Trials@uspto.gov
`571-272-7822
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`Paper # 30
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`Entered: 03/15/2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`___________
`
`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
`___________
`
`Record of Oral Hearing
`Held: February 9, 2022
`_____________
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`
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`
`
`571-272-7822
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`
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`Paper # 30
`
`Entered: 03/15/2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`___________
`
`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
`___________
`
`Record of Oral Hearing
`Held: February 9, 2022
`_____________
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`WALTER KARL RENNER, ESQUIRE
`ANDREW PATRICK, ESQUIRE
`HYUN JIN IN, ESQUIRE
`Fish & Richardson
`1000 Maine Avenue, S.W.
`Washington, D.C. 20024
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`STEPHEN JENSEN, ESQUIRE
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main Street
`Irvine, CA 92614
`
`ALSO PRESENT, OBSERVING:
`USMAN KHAN
`DAN SMITH
`Fish & Richardson
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`February 9, 2022, commencing at 10:00 a.m., EDT, at the U.S. Patent and
`Trademark Office, by video/by telephone, before Julie Souza, Notary Public.
`
`
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
`
`
` PROCEEDINGS
`JUDGE KINDER: Good morning everyone. I'm Judge Kinder and
`
`we're today for oral argument in four consolidated proceedings. The cases
`involve Apple, Inc., as Petitioner and Masimo Corporation as the Patent
`Owner. The consolidated hearing will be for IPR 2020-1713, 1716, 1733
`and 1737. With me today with the Board are Judges Cocks and Wieker and
`if we could initially get a roll call for Petitioner who will be presenting today
`and who's appearing.
`
`MR. RENNER: Thank you, Your Honor. This is Karl Renner for
`Petitioner and I am -- I'll start us off but I'll be joined in short order by Hyun
`Jin In and also by Andrew Patrick. In the room as well are Usman Khan and
`Dan Smith is on the line too.
`
`JUDGE KINDER: All right. Thank you, Mr. Renner. And then for
`the Patent Owner can you tell me who's present today and who'll be
`presenting.
`
`MR. JENSEN: Yes. This is Steve Jensen from Knobbe, Martens for
`Patent Owner and I will be presenting the entirety of the argument --
`
`JUDGE KINDER: All right, Mr. Jensen. I appreciate that.
`
`MR. JENSEN: -- for the first four cases. In the second group it's a
`different lawyer, Mr. Grover.
`
`JUDGE KINDER: Okay. Very good. And getting into that, these
`four cases are consolidated so we're going to have a single transcript. The
`afternoon case will be a completely separate proceeding with a separate
`transcript and we'll kind of do a restart for that one.
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
`
`
`In these four consolidated cases we're going to have two hours per
`side and I think you are aware of that and hopefully have planned your time.
`You don't need to take all two hours but certainly it's there. As I mentioned,
`we're going to share a single transcript for these four proceedings so
`statements that you make in one will be applicable to each of the
`proceedings unless you explicitly state that these statements or arguments
`only apply to a specific proceeding and please make that clear.
`So one thing we want to do every time somebody starts talking
`initially, please introduce ourself so our court reporter can understand who's
`presenting. Sometimes it gets difficult with so many people on a hearing.
`The Petitioner is going to open up and present its case for unpatentability of
`the challenged patents. The Patent Owner then will respond. Petitioner, you
`can reserve time for rebuttal. Do you know how much time you want for
`rebuttal yet?
`MR. RENNER: Yes, Your Honor. We'll just reserve half of the time,
`please.
`JUDGE KINDER: So that would be one hour reserved; is that right?
`MR. RENNER: Correct, Your Honor. Thank you.
`JUDGE KINDER: Okay. Sure. All right. And then Patent Owner,
`after their rebuttal you will have, Mr. Jensen, you'll have time as well. How
`much time would you like to reserve for yours?
`MR. JENSEN: I would suspect 40 minutes, 45.
`JUDGE KINDER: Forty-five minutes.
`MR. JENSEN: I'm not going to use it all.
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
`
`
`JUDGE KINDER: Okay. So we are on a video hearing here so be
`respectful of everyone in that sometimes, Judges we forget as well, but only
`unmute when it's your turn to speak and I did mention this is important,
`identify yourself when you start talking and sometimes, Judges, we forget to
`do that as well. When you introduce a slide or talk about a paper or exhibit
`please be clear in identifying that slide or exhibit and then if you could as a
`courtesy give us a few seconds to flip to that. The Judges have all the
`materials before us so we should be able to get to it but sometimes we have
`to flip a few pages on our screens to find where you're at. Again, sometimes
`there is an audio lag when we're doing virtual hearing. The audio seems to
`be pretty good today but if, you know, sometimes if it starts lagging try to
`pause a second before you start so we don't speak over each other. It rarely
`happens but sometimes we do have interruptions with the video or
`connections, somebody loses a connection. We will pause the hearing and
`we won't cut that into your time obviously and just let us know as soon as
`possible what the issues are, how you can cut out. If we lose video we can
`easily just transfer into an audio link or other means, we have back-up
`available. So that should go well if anything happens, hopefully it won't,
`and I think I've gotten all the preliminary instructions. Mr. Renner, do you
`have any questions?
`MR. RENNER: I do not. Thank you, Your Honor.
`JUDGE KINDER: All right. Mr. Jensen, do you have any questions
`before we begin?
`MR. JENSEN: No, Your Honor.
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
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`JUDGE KINDER: All right. And don't think my panel has anything
`so we'll go ahead and get started and Petitioner, Mr. Renner, you can begin
`whenever you're ready.
`MR. RENNER: All right. Well, may it please the Court. Today is
`another exciting day I know we have together and I did want to start as to
`the timing to let you know that we don’t expect to use the entirety of the
`time that we have on direct nor the rebuttal. The request for hearings were
`all submitted prior to our most recent hearing and I think issues have become
`more and more crystallized as we go on so we'll leave them more and more
`to the paper but we do welcome your questions, as always, on any aspect of
`the record that you have any questions on. Our intent is not to short circuit
`any of those, just instead to be as efficient as we respective everyone's time.
`As to the issues if you could just turn to slide 2, please. We lay out
`there just the structure of the slides. There's a lot of slides. Many of them
`are here just for support if an issue does come up so that we have material
`that we can all look at together. But hopefully this will give you a sense of
`where to go to receive any of the details that we're looking for and you can
`see in these three issues are outlined we're planning really to address the first
`two, issue 1 which has a couple of sub-parts and issue 2 in our time together
`here today, and issue 1 really speaks to a variety of concepts in forming
`combinations that are central to some important grounds.
`We've talked a lot about these combinations previously with you and
`the papers are the papers and we think they're fairly complete but we will
`endeavor to move through these relatively quickly and of course we'd want
`
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
`
`to receive any questions you have. There were some questions at our most
`recent hearing that related mostly to 1B so we'll spend a little more time on
`1B when we get to that just again to make sure that you've got all the
`information you need. But before we reach issues 1A through C, issue 2 is
`really where I want to call your attention because in issue 2 that's unique to
`this case really and that's about the adding of a second ring of sensors to the
`Aizawa reference in a combination that we've proposed and put forward to
`you as it relates to that second ring so we wanted to make that that had an
`opportunity to be heard and we're going to start with that just because it is
`unique to the case and I'll ask HJ to come up and start us down that path in
`just a moment.
`Before I do, just maybe two comments concerning today. We, again,
`I'll say something you've heard me maybe intonate before. We see this case
`as a rather unique case in the following respect and this new issue you're
`going to see the same fingerprints of that uniqueness. It's not often as a
`Petitioner that I see the primary reference actually call out the need for
`something, the desire for something and then the secondary reference to
`bring it forth. Not every combination is built that way. It's not what the law
`really requires but it's kind of interesting, it's nice. Ordinarily you just have
`a primary reference teaching something and then the secondary reference
`says I see that when things teach something I can bring together -- bring
`forth some additional benefit and here are features that will give you that
`benefit here. You actually will hear from us again and again that the
`primary references themselves are calling for things. They're actually
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
`
`signaling to a POSITA that there's a desire for other features and then you'll
`find those features in the secondary reference, so it's both references in the
`combination are kind of calling for each other more magnetically than you
`would ordinarily find.
`And the second aspect is that is in addition to hearing about, you
`know, some of the good things that the company Masimo has done we, you
`know, we are going to see I think a focus though as it relates to the patents
`themselves, less as to the claimed subject matter when it comes to those
`good deeds or good things that are purportedly available through Masimo
`and we're going to try to keep focused on what those claim elements are,
`what those combinations bring forward and what a POSITA would think of
`the art as it comes together and we'll of course be encouraging the same, as
`well as to encourage a look at what a POSITA would see in these references
`beyond their implementation details, the specifics of a particular
`implementation. These are teachings that we believe to, and we think the
`record establishes through the evidence provided, that establishes
`combination motivations, things that a POSITA would take away and say
`we're looking for an additional sensor, more sensors, we want more sensors
`and you'll find more sensors in the secondary reference in a particular
`configuration and not to the destruction of anything but instead to the
`compliment of it.
`So I hope that comes through and encourage please to ask questions as
`you always are willing to do and we look forward to them. Without further
`ado though, I would invite HJ to come and join us and walk us through issue
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
`
`2.
`
`MR. IN: Good morning, Your Honors. Thank you Karl. If we could
`jump to slide 49. One second, Your Honors. This is Hyun Jin In for
`Petitioner. On slide 49, thank you, Karl. So as Karl just mentioned I'll be
`addressing here claim features that are unique to the '194, '195 and '366
`patents, namely one having a first set of photodiodes that are connected in
`parallel to provide a first signal strength and two, having a second set of
`photo diodes that are connected in parallel to provide a second signal stream.
`In our discussion here I may refer to these first and seconds set of
`photodiodes as first ring and second ring.
`So if we turn to slide 50 now. We can see some relevant disclosures
`regarding these features from our primary reference Aizawa as well as our
`secondary reference Mendelson-2003. But before we actually discuss these
`and, Your Honor, if you could sort of keep your finger on this slide and turn
`very briefly to slide 52, here on slide 52 at the top right you can see an
`embodiment of Aizawa that we rely on throughout our proceedings where
`you can see that there's a central LED and there are four detectors that are
`located around that central LED.
`Now, going back to slide 50 on the upper left we see Aizawa's
`discussion of improving detection efficiency and actually disclosing doing
`so by increasing the number of photodetectors. On the upper right side
`Aizawa shows one such example where it has increased the number of
`photodetectors, namely the four that we just saw to eight. So here Aizawa
`expressly recognizes that adding more photodetectors can give you certain
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
`
`benefits such as improving detection efficiency. This is not really surprising
`since, as our expert Dr. Kenny has consistently explained that having more
`detectors increases the total detection area for picking up the backscattered
`light. What Aizawa doesn't expressly show here is whether additional rings
`or detectors may be used. It just shows the use of a single ring of detectors
`as you see in the disclosures here. But while adding more detectors to a
`single ring may help pick up more signals along that ring, you can imagine
`how there may be regions both inside and outside the ring that may not be
`covered under such a scenario.
`Looking at the bottom half of slide 50 now, we can see Mendelson-
`2003's disclosure of the similar post-measuring device but one that has an
`inner-ring which you can see on the annotated figure at right shown in green
`and an outer-ring which that same figure shows in red. Mendelson-2003
`further mentions that each of these rings include six discrete photodetectors
`and that these six photodetectors in each ring are connected in parallel. It
`says that explicitly. It also goes on to say that the signal stream from each
`ring is then sent to a central hub. As I'll discuss a bit more later in this
`presentation, it's not at all surprising that the photodetectors in each ring as
`shown in Mendelson-2003 are connected and parallel and that's because, as
`many of us learned in high school physics, connecting in parallel allows you
`to add up the currents from all of these detectors which are essentially card
`generating elements. It really doesn’t make sense to connect them the series
`because doing that will cause a total output of each ring not to be the sum of
`that current but basically just the minimum current of the weakest detector
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
`
`which can be zero in this case and certainly not ideal for these applications.
`If we could turn to slide 51 now, Your Honors. As explained here and
`as our expert, Dr. Kenny, consistently explained a POSITA would have been
`motivated to combine these two references, namely Aizawa and Mendelson-
`2003 for various reasons. First and foremost as noted earlier and as
`explained by Dr. Kenny, the declaration portion cited here a POSITA would
`have wanted to widen the detection area of Aizawa by providing the two
`rings of detectors as per Mendelson-2003 and you can see Dr. Kenny's
`example modification of Aizawa in view of Mendelson-2003 on the bottom
`right side of slide 51. Again, one of Aizawa's goals was to improve
`detection efficiency and Mendelson-2003 certainly teaches a way of
`achieving that and more particularly by providing a two ring detector
`configuration and Mendelson-2003 says that it does so in order to, and I
`quote "collect a bigger portion of backscattered light intensity."
`Now if we turn to slide 52. We can see an example scenario here
`illustrated by Dr. Kenny on the bottom right side where he has shown an
`example modified device of Aizawa with the two rings the detector has
`asked for Mendelson-2003. Here it's trying to illustrate how, through a
`simple example, how that widening of the detection area with the use of the
`two rings can be beneficial.
`So in particular as you see in that figure on the bottom right Dr.
`Kenny has provided an example situation where this one particular area of
`backscattered light which we have shown here in yellow, it may have been
`missed by the inner-ring but otherwise it's captured by the outer-ring that has
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
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`been added as per the explained combination and of course a POSITA would
`be more than capable of choosing the precise size and locations of these
`rings and detectors but we think the general benefit that we try to illustrate is
`captured here through this illustration. Again, as Dr. Kenny has made very
`clear the overall goal here is to maximize coverage. We want to pick up as
`much of the backscattered light as possible.
`If we turn briefly to slide 53 where we have on the left side a snippet
`from Dr. Kenny's deposition, he explains very clearly that a POSITA would
`want to fill up more space and if a POSITA has a chance to fill up more of
`the detection area and capture more light they would certainly do so and
`that's really the essence of this combination here involving Aizawa and
`Mendelson-2003.
`If we now turn to slide 54, Your Honors. I want to quickly recap
`something I mentioned earlier which has to do with why these photodiodes
`would be connected in parallel. First, as I mentioned, Mendelson-2003
`reveals it pretty explicitly as you can see at the top left slide of Mendelson-
`2003 and as Dr. Kenny consistently explained this is also based on just plain
`common sense and common practice. Like I said earlier, if current
`generating elements, which is what these photodetectors are, if they're
`connected in parallel the total output of that ring containing those detectors
`will be the combined sum of each and every photodetector in that ring and
`that's what a POSITA would look for in these types of situations where
`they're trying to maximize the amount of backscattered light that it's picked
`up and what this really means as detailed in Dr. Kenny's second declaration
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
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`that's shown on the right side of the slide, a signal can be detected even if
`not all detectors pick up a signal, otherwise if these were connected in series
`if just one detector happened to not pick up a signal the total output of that
`ring would be zero and that's certainly a non-fact (phonetic) situation that
`would be ideal in these applications.
`JUDGE KINDER: Mr. In, this is Judge Kinder. Can I ask a quick
`question?
`MR. IN: Yes, of course.
`JUDGE KINDER: What does Dr. Kenny testify how is Aizawa
`currently wired? I know a lot of Patent Owner's arguments are kind of based
`on the individuality of each sensor, but what's his testimony about how
`Aizawa is currently wired and then if you want to elaborate on the changes
`that would need to be made to that?
`MR. IN: Sure, sure, great question, Judge Kinder. I think I had a
`slide here if you give ma second to locate it. So the quick answer there is
`that Aizawa really doesn't say explicitly one way or the other whether it's in
`series or whether its multiple photodetectors are in series or parallel but sort
`of a quick answer to that is, again, based on the very simple logic and simple
`sort of electric circuit designs concepts that I mentioned, a POSITA certainly
`would have appreciate and understood that it would have been in parallel
`and one of the reasons for that is that Aizawa is expressly concerned with
`making sure to pick up as much of the scattered light as possible and so by
`having that in parallel it insures that it achieves that goal because, as I
`mentioned earlier, even if one of the detectors in that ring happens to not
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
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`pick up a signal the fact that they're connected in parallel means that at least
`there will be an aggregate signal that is received by the system and if we go
`to slide 55 briefly, Your Honors, and this is sort of from Dr. Kenny's
`deposition transcript where first at the top part he sort of confirms that
`Aizawa doesn't really say explicitly one way or the other whether its
`detectors are in series or in parallel but it's probably in parallel because that's
`what a POSITA would understand to be the overall goal of not just Aizawa
`but these types of detection devices in general and he also goes on in the
`bottom side of that slide from his deposition that it's -- that there's certainly
`benefits of wiring these detectors in that configuration for the reasons I
`explained. Does that help, Judge Kinder?
`JUDGE KINDER: Yes, that's fine. Thank you. I had to unmute
`myself.
`JUDGE WIEKER: This is Judge Wieker. Could I ask a follow-up
`question on that?
`MR. IN: Yes, of course.
`JUDGE WIEKER: Patent Owner points several times to paragraph 28
`of Aizawa which includes a sentence that says the arithmetic circuit 3 has a
`functional value. It computes the number of outputs above the threshold
`value per unit time so as to calculate a pulse rate. Does Dr. Kenny discuss
`this portion of Aizawa at all and specifically what it means to compute the
`number of outputs?
`JUDGE WIEKER: Sure. I will have to go back to the record to see
`exactly what he says but what I can say at this time is that his understanding
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
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`was that it's just talking about sensing the pulse and if the goal is assessing
`the pulse, that goal is really maximized by maximizing the amount of signals
`that are detected by this ring in Aizawa and what he also made clear in his
`declarations is that there is absolutely no disclosure anywhere in Aizawa that
`says here is how you extract the individual signals from each photodetector.
`It's actually not in there. There is a schematic graph that shows what, you
`know, one of the detectors what its output would be but that's not really
`connected in any meaningful way to the actual device that is shown in
`Aizawa. In fact, it's most likely as Dr. Kenny testified that it's connected in
`parallel because that really allows you to achieve all the goals of Aizawa in
`the most beneficial manner.
`JUDGE WIEKER: I do see several portions of Aizawa, for example
`paragraphs 23 and 27 where it talks about detecting light from the multiple
`detectors --
`MR. IN: Yes.
`JUDGE WIEKER: -- so I do understand that Aizawa doesn't disclose
`individually monitoring in any explicit way but if you could on rebuttal
`come back if there's any deposition or declaration testimony that specifically
`addresses that number of outputs part of paragraph 28 I think that would be
`helpful for trying to put together all of Aizawa's statements into one
`understandable story.
`MR. IN: Absolutely, Your Honor. The paragraph from Aizawa you
`read I think is very consistent with our understanding of it and we'll be sure
`to follow up in the rebuttal.
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
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`JUDGE WIEKER: Thank you.
`MR. IN: Any other questions before I move on? Okay. So I think
`now if we could turn to slide 56, Your Honors, I did want to discuss some
`additional reasons that Dr. Kenny provided for why a POSITA would have
`been motivated to add the second ring to Aizawa besides just trying to pick
`up as much signals as possible.
`So one thing we know from Aizawa and from the many related
`discussions we had in the previous proceedings about Ohsaki is that
`minimizing slippage of the device when worn, for example on the wrist, is a
`very desirable characteristic and related to this Dr. Kenny explained how
`other references in this field, for example Mendelson-799 which he refers to
`in the declaration portions here on slide 56, talks about using separate
`signals from the near and far detectors to detect sensor displacement and
`then based on that notify the user if the sensor needs to be adjusted. So, for
`instance, Mendelson-799 really provides a general teaching whereby
`separate signals from near and far detectors can be monitored separately
`such that when neither detector is providing a signal, the system knows that
`the sensor is displaced so severely that the user should adjust the sensor
`because no detection signal is being picked up and Dr. Kenny explained how
`a similar concept can be applied to having this inner-ring and outer-ring and
`be modified as our device such that by monitoring each stream separately
`the user can be notified of associated severe dislocation of the sensor device.
`If we move on to slide 58 now, Your Honors, this is another reason
`that Dr. Kenny provided and this is with reference to another Mendelson
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
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`reference. It's a long name here. So it's Mendelson-IEEE-1988. He
`explained that there can be other benefits and specifically what he said is
`that a POSITA would have known, for instance as described in this
`particular Mendelson, and I'll quote from page 801 of Mendelson-IEEE-
`1988 which says that,
`"The light must be detected by the photodiode decreases roughly
`exponentially as the radial distance from the LEDs is increased."
`And this is actually a point that Patent Owner agrees with and makes
`in its briefings. So what this really means is that magnitude of the current
`signals that would be picked up by the inner-ring can be significantly larger
`than the magnitude of the current signals picked up by the outer-ring and as
`Dr. Kenny explained, keeping each ring signal separate allows a POSITA to
`adjust the output of each stream independently. For example, being able to
`keep the two magnitudes, you know, that's the same ballpark so that one
`signal won't always drown out the other and it's not actually just Dr. Kenny
`saying this. Mendelson-2003 itself explains this at page 3017. It says and I
`quote,
`"The output of the amplifier was monitored continuously to be sure
`that distinguishable and stable signals were observed from each set of
`photodetectors so that the electronics were not saturated."
`So even Mendelson-2003 seems to, you know, contemplate that by
`controlling the gate (phonetic) of each ring separately it gives you this, you
`know, great benefit of not saturating the system because, as I mentioned
`earlier, the inner-rings can have much higher current generated than the
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
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`outer-rings. So that's the end of the issue 2, Your Honor, so if you have any
`questions I'd be happy to take them, otherwise I'll be happy to hand things
`over to my colleague, Andrew Patrick.
`JUDGE WIEKER: I had one more question for you. This is Judge
`Wieker. Much of Patent Owner's argument points to a sentence in the
`conclusion of Mendelson-2003 that refers to battery longevity being
`extended by employing a "wide annular PD" and Patent Owner seems to
`read that sentence as requiring a single large ring, not two separate rings.
`Can you address that, please?
`MR. IN: I can. So if we go to slide 60, Your Honors, that's a great
`question. So the first thing I'll say is that there's no question that
`Mendelson-2003 teaches having two separate rings producing two separate
`signal streams and in fact as you can see on the bottom slide here on slide 60
`from Mendelson-2003 it actually provides measured performance based on
`using one of the two rings or using both rings together at the same time and
`as I noted earlier, Mendelson-2003 also talks about adjusting the gain of
`each ring separately.
`The important thing here I think that answers your question is that
`there's no other disclosure in Mendelson-2003 on how it plans to widen the
`detection area. So it talks about of course this theoretical I guess very large
`sensor that potentially could provide benefits, but there's really no disclosure
`anywhere in Mendelson-2003 how one would achieve that and in fact the
`only road mapping disclosure that it provides to a POSITA is that
`Mendelson-2003 mentions very clearly that the benefits of that single huge
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`IPR 2020-01713 (Patent 10,624,564 B1)
`IPR 2020-01716 (Patent 10,702,194 B1)
`IPR 2020-01733 (Patent 10,702,195 B1)
`IPR 2020-01737 (Patent 10,709,366 B1)
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`detector can be simulated by having two separate rings of detectors and
`that's all Mendelson-2003 says.
`So based on that disclosure, you know, theoretically it might be good
`to have a single very large detector but I think in practice, and the actual
`implementation, it's not clear, you know, if that's possible even and further
`Mendelson-2003 only provides a way of achieving that by having two
`separate rings. Does that help, Judge Wieker?
`JUDGE WIEKER: Very much. Thanks.
`MR. IN: Thank you. Okay. I'll turn things over to Andrew now.
`Thank you.
`MR. PATRICK: All right. Thank you for that, HJ. Your Honors, as
`Karl forecast at the beginning of our presentation we're not intend
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