UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`MASIMO CORPORATION,
`Patent Owners
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`Case IPR2021-00208
`Patent 10,258,266
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`PETITIONER’S REPLY TO
`PATENT OWNERS’ RESPONSE TO PETITION
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`MASIMO CORPORATION,
`Patent Owners
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`Case IPR2021-00208
`Patent 10,258,266
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`PETITIONER’S REPLY TO
`PATENT OWNERS’ RESPONSE TO PETITION
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`Case No. IPR2021-00208
`Attorney Docket: 50095-0007IP1
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`TABLE OF CONTENTS
`I. INTRODUCTION .................................................................................................. 1
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`II. GROUNDS 1A-1B RENDER OBVIOUS THE CHALLENGED CLAIMS ....... 2
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`A.
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`Inokawa’s lens enhances the light-gathering ability of Aizawa ........... 2
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`1. Masimo ignores the well-known principle of reversibility ........ 4
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`2. Masimo ignores the behavior of scattered light in a reflectance-
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`type pulse sensor ......................................................................... 9
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`B. A POSITA would have been motivated to add a second LED to
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`Aizawa ................................................................................................. 15
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`C. A POSITA would have been motivated to modify Aizawa in view of
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`Ohsaki to include a convex protrusion ................................................ 19
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`III. GROUND 2 RENDERS OBVIOUS THE CHALLENGED CLAIMS ............ 22
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`A. A POSITA would have been motivated to modify Mendelson-1988
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`with Inokawa to add a lens .................................................................. 23
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`B. Mendelson-1988 in view of Inokawa includes the claimed cover ...... 23
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`C. Mendelson-1988 in view of Inokawa renders obvious a “circular
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`housing” ............................................................................................... 25
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`D. Nishikawa is a supporting reference ................................................... 26
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`IV. CONCLUSION .................................................................................................. 27
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`Case No. IPR2021-00208
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`LIST OF EXHIBITS
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`Description
`Exhibit No.
`APPLE-1001 U.S. Patent No. 10,258,266 to Poeze, et al. (“the ’266 patent”)
`APPLE-1002 Excerpts from the Prosecution History of the ’266 Patent (“the
`Prosecution History”)
`APPLE-1003 Declaration of Dr. Thomas W. Kenny
`APPLE-1004 Curriculum Vitae of Dr. Thomas W. Kenny
`APPLE-1005 Masimo Corporation, et al. v. Apple Inc., Complaint, Civil Action
`No. 8:20-cv-00048 (C.D. Cal.)
`APPLE-1006 U.S. Pub. No. 2002/0188210 (“Aizawa”)
`APPLE-1007
`JP 2006-296564 (“Inokawa”)
`APPLE-1008 Certified English Translation of Inokawa and Translator’s
`Declaration
`APPLE-1009 U.S. Pat. No. 7,088,040 (“Ducharme”)
`APPLE-1010 U.S. Pat. No. 8,177,720 (“Nanba”)
`APPLE-1011 RESERVED
`APPLE-1012 RESERVED
`APPLE-1013 RESERVED
`APPLE-1014 U.S. Pub. No. 2001/0056243 (“Ohsaki”)
`APPLE-1015 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”)
`APPLE-1016 RESERVED
`APPLE-1017 RESERVED
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`ii
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`APPLE-1018
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`Case No. IPR2021-00208
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`“Acrylic: Strong, stiff, clear plastic available in a variety of
`brilliant colors,” available at
`https://www.curbellplastics.com/Research-
`Solutions/Materials/Acrylic
`APPLE-1019 RESERVED
`APPLE-1020 RESERVED
`APPLE-1021 RESERVED
`APPLE-1022 RESERVED
`APPLE-1023 U.S. Pat. App. Pub. No. 2007/0145255 (“Nishikawa”)
`APPLE-1024
`“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”)
`APPLE-1025 U.S. Pat. No. 6,801,799 (“Mendelson-’799”)
`APPLE-1026 Declaration of Jacob Munford
`APPLE-1027 RESERVED
`APPLE-1028 RESERVED
`APPLE-1029 RESERVED
`APPLE-1030 RESERVED
`APPLE-1031 RESERVED
`APPLE-1032 RESERVED
`APPLE-1033 RESERVED
`APPLE-1034 Deposition Transcript of Dr. Vijay Madisetti in IPR2020-01520,
`IPR2020-01537, IPR2020-01539, Day 1 (August 1, 2021)
`APPLE-1035 Deposition Transcript of Dr. Vijay Madisetti in IPR2020-01520,
`IPR2020-01537, IPR2020-01539, Day 2 (August 2, 2021)
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`APPLE-1036 Deposition Transcript of Dr. Vijay Madisetti in IPR2020-01536,
`IPR2020-01538 (August 3, 2021)
`APPLE-1037 Masimo Corporation, et al. v. Apple Inc., Second Amended
`Complaint, Civil Action No. 8:20-cv-00048 (C.D. Cal.)
`(Redacted)
`APPLE-1038 U.S. Patent No. 8,577,431 to Lamego et al. (“CIP Patent”)
`APPLE-1039 Order Re Motion to Stay in Masimo Corporation et al. v. Apple
`Inc., Case 8:20-cv-00048-JVS-JDE, October 13, 2020
`Second Declaration of Jacob Robert Munford
`APPLE-1040
`APPLE-1041 Declaration of Gordon MacPherson: Mendelson-2003
`APPLE-1042 RESERVED
`APPLE-1043 RESERVED
`APPLE-1044
`“Refractive Indices of Human Skin Tissues at Eight Wavelengths
`and Estimated Dispersion Relations between 300 and 1600 nm,”
`H. Ding, et al.; Phys. Med. Biol. 51 (2006); pp. 1479-1489
`“Analysis of the Dispersion of Optical Plastic Materials,” S.
`Kasarova, et al.; Optical Materials 29 (2007); pp. 1481-1490
`“Noninvasive Pulse Oximetry Utilizing Skin Reflectance
`Photoplethysmography,” Y. Mendelson, et al.; IEEE Trans-
`actions on Biomedical Engineering, Vol. 35, No. 10, October
`1988; pp. 798-805 (“Mendelson-IEEE-1988”)
`Second Declaration of Dr. Thomas W. Kenny
`APPLE-1047
`APPLE-1048 Declaration of Dr. Thomas W. Kenny from IPR2020-01539
`APPLE-1049 Eugene Hecht, Optics (4th Ed. 2002)
`APPLE-1050 Excerpt from Merriam-Webster Dictionary
`APPLE-1051 Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`APPLE-1052 Eugene Hecht, Optics (2nd Ed. 1990)
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`APPLE-1045
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`APPLE-1046
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`Case No. IPR2021-00208
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`I.
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`INTRODUCTION
`Apple Inc. (“Petitioner”) submits this Reply to Patent Owner’s Response
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`(“POR”) to the Petition for Inter Partes Review (“IPR”) of U.S. Patent No.
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`10,258,266 (“the ’266 patent”) filed by Masimo Corporation (“Patent Owner” or
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`“Masimo”).
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`Patent Owner and their expert Dr. Madisetti—who acknowledges his lack of
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`knowledge in the most fundamental concepts of optics applicable to an “optical
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`physiological sensor”—criticize Petitioner’s reliance on Inokawa by pursuing a
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`technically flawed interpretation of Inokawa’s lens that violates basic principles of
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`optics and sensor design.1 APPLE-1001, Claim 1; APPLE-1034, 89:12-19.
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`Unable to provide rational support for their theories, Masimo resorts to
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`mischaracterizing cherry-picked testimony from Petitioner’s expert in an attempt to
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`obfuscate Inokawa’s plain teaching that, for pulse detectors, a “lens makes it
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`possible to increase the light-gathering ability of the LED.” APPLE-1008, [0015].
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`In addition, as detailed below, Masimo misunderstands the teachings of Ohsaki and
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`Petitioner’s reliance on the same for providing a second and independent reason
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`for adding a protrusion to Aizawa.
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` All emphasis added unless otherwise noted.
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`In its Institution Decision, the Board found that Petitioner established a
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`reasonable likelihood that the Challenged Claims of the ’266 patent are
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`unpatentable. As explained herein, POR arguments fail to rebut the positions
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`advanced in the Petition. See APPLE-1047, ¶¶1-56. Accordingly, the Board
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`should echo the reasoning and holding from its Institution Decision in its Final
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`Written Decision, and find the Challenged Claims unpatentable.
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`II. GROUNDS 1A-1B RENDER OBVIOUS THE CHALLENGED
`CLAIMS
`As shown in the Petition and further clarified below in response to Masimo’s
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`arguments, claims 1-6, 8-16, 18, and 19 are rendered obvious by the combination
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`of Aizawa and Inokawa (Ground 1A). For additional reasons as explained in the
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`Petition and below, those same claims are further rendered obvious by the
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`combination of Aizawa, Inokawa, and Ohsaki (Ground 1B).
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`A.
`Inokawa’s lens enhances the light-gathering ability of Aizawa
`Inokawa generally discloses a “lens [that] makes it possible to increase the
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`light-gathering ability” of a reflectance-type pulse sensor, APPLE-1008, [0015],
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`[0058], FIG. 2, and, based on this disclosure, a POSITA would have been
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`motivated to incorporate “an Inokawa-like lens into the cover of Aizawa to
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`increase the light collection efficiency....” Petition, 13-15; APPLE-1003, ¶¶86-89.
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`Yet Masimo contends that Inokawa’s lens is somehow designed specifically to
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`direct all light “to the center of the sensor” and that, as a result, it would “direct
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`light away from the periphery-located detectors” as in Aizawa, thereby
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`discouraging the above-noted motivation to combine. POR, 16, 20; see also
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`APPLE-1034, 40:4-11 (“...as I describe in my Declaration...if you have a convex
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`surface...all light reflected or otherwise would be condensed or directed towards
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`the center.”).
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`Masimo’s misinformed understanding of Inokawa’s lens—not to mention
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`lenses in general—is demonstrated by their description of Inokawa’s lens 27 as
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`“focus[ing] light from LEDs...to a single detector (25) in the center” and
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`“direct[ing] incoming light to the centrally located detector.” POR, 14.
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`A correct understanding of Inokawa’s lens as well as of reflectance-type
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`pulse sensors in general (like those disclosed by Aizawa, Inokawa, and Mendelson-
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`1988) readily exposes Masimo’s flawed rationale. Indeed, a POSITA would
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`understand that Inokawa’s lens generally improves “light concentration at pretty
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`much all of the locations under the curvature of the lens,” as opposed to only at a
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`single point at the center as asserted by Masimo. Ex. 2006, 164:8-16; see also
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`APPLE-1010, FIG. 1B, 8:45-50; APPLE-1011, FIG. 2, 3:35-41; APPLE-1047,
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`¶¶7-9. That is, a POSITA would have understood that a cover featuring a convex
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`protrusion would improve Aizawa’s signal-to-noise ratio, and consequently
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`performance, by causing more light backscattered from tissue to strike Aizawa’s
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`photodetectors than would have with a flat cover. APPLE-1047, ¶9; APPLE-1052,
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`52, 86, 90; APPLE-1052, 84, 87-92, 135-141; APPLE-1046, 803-805.
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`1. Masimo ignores the well-known principle of reversibility
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`The well-known optical principle of reversibility dispels Masimo’s claim
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`that “a convex cover condenses light towards the center of the sensor and away
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`from the periphery” when applied to Aizawa. POR, 16; APPLE-1052, 87-92;
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`APPLE-1049, 106-111; APPLE-1047, ¶10. According to this principle, “a ray
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`going from P to S will trace the same route as one from S to P.” APPLE-1052, 92,
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`84; APPLE-1049, 101, 110; APPLE-1036, 80:20-82:20. Importantly, the principle
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`dictates that rays that are not completely absorbed by user tissue will propagate in
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`a reversible manner. APPLE-1047, ¶10. In other words, every ray that completes
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`a path through tissue from an LED to a detector would trace an identical path
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`through that tissue in reverse, if the positions of the LED emitting the ray and the
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`receiving detector were swapped. Id.; APPLE-1052, 92.
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`The annotated versions of Inokawa’s FIG. 2 presented below together
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`illustrate the principle of reversibility applied in context. As shown, Inokawa’s
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`FIG. 2, illustrates two example ray paths from surrounding LEDs (green) to a
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`central detector (red):
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`POR, 14; APPLE-1047, ¶10.
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`As a consequence of the principle of reversibility, a POSITA would have
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`understood that if the LED/detector configuration were swapped, as in Aizawa, the
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`two example rays would travel identical paths in reverse, from a central LED (red)
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`to surrounding detectors (green). APPLE-1047, ¶11. A POSITA would have
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`understood that, for these rays, any condensing/directing/focusing benefit achieved
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`by Inokawa’s cover (blue) under the original configuration would be identically
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`achieved under the reversed configuration:
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`POR, 14; APPLE-1047, ¶11.
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`When factoring in additional scattering that may occur when light is
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`reflected within human tissue, reversibility holds for each of the rays that are not
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`completely absorbed; consequently, “if we’re concerned with the impact of the
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`lens on the system, it’s absolutely reversible.” Ex. 2006, 209:19-21, 207:9-209:21;
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`APPLE-1047, ¶12.
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`As shown with respect to the example paths illustrated below (which include
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`additional scattering within tissue), each of the countless photons travelling
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`through the system must abide by Fermat’s principle. APPLE-1047, ¶¶13-18;
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`APPLE-1052, 87-92; APPLE-1049, 106-111. Consequently, even when
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`accounting for various/random redirections and partial absorptions, each photon
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`traveling between a detector and an LED would take the quickest—and identical—
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`path between those points, even if the positions of the detector and LED were
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`swapped. APPLE-1047, ¶¶13-18; Ex. 2006, 207:9-209:21 (“one could look at any
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`particular randomly scattered path…and the reversibility principle applies to all of
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`the pieces [of that path] and, therefore, applies to the aggregate”).
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` APPLE-1047, ¶15.
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`When confronted with this basic principle of reversibility during deposition,
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`Dr. Madisetti refused to acknowledge it, even going so far as to express ignorance
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`of “Fermat’s principle, whatever that is.” APPLE-1034, 89:12-19. Yet Fermat’s
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`principle, which states that a path taken by a light ray between two points is one
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`that can be traveled in the least time, is one of the most fundamental concepts in
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`optics/physics and plainly explains the principle of reversibility. APPLE-1052, 87-
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`92; APPLE-1049, 106-111; APPLE-1047, ¶19. This core concept forms the basis
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`of all Aizawa-based combinations and was explained by Dr. Kenny in his
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`declaration: “[B]ecause the path of light is reversible, the light collection function
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`of Inokawa’s lens would work the same way regardless of whether light is emitted
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`toward the center (and detected by a centrally located photodiode) or emitted away
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`from the center (and detected by a peripherally located photodiode).” APPLE-
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`1003, ¶88; see also APPLE-1003, ¶54 (explaining that Aizawa would operate in
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`the same manner even with “a centrally located detector [surrounded] by a
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`plurality of emitters.”); APPLE-1048, ¶79 (“Indeed, Aizawa itself recognizes this
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`reversibility, stating that while the configurations depicted include a central emitter
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`surrounded by detectors, the ‘same effect can be obtained when…a plurality of
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`light emitting diodes 21 are disposed around the photodetector 22.’”); APPLE-
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`1047, ¶19.
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`Consistent with that understanding, contrary to Masimo’s assertions and as
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`shown below, prior art including Ohsaki and Inokawa demonstrate the use of
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`covers/lenses featuring convex surfaces to direct light to non-centrally located
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`detectors. APPLE-1014, FIG. 2; APPLE-1008, FIG. 3; APPLE-1047, ¶¶20-21.
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`APPLE-1014, FIG. 2
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`In short, based at least on the principle of reversibility, a POSITA would
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`have understood that both configurations of LEDs and detectors—i.e., with the
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`LED at the center as in Aizawa or with the detector at the center as in Inokawa—
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`would similarly benefit from the enhanced light-gathering ability of an Inokawa-
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`like lens. APPLE-1047, ¶22.
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`2. Masimo ignores the behavior of scattered light in a reflectance-
`type pulse sensor
`Because both Aizawa and Inokawa (as well as Ohsaki and Mendelson-1988)
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`are reflectance-type pulse sensors that receive diffuse/backscattered light, its
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`cover/lens cannot focus all incoming light toward the sensor’s center. APPLE-
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`1047, ¶23; Ex. 2006, 163:12-164:2 (“A lens in general…doesn’t produce a single
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`focal point”). Indeed, reflectance-type sensors work by detecting light that has
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`been “partially reflected, transmitted, absorbed, and scattered by the skin and other
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`tissues and the blood before it reaches the detector.” APPLE-1051, 86. A
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`POSITA would have understood that light that backscatters from the measurement
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`site after diffusing through tissue reaches the active detection area from random
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`directions and angles. APPLE-1047, ¶23; APPLE-1046, 803; APPLE-1051, 90,
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`52.
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`Basic laws of refraction, specifically Snell’s law, dictate this behavior of
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`light. APPLE-1052, 84; APPLE-1049, 101; APPLE-1036, 80:20-82:20; APPLE-
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`1051, 52, 86, 90; APPLE-1047, ¶24. For example, referring to Masimo’s version
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`of Inokawa’s FIG. 2, further annotated below to show additional rays of light
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`emitted from LED 21, it can be seen how some of the reflected/scattered light from
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`the measurement site does not reach Inokawa’s centrally located detector:
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`POR, 14; APPLE-1047, ¶24.
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`Indeed, far from focusing light to the center as Masimo contends, Ohsaki’s
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`convex cover provides a slight refracting effect, such that light rays that may have
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`missed the detection area are instead directed toward that area. APPLE-1047,
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`¶¶25-26. This is particularly true in configurations like Aizawa’s where light
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`detectors are arranged symmetrically about a central light source to enable
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`backscattered light to be detected within a circular active detection area
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`surrounding that source. APPLE-1051, 86, 90. The slight refracting effect is a
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`consequence of similar indices of refraction between human tissue and a typical
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`cover material (e.g., acrylic). APPLE-1047, ¶26 (citing APPLE-1044, 1486;
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`APPLE-1045, 1484).
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`Attempting to support its argument that a convex cover focuses all incoming
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`light at the center, Masimo relies on the ’266 patent’s FIG. 14B:
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`APPLE-1001, FIG. 14B; POR, 18-19, 26; APPLE-1047, ¶27.
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`Masimo treats this figure as an illustration of the behavior of all convex
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`surfaces with respect to all types of light, and conclude that “a convex lens
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`condenses light away from the periphery and towards the sensor’s center.” POR,
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`16; APPLE-1034, 127:22-128:18 (“…a POSA viewing [FIG. 14B]…would
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`understand that light, all light, light from the measurement site is being focused
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`towards the center”). APPLE-1047, ¶28.
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`But FIG. 14B is not a representation of light that has been reflected from a
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`tissue measurement site. The light rays (1420) shown in FIG. 14B are collimated
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`(i.e., parallel to one another), and each light ray’s path is perpendicular to the
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`detecting surface. APPLE-1047, ¶29. This is because FIG. 14B shows a
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`transmittance-type configuration where light is “attenuated by body tissue,” not
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`backscattered. APPLE-1001, 35:65-67; APPLE-1047, ¶30. Indeed, FIG. 14I of
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`the ’266 patent puts FIG. 14B in proper context, showing how light from the
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`emitters is transmitted through the entire finger/tissue before being received by the
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`detectors on the other side:
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`APPLE-1047, ¶30 (showing APPLE-1001, FIG.14I).
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`By contrast, the detector(s) of reflectance type pulse detectors detect light
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`that has been “partially reflected, transmitted, absorbed, and scattered by the skin
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`and other tissues and the blood before it reaches the detector.” APPLE-1051, 86.
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`For example, a POSITA would have understood from Aizawa’s FIG. 1(a) that light
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`that backscatters from the measurement site after diffusing through tissue reaches
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`the circular active detection area provided by Aizawa’s detectors from various
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`random directions and angles, as opposed to all light entering from the same
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`direction and at the same angle as shown in FIG. 14B. APPLE-1047, ¶31; APPLE-
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`1051, 52, 86, 90; APPLE-1046, 803-805.
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`The example figure below illustrates light rays backscattered by tissue
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`toward a convex board/lens; as consequence of this backscattering, a POSITA
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`would have understood that the backscattered light will encounter the interface
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`provided by the convex board/lens at all locations from a wide range of angles.
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`APPLE-1047, ¶32. This pattern of incoming light cannot be focused by a convex
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`lens towards any single location:
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`APPLE-1047, ¶32.
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`To the extent Masimo contends that only some light is directed “towards the
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`center” and away from Aizawa’s detectors in a way that discourages combination,
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`such arguments fail. Indeed, far from focusing light to a single central point, a
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`POSITA would have understood that Ohsaki’s cover provides a slight refracting
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`effect, such that light rays that otherwise would have missed the active detection
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`area are instead directed toward that area. APPLE-1047, ¶33; APPLE-1051, 52;
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`APPLE-1052, 87-92, 135-141; APPLE-1034, 60:7-61:6, 70:8-18.
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`
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`Masimo and Dr. Madisetti’s reliance on Petitioner’s drawings provided in
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`the Petition filed in IPR2020-01520 (Ex. 2019) at page 39 and in the
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`accompanying Kenny Declaration (Ex. 2020) in paragraphs 119-120 for
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`justification of their understanding of Inokawa’s lens is similarly misplaced. POR,
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`16-18. Far from demonstrating the false notion that a convex lens directs all light
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`to the center, these drawings provided by Dr. Kenny are merely simplified
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`diagrams included to illustrate, for claim 12 of the ’265 patent, one example
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`scenario (based on just one ray and one corpuscle) where a light permeable cover
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`can “reduce a mean path length of light traveling to the at least four detectors.”
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`Ex. 2019, 39; Ex. 2020, ¶¶119-120; APPLE-1047, ¶34.
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`B. A POSITA would have been motivated to add a second LED to
`Aizawa
`As laid out in detail in the Petition and through the original declaration of
`
`Dr. Kenny, a POSITA would have been motivated to add a second emitter
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`operating at a different wavelength to Aizawa in order to “allow for a more reliable
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`pulse measurement that takes into account and corrects for inaccurate readings
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`stemming from body movement.” Petition, 17-24; APPLE-1003, ¶¶69-81; APPLE-
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`1047, ¶35.
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`15
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`Masimo, however, suggests that such motivation is flawed because
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`“Aizawa...expressly states that it provides a “device for computing the amount of
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`motion load from the pulse rate.’” POR, 39. Yet Masimo fails to explain—and
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`Aizawa itself is certainly silent—regarding how Aizawa senses and computes
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`motion load. Moreover, while Masimo contends that Aizawa “account[s] for”
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`motion, Aizawa is silent on whether it uses the computed motion load to improve
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`the detection signal. Id.; APPLE-1047, ¶36. Patent Owner further does not rebut
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`that adding a second LED having a second wavelength, as per Inokawa, will
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`“allow for a more reliable” reading that compensates for body motion. Petition,
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`18; APPLE-1003, ¶72. Indeed, as Dr. Kenny explained during his deposition,
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`adding a second LED at a different wavelength to Aizawa’s single LED design
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`would allow it to obtain a more reliable pulse measurement by allowing the system
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`to “measur[e] pulse rate and motion load during the same time” by operating a
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`separate LED dedicated to sensing motion. Ex. 2007, 401:11-402:4; APPLE-1047,
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`¶36. As Dr. Kenny further explains, having two separate signals that are
`
`respectively dedicated to measuring pulse and body motion, as per Inokawa, will
`
`allow Aizawa’s system to “take into account and correct for inaccurate readings
`
`related to body movement” by subtracting the “signal component corresponding to
`
`body movement [] from the pulse signal to help better isolate the desired pulse
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`data.” APPLE-1003, ¶72. Because different wavelengths have different
`
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`16
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`Case No. IPR2021-00208
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`sensitivities to pulse and body motion, collecting two separate signals will allow
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`noise arising from body motion to be better isolated and accounted for. APPLE-
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`1047, ¶¶36-37.
`
`
`
`As further explained in the Petition, Inokawa provides a second and
`
`independent motivation for adding a second LED having a different wavelength,
`
`namely the ability to “improve data transmission accuracy by using the second
`
`LED...to transmit checksum information such that ‘the accuracy of data can be
`
`increased.’” Petition, 21-23, citing (APPLE-1008, [0111], [0044], [0048]);
`
`APPLE-1003, ¶78; APPLE-1047, ¶38. The fact that “Inokawa states that it can
`
`accomplish transmission with a single LED” does not take away from the fact that
`
`a POSITA would nevertheless have been motivated to look to the two-LED
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`implementation of Inokawa to further improve accuracy. POR, 41; Petition, 21-23;
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`Ex. 2007, 407:7-408:20. And while Masimo further contends that Dr. Kenny
`
`“acknowledged that POSITA wanting to maintain a wireless data transmission
`
`approach [in Aizawa] would not switch to the base station transmission approach
`
`of Inokawa,” POR, 42, a full reading of the cited deposition testimony reveals that
`
`Dr. Kenny made it very clear that if “they’ve already decided not to use a base
`
`station transmission device, then they probably wouldn’t switch to one.” Ex. 2007,
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`416:5-15.
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`17
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`As for Patent Owner’s assertion that the combination somehow departs from
`
`
`
`Aizawa’s goal of “real-time measuring,” which is mentioned in passing in one
`
`sentence in Aizawa, it is noted that nowhere in Aizawa does it mention that such
`
`data must also be transmitted to some external device in real time. POR, 40;
`
`APPLE-1047, ¶38. Moreover, a POSITA would have been fully capable of
`
`weighing potential benefits associated with different transmission methods, for
`
`instance recognizing that a quicker transmission may be achieved in one instance
`
`and a more accurate one in another. See Winner Int’l Royalty Corp. v. Wang, 202
`
`F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes
`
`at the expense of another benefit...should not nullify its use as a basis to modify the
`
`disclosure of one reference with the teachings of another.”); In re Urbanski, 809
`
`F.3d 1237, 1244 (Fed. Cir. 2016); APPLE-1047, ¶38.
`
`
`
`Masimo additionally argues that “Petitioner fails to address other
`
`complications that would result from adding an extra LED to a physiological
`
`sensor,” such as the potential for “thermal interference.” POR, 42. But as Dr.
`
`Kenny clarified, such minor issues are “part of what I understand someone of
`
`ordinary skill in the art would bring...to the problem and would know how to make
`
`the changes needed.” Ex. 2007, 384:8-388:12; APPLE-1047, ¶39. Indeed, a
`
`POSITA is not an automaton and is fully capable of employing inferences and
`
`
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`18
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`Case No. IPR2021-00208
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`creative steps when seeking to improve a primary reference, based on the teachings
`
`of a secondary reference. See In re Keller, 642 F.2d 413 (C.C.P.A. 1981).
`
`C. A POSITA would have been motivated to modify Aizawa in view
`of Ohsaki to include a convex protrusion
`As Dr. Kenny explained at length in his first declaration, “Ohsaki teaches
`
`that adding a convex surface...can help prevent the device from slipping on the
`
`tissue of the wearer compared to using a flat cover without such protrusion” and
`
`that “a POSITA seeking to achieve improved adhesion between the detector and
`
`the skin, as expressly recognized in Aizawa, would have been motivated and
`
`readily able to modify Aizawa’s acrylic plate to have a convex shape as in
`
`Ohsaki.” APPLE-1003, ¶¶127-128 (citing to APPLE-1014, [0025]; APPLE-1006,
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`[0026], [0030]); APPLE-1047, ¶40.
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`Masimo, rather than attempting to directly rebut Dr. Kenny’s testimony on
`
`this point, focuses on arguments that are factually flawed and legally irrelevant.
`
`Specifically, Masimo contends that Ohsaki’s “convex surface must have
`
`longitudinal directionality,” and that “Ohsaki indicates that its convex surface
`
`only prevents slipping on the backhand side (i.e., watch-side) of the user’s wrist.”
`
`POR, 45. Notably absent is how Ohsaki actually describes the benefits associated
`
`with its convex surface. APPLE-1047, ¶¶41-42.
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`19
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`For example, Ohsaki contrasts a “convex detecting surface” from a “flat
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`detecting surface,” and explains that “if the translucent board 8 has a flat surface,
`
`the detected pulse wave is adversely affected by the movement of the user’s wrist,”
`
`but that if “the translucent board 8 has a convex surface…variation of the amount
`
`of the reflected light…that reaches the light receiving element 7 is suppressed.”
`
`APPLE-1014, ¶[0025]; APPLE-1047, ¶42. As Dr. Kenny explains, the POSITA
`
`would have understood from such teachings of Ohsaki that the advantages of a
`
`light permeable protruding convex cover would apply regardless of any alleged
`
`longitudinal directionality of Ohsaki’s cover and regardless of where on the body
`
`such a convex cover was placed. APPLE-1047, ¶42; APPLE-1014, ¶¶[0015],
`
`[0017], [0025], FIGS. 1, 2, 4A, 4B.
`
`For one, Ohsaki’s specification and claim language reinforce that Ohsaki’s
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`description is not so limited. APPLE-1047, ¶¶42-43. For example, Ohsaki
`
`explains that “the detecting element 2…may be worn on the back side of the user's
`
`forearm.” APPLE-1014, [0030], [0028]. Similarly, Ohsaki’s claim 1 states that
`
`“the detecting element is constructed to be worn on a back side of a user’s wrist or
`
`a user’s forearm.” As another example, Ohsaki’s independent claim 5 states that
`
`“the detecting element is constructed to be worn on a user’s wrist or a user’s
`
`forearm,” without even mentioning a backside of the wrist or forearm. A POSITA
`
`would have understood this language to contradict Masimo’s assertion that Ohsaki
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`20
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`Case No. IPR2021-00208
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`must be positioned on the backhand side of the wrist. POR, 45; APPLE-1047, ¶43.
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`Yet, as explained above, a POSITA would have understood that Ohsaki’s benefits
`
`are provided when the sensor is placed, for example, on either side of the user’s
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`wrist or forearm. APPLE-1014, [0025], FIGS. 4A/B; APPLE-1047, ¶43. Thus,
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`Masimo’s arguments that are premised on Ohsaki requiring the detecting element
`
`to be worn on a back side of a user’s wrist or a user’s forearm necessarily fail.
`
`APPLE-1047, ¶44.
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`Moreover, “[t]he test for obviousness is not whether the features of a
`
`secondary reference may be bodily incorporated into the structure of the primary
`
`reference…[r]ather, the test is what the combined teachings of those references
`
`would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d
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`413 (C.C.P.A. 1981); see also Allied Erecting v. Genesis Attachments, 825 F.3d
`
`1373, 1381 (Fed. Cir. 2016) (rejecting argument that combination would “result
`
`[in] substantial redesign” because “[t]he test for obviousness is not whether the
`
`features of a secondary reference may be bodily incorporated into the structure of
`
`the primary reference”). Indeed, Ohsaki was relied upon not for its exact cover
`
`configuration but rather for the rather obvious concept that a convex surface
`
`protruding into a user’s skin will prevent slippage, regardless of any directionality
`
`that may or may not exist with respect to such convex surface and regardless of
`
`where on the human body it is located. APPLE-1047, ¶42; APPLE-1014,
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`21
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`Case No. IPR2021-00208
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`¶¶[0015], [0017], [0025], FIGS. 1, 2, 4A, 4B. And adding a convex surface to
`
`Aizawa’s flat plate will serve to increase its tendency to not slip off, not take away
`
`from it, since it is well-
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