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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner,
`
`v.
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`MASIMO CORPORATION,
`Patent Owner.
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`
`
`
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`
`
`Case IPR2021-00208
`U.S. Patent 10,258,266
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`
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`DECLARATION OF VIJAY K. MADISETTI, PH.D.
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`
`
`
`Masimo Ex. 2004
`Apple v. Masimo
`IPR2021-00208
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`
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`I.
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`TABLE OF CONTENTS
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`QUALIFICATIONS ........................................................................................ 1
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`II. MATERIALS CONSIDERED ........................................................................ 8
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`III. UNDERSTANDING OF PATENT LAW .................................................... 10
`
`A.
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`B.
`
`C.
`
`Level Of Ordinary Skill In The Art ..................................................... 10
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`Claim Construction ............................................................................. 11
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`Obviousness ......................................................................................... 11
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`IV.
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`INTRODUCTION TO MASIMO’S TECHNOLOGY ................................. 13
`
`A.
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`B.
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`The ’266 Patent ................................................................................... 13
`
`Introduction To The Independent Claims Of The ’266
`Patent ................................................................................................... 14
`
`V.
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`THE PETITION’S PROPOSED COMBINATIONS .................................... 16
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 18
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`VII. GROUNDS 1A-1B DO NOT ESTABLISH
`OBVIOUSNESS ............................................................................................ 19
`
`A.
`
`Introduction To Ground 1A ................................................................. 19
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`1.
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`2.
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`3.
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`Aizawa Uses Peripherally Located Detectors
`Around A Single Centrally Located Emitter
`(LED) ........................................................................................ 19
`
`Inokawa Uses Peripherally Located Emitters
`(LEDs) Around A Single Centrally Located
`Detector ..................................................................................... 21
`
`Ground 1A’s Proposed Combination Of
`Aizawa And Inokawa ................................................................ 22
`
`B.
`
`Ground 1A Does Not Establish Obviousness ..................................... 24
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`-i-
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`1.
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`2.
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`A POSITA Would Not Have Been Motivated
`To Combine Inokawa’s Convex Lens With
`Aizawa’s Sensor ........................................................................ 24
`
`A POSITA Would Not Have Added A Second
`Emitter (LED) To Aizawa ........................................................ 48
`
`C.
`
`The Remaining Challenged Dependent Claims Are
`Nonobvious Over Ground 1A ............................................................. 54
`
`D. Ground 1B Does Not Establish Obviousness For The
`Same Reason As Ground 1A And For Additional
`Reasons ................................................................................................ 54
`
`1.
`
`2.
`
`Ohsaki Does Not Fix The Problems With
`Ground 1A’s Proposed Aizawa-Inokawa
`Combination .............................................................................. 55
`
`A POSITA Would Have Understood That
`Ohsaki’s Board Would Not Prevent Slipping
`With Aizawa’s Device .............................................................. 56
`
`E.
`
`The Challenged Dependent Claims Are Nonobvious
`Over Ground 1B .................................................................................. 59
`
`VIII. GROUND 2 DOES NOT ESTABLISH OBVIOUSNESS ........................... 59
`
`A.
`
`Introduction To Ground 2 ................................................................... 59
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`1. Mendelson-1988 Uses Peripherally Located
`Detectors Around Centrally Located Emitters
`(LEDs) ....................................................................................... 60
`
`2.
`
`Ground 2’s Proposed Combination Of
`Mendelson-1988 And Inokawa ................................................. 61
`
`B.
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`Ground 2 Does Not Establish Obviousness ........................................ 62
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`-ii-
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`1.
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`2.
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`3.
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`4.
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`Ground 2 Does Not Demonstrate A Motivation
`To Combine Mendelson-1988 And Inokawa,
`And Does Not Establish A Reasonable
`Expectation Of Success ............................................................. 62
`
`Ground 2’s Proposed Combination Does Not
`Include The Claimed Cover (Claim 9) ..................................... 67
`
`Ground 2’s Proposed Combination Of
`Mendelson-1988 And Inokawa Does Not Have
`A “Circular Housing” With A “Lens Forming
`A Cover Of The Circular Housing” (Claim 9) ......................... 69
`
`Dr. Kenny Relies On References Not Identified
`As Part Of Ground 2 With No Analysis Of Any
`Motivation To Combine ............................................................ 70
`
`C.
`
`The Challenged Dependent Claims Are Nonobvious
`Over Ground 2 ..................................................................................... 72
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`IX. OATH ............................................................................................................ 73
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`-iii-
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`I, Vijay K. Madisetti, Ph.D., declare as follows:
`
`1.
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`I have been retained by counsel for Patent Owner Masimo Corporation
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`(“Masimo”) as an independent expert witness in this proceeding. I have been asked
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`to provide my opinions regarding the Petition in this action and the declaration
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`offered by Thomas W. Kenny, Ph.D., (Ex. 1003) challenging the patentability of
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`claims 1-6, 8-16, 18, and 19 of U.S. Patent No. 10,258,266 (“the ’266 Patent”). I
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`am being compensated at my usual and customary rate for the time I spend working
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`on this proceeding, and my compensation is not affected by its outcome.
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`I.
`QUALIFICATIONS
`2. My qualifications are set forth in my curriculum vitae, a copy of which
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`is included as Exhibit 2005. A summary of my qualifications follows.
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`3.
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`I am a professor in Electrical and Computer Engineering at the Georgia
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`Institute of Technology (“Georgia Tech”). I have worked in the area of digital signal
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`processing, wireless communications, computer engineering, integrated circuit
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`design, and software engineering for over 25 years, and have authored, co-authored,
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`or edited several books and numerous peer-reviewed technical papers in these areas.
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`4.
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`I obtained my Ph.D. in Electrical Engineering and Computer Science at
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`the University of California, Berkeley, in 1989. While there, I received the Demetri
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`Angelakos Outstanding Graduate Student Award and the IEEE/ACM Ira M. Kay
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`Memorial Paper Prize.
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`-1-
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`5.
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`I joined Georgia Tech in the Fall of 1989 and am now a tenured full
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`professor in Electrical and Computer Engineering. Among other things, I have been
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`active in the areas of digital signal processing, wireless communications, integrated
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`circuit design (analog & digital), system-level design methodologies and tools, and
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`software engineering. I have been the principal investigator (“PI”) or co-PI in
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`several active research programs in these areas, including DARPA’s Rapid
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`Prototyping of Application Specific Signal Processors, the State of Georgia’s
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`Yamacraw Initiative, the United States Army’s Federated Sensors Laboratory
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`Program, and the United States Air Force Electronics Parts Obsolescence Initiative.
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`I have received an IBM Faculty Award and NSF’s Research Initiation Award. I
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`have been awarded the 2006 Frederick Emmons Terman Medal by the American
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`Society of Engineering Education for contributions to Electrical Engineering,
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`including authoring a widely used textbook in the design of VLSI digital signal
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`processors.
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`6.
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`During the past 20 years at Georgia Tech, I have created and taught
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`undergraduate and graduate courses in hardware and software design for signal
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`processing, computer engineering (software and hardware systems), computer
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`engineering and wireless communication circuits.
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`-2-
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`7.
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`I have been involved in research and technology in the area of digital
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`signal processing since the late 1980s, and I am the Editor-in-Chief of the CRC
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`Press’s 3-volume Digital Signal Processing Handbook (1998, 2010).
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`8.
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`I have founded three companies in the areas of signal processing,
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`embedded software, military chipsets involving imaging technology, and software
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`for computing and communications systems. I have supervised Ph.D. dissertations
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`of over twenty engineers in the areas of computer engineering, signal processing,
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`communications, rapid prototyping, and system-level design methodology.
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`9.
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` I have designed several specialized computer and communication
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`systems over the past two decades at Georgia Tech for tasks such as wireless audio
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`and video processing and protocol processing for portable platforms, such as cell
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`phones and PDAs. I have designed systems that are efficient in view of performance,
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`size, weight, area, and thermal considerations. I have developed courses and classes
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`for industry on these topics, and many of my lectures in advanced computer system
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`design, developed under the sponsorship of the United States Department of Defense
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`in the late 1990s, are available for educational use at http://www.eda.org/rassp and
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`have been used by several U.S. and international universities as part of their course
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`work. Some of my recent publications in the area of design of computer engineering
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`and wireless communications systems and associated protocols are listed in Exhibit
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`2005.
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`-3-
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`10.
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`In the mid 2006-2007 timeframe, I collaborated with Professor John
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`Scharf and his colleagues at Emory Healthcare system in developing FFT-based
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`pulse oximetry system prototypes on FPGAs, which extended technologies
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`developed by Prof. Scharf and his colleagues from the 1996 timeframe (See T.
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`Rusch, R. Sankar, J. Scharf, “Signal Processing Methods for Pulse Oximetry”,
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`Comput. Bio. Med, Vol. 26, No. 2, 1996). Some of my more recent publications in
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`the area of biological signal processing and bioinformatics are listed in my CV and
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`include, A. Bahga, V. Madisetti, “Healthcare Data Integration and Informatics in the
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`Cloud”, IEEE Computer, Vol. 48, Issue 2, 2015, and “Cloud-Based Information
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`Integration Informatics Framework for Healthcare Applications”, IEEE Computer,
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`Issue 99, 2013. In addition to my signal processing experience specific to pulse
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`oximetry, I also have experience in developing systems for other physiological
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`signals. Beginning in the early 1990s, I worked, in particular, with ECG/EKG
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`signals, and, in general, with biomedical signals and systems.
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`11.
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`In addition to my signal processing experience specific to pulse
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`oximetry, I also have experience in developing algorithms and systems for other
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`physiological signals. I worked with ECG/EKG signals in particular, and
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`biomedical signals and systems in general, beginning in the early 1990s. In
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`particular, I worked with graduate student Dr. Shahram Famorzadeh, in 1990 and
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`1991, to analyze and apply pattern recognition (a category of signal processing
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`-4-
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`
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`algorithms that is based on correlation with a set of templates) to ECG/EKG
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`waveforms to identify physiological conditions.
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`12.
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`I have experience with biomedical signals and devices in the field of
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`speech and image processing since the late 1980s. I worked on deconvolution
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`algorithms to recover the state of the system based on observed measurements of the
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`physiological signals in the 1993-1998 time-frame. These signal processing
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`techniques can be applied to pulse oximetry signals, and I have been working with
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`these techniques since the mid-1980s.
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`13.
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`I have studied, researched and published in the area of adaptive filter
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`signal processing for noise reduction and signal prediction, using correlation-based
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`approaches since the mid-1980s, both in the time-domain and frequency domain,
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`and also to ray-tracing applications, such as Seismic Migration for oil and shale gas
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`exploration. See for instance, V. Madisetti & D. Messerschmitt, Dynamically
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`Reduced Complexity Implementation of Echo Cancellers, IEEE International
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`Conference on Speech, Acoustics and Signal Processing, ICASSP 1986, Tokyo,
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`Japan, and M. Romdhane and V. Madisetti, “All-Digital Oversampled Front-End
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`Sensors” IEEE Signal Processing Letters, Vol. 3, Issue 2, 1996, and “LMSGEN: A
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`Prototyping Environment for Programmable Adaptive Digital Filters in VLSI”,
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`VLSI Signal processing, pp. 33-42, 1994.
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`-5-
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`14. Deconvolution of symmetric (seismic) and asymmetric (pulse
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`oximetry) signals has gained much importance in the past two decades, and some of
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`my early work on “Homomorphic Deconvolution of Bandpass Signals” in IEEE
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`Transactions on Signal Processing, October 1997, established several new methods
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`for deconvolution of such signals that had several advantages of robustness,
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`increased accuracy, and simplicity.
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`15.
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`In the past decade I have authored several peer-reviewed papers in the
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`area of computer systems, instruments, and software design, and these include:
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`
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`V. Madisetti, et al., “The Georgia Tech Digital Signal Multiprocessor,
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`IEEE Transactions on Signal Processing”, Vol. 41, No. 7, July 1993.
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`V. Madisetti et al., “Rapid Prototyping on the Georgia Tech Digital
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`Signal Multiprocessor”, IEEE Transactions on Signal Processing, Vol.
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`42, March 1994.
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`V. Madisetti, “Reengineering legacy embedded systems”, IEEE Design
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`& Test of Computers, Vol. 16, Vol. 2, 1999.
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`V. Madisetti et al., “Virtual Prototyping of Embedded Microcontroller-
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`based DSP Systems”, IEEE Micro, Vol. 15, Issue 5, 1995.
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`V. Madisetti, et al., “Incorporating Cost Modeling in Embedded-
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`System Design”, IEEE Design & Test of Computers, Vol. 14, Issue 3,
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`1997.
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`-6-
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`V. Madisetti, et al., “Conceptual Prototyping of Scalable Embedded
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`DSP Systems”, IEEE Design & Test of Computers, Vol. 13, Issue 3,
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`1996.
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`
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`V. Madisetti, Electronic System, Platform & Package Codesign,” IEEE
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`Design & Test of Computers, Vol. 23, Issue 3, June 2006.
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`V. Madisetti, et al., “A Dynamic Resource Management and
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`Scheduling Environment
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`for Embedded Multimedia
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`and
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`Communications Platforms”, IEEE Embedded Systems Letters, Vol. 3,
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`Issue 1, 2011.
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`16.
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`I have been active in the areas of signal processing systems and mobile
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`device communication systems for several years, and some of my publications in
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`this area include “Frequency Dependent Space-Interleaving of MIMO OFDM
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`Systems” Proc. of IEEE Radio and Wireless Conference (RAWCON ’03), 2003,
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`“Embedded Alamouti Space Time Codes for High Rate and Low Decoding
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`Complexity”, Proc. IEEE Asilomar Conf. on Signals, Systems, and Computers,
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`2008; and “Asymmetric Golden Codes for Fast Decoding in Time Varying
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`Channels”, Wireless Personal Communications (2011).
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`-7-
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`
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`II. MATERIALS CONSIDERED
`17. Below is a listing of documents and materials that I considered and
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`reviewed in connection with providing this declaration. In forming my opinions, I
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`considered those materials as well as anything cited or discussed in this declaration.
`
`Exhibit
`
`Description
`
`1001
`1002
`1003
`1004
`1006
`1007
`1008
`
`1009
`1010
`1014
`1015
`
`1018
`
`1023
`
`U.S. Patent No. 10,258,266 to Poeze, et al. (“’266 Patent”)
`Excerpts from the Prosecution History of the ’266 Patent
`Declaration of Dr. Thomas W. Kenny
`Curriculum Vitae of Dr. Thomas W. Kenny
`U.S. Pub. No. 2002/0188210 (“Aizawa”)
`JP 2006-296564 (“Inokawa”)
`Certified English Translation of Inokawa and Translator’s
`Declaration
`U.S. Pat. No. 7,088,040 (“Ducharme”)
`U.S. Pat. No. 8,177,720 (“Nanba”)
`U.S. Pub. No. 2001/0056243 (“Ohsaki”)
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic Institute,
`Biomedical Engineering Program, Worcester, MA 01609;
`Association for the Advancement of Medical Instrumentation,
`Vol. 22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
`“Acrylic: Strong, stiff, clear plastic available in a variety of
`brilliant colors,” available at
`https://www.curbellplastics.com/Research-
`Solutions/Materials/Acrylic
`U.S. Pat. App. Pub. No. 2007/0145255 (“Nishikawa”)
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`-8-
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`Exhibit
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`1024
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`1025
`1029
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`1038
`
`2006
`
`2007
`
`2010
`
`2012
`
`2019
`2020
`
`2025
`Paper 2
`Paper 7
`
`Description
`
`“Measurement Site and Photodetector Size Considerations in
`Optimizing Power Consumption of a Wearable Reflectance
`Pulse Oximeter,” Y. Mendelson, et al.; Proceedings of the 25th
`IEEE EMBS Annual International Conference, 2003; pp. 3016-
`3019 (“Mendelson-2003”)
`U.S. Pat. No. 6,801,799 (“Mendelson-’799”)
`Wikipedia: The Free Encyclopedia, “Universal asynchronous
`receiver-transmitter” at
`https://en.wikipedia.org/wiki/Universal_asynchronous_receiver-
`transmitter, last accessed 08/27/2020
`U.S. Pat. No. 8,577,431 (“CIP Patent”)
`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)
`Frank H. Netter, M.D., Section VI Upper Limb, Atlas of
`Human Anatomy (2003), Third Edition (“Netter”)
`Webster, Design of Pulse Oximeters (1997) (Exhibit 1019 in
`IPR2020-01536)
`Petition for Inter Partes Review IPR2020-01520
`Declaration of Dr. Thomas W. Kenny in Apple Inc. v. Masimo
`Corp., IPR2020-01520
`U.S. Pat. No. 10,258,265 (“Poeze”)
`Petition for Inter Partes Review IPR2021-00208
`Decision Granting Institution of Inter Partes Review IPR2021-
`00208
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`-9-
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`III. UNDERSTANDING OF PATENT LAW
`I am not an attorney and will not be offering legal conclusions.
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`18.
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`However, I have been informed of several principles concerning the legal issues
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`relevant to analyzing the challenges to the claims of the ’266 Patent, and I used these
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`principles in arriving at my conclusions.
`
`A. Level Of Ordinary Skill In The Art
`19.
`I understand that certain issues in an IPR, such as claim construction
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`and whether a claim is invalid as obvious, are assessed from the view of a
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`hypothetical person of ordinary skill in the relevant art at the time of the invention.
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`I understand there are multiple factors relevant to determining the level of ordinary
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`skill in the art, including (1) the level of education and experience of persons
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`working in the field at the time of the invention; (2) the sophistication of the
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`technology; (3) the types of problems encountered in the field; and (4) the prior art
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`solutions to those problems. I understand that this hypothetical person of ordinary
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`skill is presumed to have had knowledge from the teachings of the prior art.
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`20.
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`I understand that Apple Inc. (“Apple” or “Petitioner”) and its Declarant
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`Dr. Kenny have set forth the following definition for a person of ordinary skill in the
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`art (“POSITA”): “someone with a working knowledge of physiological monitoring
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`technologies. The person would have had a Bachelor of Science degree in an
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`academic discipline emphasizing the design of electrical, computer, or software
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`technologies, in combination with training or at least one to two years of related
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`work experience with capture and processing of data or information, including but
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`not limited to physiological monitoring technologies. Alternatively, the person could
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`have also had a Master of Science degree in a relevant academic discipline with less
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`than a year of related work experience in the same discipline.” Ex. 1003 ¶21. I
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`discuss the asserted level of skill further below, in Section VI of this declaration.
`
`B. Claim Construction
`21.
`I understand that claim construction in an IPR is a legal question for the
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`Board to decide. I also understand, however, that in construing claim terms, the
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`Board asks what the terms would mean to a person of ordinary skill in the relevant
`
`art in view of the disclosures in the patent and the prosecution history of the patent.
`
`I understand that the Board may also consider external evidence, such as
`
`dictionaries. In general, however, I understand that claim terms are given the
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`ordinary and customary meaning one of ordinary skill in the relevant art would apply
`
`to them in the context of the patent at the time the patent was filed.
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`22.
`
`I understand that Apple did not identify any terms for construction. I
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`have given the claim terms their plain and ordinary meaning in my analysis.
`
`C. Obviousness
`23.
`I understand that a patent claim is invalid under the patent law, 35
`
`U.S.C. § 103, if, at the time the claimed invention was made, the differences between
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`-11-
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`the prior art and the claimed invention as a whole would have been obvious to a
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`person of ordinary skill in the art. I understand that the following facts are
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`considered in determining whether a claimed invention is invalid as obvious in view
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`of the prior art: (1) the scope and content of the prior art; (2) the level of ordinary
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`skill in the art; and (3) the differences, if any, between the claimed invention and the
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`prior art.
`
`24.
`
`I also understand there are additional considerations that may be used
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`in evaluating whether a claimed invention is obvious. These include whether the
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`claimed invention was the result of (a) a teaching, suggestion, or motivation in the
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`prior art that would have led one of ordinary skill to modify the prior art to arrive at
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`the claimed invention; (b) a combination of prior art elements combined according
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`to known methods to yield predictable results; (c) a simple substitution of one known
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`element for another to obtain a predicable result; (d) the use of a known technique
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`to improve similar things in the same way; (e) applying a known technique to a
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`known thing ready for improvement to yield predictable results; (f) choosing from a
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`finite number of identified, predictable solutions, with a reasonable expectation of
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`success; (g) known work in one field of endeavor prompting variations of it for use
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`in either the same filed or a different one based on design incentives or other market
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`forces if the variations are predictable to one of ordinary skill in the art.
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`25.
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`I have applied this understanding in my analysis.
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`26.
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`I understand that Dr. Kenny carried out his analysis of patentability as
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`of July 2, 2009. Ex. 1003 ¶16. I likewise carry out my analysis of patentability as
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`of July 2, 2009. My opinions would not change if my analysis of patentability were
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`carried out as of July 3, 2008. I do not offer any opinions regarding priority in this
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`declaration.
`
`IV.
`INTRODUCTION TO MASIMO’S TECHNOLOGY
`A. The ’266 Patent
`27. Masimo’s U.S. Patent No. 10,292,266 (the “’266 Patent”) is generally
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`directed to optical physiological sensors that use a combination of different design
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`elements to improve detection efficiency. Masimo’s claimed optical physiological
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`sensors include multiple detectors, multiple emitters, and a lens with a protruding
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`surface or portion that together enhance the sensor’s or device’s effectiveness. The
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`’266 Patent explains that these different components work together to provide
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`greater noise cancellation and an order of magnitude increase in signal strength. Ex.
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`1001 9:7-12, 20:4-20; see also 3:6-16, 4:8-18. Among other things, the ’266 Patent
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`helps address problems of light attenuation and errors due to the variations in the
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`path of light passing through tissue. The ’266 Patent identifies several different
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`benefits to the use of a protruding surface. For example, the protruding surface thins
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`out a measurement site, resulting in less light attenuation by a measured tissue. Ex.
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`1001 7:38-41. The protruding surface further increases the area from which
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`-13-
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`attenuated light can be measured. Ex. 1001 7:41-43. The multiple detectors in the
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`sensor or device of the ’266 Patent allow for an averaging of measurements, which
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`can, in turn, reduce errors due to variations in the path of light passing through the
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`tissue. Ex. 1001 9:7-12; see also 3:6-16, 4:8-18.
`
`B.
`
`Introduction To The Independent Claims Of The ’266 Patent
`28. The ’266 Patent has two independent claims: claims 1 and 9. Claims
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`1 and 9 each claim an optical physiological sensor that includes, among other things,
`
`(1) a plurality of emitters, (2) at least four detectors, and (3) either a lens configured
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`to be located between the tissue of the user and the plurality of detectors (claim 1)
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`or a lens forming a cover of the circular housing, wherein at least a portion of the
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`lens protrudes from the housing and the lens comprises a single convex surface
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`(claim 9).
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`29. Claim 1 requires a lens configured to be located between the tissue of
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`the user and the plurality of detectors, wherein the lens comprises a single outwardly
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`protruding convex surface. Claim 1 reads:
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`1. A noninvasive optical physiological sensor comprising:
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`a plurality of emitters configured to emit light into tissue of a
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`user;
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`
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`a plurality of detectors configured to detect light that has been
`
`attenuated by tissue of the user, wherein the plurality of detectors
`
`comprise at least four detectors;
`
`a housing configured to house at least the plurality of detectors;
`
`and
`
`a lens configured to be located between the tissue of the user and
`
`the plurality of detectors when the noninvasive optical physiological
`
`sensor is worn by the user, wherein the lens comprises a single
`
`outwardly protruding convex surface configured to cause tissue of the
`
`user to conform to at least a portion of the single outwardly protruding
`
`convex surface when the noninvasive optical physiological sensor worn
`
`by the user and during operation of the noninvasive optical
`
`physiological sensor.
`
`30. Claim 9 requires a lens forming a cover of the circular housing, wherein
`
`at least a portion of the lens protrudes from the housing and the lens comprises a
`
`single convex surface. Claim 9 reads:
`
`9. An optical physiological measurement sensor comprising:
`
`a plurality of emitters configured to emit light into tissue of a
`
`user;
`
`a circular housing including a planar surface;
`
`-15-
`
`
`
`
`
`at least four detectors arranged on the planar surface of the
`
`circular housing, wherein the four detectors are arranged in a grid
`
`pattern; and
`
`a lens forming a cover of the circular housing, wherein at least a
`
`portion of the lens protrudes from the housing and the lens comprises a
`
`single convex surface.
`
`31. Dr. Kenny applies the same combination of references against claim 1
`
`(Ex. 1003 ¶¶68-93, 125-129, 130-143) and claim 9 (Ex. 1003 ¶¶106-113, 125-129,
`
`158-165). Dr. Kenny’s analysis generally treats claims 1 and 9 similarly, and Dr.
`
`Kenny relies on and incorporates his analysis for claim 1 into his analysis of claim 9.
`
`Ex. 1003 ¶¶106-107, 110, 113, 125-129, 158-165. In addressing Dr. Kenny’s
`
`opinions, my analysis therefore likewise applies to claims 1 and 9.
`
`V. THE PETITION’S PROPOSED COMBINATIONS
`32. Petitioner presents three grounds. Grounds 1A-1B (the “Aizawa
`
`grounds”) combine at least Aizawa (Ex. 1006) and Inokawa (Ex. 1007, translation
`
`at Ex. 1008). Pet. 2.
`
` Ground 1A combines Aizawa and Inokawa. Ground 1A challenges
`
`claims 1-6, 8-16, 18, and 19.
`
` Ground 1B adds Ohsaki (Ex. 1014) to the combination of Aizawa and
`
`Inokawa. Petitioner characterizes Ohsaki as providing an additional
`
`-16-
`
`
`
`
`
`motivation and rationale to modify Aizawa to add a light permeable
`
`cover comprising a protrusion. Pet. 45-46. Ground 1B challenges
`
`claims 1-6, 8-16, 18, and 19.
`
`33. Ground 2 (the “Mendelson ground”) combines Mendelson-1988 (Ex.
`
`1015) and the same Inokawa reference used in Grounds 1A-1B. Pet. 2. Ground 2
`
`challenges claims 1-6, 8-16, 18, and 19.
`
`34. Aizawa and Mendelson-1988 share the same general arrangement of
`
`peripheral detectors positioned radially around a central light source. Ex. 1006 Fig.
`
`1A; Ex. 1015 Figs. 2A-2B. In contrast, Inokawa arranges two LEDs on the outside
`
`edge of its sensor and one detector in the center of the sensor. Ex. 1008 Fig. 2. I
`
`understand that Petitioner asserts a person of ordinary skill in the art would have
`
`incorporated Inokawa’s convex lens into Aizawa or Mendelson-1988’s sensor with
`
`the motivation to “increase the light collection efficiency.” Pet. 15, 49-50. As I
`
`discuss below, a POSITA would have not incorporated Inokawa’s convex lens into
`
`Aizawa or Mendelson-1988’s sensor with the motivation to “increase the light
`
`collection efficiency” because a POSITA would have understood that Inokawa’s
`
`convex lens would collect incoming light towards the center of the sensor. Unlike
`
`Inokawa, which has its detector in the center, between an emitter on either side,
`
`Aizawa and Mendelson-1988 have detectors placed at the edge (or periphery) of the
`
`sensor. Thus, a POSITA would have believed that Inokawa’s convex lens, which
`
`-17-
`
`
`
`
`
`was designed to concentrate light at the center-located detector and increase the
`
`optical signal, would have the opposite effect when used with Aizawa or Mendelson-
`
`1988’s peripherally located detectors and would decrease the light collection
`
`efficiency of the sensor.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`35. Petitioner asserts a POSITA “would have been a person with a working
`
`knowledge of physiological monitoring technologies. The person would have had a
`
`Bachelor of Science degree in an academic discipline emphasizing the design of
`
`electrical, computer, or software technologies, in combination with training or at
`
`least one to two years of related work experience with capture and processing of data
`
`or information, including but not limited to physiological monitoring technologies.”
`
`Pet. 4. Alternatively, Petitioner asserts a POSITA could have “a Master of Science
`
`degree in a relevant academic discipline with less than a year of related work
`
`experience in the same discipline.” Pet. 4.
`
`36. Dr. Kenny states that he applies the same level of skill in his analysis:
`
`“one of ordinary skill in the art relating to, and at the time of, the invention of the
`
`’266 Patent would have been someone with a working knowledge of physiological
`
`monitoring technologies. The person would have had a Bachelor of Science degree
`
`in an academic discipline emphasizing the design of electrical, computer, or software
`
`technologies, in combination with training or at least one to two years of related
`
`-18-
`
`
`
`
`
`work experience with capture and processing of data or information, including but
`
`not limited to physiological monitoring technologies. Alternatively, the person could
`
`have also had a Master of Science degree in a relevant academic discipline with less
`
`than a year of related work experience in the same discipline.” Ex. 1003 ¶21.
`
`37.
`
`I note that Petitioner’s asserted level of skill (1) requires no coursework,
`
`training or experience with optics or optical physiological monitors; (2) requires no
`
`coursework, training or experience in physiology; and (3) focuses on data processing
`
`and not sensor design. In responding to Dr. Kenny’s opinions in this proceeding, I
`
`apply Petitioner’s asserted level of skill.
`
`38.
`
`In addition, as noted above, I understand that Dr. Kenny carried out his
`
`analysis of patentability as of July 2, 2009. Ex. 1003 ¶16. In responding to Dr.
`
`Kenny’s opinions, I also apply the July 2, 2009 date in my analysis. My opinions
`
`would not change if my analysis of patentability were carried out as of July 3, 2008.
`
`I do not offer any opinions regarding priority in this declaration.
`
`A.
`
`VII. GROUNDS 1A-1B DO NOT ESTABLISH OBVIOUSNESS
`Introduction To Ground 1A
`39. Ground 1A combines two references: Aizawa and Inokawa.
`
`1.
`
`Aizawa Uses Peripherally Located Detectors Around A Single
`Centrally Located Emitter (LED)
`40. Aizawa discloses a sensor with four periphery-located photodetectors
`
`(22) around a single centrally located LED (21). Ex. 1006 Abstract, Fig. 1A.
`
`-19-
`
`
`
`
`
`DETECTOR
`
`LED
`
`DETECTOR
`
`Aizawa Fig. 1B (cross-sectional view, color added)
`
`
`
`Aizawa’s Features
` Green: central emitter
`(21)
` Red: peripheral
`detectors (22)
`
`
`
`
`
`Aizawa Fig. 1A (top-down view, color added)
`
`41. Aizawa uses this configuration of multiple detectors arrayed around a
`
`single LED to ensure at lea
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