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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
` APPLE INC.,
`
`))
`
`Petitioner, ) US PATENT NO: 10,588,553
`) IPR NO. 2020-1536
`-against- )
`) US PATENT NO: 10,588,554
` MASIMO CORPORATION, ) IPR NO. 2020-1538
`)
`Patent Owner. )
`________________________)
`
`VIDEO-RECORDED DEPOSITION OF
`THOMAS WILLIAM KENNY, JR. PH.D.
`VOLUME 2
`Zoom Recorded Videoconference
`04/25/2021
`8:59 a.m. (PDT)
`
`REPORTED BY: AMANDA GORRONO, CLR
`CLR NO. 052005-01
`
`______________________________________________________
`DIGITAL EVIDENCE GROUP
`1730 M Street, NW, Suite 812
`Washington, D.C. 20036
`(202) 232-0646
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`Masimo Ex. 2009
`Apple v. Masimo, IPR2021-00208
`
`
`
`Apple, Inc. v. Masimo Corp.
`
`Thomas Kenny, Jr. Ph.D., Vol II
`
`Page 267
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
` APPLE INC.,
`
`))
`
`Petitioner, ) US PATENT NO: 10,588,553
`) IPR NO. 2020-1536
`-against- )
`) US PATENT NO: 10,588,554
` MASIMO CORPORATION, ) IPR NO. 2020-1538
`)
`Patent Owner. )
`________________________)
`
`VIDEO-RECORDED DEPOSITION OF
`THOMAS WILLIAM KENNY, JR. PH.D.
`VOLUME 2
`Zoom Recorded Videoconference
`04/25/2021
`8:59 a.m. (PDT)
`
`REPORTED BY: AMANDA GORRONO, CLR
`CLR NO. 052005-01
`
`______________________________________________________
`DIGITAL EVIDENCE GROUP
`1730 M Street, NW, Suite 812
`Washington, D.C. 20036
`(202) 232-0646
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2021
`
`202-232-0646
`
`Masimo Ex. 2009
`Apple v. Masimo, IPR2021-00208
`
`
`
`4/25/2021
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`Apple, Inc. v. Masimo Corp.
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`Thomas Kenny, Jr. Ph.D., Vol II
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`Page 268
`04/25/2021
`8:59 a.m. (PDT)
`
`VIDEO-RECORDED DEPOSITION OF THOMAS WILLIAM
`KENNY, JR. Ph.D., VOLUME 2, held virtually via Zoom
`Videoconferencing, before Amanda Gorrono, Certified
`Live Note Reporter, and Notary Public of the State of
`New York.
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`
`A P P E A R A N C E S
`(Via Zoom Videoconferencing):
`
`ON BEHALF OF PETITIONER APPLE:
` Dan Smith, Esquire
` Fish & Richardson
` 1717 Main Street
` Suite 5000
` Dallas, Texas 75201
` PHONE: 214-292-4071
` E-MAIL: Dsmith@fr.com
` -AND-
` Andrew B. Patrick, Esquire
` Fish & Richardson
` 1000 Maine Avenue SW
` Washington, D.C. 20024
` PHONE: 202-626-7735
` E-MAIL: Patrick@fr.com
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`A P P E A R A N C E S
`(Via Zoom Videoconferencing):
`
`ON BEHALF OF PATENT OWNER MASIMO:
` Stephen W. Larson, Esquire
` Knobbe Martens Olson & Bear
` 2040 Main Street
` Irvine, CA 92614
` PHONE: 949-721-5301
` E-MAIL: Stephen.larson@knobbe.com
` -AND-
` Jeremiah S. Helm, Ph.D., Esquire
` Knobbe Martens Olson & Bear
` 1717 Pennsylvania Avenue N.W.
` Washington, DC 20006
` PHONE: 202-640-6400
` E-MAIL: Jeremiah.helm@knobbe.com
` -AND-
` Jacob Peterson, Esquire
` Knobbe Martens Olson & Bear
` 925 4th Ave #2500
` Seattle, WA 98104
` PHONE: 206-405-2000
` E-MAIL: Jacob.peterson@knobbe.com
`
`ALSO PRESENT:
`Billy Fahnert, Legal Video Specialist/Trial Tech,
`Digital Evidence Group
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` I N D E X
`
` WITNESS: EXAMINATION
` THOMAS WILLIAM
` KENNY, JR. Ph.D
` BY MR. LARSON 272
`
` PREVIOUSLY MARKED EXHIBITS IDENTIFIED
` EXHIBIT DESCRIPTION PAGE
` Exhibit 1003 Declaration of Dr. Thomas W. . 273
` Kenny in IPR2020-1536,
` Exhibit 1004 Curriculum Vitae of Dr. ...... 347
` Thomas W. Kenny
` Exhibit 1009 US Pub. No. 2001_0056243 ..... 375
` Ohsaki - (IPR2020-01536)
` Exhibit 1010 Mendelson 2006 United States . 382
` Patent Nanba et al. Patent
` No. US 8,177,720 B2
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` THE TECH: Stand by. We are on the
`record. This is Volume 2 in the continuing
`deposition of Dr. Thomas W. Kenny in the matter of
`Apple, Inc. versus Masimo Corporation for IPR Nos.
`2020-1536 and 2020-1538 filed in the United States
`Patent and Trademark Office.
` My name is Billy Fahnert. The court
`reporter is Amanda Gorrono.
` Today's date is April 25, 2021, the
`time is 8:59 a.m. Pacific Daylight Time.
` The witness is still under oath and
`counsel may proceed.
`THOMAS WILLIAM KENNY, JR. Ph.D., called as a witness,
`having been previously sworn by a Notary Public of
`the State of New York, was examined and testified as
`follows:
`CONTINUED EXAMINATION
`BY MR. LARSON:
` Q. Good morning, Dr. Kenny.
` A. Good morning.
` Q. So I want to start with your
`Declaration you submitted in connection with IPR1536,
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`this is previously marked Apple Exhibit 1003. And
`we'll go back to Paragraph 88. I have a couple of
`quick follow-up questions.
` (Whereupon, Exhibit 1003, Declaration
`of Dr. Thomas W. Kenny in IPR2020-1536, was
`identified.)
` A. Okay.
` Q. Okay. One moment here. So I've
`asked you about your illustration in the second
`figure below Paragraph 88, which is your illustration
`of your combination of Mendelson '799 and Ohsaki,
`correct?
` A. Yes, as related to this declaration,
`yes.
` Q. And I think you testified that by
`this figure you didn't intend to convey any
`particular specific dimensions, correct?
` A. That's correct. There's no scale bar
`here. I think one of ordinary skill in the art would
`view this as a illustration and not a detailed
`schematic.
` Q. I just wanted to ask you and make
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`sure I understand, in this figure, the bottom figure
`below Paragraph 88 that you prepared, to describe
`your combination of Mendelson '799/Ohsaki, is it
`intended to show the relative sizes of the various
`components?
` MR. SMITH: Objection; form.
` A. No. I'd say it's purely an
`illustration to convey the concept of how one might
`combined these elements in order to achieve the
`benefits we've spoken of, using the convex cover to
`provide improved adhesion and improved -- I might as
`well read from the declaration -- "improved adhesion
`and detection and protection of the elements within."
` Q. Okay. And if a sensor like the one
`you showed in the bottom figure below Paragraph 88
`were used to take a physiological measurement, do you
`agree that the distribution of incoming light would
`be different as compared to the same sensor with no
`cover?
` MR. SMITH: Objection; form.
` A. Yes, I agree that the convex cover
`creates refractive effects, which change the angles
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`of propagation of the rays of light. We are look at
`a diffuse light source, so there's many, many
`different possible rays that could you considered.
`But they all will experience the laws of refraction
`and that changes the distribution.
` Q. Let me now ask you about Paragraph 20
`of your report.
` Here, you're discussing the level of
`ordinary skill in the art, correct?
` A. That's correct.
` Q. And you refer here -- this is the
`first sentence. You say, "...a working knowledge of
`physiological monitoring technologies."
` Do you see that?
` A. Yes.
` Q. What did you mean when you said that
`a person of ordinary skill in the art "would have
`been someone with a working knowledge of
`physiological monitoring technologies"?
` MR. SMITH: Objection; form.
` A. They would have some knowledge of
`physiological monitoring technologies and would be
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`
`able to work with that knowledge.
` Q. And can you describe what knowledge a
`physiological monitoring technologies a person of
`ordinary skill in the art would have?
` MR. SMITH: Objection; form.
` A. So, for example, it might have arisen
`in their coursework in high school, college and in
`the case of the instance of a person with a master's
`degree during their graduate work, in their summer
`internships, in their projects -- I'm sorry. That
`was the end of my answer.
` Q. Okay. All right. Thank you.
` Okay. Your answer seemed to describe
`how a person of ordinary skill in the art may have
`acquired certain knowledge. I'm trying to probe and
`understand what knowledge you think a person would
`have to have to be considered a person of ordinary
`skill in the art.
` Does that make sense? Do you
`understand my question? And I'll restate is, but..?
` A. So, my --
` Q. Let me restate the question, if you
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`understand it, which is: What, what knowledge of
`physiological monitoring technology does a person
`have to have to be considered a person of ordinary
`skill in the art?
` MR. SMITH: Objection; form.
` A. So it would be the knowledge that
`would likely arise out of the experiences they would
`have in a course of a Bachelor of Science degree and
`at least a couple of years of related work
`experience. So, this is based on my understanding of
`the likely contents of the curriculum of
`undergraduate programs in this area as regulated by
`agencies such as ABET and WASC.
` Q. Can you explain what knowledge that
`is?
` MR. SMITH: Objection; form.
` A. I would say they would likely have
`heard about and possibly used some physiological
`monitoring devices as part of the work in the courses
`that they would take in those programs on the way
`towards a bachelor's or master's degree.
` Q. So it's sufficient for them to have
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`heard about physiological monitoring devices?
` MR. SMITH: Objection; form.
`Argumentative.
` A. I don't know if you want me to
`estimate the number of minutes or pages read that
`would be necessary, but I think my understanding of
`the curriculum associated with bachelor's degree
`programs and engineering that are accredited, is that
`students are likely to have encountered content
`either during high school preparation or in those
`courses that would meet the requirements of my
`understanding of someone of ordinary skill in the
`art.
` Q. I'm not asking for the precise number
`of minutes or the precise number of pages that one
`would have to have read to become a person of
`ordinary skill in the art. I'm just asking if you
`can give me some sense of what knowledge of
`physiological monitoring technologies a person would
`have to have to be considered a person of ordinary
`skill in the art, in your view?
` A. And my view is that the curriculum --
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` MR. SMITH: Objection to form.
` A. -- associated with these bachelor's
`degrees or master's degrees is likely to include
`detailed coursework or some exposure to physiological
`monitoring technologies, either as parts of
`laboratory experiments hands-on experiences, project
`work, internships, or even just the regular reading
`and assignments associated with those courses.
` And in my case, I taught a course,
`which qualifies as part of the elective stream for
`undergraduate degrees in these disciplines and it
`includes quite a few mentions of physiological
`monitoring sensors including, for example, the
`Mendelson-1988 reference.
` Q. What do you consider a physiological
`monitoring technology?
` A. A technology that might be used for
`physiological monitoring. Sorry. There's nothing
`more elegant. It's a thing. It defines itself.
` Q. Would you consider a thermometer a
`physiological monitoring device?
` A. Thermometers are used for
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`physiological monitoring, so, yes, that would be an
`example of a physiological monitoring device.
` Q. Do you believe that to be considered
`a person of ordinary skill in the art a person would
`have to have some working knowledge of physiological
`monitoring sensors?
` MR. SMITH: Objection; form.
` A. So parsing that, the word you've
`replaced in my first sentence you've replaced
`"technologies" with "sensors"; is that correct?
` Q. No. I'm asking you whether you think
`a person has to have some working knowledge of
`physiological sensors to be considered a person of
`ordinary skill in the art?
` MR. SMITH: Objection; form.
` A. I, I -- my understanding is that one
`performs the task of physiological monitoring using
`sensors so if someone is familiar with physiological
`monitoring technologies, that would include sensors.
` Q. Can you explain to me in any way the
`extent of knowledge regarding physiological sensors a
`person would have to have to be considered a person
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`of ordinary skill in the art in your opinion?
` MR. SMITH: Objection; form.
` A. I think one with a bachelor's degree
`in the disciplines listed or a master's degree would
`have had a number of opportunities to perform either
`laboratory experiments or design calculations
`involving various kinds of sensors, which can be used
`for physiological monitoring. I think that's
`sufficient to qualify as one of ordinary skill in the
`art.
` Q. You say "opportunities." If one with
`a bachelor's degree under the disciplines you listed
`or a master's degree decided not to take those
`opportunities, would you still consider them a person
`of ordinary skill in the art?
` A. I maybe was being generous. Most
`ABET-accredited engineering programs may describe
`some of this content as elective, but the majority of
`it is required. And I think between what would
`happen in high school preparation and what would
`happen during the undergraduate curriculum that
`students with a bachelor's degree in these
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`disciplines would have a working knowledge of
`physiological monitoring technologies because of the
`experience of those programs.
` Q. What would be the required curriculum
`relating to physiological sensors that a person with
`a bachelor's degree in the disciplines you've listed,
`or a master's degree, would have to take in order to
`graduate?
` A. I could pull up the academic handbook
`for Stanford, if you'd like. It would take a moments
`but I could give you a list of courses.
` Q. I'm not interested necessarily in
`Stanford. We're talking about your understanding and
`what you had in mind when you prepared your report
`and when you describe the knowledge of a person of
`ordinary skill in the art.
` So I'm just -- can you tell me any
`more about your opinion regarding what specific
`working knowledge of physiological sensors a person
`would have to have to be considered a person of
`ordinary skill in the art?
` A. I'll keep answering the same way. A
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`think a student in these programs who would have
`earned a bachelor's degree would have had experience
`and exposure to physiological monitoring technologies
`in the course of completion of that curriculum
`sufficient to prepare them along with the one or
`two years of related work experience to be a person
`of ordinary skill in the art.
` Q. Okay. If that's the extent of your
`testimony, let me ask you, would a person who earned
`a bachelor's degree in the disciplines you
`mentioned -- let's see -- or a master's degree, have
`been required to take curriculum that would teach
`that person how to pulse LEDs in a particular
`waveform to obtain a physiological signal?
` MR. SMITH: Objection; form.
` A. Could you repeat that whole question?
` Q. Sure. I've been providing some
`context for the question I've been asking trying to
`get at your understanding of what knowledge a person
`would have to have to be considered a person of
`ordinary skill in the art. A number of times you've
`mentioned the curriculum in the degrees you
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`referenced in your Declaration, so what I'm asking
`you is: Would a person who earned a bachelor's
`degree in the disciplines you mentioned or a master's
`degree, as described in your Declaration, have been
`required to take a class that would teach that person
`how to pulse LEDs in a particular waveform to obtain
`a physiological signal?
` MR. SMITH: Objection; form.
` A. So I can't speak to the content of
`all of the curriculum of all the programs in the US,
`but I know at Stanford University, the course e40,
`which is a required introductory electronics course
`for the majors listed here, students are taught how
`to operate pulse LEDs in various waveforms, for
`various purposes and those could, depending on the
`seasonal example, include attempts to measure
`reflection off of skin and perhaps extract
`physiological parameters.
` Q. And so is that what you had in mind
`when you described the required knowledge of a person
`of ordinary skill in the art in your Declaration?
` MR. SMITH: Objection; form.
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` A. Yeah. In addition to many other
`things about the curriculum and likely experiences of
`such persons.
` Q. What are the other many -- what are
`the many other things about the curriculum and likely
`experience of such persons that informed your
`opinion?
` MR. SMITH: Objection; form.
` A. So that curriculum includes basic
`physics, which would include discussion of light
`propagation, refraction, and reflection. It
`includes, generally, electronics. So, operating of
`electrical circuits that would operate LEDs and
`detectors and the associated data acquisition
`instrumentation that would convert that from analog
`to digital format.
` Q. So do you believe that --
` A. This -- here I don't think if you
`want me to list the contents of the entire likely
`under grad curriculum for engineering. Is there
`anything particular you're looking for?
` Q. I don't want you to list the entire
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`contents of the likely undergraduate curriculum for
`engineering unless that's the only way you can
`explain what you had in mind with your understanding
`of the required knowledge of a person of ordinary
`skill in the art.
` My question is simply: What
`knowledge would a person of ordinary skill -- would
`have a person have to have to be considered a person
`of ordinary skill in the art?
` MR. SMITH: Objection; form. Asked
`and answered.
` A. Yeah, I think that's stated in
`Paragraph 20 of my Declaration.
` Q. And specifically, what knowledge of
`physiological sensors would a person have to have to
`be a considered a person of ordinary skill in the
`art? Can you provide me any more explanation of that
`beyond listing the entire undergraduate curriculum in
`engineering?
` MR. SMITH: Same objection.
` A. I think the sentence is clear. A
`working knowledge of physiological monitoring
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`
`technologies which arises in the context of
`undergraduate curriculum and master's curriculum, as
`well as the preparatory high school work and all the
`surrounding experiences for someone that would earn a
`Bachelor of Science degree in those disciplines.
` Q. You testified earlier that -- you
`mentioned a particular course at Stanford and you
`said the course could, and in a seasonal example,
`include attempts to measure reflection off of skin
`and perhaps extract physiological parameters,
`correct?
` A. I believe I said that, yes.
` Q. What if a person went all the way
`through Stanford and happened to be in a season where
`that wasn't taught, would that person be considered a
`person of ordinary skill in the art in your view?
` MR. SMITH: Objection; form.
` A. Yes, because of all of the other
`examples, opportunities to learn about the elements
`that would provide a working knowledge of a
`physiological monitoring technologies that appear
`throughout the curriculum and throughout the
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`experiences that surround the time that someone
`normally undergoes to complete a Bachelor's of
`Science degree in these disciplines or a master's
`degree in these disciplines.
` Q. Would a person who -- would the
`curriculum of a Bachelor of Science degree or a
`Master of Science degree in the disciplines you
`identified in your report necessarily include
`training on how to optimize the optical performance
`of a physiological sensor by, you know, adjusting the
`size, shape, locations of the LEDs, detectors, and
`lens?
` MR. SMITH: Objection; form.
` A. That specific example is not, to my
`knowledge, a required element of undergraduate
`degrees according to the accreditation agencies. I
`think elements of that are likely to arise repeatedly
`throughout the curriculum of a bachelor's degree in
`these disciplines in various forms, depending on the
`examples presented and objectives associated with
`these examples.
` Q. Again, my intent is not to grill you
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`on what the exact curriculum of what a degree would
`be, but to get some understanding of what you had in
`mind when you set forth this level of skill in the
`art and you provided these opinions and what
`knowledge a person has to have to be considered a
`person of ordinary skill in the art.
` Is that clear?
` A. It's clear, and I think my
`Paragraph 20 is clear, that one with a Bachelor of
`Science degree in the discipline emphasizing the
`design of electrical computer and software
`technologies in combination with training of at least
`one or two years of related work experience, capture
`and processing of data or information, including but
`not limited to physiological monitoring technologies;
`or a master's degree in the relevant academic
`disciplines with less than a year of related work
`would have the working knowledge necessary to
`understand the ideas and descriptions presented in
`the materials that we've examined.
` Q. Yes. And I understand that's your
`testimony and that's in your Declaration. The
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`purpose of this deposition is for me to be able to
`ask questions about that.
` Let me just ask you this: Would a
`person have to have some knowledge, training, or
`experience in optimizing the optical performance of a
`physiological sensor by, for example, changing the
`size, shape, location of the LED detectors and lens
`to be considered a person of ordinary skill in the
`art, in your view?
` MR. SMITH: Objection; arg- --
`objection; argumentative. Form.
` A. I think one -- a person with these
`experiences would understand optics, electronics,
`sensors, and the mechanics of mounting and assembling
`things in order to be able to perform the role that
`you described in your question.
` Q. You said a person with these
`experiences.
` What do you mean?
` A. A Bachelor of Science degree in an
`academic discipline emphasizing the design of
`electrical computer or software technologies, in
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`combination with the experience that are part of that
`academic degree program.
` Q. Okay. But if a person did not have
`knowledge, training, or experience in optimizing the
`optical performance of a physiological sensor by
`changing the size, shape, locations of the LEDs,
`detectors and/or lens, that you would not consider
`that person to be a person of ordinary skill in the
`art; is that correct?
` MR. SMITH: Objection; argumentative.
`Form.
` A. I think one, a person who has these
`credentials from these degree programs and the
`associated experience described in Paragraph 20,
`would have the necessary knowledge and skill to apply
`principles of optics, mechanics, and electronics so
`as to perform the combinations and optimizations that
`you described in your question.
` Q. And in your Paragraph 108 -- 20 you
`say, in the second sentence, "A person would have had
`a Bachelor's of Science degree in academic discipline
`emphasizing the design of electrical, computer or
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`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
`technology."
` Did I read that correctly?
` A. I believe so.
` Q. And your testimony is that person
`would necessarily know how to optimize the optical
`performance of a physiological sensor by changing the
`size, shape, locations, and/or cover, LEDs,
`detectors, to optimize optical performance?
` MR. SMITH: Objection; asked and
`answered. Form.
` A. Yes, I mean, I can give a long
`answer, but I'll just say yes. That's my opinion.
` Q. There are different aspects of
`physiological sensors, am I correct?
` MR. SMITH: Objection; form.
` A. Could make probably a very long list
`of different sensors that might be characterized as
`physiological sensors, yes.
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` Q. So you mean the physical design of
`the sensor itself, correct?
` MR. SMITH: Objection.
` A. Correct.
` Q. There can also be designed associated
`software, correct?
` A. Yes, correct.
` Q. So the data processing part of, of
`the design of the physiological monitoring technology
`is very different from, for example, the design of
`the optics for a monitor, correct?
` MR. SMITH: Objection; argumentative.
`Form.
` A. Sorry, the last part, design of the
`monitor? Maybe I just misheard you.
` Q. Oh, optics -- sorry.
` When I say monitor, design of the
`physiological sensor?
` MR. SMITH: Same objection.
` A. I -- I think it's fair to say that,
`you know, processing of data information and design
`of a physiological object are not the same. They are
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`
`different.
` Q. Now, earlier did you mention -- you
`made a reference to a school being accredited; is
`that right?
` A. Yes.
` Q. You don't -- in your Paragraph 20,
`you don't mention that the school needs to be
`accredited, do you?
` MR. SMITH: Objection; form.
` A. I do not.
` Q. Do you think the school would need to
`be accredited?
` MR. SMITH: Objection; form.
` A. It's an interesting question at this
`time, actually. There was a debate about the --
`about accreditation in programs these days. We have
`programs at Stanford that are accredited and some
`that are not that produce bachelor of science
`degrees. I think all of the programs in all of those
`areas, whether accredited or not, are guided by
`experts on the faculty, designing the curriculum that
`would prepare their students for a future career in
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`these disciplines. And that's the expertise that I
`rely on when I think about the contents of these
`programs.
` Q. And you mentioned Stanford's
`curriculum several times, including your own
`experience with Stanford's curriculum. Have you
`heard of the US News' rankings of schools?
` A. I have.
` MR. SMITH: Objection; form.
`Relevance.
` Q. Is Stanford ranked in those rankings?
` A. I believe our academic programs are
`included in those rankings.
` Q. Any idea where Stanford falls within
`those rankings?
` A. So there's rankings of graduate
`programs, Ph.D. programs, master's programs, bachelor
`degree programs, the entire school. So there's many
`answers to that question and I don't off the top of
`my head know all of the answers. I believe we are
`highly ranked.
` Q. Let's start with undergrad.
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`
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