Other New Theories Are
`Similarly Misplaced ........................................................ 10
`
`Petitioner Does Not Establish A Motivation To
`Modify Aizawa’s Sensor To Include Both Multiple
`Detectors And Multiple LEDs .................................................. 14
`
`Ground 1B: Ohsaki Would Not Have Motivated A
`POSITA To Add A Convex Protrusion To Aizawa’s
`Sensor ........................................................................................ 17
`
`2.
`
`3.
`
`B.
`
`Grounds 2A-2B ................................................................................... 21
`
`1.
`
`2.
`
`3.
`
`A POSITA Would Not Have Added A Convex
`Surface To Mendelson-1988’s Sensor ...................................... 21
`
`Petitioner’s Proposed Combination Does Not
`Include A “Cover” .................................................................... 21
`
`Petitioner’s Proposed Combination Does Not
`Include The Claimed “Circular Housing” ................................ 24
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`4.
`
`Petitioner Uses Nishikawa As Far More Than A
`“Supporting Reference” ............................................................ 24
`
`III. CONCLUSION .............................................................................................. 25
`
`-ii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F. 3d 1314 (Fed. Cir. 2009) ......................................................................... 19
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 22
`
`
`
`
`
`
`-1-
`
`
`
`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
`
`2014
`
`Reserved
`
`Reserved
`
`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
`
`Reserved
`
`Exhibit List, Page 1
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`Exhibit No.
`
`Description
`
`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”)
`
`Reserved
`
`Deposition Transcript of Dr. Thomas W. Kenny in Apple Inc. v.
`Masimo Corp., IPR2020-01520, IPR2020-01536, IPR2020-
`01537, IPR2020-01538, IPR2020-01539 (September 18, 2021)
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`
`
`
`
`
`
`Exhibit List, Page 2
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`I.
`INTRODUCTION
`Rather than substantively rebut Masimo’s arguments, Petitioner concocts
`
`arguments Masimo never made and then spends many pages of briefing attempting
`
`to disprove those arguments. Petitioner asserts numerous new optics theories in an
`
`attempt to show a convex surface does not direct “all” light to “a single point at the
`
`center.” Reply 3-4, 19.1 Masimo never made such an argument.
`
`Rather, Masimo argued that a convex surface condenses relatively more
`
`light towards a more central location as compared to a flat surface. There should
`
`be no dispute on this issue. Petitioner and its declarant repeatedly admitted that a
`
`convex surface would direct light away from the periphery and towards a more
`
`central position. Yet, Petitioner proposed adding a convex surface above
`
`peripherally located detectors, arguing a POSITA would make the addition to
`
`improve optical signal strength.
`
` Masimo explained that, consistent with
`
`Petitioner’s admissions, a POSITA would not have been motivated to direct light
`
`away from peripherally located detectors. None of Petitioner’s new arguments
`
`persuasively rebut this. The Board should affirm the patentability of all challenged
`
`claims.
`
`
`1 All emphasis is added unless otherwise noted
`
`-1-
`
`
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`II. ARGUMENT
`
`A. Grounds 1A-1E
`1.
`
`Petitioner’s New Evidence And Arguments Address An Argument
`Masimo Never Made
`Petitioner mischaracterizes Masimo’s position as contending Inokawa’s lens
`
`would direct “all” light “only at a single point at the center….” Reply 3-4.
`
`However, Petitioner never quotes any such Masimo argument because none exists.
`
`Masimo clearly and repeatedly argued “that a POSITA would have understood that
`
`Inokawa’s protruding surface would direct incoming light towards the center of
`
`the sensor.” Patent Owner Response (“POR”) 19; see also id. 2, 14-17, 23-25, 27.
`
`Masimo’s declarant, Dr. Madisetti, likewise repeatedly testified that Inokawa’s
`
`lens directs light “to a more central location as a result of passing through the
`
`protruding surface.” Ex. 2004 ¶56; see also id., e.g. ¶¶35, 44, 51, 53, 54, 57.2
`
`Masimo and Dr. Madisetti explained that a convex surface condenses relatively
`
`more light towards a more central location as compared to a flat surface. See, e.g.,
`
`Ex. 2004 ¶67 (“Taken as a whole, a POSITA would have understood that a convex
`
`surface results in an overall redirection of incoming light towards the center of the
`
`
`2 Indeed, when asked, Dr. Kenny could identify no testimony from Dr.
`
`Madisetti stating that all light was directed to center. See, e.g., Ex. 2027 63:7-64:6,
`
`94:20-96:1, 96:18-97:7.
`
`-2-
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`
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`underlying sensor and away from the periphery of the underlying sensor.”); POR
`
`16 (“Petitioner and Dr. Kenny both admit a convex cover condenses light towards
`
`the center of the sensor and away from the periphery.”).
`
`Petitioner nonetheless strenuously argues that Inokawa’s “lens cannot focus
`
`all incoming light at a single point,” Reply 8, a position Masimo never took.
`
`Indeed, Petitioner spends seventeen pages attacking
`
`this argument with
`
`illustrations attempting to show that not all light would be directed to a center
`
`point.3 See, e.g., Reply 2-19. Petitioner’s arguments entirely miss the point. The
`
`issue is not whether a convex surface will direct all light toward a center point.
`
`The issue is whether a convex surface (as compared to a flat surface) will direct
`
`more light to Aizawa’s peripherally located detectors—the entire basis of
`
`Petitioner’s proposed motivation to combine the cited references. Pet. 14-17.
`
`
`3 While Petitioner suggests its new technical illustrations clarify its original
`
`positions (Reply 15), Petitioner’s arguments are instead new positions found
`
`nowhere in the petition. Indeed, despite Dr. Kenny testifying that his figures were
`
`not meant to be precision drawings or convey any particular shape (Ex. 2006
`
`51:14-52:16), Dr. Kenny’s “clarif[ication]” now finds notable precision in his
`
`figures and adds orthogonal lines to allegedly evidence additional light capture.
`
`Ex. 1047 ¶21.
`
`-3-
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`
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`There can be no legitimate dispute that a convex surface directs light
`
`centrally (and away from the periphery). This is a straightforward optics principle.
`
`Indeed, Petitioner repeatedly admitted that a convex surface would direct light
`
`away from the periphery and towards a more central position. POR 15-18. Dr.
`
`Kenny clearly explained: “the incoming light is ‘condensed’ toward the center.”
`
`Ex. 2020 ¶119; see also id. ¶200. Petitioner and Dr. Kenny even illustrated that a
`
`POSITA would have understood that a convex surface redirects light to a more
`
`central location compared to a flat surface.
`
`
`Petitioner’s Illustration Of Change In Light Direction Due To Convex Surface
`(Purple) Compared To Flat Surface (Green) (Ex. 2019 at 39, citing Ex. 2020 ¶119)
`
`On reply, Petitioner claims its illustrations were “merely simplified diagrams” and
`
`“illustrate…one example scenario (based on just one ray and one corpuscle).”
`
`Reply 19. But Petitioner previously made no such distinction. Instead, Petitioner’s
`
`illustrations addressed a claim limitation regarding the “mean path length of light
`
`traveling to the…detectors,”—not any individual ray. Ex. 2019 at 39; Ex. 2025
`
`Claim 12. Dr. Kenny clearly stated Inokawa’s convex surface (1) “provides a
`
`-4-
`
`
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`condensing function by refracting the light passing through it,” (2) that “such
`
`refraction of the incoming reflected light can shorten the path of the light,” (3)
`
`“because the incoming light is ‘condensed’ toward the center.” Ex. 2020 ¶119. A
`
`POSITA would have believed that condensing light towards the center reduces the
`
`optical signal strength at peripheral detectors.
`
`After recognizing the fundamental error in its proposed combination,
`
`Petitioner now attempts to rewrite its petition and argue “a POSITA would
`
`understand that Inokawa’s lens generally improves ‘light concentration at pretty
`
`much all of the locations under the curvature of the lens’….” Reply 3-4 (quoting
`
`Ex. 2006 164:8-16). As supposed support, Petitioner quotes a single sentence of
`
`Dr. Kenny’s deposition testimony. Ex. 2006 164:8-16. Dr. Kenny admitted,
`
`however, that this cited opinion was not in his declaration. Id. 170:22-171:5.
`
`Regardless, Petitioner’s attempt to rewrite its petition fails. Indeed,
`
`Petitioner’s entire motivation to combine was based on the fundamental error that
`
`a convex surface would increase optical signal strength by focusing incoming light
`
`at peripherally located detectors. Pet. 14-17, 28, 64-65, 70. During Dr. Kenny’s
`
`deposition, in an attempt to avoid Petitioner’s error, Dr. Kenny would not even
`
`agree Inokawa’s lens provides a condensing function by refracting light that passes
`
`through it. See Ex. 2027 181:9-182:5. In doing so, Dr. Kenny rejected the
`
`fundamental optics principle that supported Petitioner’s original arguments. See,
`
`-5-
`
`
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`e.g., Pet. 28 (“reflected light headed toward the detectors is refracted and
`
`condensed as it passes the lens/protrusion”).
`
`Petitioner similarly asserts that “Inokawa generally discloses a ‘lens [that]
`
`makes it possible to increase the light-gathering ability’ of a reflectance-type pulse
`
`sensor.” Reply 2 (quoting Ex. 1008 ¶[0015]) (brackets in original). Based on this
`
`assertion, Petitioner argues that Inokawa would improve light-gathering at all
`
`locations, regardless of the location of the LEDs and detectors. Reply 3-4. But
`
`Petitioner contradicts its own declarant’s deposition testimony. Dr. Kenny testified
`
`Inokawa’s benefit would not be clear if Inokawa’s LEDs and detectors were
`
`moved:
`
`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 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 also confirmed that a convex surface would
`
`direct light toward the center of the underlying sensor. See, e.g., Ex. 2006 202:11-
`
`204:20. Petitioner does not even attempt to explain this testimony.
`
`-6-
`
`
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`a)
`The Principle Of Reversibility Is Irrelevant To Petitioner’s
`Proposed Combination
`Petitioner next asserts yet another new theory. Specifically, Petitioner points
`
`to the principle of reversibility. Reply 4. Petitioner claims that “far from being a
`
`new theory, this core concept forms the basis of all Aizawa-based combinations.”
`
`Id. 6. As support, Petitioner quotes a declaration from a different IPR proceeding
`
`that used the word “reversibility” when providing a background discussion of
`
`Aizawa. Id. 6-7 (quoting Ex. 1048 ¶79). Nowhere did Dr. Kenny previously
`
`analyze or espouse the principle of reversibility now asserted by Petitioner.
`
`Indeed, Petitioner’s cited sentence does not even discuss optics. Petitioner’s new
`
`theory is improper, denying Masimo of the opportunity to respond with expert
`
`testimony, and should be rejected.
`
`Petitioner’s new theory is also irrelevant. Petitioner employs the theory to
`
`argue the path of a reflected light ray would trace an identical route forward and
`
`backwards. Reply 4. This argument assumes ideal conditions that are not present
`
`when tissue scatters and absorbs light. Even Petitioner admits that tissue randomly
`
`scatters and absorbs light rays, which would cause forward and reverse light paths
`
`to be unpredictable and very likely different. See id. 8 (stating a POSITA would
`
`have understood reflectance-type sensors measure “random” light that was
`
`“reflected, transmitted, absorbed, and scattered by the skin and other tissues and
`
`the blood before it reaches the detector”); Ex. 2027 29:11-30:7, 31:8-32:3, 38:17-
`
`-7-
`
`
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`42:6. Petitioner never explains how the principle of reversibility could apply to
`
`such “random” light.
`
`Indeed, Dr. Kenny testified that “light backscattered from the tissue can go
`
`in a large number of possible directions, not any single precise direction.” Ex.
`
`2027 17:12-18; see also id. 17:19-19:2 (reiterating random path and absorbance),
`
`38:17-40:13, 40:14-42:6 (“Every photon tracing that particular path…would have a
`
`potentially different interaction with the tissue and it would be scattered,
`
`potentially, in a different direction than the photon arriving before and after it.”).
`
`In contrast, the principle of reversibility provides that “a ray going from P to S [in
`
`one direction] will trace the same route as one going from S to P [the opposite
`
`direction]” assuming there is no absorption or scattering. Ex. 1052 at 51
`
`(illustrating diffuse reflection), 53 (defining principle of reversibility), 207
`
`(principle of reversibility requires no absorption). Indeed, Dr. Kenny testified that
`
`the principle of reversibly applies to a light ray between two points and admitted it
`
`does not apply to randomly scattered light in bulk. Ex 2027 207:9-208:22. In that
`
`circumstance, Dr. Kenny merely testified that light “can go” or “could go” along
`
`the same path. Id. 207:17-209:21, 210:8-211:6. That hardly supports Petitioner’s
`
`argument that light will necessarily travel the same paths regardless of whether the
`
`LEDs and detectors are reversed.
`
`-8-
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`Petitioner accordingly misapplies the principle of reversibility to the
`
`proposed combination. Indeed, the principle of reversibility does not even address
`
`the relevant comparison: whether a convex surface—as compared with a flat
`
`surface—would collect and focus additional light on Aizawa’s peripherally located
`
`detectors. See Ex. 2027 212:3-14. Petitioner attempts to use the theory of
`
`reversibility to argue that one could simply reverse the LEDs and detectors in
`
`Inokawa’s sensor and obtain the same benefit of Inokawa’s convex lens. Reply 5-
`
`8. However, the principle of reversibility does not indicate that one could reverse
`
`sensor components and still obtain the same benefit from a lens as opposed to a
`
`flat surface. As discussed, Dr. Kenny specifically testified that the benefit of
`
`Inokawa’s lens would not be “obvious” if one moves the “LEDs and detectors
`
`around….” Ex. 2006 86:19-87:6.4
`
`Petitioner also tries to support its flawed “reversibility” theory by asserting
`
`that “the company behind Inokawa (i.e., Denso Corporation) expressly recognized
`
`in other publications that adding a lens can help improve light collection efficiency
`
`in pulse sensor configurations where the detector is not positioned at the center.”
`
`4 Contrary to Petitioner’s argument, Reply 6, Dr. Madisetti did not “express
`
`ignorance” of Fermat’s principle: his testimony referred to “a stationary OPL,” an
`
`undefined term in the passage about which he was asked. Ex. 1041 89:12-19.
`
`Indeed, Dr. Madisetti’s earlier testimony cited “Fermat’s law.” Id. 33:17-34:13.
`
`-9-
`
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`Reply at 7 (emphasis in original). But Petitioner’s newly cited devices from these
`
`references have completely different configurations than Petitioner’s combination.
`
`Id. (illustrating Exs. 1010 and 1011). Dr. Kenny admitted that the specific
`
`configuration, including the location of the sensor and detector, is important to the
`
`overall sensor operation. Ex. 2006 86:19-87:6. Regardless, Petitioner did not rely
`
`on these references as part of any invalidity ground, and Petitioner provides no
`
`explanation as to why the very specific configurations of these new references are
`
`relevant to its asserted combination. Moreover, contrary to Petitioner’s assertions,
`
`neither reference mentions light collection efficiency, let alone demonstrates that a
`
`lens “can help
`
`improve
`
`light collection efficiency” regardless of sensor
`
`configuration. Ex. 1010 8:45-45; Ex. 1011 3:35-41. Thus, Petitioner’s new theory
`
`once again ignore the differences in sensor configuration and the resulting optical
`
`requirements.
`
`b)
`Petitioner’s Other New Theories Are Similarly Misplaced
`Petitioner next asserts a number of other new theories found nowhere in the
`
`petition. First, Petitioner asserts that “Inokawa’s lens provides at best a slight
`
`refracting effect, such that light rays that otherwise would have missed the
`
`detection area are instead directed toward that area as they pass through the
`
`interface provided by the lens.” Reply 14. But that directly undermines
`
`Petitioner’s provided motivation to combine. The petition argued that a “POSITA
`
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`would have looked to Inokawa to enhance light collection efficiency, specifically
`
`by modifying the light permeable cover of Aizawa to include a convex lens.” Pet.
`
`14. Petitioner’s assertion that “Inokawa’s lens provides at best a slight refracting
`
`effect” trivializes Petitioner’s proposed motivation and undermines its petition.
`
`Second, Petitioner argues that “due to its protruded shape, Inokawa’s lens
`
`‘provides an opportunity to capture some light that would otherwise not be
`
`captured.’” Reply 15 (quoting Ex. 2006 204:21-205:12). But Dr. Kenny
`
`confirmed this new theory is not in his declaration. Ex. 2006 207:11-208:1.
`
`Dr. Kenny also admitted that the convex shape in Petitioner’s proposed
`
`combination is a new creation found nowhere in any of the cited references. Ex.
`
`2027 223:6-224:1; compare Ex. 1047 ¶¶20-22 with Ex. 1007 Fig. 2.
`
`Dr. Kenny was unable to support this new theory with any evidence. Ex.
`
`2007 294:17-298:10. Dr. Kenny testified, “I’m sure there are journal articles that
`
`describe the effect,” but he could not identify any when asked (Ex. 2007 295:5-11)
`
`and Petitioner cites none in the reply.
`
`Third, Petitioner attempts to distinguish Figure 14B in Masimo’s patent as
`
`showing the impact of a convex surface on collimated light, as opposed to diffuse
`
`backscattered light. Reply 17-19. But Masimo’s patent makes no such distinction.
`
`See POR 24-25. Moreover, Dr. Kenny admitted “one of ordinary skill in the art
`
`would expect a diffuse light source encountering a convex lens of the sort that
`
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`we’re contemplating today, would lead to convergence of the light on the opposite
`
`side of the lens, in general” and that there would be “a convergence of most of the
`
`light rays.” Ex. 2007 423:7-424:18. Petitioner also argues that “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 light coming from the
`
`emitters located on the other side of the measurement site..” Reply 18-19. Again,
`
`Masimo never argued that all incoming light would be focused to a center point in
`
`the sensor. Even if incoming light follows different paths (Reply 19), light
`
`entering the lens from all angles would, on average, result in more light directed
`
`towards the center and less light at the periphery—as compared to a flat cover or
`
`no cover. See, e.g., Ex. 2004 ¶¶66, 68.
`
`Fourth, Petitioner embraces Dr. Kenny’s new deposition theory that a
`
`convex lens would “allow the detector to capture light that otherwise would have
`
`been missed by the detectors.” Reply 20. Petitioner suggests that a convex surface
`
`would direct some light from the far left and far right edge of the sensor to the
`
`peripheral detectors. Id. Petitioner illustrates its theory as follows:
`
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`Id. Even if that theory had merit, it would be unavailing because it fails to
`
`consider the greater decrease in light at the detectors due to light redirection to a
`
`more central location. See Ex. 2027 19:16-21:8. As Mendelson-1988 explained,
`
`and Dr. Kenny confirmed, the circle of backscattered light’s intensity “decreases in
`
`direct proportion to the square of the distance between the photodetector and the
`
`LEDs.” Ex. 1015 at 2; Ex. 2027 49:17-50:13, 57:10-22. Thus, any purported
`
`signal obtained from light redirected from the sensor’s edge would be relatively
`
`weak and fail to make up for the much greater loss of signal strength when light is
`
`redirected away from the detectors and towards a more central position. See id.
`
`Thus, Petitioner’s new theory fails to show a POSITA would have been motivated
`
`to arrive at Petitioner’s combination.
`
`Indeed, while Petitioner asserts numerous new and complex optical theories,
`
`Petitioner never explains why or how a POSITA would have known or considered
`
`those theories, much less arrived at Masimo’s claims. Petitioner never disputes
`
`that its 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
`
`-13-
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`design. POR 10-11.5 Rather than consider Petitioner’s various complex theories, a
`
`POSITA would have understood and applied the straightforward understanding
`
`that a convex surface condenses light toward the center, precisely as Petitioner
`
`advocated in its petition.
`
`In fact, if anything, Petitioner’s new arguments emphasizing the complexity
`
`of optics undermine Petitioner’s obviousness arguments. Id. 26-31. As Dr. Kenny
`
`explained, light rays only “reach the [peripherally located] detectors [in Aizawa] if
`
`they somehow find those tapered openings, but not if they pass-through any part of
`
`this holder [surrounding the detectors].” Ex. 2006 257:11-18; Ex. 2027 73:13-
`
`74:14, 76:13-21. Petitioner fails to show its various new and complex theories
`
`would have motivated a POSITA to arrive at Petitioner’s flawed combination.
`
`2.
`
`Petitioner Does Not Establish A Motivation To Modify Aizawa’s
`Sensor To Include Both Multiple Detectors And Multiple LEDs
`Petitioner next argues a POSITA would have added a second LED to
`
`Aizawa’s sensor. Reply 21. As a preliminary matter, even if a POSITA added a
`
`second LED, Petitioner’s proposed combination of Aizawa and Inokawa would
`
`still not meet all claim limitations. POR 35. As Masimo explained, Petitioner’s
`
`
`5 Despite testifying there are “thousands of textbooks” describing lens
`
`design, Dr. Kenny cited none in his declarations. Ex. 2027 109:4-110:12,
`
`112:16-113:5.
`
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`IPR2020-01521
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`resulting sensor would—consistent with both references—include only a single
`
`centrally located detector. Id. 35-37. In contrast, the claims at issue require both
`
`multiple emitters and multiple detectors in the same sensor or measurement
`
`device. See, e.g., Ex. 1001 Claims 1, 7, 20. Petitioner’s reply does not
`
`acknowledge or address this failing.
`
`Regardless, Petitioner’s asserted motivations for adding additional emitters
`
`are unpersuasive. Petitioner’s first purported motivation is “[t]he added ability to
`
`measure body movement.” Pet. 19. As Petitioner now concedes, however,
`
`Aizawa’s sensor already monitors body motion, so the extra emitter adds no
`
`functionality. Reply 22; POR 37. Thus, adding another LED would unnecessarily
`
`increase complexity while adding no new functionality. Petitioner criticizes
`
`Aizawa’s disclosure for not explaining how it uses the computed motion signal.
`
`Reply 22. But Inokawa likewise provides no details regarding how it uses the
`
`motion signal. See, e.g., Ex. 1008 ¶[0059]. Petitioner claims Inokawa’s approach
`
`is “more reliable” than Aizawa’s. Reply 22 (citing Pet. 19, Ex. 1003 ¶76). But
`
`Petitioner cites nothing in Inokawa that suggests Inokawa’s approach is superior to
`
`Aizawa’s. There would have been no reason for a POSITA to replace Aizawa’s
`
`approach with Inokawa’s.
`
`Petitioner’s second purported motivation for adding more LEDs is to
`
`provide LED-based data transmission. Pet. 20-23. But Inokawa transmits pulse
`
`-15-
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`Apple Inc. v. Masimo Corporation
`rate data only “when the pulse sensor ... is mounted onto” a cumbersome “base
`
`device.” See, e.g., Ex. 1008 Abstract; POR 38-39. Petitioner’s proposed
`
`modification requires that a user (1) stop data collection, (2) remove the sensor,
`
`and (3) attach the sensor to a “base device.” POR 38-39. In contrast, Aizawa’s
`
`sensor already includes a transmitter that allows real-time collection and display
`
`of physiological measurements—a key goal of Aizawa’s system. Ex. 2007 402:6-
`
`11; Ex. 2020 ¶101; Ex. 1006 ¶¶[0004], [0015]. While Petitioner suggests its
`
`proposed modification might “improve accuracy,” Petitioner provides no evidence
`
`that Aizawa’s existing approach suffered from accuracy problems. Reply 22-23.
`
`Petitioner’s combination
`
`thus eliminates Aizawa’s real-time data display
`
`functionality while adding no credible additional benefit. POR 39-40.
`
`Petitioner next relies on a non-ground reference, Nanba (Ex. 1010), to assert
`
`that additional LEDs would provide more reliable measurements. See Pet. 19; Ex.
`
`1003 ¶76 (citing Ex. 1010 8:45-50); Reply 22 (citing Ex. 1003 ¶76). But Nanba’s
`
`pulse wave sensor only uses a single LED emitter—not two different LEDs at two
`
`different wavelengths, as Dr. Kenny erroneously asserts. Ex. 1010 8:45-50; Ex.
`
`1003 ¶76. Thus, Nanba’s sensor—like Aizawa’s—would use a single emitter to
`
`monitor motion. See, e.g., Ex. 1010 1:65-2:12 (apparatus for “detecting vital
`
`functions such as cough or yawn” and monitoring “a motion artifact” during “a
`
`pulse wave”). Nanba would not motivate a POSITA to add an additional emitter.
`
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`IPR2020-01521
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`Moreover, Petitioner does not dispute its proposed modifications would
`
`cause additional problems, including additional costs, energy use, and thermal
`
`problems. Petitioner asserts a POSITA “is fully capable of employing inferences
`
`and creative steps.” Reply 24. But Petitioner provides no evidence of what those
`
`inferences are or what those creative steps might be, much less why they would
`
`lead to Masimo’s claimed invention. As previously explained, a POSITA would
`
`have expected that placing LEDs in close proximity—as in Petitioner’s proposed
`
`combination—could cause detrimental results. POR 40-41. A POSITA would not
`
`have been motivated to make Petitioner’s proposed modifications.
`
`3. Ground 1B: Ohsaki Would Not Have Motivated A POSITA To
`Add A Convex Protrusion To Aizawa’s Sensor
`Ground 1B argues that Ohsaki would have further motivated a POSITA to
`
`add a convex surface to “prevent slippage of Aizawa’s device.” Pet. 45-46. But
`
`Ohsaki does not address or correct the fundamental problem with Petitioner’s
`
`proposed combination discussed above: Like Inokawa, Ohsaki’s cover would
`
`direct light away from Aizawa’s peripherally located detectors. Ex. 2004 ¶92. A
`
`mere desire to prevent slippage would not motivate a POSITA to create a flawed
`
`sensor.
`
`Moreover, a POSITA would not have believed Ohsaki’s longitudinal cover
`
`would benefit Aizawa’s circular sensor. Ex. 2004 ¶95. Ohsaki indicates that its
`
`sensor—including its longitudinal cover with a convex surface—must have an
`
`-17-
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`elongated shape oriented with the longitudinal direction of the user’s arm. Ex.
`
`1014 ¶[0019]; Ex. 2004 ¶93. In contrast, Aizawa’s sensor uses a circular
`
`arrangement of detectors disposed around a central emitter. Ex. 1006 ¶¶[0009],
`
`[0027], [0036]; Ex. 2004 ¶94. Aizawa specifically distinguishes its sensor from
`
`linear sensors such as Ohsaki’s, stating, “the photodetectors…should not be
`
`disposed linearly.” See, e.g., Ex. 1006 ¶[0027].
`
`A POSITA would not have been motivated to add Ohsaki’s longitudinal
`
`cover to Aizawa’s circular sensor to “prevent slippage,” as Petitioner asserts. Pet.
`
`46. Ohsaki teaches that its longitudinal cover must be oriented with the
`
`longitudinal direction of the user’s arm to prevent slippage. Ex. 1014 ¶[0019]; Ex.
`
`2004 ¶93. Petitioner apparently makes Ohsaki’s longitudinal cover circular so that
`
`it fits over Aizawa’s circular sensor. Pet. 46; POR 43-46. That removes the very
`
`shape and functionality Ohsaki teaches is important to prevent slippage. Ex. 2004
`
`¶¶93-95. Indeed, Ohsaki teaches that its longitudinal cover must be oriented with
`
`the longitudinal direction of the user’s arm. Ex. 1014 ¶[0019]; Ex. 2004 ¶93. Dr.
`
`Kenny admitted that a circular structure has no longitudinal directionality. Ex.
`
`2008 165:20-166:5.
`
`Ohsaki also indicates that its convex surface prevents slipping only on the
`
`backhand side (i.e., watch-side) of the user’s wrist. Ex. 1014 ¶[0024]. Ohsaki’s
`
`sensor has “a tendency to slip off” if positioned on the palm side of the user’s
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`-18-
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`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`wrist. Id. ¶[0023], Figs. 3A-3B; Ex. 2004 ¶93. In contrast, Aizawa positions its
`
`sensor on the palm side of the wrist. Ex. 1006 Fig. 2. Aizawa requires this
`
`positioning so that the sensor “becomes close to the artery…of the wrist.” Id.
`
`¶[0026]; see also id., e.g., Ab
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