Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 31
`Entered: April 5, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`_______________
`
`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`_______________
`
`Record of Oral Hearing
`Held: March 15, 2022
`_______________
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 31
`Entered: April 5, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`_______________
`
`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`_______________
`
`Record of Oral Hearing
`Held: March 15, 2022
`_______________
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`W. KARL RENNER, ESQ.
`ANDREW B. PATRICK, ESQ.
`HYUN JIN IN, Ph.D, ESQ.
`Fish & Richardson, P.C.
`1000 Maine Avenue, NW
`Washington, D.C. 20024
`(202) 626-6447 (Renner)
`(202) 626-7735 (Patrick)
`(202) 626-7765 (In)
`renner@fr.com
`patrick@fr.com
`in@fr.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`JAROM D. KESLER, ESQ.
`STEPHEN W. LARSON, ESQ.
`Knobbe Martens
`2040 Main Street
`14th Floor
`Irvine, California 92614
`(949) 760-0404 (Kesler)
`(949) 721-5301 (Larson)
`jarom.kesler@knobbe.com
`stephen.larson@knobbe.com
`
`JACOB PETERSON, ESQ.
`Knobbe Martens
`925 4th Avenue
`Suite 2500
`Seattle, Washington 98104
`(206) 405-2000
`jacob.peterson@knobbe.com
`
`
`
`The above-entitled matter came on for hearing on March 15,
`
`2022, commencing at 12:59 p.m. EDT, via videoconference.
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`P R O C E E D I N G S
`- - - - -
`
`
`
`12:59 p.m.
`JUDGE WIEKER: Good afternoon, everyone. We will hear
`argument today in four proceedings, specifically IPR2021-00193,
`-195, -208, and -209 between Petitioner, Apple Inc., and Patent
`Owner, Masimo Corporation. These proceedings concern U.S. Patent
`No. 10,299,708; Patent No. 10,376,190; Patent No. 10,258,266; and
`Patent No. 10,376,191 respectively. I'm Judge Wieker and I'm joined
`today by Judge Cocks and Judge Kinder. There are a few
`housekeeping matters we would like to address briefly before asking
`for appearances. First, thank you for your flexibility in
`accommodating this video hearing. If any technical difficulties arise
`during the hearing, please call or email the hearing staff.
`Our primary concern is your right to be heard so if at anytime
`you have technical problems that undermine your ability to represent
`your client effectively, please let us know immediately. If we become
`aware that someone gets disconnected or is experiencing technical
`difficulties, we will pause the hearing while the issue is resolved.
`For clarity of the record, please mute yourself when you are
`not speaking. When you do speak, please identify yourself at the start
`of your remarks so that the court reporter can make an accurate
`transcript. At the conclusion of the hearing please remain on the line
`in case the court reporter has any questions.
`
`With that, let's turn to appearances, please. Counsel for
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
` Petitioner. would you please introduce yourself.
`MR. PATRICK: Thank you, Your Honors. I'm Andrew
`Patrick, counsel for Petitioner. I'm joined today by my colleagues H.
`J. In and Karl Renner.
`JUDGE WIEKER: Thank you very much.
`And for Patent Owner?
`MR. KESLER: Good morning. Jarom Kesler on behalf of
`Patent Owner Masimo. With me today is Jacob Peterson and Stephen
`Larson.
`JUDGE WIEKER: Great. Thank you.
`As discussed in our January 28th order, the four proceedings
`before us today will be argued together and will share a single
`transcript. Each side will have a total of 90 minutes of argument time
`with which to address all four proceedings. That 90-minute time
`allotment includes the parties' principle argument and any rebuttal.
`Petitioner will begin first and then Patent Owner will follow.
`If requested, we will then hear Petitioner's rebuttal and Patent Owner
`sur-rebuttal. The panel will keep time and will aim to give you a
`warning a few minutes before the expiration of each party's principal
`argument time. As a reminder, Petitioner bears the burden of proving
`any proposition of unpatentability by a preponderance of the evidence.
`
`Does either party have any questions regarding the procedure
`for today's argument before we get started?
`MR. PATRICK: No, Your Honors.
`MR. KESLER: No, Your Honor.
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`JUDGE WIEKER: Thank you.
`As a reminder, the hearing is open to the public and a full
`transcript of the hearing will become part of the record. Finally,
`please bear in mind that because this hearing is being held virtually,
`we cannot see your demonstrative exhibits, but we do have a copy of
`the papers and the demonstratives with us so if you can please identify
`each demonstrative slide number as you refer to it, that would be
`great.
`
`With that, we will begin the argument. Mr. Patrick, would
`you like to reserve time for rebuttal?
`MR. PATRICK: Thank you, Your Honor. Because the issues
`addressed in today's hearing overlap so strongly with those already
`addressed with respect to later patents and recent hearings, we are
`planning for a relatively short direct of about 20 minutes. In that
`regard, we would like to reserve the remainder of our time, although
`we're not sure that we'd use it.
`JUDGE WIEKER: Okay, Petitioner. You may begin your
`argument when you're ready.
`MR. PATRICK: Okay. Thank you, Your Honors. May it
`please the Board, my name is Andrew Patrick and I represent
`Petitioner Apple. I would like Your Honors to turn to slide 2 of the
`deck which provides an overview of our demonstratives.
`Similar to the issues address in recent hearings, the dispute
`between the parties in the proceedings before Your Honors today
`turns on the question of combinability. Indeed, similar to those
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`hearings, and as shown in the table of contents provided on slide 2,
`we've organized our demonstratives to address the record of evidence
`supporting the integration of features for which Masimo has
`questioned combinability.
`That said, again, given the strength of substantive overlap
`between the cases, being mindful of your time, we only plan to
`address Issue 1A during today's direct unless Your Honors currently
`have questions related to the other issues.
`As shown, Issue 1A relates to motivation for integrating a
`cover with a protruding convex surface and to each base reference so
`as to improve light-gathering efficiency as taught by Inokawa. In that
`regard, I would like to ask Your Honors to turn to slide 4. At the
`bottom of slide 4 we see the proposed modification of Aizawa to
`include a cover with a protruding convex surface. More specifically,
`at lower left we see an annotated version of Aizawa's Figure 1(b). At
`lower right we see a version of Aizawa's Figure 1(b) modified to
`include the cover with a convex protrusion. In each figure the cover is
`shown in blue.
`Also shown on this slide are two excerpts from Dr. Kenny's
`declarations in which Dr. Kenny offers two separate and distinct
`rationales for integrating a cover with convex protrusion as
`encouraged by each in Ohsaki and Aizawa into Aizawa's pulse
`sensoring. As explained by Dr. Kenny, these motivations include
`improved light-gathering efficiency and improved adhesion between
`the sensor and the user's tissue.
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`More specifically, and as Dr. Kenny explains in the testimony
`highlighted blue at the right of slide 6, a person having ordinary skill
`in the art would have found it obvious that in addition to reducing
`slippage and thereby noise introduced through body motion,
`modification of Aizawa's cover to include a convex protrusion would
`further improve Aizawa's signal-to-noise ratio by causing more light
`backscattered from tissue to strike Aizawa's photo detectors than it
`would have with a flat cover.
`Indeed, as shown on slide 7, Dr. Kenny has consistently
`testified throughout these proceedings that a person having ordinary
`skill would have understood that convex protrusion would improve
`light concentration in pretty much all of the locations under the
`cover's curvature and, for at least that reason, would have then
`motivated him to modify Aizawa's sensor to include a convex
`protrusion similar to Inokawa's lens.
`In that regard, Dr. Kenny was not relying on intuition alone.
`Instead, as shown on slide 8, Dr. Kenny's first declaration cited
`Inokawa as demonstrating that a POSITA would have understood that
`adding a protruding convex surface to Aizawa would have the
`additional benefit of increasing light-collecting efficiency which
`would, in turn, lead to an improved signal-to-noise ratio and more
`reliable pulse detection.
`For example, and as noted by Dr. Kenny, Inokawa teaches that
`it's cover may be flat as shown in Inokawa's Figure 17 reproduced at
`the bottom of this slide. Or may alternatively be formed into a convex
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`lens as shown in Inokawa's figure 16, also reproduced at the bottom of
`the slide. In that regard, and as shown at upper right, Inokawa's
`paragraph 15 expressly discloses that when a lens is placed on the
`surface of its pulse sensor, the lens makes it possible to increase the
`light-gathering ability of that sensor.
`Now, contrary to Masimo's arguments, a person of ordinary
`skill would not have understood the benefit of increased light-
`gathering ability expressly taught by Inokawa as being limited to
`arrangements involving centrally located detectors. Rather, as shown
`in the figures we've used on slide 9, Inokawa and Ohsaki both disclose
`embodiments in which convex lens directs light to detectors that are
`not centrally located. In that regard, in Inokawa's Figure 3, for
`example, which is shown at the upper right on slide 9, a base device
`sensor includes a lens that improves light gathering for peripherally
`located detectors.
`Similarly, as shown at the lower right of this slide -- the lower
`portion of the slide, Ohsaki's Figure 2 illustrates an arrangement in
`which an off-center detector received light that has been emitted from
`an adjacent LED into user tissue after that light has been reflected
`back on the tissue and refracted through the interface provided by
`Ohsaki's convex cover. So as explained in our petitions, Inokawa's
`disclosure would motivate a POSITA to modify Aizawa's cover to
`feature a convex protrusion to obtain the benefit of improved light-
`gathering ability of Aizawa's sensor.
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`Turning to slide 10 we can see excerpts of Dr. Kenny's
`deposition testimony in which he explained in detail the manner in
`which a person of ordinary skill would have leveraged Inokawa's
`teachings to obtain the sought-after improvement in Aizawa's light-
`gathering ability.
`In the clip reproduced at the upper left of this slide, for
`example, Dr. Kenny noted that the person of skill would have
`understood how to take advantage of Aizawa's detector locations and
`the curvature of the convex surface to obtain that improvement.
`Specifically, Dr. Kenny explains at upper right that the person of skill
`would place the curvature in an advantageous position relative to
`Aizawa's detectors and, as such, would have had a good expectation
`of being able to capture more light at the detectors.
`More specifically, at bottom right Dr. Kenny explains that the
`curvature in the modified sensor would have been more pronounced at
`the perimeter than in the center so as to increase the amount of
`diffused light that arrives at Aizawa's detectors. It stands to reason as
`Aizawa's detectors are arranged symmetrically and arranged sounding
`the central light source, but Dr. Kenny is, again, not relying on reason
`alone for this point which is corroborated by additional evidence of
`record.
`Turning to slide 11, for example, we see at upper right an
`explanation from the Webster textbook of the manner in which light
`emitted from central LEDs in the reflectance-type pulse oximetry
`devices diffuses through user tissue and then reflects back such that
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`the backscattered light forms a circular pattern around the LEDs.
`Webster goes on to explain if multiple photodiodes are placed
`symmetrically with respect to the emitter, a larger fraction of
`backscattered light can be detected within the area surrounding the
`emitter and, therefore, more accurate readings can be obtained.
`Notably like the reflectance-type pulse oximetry devices
`described by Webster, Aizawa's pulse-rate sensor, which is shown at
`the lower right of this slide, features multiple photodetectors placed
`symmetrically about the central emitter which enables backscattered
`light to be detected within a circular active detection area surrounding
`that emitter.
`And, as Dr. Kenny explains in paragraph 26 of his second
`declaration reproduced at the left, a person of skill would have
`understood that a cover with a convex protrusion would be
`particularly effective at increasing light-gathering ability in
`configurations like Aizawa's.
`For example, Dr. Kenny explains that far from focusing light
`to the center, as Masimo contends, the cover's curvature would
`provide a slight refracting effect such that light rays that may have
`otherwise missed the detection area are instead directed toward that
`area as they pass through the interface provided by the cover.
`Turning to slide 12, we again see Dr. Kenny explaining this
`phenomenon with reference to the fact that the diffused light
`backscattered from user tissue would encounter the interface provided
`by the convex protrusion in Aizawa's cover at all locations along that
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`So contrary to
`cover's surface and from a variety of angles.
`Masimo's arguments, Dr. Kenny explains that there's simply no way
`for a diffused backscattered light encountering the interface provided
`by the cover can be focused to any single location within Aizawa's
`sensor and rather, as discussed, a person of skill would have
`understood that a cover with a convex protrusion would provide a
`slight refracting effect that would improve light detection efficiency at
`all locations under its curvature including the active detectionary
`provided by the detectors surrounding Aizawa's LED.
`For at least that additional reason, the person of skill would
`have been motivated and found it obvious to improve Aizawa's system
`through incorporation of a cover with a convex protrusion.
`Now, unless Your Honors presently have further questions on
`this or other topics, we can actually end our direct and turn it over to
`opposing counsel.
`JUDGE WIEKER: I don't believe the panel has any
`questions. MR. PATRICK: Thank you.
`JUDGE WIEKER: Thank you, Mr. Patrick.
`Mr. Kesler, would Patent Owner like to reserve time for sur-
`rebuttal?
`MR. KESLER: Yes, I would like to reserve 30 minutes. This
`is Jarom Kesler for Patent Owner.
`JUDGE WIEKER: Thank you. Whenever you are ready, you
`may begin.
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`MR. KESLER: Thank you, Your Honors. Again, Jarom
`Kesler for Patent Owners. The patent at issue here arose from
`innovations involving physiological parameters that nobody in the
`world had solved until the inventor solved it.
`The Federal Circuit has cautioned the prejudice of hindsight
`bias overlooks that the genius of invention is often a combination of
`known elements, which in hindsight seem preordained. That's Power
`Integration v. Fairchild semiconductor, 711 F.3d 1348. Here there is
`not even art that teaches all the limitations of the claims.
`Now, with regard to Petitioner's arguments, rather than
`constitute reasons to combine, all of Petitioner's stated motivations are
`actually reasons that would lead a person of skill away from the
`argued combinations. First, let's discuss what the claims all have in
`common. Patent Owner slide 5, for example, the claim requires at
`least four detectors spaced apart under a single cover or lens which
`protrudes. That single protrusion covers all of the detectors. None of
`the prior art shows such a configuration in a physiological monitor.
`Petitioner Apple argues that the person of skill would have
`added a single protrusion over all the detectors in order to increase
`light gathering. Both experts provided opinions that a single
`protrusion operate to refract light towards the center. For example, in
`IPR-00208, Exhibit 1003, at paragraphs 1 of 2 to 1 of 3, that's Dr.
`Kenny's testimony. In Exhibit 2004 at paragraph 68, that's Dr.
`Madisetti's testimony.
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`That is true whether it's collimated or diffused light. It makes
`no difference. Light will be refracted to the center. Again, both
`experts testified to this. At Exhibit 2004, paragraph 68, that's Dr.
`Madisetti. And at Exhibit 2007, pages 423, line 7 to 424, line 18,
`that's Dr. Kenny.
`There is no recognition in the prior art and no support to
`suggest a single protrusion with detectors at the periphery would
`increase light to those detectors. Petitioner's expert Dr. Kenny made
`the completely unsupported statement that light concentration at pretty
`much all of the locations under the curvature of the lens would be
`improved. Dr. Kenny's testimony on this matter first introduced on
`reply is completely unsupported and makes no sense. A lens is not an
`amplifier that creates more light. It really refracts existing light in a
`different direction.
`Rather than use one protrusion over all detectors, Petitioner
`never explains why a person of skill seeking to increase light
`gathering wouldn't take a different approach such as putting a lens
`over each detector individually. That makes sense because each
`detector would be at the center of the lens where light is directed.
`
`In fact, a separate lens over the detector -- over multiple
`detectors is actually shown in the prior art cited and discussed by the
`examiner during prosecution. That's a reference called Chaiken, U.S.
`6,223,063. It illustrates four detectors with a lens over each one of
`those detectors, a separate lens over each detector.
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`Petitioner also argues that a protrusion would increase
`adhesion. First of all, the only patent that discusses adhesion states
`that it's best to use a flat plate. That is Aizawa. Aizawa specifically
`says that plate increases comfort because the wrist is not pressed hard
`allowing it to be worn longer which is one of the main objectives of
`Aizawa.
`Ohsaki and Inokawa say nothing of adhesion. Ohsaki
`discusses slippage during movement. Precautions throughout the
`disclosure that a bump can and will cause slippage during movement
`on all but specific configuration on the backside of the wrist. Both
`experts provided testimony supporting this. For example, at Exhibit
`2008, page 156, line 18 through 158 line 20, that's Dr. Kenny. At
`Exhibit 2004, paragraph 83, that's Dr. Madisetti.
`
`Further, adding Ohsaki's bump to Aizawa's sensor would
`cause an uncomfortable protrusion that would defeat one of the
`purposes of Aizawa. Similarly, Mendelson 1988 teaches the use of a
`forehead sensor. There is no evidence that a protrusion on the
`forehead would prevent slippage. Rather, as you can imagine, putting
`a protrusion on a forehead sensor would be incredibly uncomfortable
`and would increase slippage during movement given the structure of
`the forehead.
`Second, again, if Petitioner is arguing the point is to create a
`system to dig in, then Petitioner hasn't shown why a person of skill in
`the art wouldn't again end up with other combinations with multiple
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`small protrusions covering corresponding detectors, again, like in
`Chaiken.
`Similarly, Petitioner has not shown that a single protrusion
`sufficiently sized to cover all the detectors on the periphery of the
`device does provide adhesion. If a person of skill would even bother
`to look elsewhere because Aizawa already teaches its flat plate
`provides good adhesion, as Ohsaki recognizes, a convex surface on
`the palm side slips providing the opposite of adhesion. That is why
`Ohsaki does not teach adhesion. Ohsaki teaches a coordination with
`the anatomy of the user, a consideration totally ignored by Petitioner.
`It was surprising that the single protrusion over four or more
`detectors provided an order of magnitude increase in signal strength.
`That was not expected. It was not obvious from an optic's
`understanding, or in view of this art. Rather, it would discovered
`through innovation and experimentation. A limitation of multiple
`detectors under a single protrusion on a physiological sensor used on a
`patient's tissue is not found anywhere in the prior art despite
`thousands of prior art references reviewed by both parties and years of
`many companies working to advance this technology.
`In this case, the experienced examiners exercised their
`expertise in the art when they examined this patent. The examiners
`understood that the claim combination of features provided a
`patentable advance unique in the field. Under '708 patent file history,
`that's IPR-00193, Exhibit 1002 at 255 to 259, the examiners
`acknowledged patentability over prior art that includes multiple
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
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`emitters, multiple detectors, and a plurality of lenses, one over each
`detector. Again, that Chaiken, U.S. 6,223,063.
`The examiners have a multi-page discussion of the distinction
`of the prior art. For example, in the comments on the statements of
`reasons for allowance, this set of patents -- in this set of patents the
`examiners indicate that the prior art in Chaiken teaches an optical
`physiological measurement device, Figures 1 through 3 and associated
`descriptions, comprised as a plurality of emitters with different
`wavelengths, or detectors arranged on the surface and spaced apart
`from each other, a plurality of lenses each cover an optical
`communication with respect to the detector. However, the prior art of
`record does not teach or suggest a light-permeable cover arranged
`above at least a portion of the housing, a light permeable cover
`comprising of protrusion arranged to cover the at least four detectors.
`That's in IPR-00195, Exhibit 1002, at 271 to 272. Importantly, this
`statement by the examiners remains true today. No reference relied
`on by Petitioner discloses, teaches, or suggests physiological sensor
`with a convex protrusion over multiple detectors.
`
`Thousands of pages, briefings, declarations, testimony, and
`debates make one thing clear. Designing a noninvasive physiological
`parameter sensor is complicated. There are skin pressure and
`movement problems. Mendelson and Aizawa both disclose those;
`emitter detector relative placement issues, placement on the body,
`measurement site specifics, in that the physiological tissue and light
`interaction complexities. Are you looking at capillary blood or trying
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`to view the artery itself. Layers of fluid such as sweating or amniotic
`fluid, bone reflection or not, sensor geometry, to name a few.
`Placing a convex protruding cover contradicts common
`wisdom and violates the teachings of the very prior art that Petitioner
`relies on. The '708 patent identifies the issue of the effect on blood
`flow at measurement site as a concern. That's the 708 patent, column
`20, lines 33 through 36. The Aizawa based reference specifically
`teaches using a flat plate. After over 20 years of research by
`Mendelson, we continue to teach using a flat plate -- a flat sensor.
`Excuse me. The prior art before the examiners had a small bump over
`each of the multiple detectors, but not a protrusion covering multiple
`detectors. That makes a lot more sense given Petitioner's motivations.
`
`Okay. As I dive in, I'm going to refer to my slides. Patent
`Owner slide 15. Dr. Madisetti provided multiple paragraphs
`explaining why Ohsaki relies on a longitudinal board and works with
`the anatomy on the backside of the wrist and why this is not
`compatible with Aizawa's palm-side sensor. For example, in IPR-
`00193, Exhibit 2004, at paragraphs 83 through 85.
`Dr. Madisetti provided multiple paragraphs explaining exactly
`why at Aizawa's measurement location flat sensor surface improves
`adhesion and the convex surface of Ohsaki, as actually pointed out by
`Ohsaki, was slipped at that location. Again, that's Exhibit 2004,
`paragraphs 83 through 85. Dr. Madisetti provides multiple paragraphs
`of detailed explanation why the Ohsaki Inokawa configuration will
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`not increase the signal as originally claimed by Dr. Kenny. That's
`Exhibit 2004, paragraph 50 through 75.
`For example, you can see anatomy explanation at Patent
`Owner slide 11. Dr. Madisetti provides detail on why a person of skill
`would understand that Ohsaki's board is longitudinal and why a
`person of skill would not have been led to put a convex surface of
`Ohsaki and Inokawa sensor. That's Exhibit 2004 at 83 through 85.
`
`Dr. Madisetti explains why a convex surface would result in
`relatively less light reaching peripheral detectors than the flat surface
`taught by Aizawa. That's Exhibit 2004 at 50 to 75.
`Dr. Madisetti made clear that convex surface would direct relatively
`more light to the sensor than a flat surface. Again, that's Exhibit 2004
`at paragraphs 51 through 66.
`Dr. Kenny points to no teaching in the prior art or any
`technical reference indicating that a convex surface over multiple
`detectors will direct more light to peripheral detectors than would
`have otherwise reached those detectors with a flat plate. Petitioner
`also ignores citations by Dr. Kenny agreeing that light intensity
`decreases with the square of the distance.
`If the strength decreases with distance, taking light from
`further away means that any light redirected from further towards the
`edge would be weaker than the light that originally would have hit the
`detector but is condensed to the center away from the detectors. Dr.
`Kenny testified to that, I believe, at Exhibit 2027, page 49, line 17
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`through 50, line 13; page 57, lines 10 through 22. Dr. Madisetti
`explained that at Exhibit 2004, paragraph 97.
`Ohsaki does not teach convex generally improves any
`measurement site. Importantly, Dr. Kenny agreed that the description
`of Figure 4 in Ohsaki, which is paragraph 25, involves the sensor on
`the backside of the wrist. That's Petitioner's slide 28, for example.
`Petitioner argues that Ohsaki, paragraph 25, teaches that a convex
`surface is better anywhere.
`Here note the lack of reference to Dr. Kenny in Petitioner's
`slide 28. That's probably because even Petitioner's expert Dr. Kenny
`agreed that testing for Figure 4(a) and 4(b), which is what is discussed
`at paragraph 25, are comparing flat to convex on the backside of the
`wrist. That's at Exhibit 2008, page 156, line 18, through page 157,
`line 4.
`I'll even read you the question. "Do you have an
`understanding of where the device is being? On which side of the
`sensor is in Figure 4?" Answer from Dr. Kenny, "I think most of the
`specification is referring to the sensor mounted on the back of the
`wrist so I'm -- it doesn't say explicitly but I'm going to make that
`judgment. I think one of ordinary skill in the art would think Figure 4
`applies to a sensor mounted on the backside of the wrist."
`Dr. Madisetti also testified that Ohsaki's Figure 4(a) and 4(b)
`discussed at Aizawa paragraph 25, are about the backside of the wrist.
`That's at Exhibit 2004, paragraph 85.
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`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`In addition, nowhere does Petitioner address that its expert,
`Dr. Kenny, also agreed that the comparison would be between the
`front and backside of the wrist. In Figure 3 it's with a convex surface.
`Dr. Kenny agreed that the sensor being tested in Figure 3(b) and being
`described as slipping on the palm side of the wrist is with a convex
`surface. That's at Exhibit 2008, page 157, line 5 through 158, line 20.
`Here's the questions. "Okay. So a few moments ago before
`we went to the break, you testified you believe the performance
`shown in Figure 3 and Figure 4 were comparable. My question for
`you is does that help you understand whether Figure 3(a) tested a
`device with a convex surface?" Mr. Smith: "Objection. Form."
`
`Question: "Does that help you understand that Figure 3(a)
`tested a sensor with a convex s
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