UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2024-00244
`U.S. Patent 10,722,159
`____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`

`

`
`
`Case No. IPR2024-00244
`
`Attorney Docket: 50095-0134IP2
`
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`SARANTOS DISCLOSES CHANGING A FIRST SHAPE INTO A
`SECOND SHAPE (ELEMENTS [1.2], [19.3]) .............................................. 1
`
`A. Masimo misrepresents Apple’s positions in both the ITC proceeding
`and the instant Petition .......................................................................... 1
`
`B.
`
`C.
`
`Sarantos’s “first shape” ......................................................................... 2
`
`Sarantos provides changing the first shape into a second shape ........... 5
`
`D. Apple is not estopped from arguing that Sarantos’s window region
`changes the first shape into a second shape .......................................... 7
`
`II.
`
`SARANTOS DISCLOSES CLAIMS [5], [25] AND ELEMENT [14.4] ....... 8
`
`A.
`
`Sarantos renders obvious a light block having a circular shape ........... 8
`
`B.
`
`Sarantos discloses a plurality of photodiodes arranged in an array
`having a spatial configuration corresponding to the circular light block
` .............................................................................................................11
`
`III.
`
`SARANTOS-SHIE RENDERS OBVIOUS CHANGING THE FIRST
`SHAPE INTO A SECOND SHAPE (ELEMENTS [1.2], [19.3], CLAIM 18)
` .......................................................................................................................13
`
`A. Apple is not estopped from arguing that a POSITA would have
`applied Shie to Sarantos in the proposed manner ...............................13
`
`B.
`
`A POSITA would have been motivated to combine Sarantos and Shie
` .............................................................................................................17
`
`C.
`
`Sarantos-Shie changes a first shape of light into a second shape .......19
`
`IV. SARANTOS PROVIDES MEASURING OXYGEN SATURATION AT
`THE WRIST (CLAIMS 8 AND 17) .............................................................19
`
`A.
`
`Sarantos discloses and renders obvious measuring oxygen saturation
`at the wrist ...........................................................................................19
`
`
`
`i
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`

`

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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`
`
`B.
`
`A POSITA would have reasonably expected success in measuring
`oxygen saturation at the wrist as disclosed by Sarantos .....................20
`
`V.
`
`SARANTOS AND UTTER (WITH OUR WITHOUT SHIE) RENDER
`OBVIOUS CLAIM 24 ...................................................................................31
`
`VI. DR. MADISETTI’S TESTIMONY IS ENTITLED TO LITTLE OR NO
`WEIGHT ........................................................................................................31
`
`
`
`
`
`
`
`
`ii
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`

`

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`Case No. IPR2024-00244
`
`Attorney Docket: 50095-0134IP2
`
`
`
`LIST OF EXHIBITS
`
`APPLE-1001 U.S. Patent. No. 10,722,159 to Al-Ali (“the ’159 patent”)
`
`APPLE-1002 Prosecution History of the ’159 patent (Application No.
`16/791,963)
`
`APPLE-1003 Declaration of Dr. Brian Anthony
`
`APPLE-1004 U.S. Patent No. 8,670,819 to Iwamiya
`
`APPLE-1005 U.S. Patent No. 9,392,946 to Sarantos
`
`APPLE-1006 U.S. Patent No. 8,446,275 to Utter
`
`APPLE-1007 U.S. Patent No. 6,483,976 to Shie
`
`APPLE-1008 U.S. Patent Pub. No. 2016/0058312 (“Han”)
`
`APPLE-1009 Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`
`APPLE-1010 U.S. Patent No. 10,470,695 (the “’695 patent”)
`
`APPLE-1011 Apple v. Masimo, Case No. IPR2020-01722, Paper 29 (Final
`Written Decision) (PTAB May 5, 2022) (the “’695 FWD”)
`
`APPLE-1012 Masimo Corporation, et al. v. Apple Inc., Redacted Complaint,
`ITC Inv. No. 337-TA-1276
`
`APPLE-1013 RESERVED
`
`APPLE-1014 Pang et al., A Neo-Reflective Wrist Pulse Oximeter, IEEE Access,
`Volume 2 (January 12, 2015)
`
`APPLE-1015 Li et al., A Wireless Reflectance Pulse Oximeter With Digital
`Baseline Control for Unfiltered Photoplethysmograms, IEEE
`Transactions on Biomedical Circuits and Systems, Vol. 6, No. 3
`(June 2012)
`
`APPLE-1016 Cai et al., Implementation of a Wireless Pulse Oximeter Based on
`Wrist Band Sensor, 3rd International Conference on Biomedical
`Engineering and Informatics
`
`
`
`
`
`iii
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`

`

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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`International Publication No. WO 2001/17421 to Lindberg et al.
`
`
`APPLE-1017
`
`APPLE-1018 Maattala et al., Optimum Place for Measuring Pulse Oximeter
`Signal in Wireless Sensor-Belt or Wrist-Band, 2007 International
`Conference on Convergence Information Technology
`
`
`APPLE-1019 Fitbit Surge Fitness Super Watch User Manual, Version 1.3 (2015)
`available at
`https://help.fitbit.com/manuals/manual_surge_en_US.pdf
`
`
`APPLE-1020 Duffy, Jill, Fitbit Surge Review, pcmag.com (Jan. 29, 2015)
`available at https://www.pcmag.com/reviews/fitbit-surge
`
`
`APPLE-1021 U.S. Patent Pub. No. 2006/0253010 (“Brady”)
`
`APPLE-1022 U.S. Patent No. 6,014,576 (“Raley”)
`
`APPLE-1023 Excerpts from Bronzino, The Biomedical Engineering Handbook,
`CRC Press, Inc. (1995) (“Bronzino”)
`
`
`APPLE-1024 Severinghaus et al., Recent Developments in Pulse Oximetry,
`Anesthesiology, Vol. 76, No. 6 (June 1992)
`
`
`APPLE-1025 Duffy, MIO Alpha BLE Review, PC Magazine (Jan. 28, 2013)
`available at https://www.pcmag.com/reviews/mio-alpha-ble
`
`RESERVED
`
`
`APPLE-1026-1032
`
`APPLE-1033 U.S. Patent No. 6,801,799 (“Mendelson”)
`
`APPLE-1034 Mendelson et al., A Wearable Reflectance Pulse Oximeter for
`Remote Physiological Monitoring, Proceedings of the 28th IEEE
`EMBS Annual International Conference (Sept. 3, 2006)
`
`
`APPLE-1035 U.S. Patent Pub. No. 2013/0267854 (“Johnson”)
`
`APPLE-1036 U.S. Patent Pub. No. 2005/0116820 (“Goldreich”)
`
`APPLE-1037 U.S. Patent No. 5,164,858 to Aguilera
`
`
`
`
`iv
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`

`

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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
`
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`APPLE-1038 U.S. Patent No. 5,830,137 to Scharf
`
`APPLE-1039 U.S. Patent Pub. No. 2005/0267346 (“Faber”)
`
`APPLE-1040
`
`ITC Inv. No. 337-TA-1276 Exhibit RX-0508 (Jianchu Yao and
`Steve Warren, Stimulating Student Learning with a Novel “In-
`House” Pulse Oximeter Design (2005))
`
`APPLE-1041 U.S. Patent Pub. No. 2014/0323829 (“LeBoeuf”)
`
`APPLE-1042 Fontaine et al., Reflectance-Based Pulse Oximeter for the Chest
`and Wrist, Worchester Polytechnic Institute (April 2013) available
`at https://digital.wpi.edu/show/6969z2326
`
`APPLE-1043 U.S. Patent No. 7,468,036 to Rulkov
`
`APPLE-1044
`
`International Publication No. WO 2011/051888 (“Ackermans”)
`
`APPLE-1045
`
`International Publication No. WO 2012/140559 (“Shmueli”)
`
`APPLE-1046 U.S. Patent No. 7,650,176 to Sarussi
`
`APPLE-1047 U.S. Patent Pub. No. 2002/0095092 (“Kondo”)
`
`APPLE-1048 U.S. Patent Pub. No. 2015/0355604 (“Fraser”)
`
`APPLE-1049 U.S. Patent No. 6,398,727 to Bui
`
`APPLE-1050 Beam Shaping with Cylindrical Lenses, available at
`https://www.newport.com/n/beam-shaping-with-cylindrical-lenses
`
`
`APPLE-1051 U.S. Patent No. 9,316,495 to Suzuki et al.
`
`APPLE-1052 U.S. Patent Pub. No. 2010/0261986 to Chin et al.
`
`APPLE-1053 Dickey, Laser Beam Shaping Theory and Techniques, Second
`Edition, Taylor & Francis Group, LLC (2014)
`
`
`APPLE-1054 U.S. Patent Pub. No. 2014/0051955 to Tiao et al.
`
`
`
`v
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`

`

`
`
`APPLE-1055-1059
`
`RESERVED
`
`
`
`Case No. IPR2024-00244
`
`Attorney Docket: 50095-0134IP2
`
`APPLE-1060 Combined Civil and Criminal Federal Court Management Statistics
`(Sep. 30, 2023) | United States Courts (uscourts.gov),
`https://www.uscourts.gov/sites/default/files/data_tables/fcms_na_d
`istprofile0630.2023.pdf
`
`APPLE-1061 Memorandum, Interim Procedure for Discretionary Denials in AIA
`Post-Grant Proceedings with Parallel District Court Litigation
`(USPTO June 21, 2022) (“Director’s Guidance”)
`
`APPLE-1062 Apple’s Complaint for Patent Infringement (Design), Apple Inc., v
`Masimo Corporation, et al., Case No. 1-22-cv-01377 (D. Del. Oct.
`20, 2022)
`
`APPLE-1063 Apple’s Complaint for Patent Infringement (Utility), Apple Inc., v
`Masimo Corporation, et al., Case No. 1-22-cv-01378 (D. Del. Oct.
`20, 2022)
`
`APPLE-1064 Defendant Masimo Corporation’s Answer to Complaint and
`Counterclaims, Apple Inc., v Masimo Corporation, et al., Case No.
`1-22-cv-01378 (D. Del. Dec. 12, 2022)
`
`APPLE-1065 Order Granting Joint Motion to Amend the Case Schedule, Apple
`Inc., v Masimo Corporation, et al., Case No. 1-22-cv-01378 (D.
`Del. Sep. 21, 2023)
`
`APPLE-1066 Stipulation by Apple Inc.
`
`
`APPLE-1067 Email Identifying Masimo’s District Court Invalidity Grounds
`(Nov. 16, 2023)
`
`APPLE-1068 Excerpt of Apple’s District Court Expert Invalidity Report, Apple
`Inc., v Masimo Corporation, et al., Case No. 1-22-cv-01378 (Nov.
`22, 2023)
`
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`vi
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`APPLE-1069 Order Granting Unopposed Motion to Stay Certain Patent
`Counterclaims, Apple Inc., v Masimo Corporation, et al., Case No.
`1-22-cv-01378 (Jan. 10, 2023)
`
`APPLE-1070 RESERVED
`
`APPLE-1071 U.S. Patent No. 10,687,745 to Al-Ali (“the ’745 patent”)
`
`APPLE-1072
`
`Institution Decision, Apple Inc. v. Masimo Corp., IPR2022-01291
`Pap. 15 (PTAB Feb. 1, 2023)
`
`APPLE-1073 U.S. Patent No. 10,470,695 to Al-Ali (“the ’695 patent”)
`
`APPLE-1074 Final Written Decision, Apple Inc. v. Masimo Corp., IPR2020-
`01722 Pap. 29 (PTAB May 5, 2022)
`
`
`APPLE-1075
`
`Joint Letter for March 20, 2024 Case Management Conference,
`Apple Inc., v Masimo Corporation, et al., Case No. 1-22-cv-01378
`(Mar. 16, 2024)
`
`APPLE-1076 Combined Civil and Criminal Federal Court Management
`Statistics (Dec. 31, 2023) | United States Courts (uscourts.gov),
`available at:
`https://www.uscourts.gov/sites/default/files/fcms_na_distprofile12
`31.2023_0.pdf
`
`APPLE-1077 Median Time to Disposition in Cases Terminated After Hearing or
`Submission | United States Court of Appeals for the Federal
`Circuit (Sep. 30, 2023), available at: MedDispTimeMERITSTable-
`FY23.pdf (uscourts.gov)
`
`APPLE-1078 Sotera Stipulation by Apple Inc.
`
`APPLE-1079 CONFIDENTIAL - Supplemental Declaration of Dr. Brian
`Anthony
`
`
`APPLE-1080 CONFIDENTIAL - Transcript of the Deposition of Dr. R. James
`Duckworth (August 9, 2023)
`
`
`APPLE-1081 U.S. Patent Application Pub. No. 2010/0324387 to Moon et al.
`(“Moon”)
`
`
`
`vii
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`APPLE-1082 CONFIDENTIAL - ITC Inv. No. 337-TA-1276 Hearing Transcript
`of Dr. Saahil Mehra
`
`
`APPLE-1083 CONFIDENTIAL – Transcript of Testimony of Dr. Vivek
`Venugopal from June 6-10, 2022 Hearing Transcript, Masimo
`Corp. et al. v. Apple Inc., ITC Inv. No 337-TA-1276
`
`
`APPLE-1084 CONFIDENTIAL - ITC Inv. No. 337-TA-1276 Hearing Transcript
`of Dr. Ueyn Block
`
`
`APPLE-1085
`
`ITC Inv. No. 337-TA-1276 Exhibit RX-0498 (Takatani et al.,
`Optical Oximetry Sensors for Whole Blood and Tissue, IEEE
`Engineering in Medicine and Biology (June/July 1994))
`
`
`APPLE-1086 CONFIDENTIAL - Transcript of the first session of the
`Deposition of Dr. Vijay K. Madisetti (February 4, 2025)
`
`
`APPLE-1087 CONFIDENTIAL - Transcript of the second session of the
`Deposition of Dr. Vijay K. Madisetti (February 7, 2025)
`
`
`APPLE-1088 U.S. Patent No. 6,580,086 to Schulz et al.
`
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`viii
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`
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`Contrary to Masimo’s assertions, Sarantos describes and is enabled to
`
`achieve measurement of oxygen saturation at the wrist, and both Sarantos and
`
`Sarantos-Shie render obvious all elements of the Challenged Claims, including the
`
`claimed functionality of changing a first shape of light into a second shape.
`
`I.
`
`SARANTOS DISCLOSES CHANGING A FIRST SHAPE INTO A
`SECOND SHAPE (ELEMENTS [1.2], [19.3])
`
`A. Masimo misrepresents Apple’s positions in both the ITC
`proceeding and the instant Petition
`
`The Patent Owner’s Response (“POR”) misrepresents Apple’s positions
`
`before the ITC proceeding involving the related ’745 Patent, Apple’s positions in
`
`the instant Petition, and the statements of Apple’s experts Dr. Vonugopal (ITC)
`
`and Dr. Anthony (IPR).
`
`For example, the POR asserts that Apple’s positions are at odds with its
`
`prior ITC arguments. POR, 1-2, 8-9, 14-18. However, Apple’s ITC arguments
`
`were based on the structure of the accused Apple Watch, while Apple’s positions
`
`here are based on the specific structures of a different device: Sarantos’s wearable
`
`fitness monitor.
`
`Specifically, before the ITC, Apple established non-infringement of the ’745
`
`Patent because the specific arrangement of the Apple Watch changed light “from a
`
`circular shape to a larger circular shape” and thus did not change the shape of the
`
`
`
`1
`
`

`

`
`light from a “first shape into a second shape.”1 EX2093, 187-191.
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`
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`Here, Dr. Anthony consistently testified that Sarantos discloses changing the
`
`emitted light from a first shape into a second shape that is geometrically distinct
`
`from the first, not only due to the refractive properties of translucent and
`
`transparent materials, but also “due to the shape defined by the in-mold label.”
`
`APPLE-1003, ¶35.
`
`B.
`
`Sarantos’s “first shape”
`
`Sarantos discloses a first shape of light “characterized by the specific
`
`location, arrangement, and/or shape of each light emitting device.” Pet., 7-9 (citing
`
`APPLE-1003, ¶¶31-33; APPLE-1005, 2:18-19, 13:34-53, 14:5-22, 17:1-25, 19:33-
`
`35, FIGs. 22, 25); APPLE-1079, ¶¶56-59.
`
`Sarantos’s device “may utilize one or more light sources, each of which may
`
`include one or more light-emitting devices.” APPLE-1005, 15:27-31, 13:34-53,
`
`2:18-19, 3:58-62. The multiple light sources/light-emitting devices can be
`
`arranged in a variety of spatial configurations, including “spaced apart from one
`
`another”/“distributed across the PPG sensor face” or “closely grouped”/“closely
`
`
`1 The ITC further found that Masimo’s expert’s testimony “was unreliable and
`
`conclusory” and that he had failed to provide “any reliable methodology in his
`
`infringement analysis.” Id., 188-190.
`
`
`
`2
`
`

`

`
`clustered together.” Id., 13:34-14:1.
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`Even in the “closely clustered” arrangements of light emitters, the individual
`
`arrangement and gaps between the plurality of emitters would only become
`
`indiscernible at a distance of “approximately two to three feet from the light
`
`emitting devices.” Id., 14:5-22. A POSITA would have understood that at the
`
`vastly shorter distances of the configuration in FIG. 22 (on the order of
`
`millimeters), the light reaching the window region 2226 would have had a first
`
`shape defined by the spatial arrangement, and gaps between, the multiple light-
`
`emitting devices. APPLE-1079, ¶59.
`
`For example, in Sarantos, four light emitters arranged equidistantly around a
`
`center point would produce a clover shape, while the same four light emitters
`
`arranged linearly would have produced approximately a linear, oblong, or oval
`
`shape. Id. As another example, FIG. 25 shows a circular arrangement of light-
`
`emitting devices emitting a circular first shape:
`
`
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`3
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`APPLE-1005, FIG. 25, 19:33-35; APPLE-1079, ¶57; APPLE-1003, ¶¶32-33.
`
`In another example, FIG. 18 shows an arrangement with “multiple light-
`
`emitting devices” arranged linearly which would have produced an oblong or
`
`
`
`rectangular shape:
`
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`4
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`APPLE-1005, FIG. 18, 6:39-42, 15:24-36; APPLE-1079, ¶59.
`
`Sarantos also makes clear that all disclosed embodiments may be
`
`
`
`implemented “in combination with” other disclosed embodiments. APPLE-1005,
`
`21:3-9.
`
`C.
`
`Sarantos provides changing the first shape into a second shape
`
`Sarantos provides, or at least renders obvious, a second, different shape
`
`shape defined by the refractive properties of the window and due to the shape
`
`defined by the in-mold label. Pet., 9-10; APPLE-1003, ¶¶34-35. Put simply, the
`
`first shape of light is defined by the specific location and arrangement of
`
`Sarantos’s multiple light emitting devices, and the second shape of the light is
`
`
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`5
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`

`

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`defined by the refractive properties and shape of the window region over the light-
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`emitting devices. APPLE-1079, ¶¶60-61.
`
`As an initial matter, Sarantos expressly contemplates configurations having
`
`“optical windows that may slightly refract light.” APPLE-1005, 18:23-31.
`
`Sarantos also contemplates multiple different spatial arrangements for the light-
`
`emitting devices (including “spaced apart” or “closely clustered” and specific side-
`
`by-side and circular arrangements) and multiple configurations for its window
`
`region defined by the mask/in-mold label. APPLE-1005, 13:34-14:1, 19:33-52
`
`(discussing an annular “first boundary”), 6:39-42, 15:24-36, 17:1-18:16, FIGs. 18,
`
`25; APPLE-1079, ¶¶60-61; APPLE-1003, ¶¶32-35.
`
`Sarantos also discloses that various aspects of the different configurations
`
`can be employed with, and are interchangeable with, other arrangements. APPLE-
`
`1005, 21:3-9; APPLE-1079, ¶61. As such, a POSITA would have “at once
`
`envisage[d]” from Sarantos’s disclosures as a whole that all possible combinations
`
`of light-emitting device arrangements and window region shapes that are not same
`
`geometric shape would have changed the light from a first shape to a different
`
`second shape. APPLE-1079, ¶61 (describing an example of changing an oblong
`
`shape to a circular shape); Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d
`
`1376 (Fed. Cir. 2015).
`
`
`
`6
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`
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`D. Apple is not estopped from arguing that Sarantos’s window
`region changes the first shape into a second shape
`
`As discussed in Section I.A, supra, Apple’s positions before the ITC were
`
`based on the specific configuration of the Apple Watch, while Apple’s arguments
`
`in Ground 1A of the Petition are based on the disclosure of Sarantos and all that it
`
`teaches. As such, Apple is not estopped from arguing that Sarantos provides
`
`elements [1.2] and [19.3].
`
`The statements of Apple’s counsel during the oral hearing for the related
`
`’745 patent also do not estop Apple for arguing that Sarantos provides elements
`
`[1.2] and [19.3]. Specifically, The statement “Sarantos doesn’t describe the
`
`material as configured to change the first shape of light…” was referring to a lack
`
`of an express statement by Sarantos that the specific window region 2226 of the
`
`embodiment of FIG. 22 changes the shape of light. POR, 9; APPLE-1005, 18:6-
`
`19:9. Here, Apple’s arguments are based on what a POSITA would have
`
`understood from Sarantos’s disclosure as a whole with respect to all possible
`
`configurations suggested by Sarantos. See supra, §§I.B-C; APPLE-1079, ¶¶61-62.
`
`Additionally, estoppel does not apply because the answer given by Apple’s
`
`counsel during an oral hearing was not an issue “adversely resolved against” Apple
`
`or “essential to a final judgment in the first action.” Ohio Willow Wood Co. v. Alps
`
`South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013); Google LLC v. Hammond Dev.
`
`
`
`7
`
`

`

`
`Int’l, Inc., 54 F.4th 1377, 1379 (Fed. Cir. 2022).
`
`
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`II.
`
`SARANTOS DISCLOSES CLAIMS [5], [25] AND ELEMENT [14.4]
`
`A.
`
`Sarantos renders obvious a light block having a circular shape
`
`Sarantos’s light block 2274 is arranged equidistantly around the light source
`
`2208:
`
`
`
`APPLE-1005, FIG. 22 (annotated), 16:60-17:32; APPLE-1003, ¶¶60-62.
`
`
`
`FIG. 25 shows one of the “various example implementations” in which the
`
`light source (having multiple light-emitting devices) and photodetectors have a
`
`circular arrangement.
`
`
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`8
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`

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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`APPLE-1005, 19:22-35, Fig. 25; APPLE-1003, ¶61.
`
`
`
`As Dr. Anthony testified, these circular arrangements combined with the
`
`light block 2274 being positioned equidistantly around the light source in FIG. 22
`
`demonstrate that “the most obvious design choice” for the light block would be “a
`
`circular arrangement…due to the annular configuration of detectors around a
`
`circular light source, the small form factor of the device overall, and the limited
`
`space in Sarantos’ PPG sensor.” APPLE-1003, ¶62; Pet., 19-21; APPLE-1079,
`
`¶¶63-64, 66-68, 71; see also APPLE-1080, 102:19-103:22; APPLE-1042, 29
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`(depicting a predictable circular “optical shield” for a circular photodiode and
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`circular light source configuration); APPLE-1085, 8; In re Kuhle, 526 F.2d 553,
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`555 (CCPA 1975) (finding a generic feature that “provides no novel or unexpected
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`result” as “an obvious matter of design choice”); Apple Inc. v. Masimo Corp.,
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`IPR2021-00193, Paper 30, 76-80 (PTAB June 2022); APPLE-1087, 406:4-411:18
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`(Masimo’s expert unable to identify any functional significance to the shape of the
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`light block).
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`A POSITA would have found Masimo’s assertion that Sarantos’s device
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`would include “separate walls” to be unfounded, as gaps between the walls would
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`have defeated the light-blocking purpose of the walls 2274. APPLE-1005, 17:26-
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`42; APPLE-1079, ¶69.
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`Additionally, Masimo’s assertions that “square” or “rectangular” shapes for
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`the light block were possible does not change the fact that a circular arrangement
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`for the light block would have been the most obvious design choice given the
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`circular arrangement of both the light source and photodetectors. APPLE-1003,
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`¶62; FIG. 25, 19:33-35; APPLE-1079, ¶64.
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`Masimo’s assertion that FIGs. 22 and 25 depict “different embodiment[s]” is
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`also incorrect. APPLE-1079, ¶62. To start, Sarantos treats FIG. 25 as a natural
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`extension of the device that would incorporate the relevant features of FIG. 22. Id.;
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`APPLE-1005, 16:60-62, 19:31-35. Each of the described “aspects” and
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`“implementations” of Saranto’s device “may be employed…in combination with
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`one or more of the other aspects and/or implementations.” APPLE-1005, 21:3-9.
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`Thus, no express combination FIGS. 22 and 25 was required to show
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`unpatentability. APPLE-1079, ¶62. Furthermore, it is well-established that
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`“[c]ombining two embodiments disclosed adjacent to each other in a prior art
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`10
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`patent does not require a leap of inventiveness.” Boston Scientific Scimed, Inc. v.
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009); APPLE-1005, 17:1-3, 17:26-42,
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`19:33-35.
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`Masimo’s assertions that “Figure 25 does not show any light block at all”
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`(POR, 19) are similarly not relevant because FIG. 25 does not purport to show a
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`wholly separate embodiment for a PPG sensor but rather only displays a possible
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`configuration for the light source and photo detectors for use with any of the
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`device configurations of FIGs. 22-24. APPLE-1005, 19:33-35, 16:60-67
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`(“…various example implementations”); APPLE-1079, ¶62.
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`Sarantos therefore renders obvious a circular light block.
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`B.
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`Sarantos discloses a plurality of photodiodes arranged in an array
`having a spatial configuration corresponding to the circular light
`block
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`Sarantos is clear that “any of the implementations above with respect to a
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`single photodetector element spaced apart from a light source may also be
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`implemented using a plurality of photodetector elements.” APPLE-1005, 20:52-
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`57. Therefore, a POSITA would have understood that the annular photodetector
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`element 2512 of FIG. 25 can be implemented using a plurality of photodetector
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`elements (depicted by red circles) arranged about the light source in an annular
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`configuration, as depicted below. APPLE-1003, ¶¶63-64.
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`11
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`Case No. IPR2024-00244
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`photodetectors
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`light block
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`APPLE-1005, FIG. 25 (modified)
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`
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`Even if these individual photodetectors had been implemented to have
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`shapes other than circular (e.g., arched shapes, rectangular, etc.), a POSITA would
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`have recognized that they still would have conformed to the annular shape shown
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`in FIG. 25. APPLE-1079, ¶65.
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`Sarantos additionally describes that “each photodetector element in the
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`pattern may be equidistant from the center of the light source and/or evenly
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`spaced within the pattern.” APPLE-1005, 2:26-29, 3:64-4:2. A POSITA would
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`have recognized that a pattern of photo detectors arranged “equidistant from the
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`center of the light source” and “evenly spaced” corresponds to a circular
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`arrangement. APPLE-1079, ¶65. Sarantos also describes that the various different
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`shapes disclosed for its HAR photodetectors are applicable to all embodiments.
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`APPLE-1005, 12:34-37, 21:3-9; APPLE-1079, ¶65. As such, Apple has not
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`12
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`proposed a “multi-step modification” as Masimo asserts (POR, 21) but rather has
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`explained example arrangements of photodetectors that directly result from
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`Sarantos’s collective disclosures.
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`Finally, Masimo’s complaint that “three photodetectors cannot correspond to
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`a circular shape” (POR, 22) does not affect the relevant analysis because Sarantos
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`includes examples expressly describing arrangements of “four Har photodetector
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`elements 1612…arranged in a circular array about a light source.” APPLE-1005,
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`14:62-64, 2:44-47, 4:19-22; APPLE-1079, ¶70.
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`III. SARANTOS-SHIE RENDERS OBVIOUS CHANGING THE FIRST
`SHAPE INTO A SECOND SHAPE (ELEMENTS [1.2], [19.3], CLAIM
`18)
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`A. Apple is not estopped from arguing that a POSITA would have
`applied Shie to Sarantos in the proposed manner
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`Masimo attempts to improperly limit Apple’s arguments in view of the
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`Board’s decision in IPR2022-01465 that involved a different patent and different
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`factual record.
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`For starters, Masimo relies on cases in which estoppel attaches to a finding
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`of invalidity of claims that are not materially distinct to the claims in a present
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`case, rather than the issue of motivation to combine. See e.g., Ohio Williow Wood,
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`735 F.3d, 1342; Google, 54 F.4th, 1379.
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`Furthermore, Masimo misstates the finding of the Board in IPR2022-01465
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`13
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`and, as such, the issue in the present proceeding is not “identical to one decided in
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994); Google, 54
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`F.4th, 1379. Specifically, in IPR2022-01465 what the Board decided is “Apple’s
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`case for obviousness fails to provide a persuasive motivation for combining
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`Sarantos and Shie to practice the invention of claim 13” and that “Apple d[id] not
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`explain sufficiently why a person of ordinary skill in the art would have been led to
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`use a light shape changing lens within the context of Sarantos’s sensor.” EX2036,
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`142-143, 145.
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`In contrast to the holding in SynQor, Inc. v. Vicor Corp., the Board in
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`IPR2022-01465 did not find a fundamental incompatibility between the two
`
`references or otherwise decide that the references could not be combined. Id. 988
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`F.3d 1341, 1353 (Fed. Cir. 2021). Rather, what was decided by the Board in
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`IPR2022-01465 is that the record in that specific case did not “explain sufficiently”
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`why a POSITA would have combined the references. EX2036, 142-143, 145.
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`Therefore, at most, Apple is estopped from arguing that the record in the
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`IPR2022-01465 proceeding established a motivation to combine Sarantos with
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`Shie.
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`However, in the present case, Apple has presented a substantially different
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`set of arguments and evidence to establish specific modifications to Sarantos’s
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`device based on specific lenses discussed in Shie.2 As such, Masimo’s assertion
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`that “Apple presented the same arguments regarding Sarantos and Shie in
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`IPR2022-01465” is simply not true.
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`Looking first at the earlier IPR2022-01465 proceeding, the Petition’s
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`analysis of motivation to apply Shie to Sarantos was—partially due to word count
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`constraints—limited to four sentences spanning half a page with no citation to
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`corroborating evidence other than the declaration of Dr. Anthony. IPR2022-01465,
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`Paper 3, 40-41.
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`By contrast, the present Petition dedicates over four and a half pages to
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`describing the combination of Sarantos with Shie and motivation to combine. Pet.,
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`31-35. This includes citation to additional analysis by Dr. Anthony and discussion
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`of additional corroborating evidence that was not cited or discussed in the earlier
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`IPR2022-01465 Petition. Pet., 31-35 (citing APPLE-1023, 10, 60, 62; APPLE-
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`1022, 3:40-48; APPLE-1009, 51, 68-70, 76, 105; APPLE-1008, [0061]-[0064];
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`APPLE-1016, APPLE-1025, 1; APPLE-1003, ¶¶98-102). The present Petition
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`2 In the Institution Decision, the Board instructed the parties to “address[] any
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`differences in the record here compared to that in the -1465 IPR.” Inst. Dec., 34.
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`As discussed in this section, the record in the present proceeding substantially
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`differs from that in IPR2022-01465.
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`also presents descriptions of how specific lenses described in Shie would have
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`been applied to Sarantos to change the shape of the light. Pet., 36-38.
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`The present Petition also articulated numerous motivations to combine
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`Sarantos and Shie beyond the three included in the earlier IPR proceeding (or the
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`three mentioned in the POR (POR, 32)), including:
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` “to more precisely direct the light emitted toward the tissue so as to
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`increase power efficiency”
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` to “increase[] the signal level of the light detected by the photodiodes”
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` to “direct[] light towards a larger area to decrease irregular readings”
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`and “reduce measurement errors caused by moles and skin
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`aberrations”
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` “to tune the light intensity to provide the most accurate physiological
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`parameter detection”
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` “to obscure appearance of the light source from a user”
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`Pet., 32-35.
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`
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`In short, the Board in the earlier IPR2022-01465 did not find that Sarantos
`
`and Shie could not have been combined or that a POSITA would not have
`
`combined the references but rather that the record of that specific case did “not
`
`establish[] a sufficient motivation.” EX2036, 145.
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`The issue of whether the substantially different arguments and record of the
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`present proceeding supports a finding that a POSITA would have been motivated
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`to apply Sarantos to Shie is distinct from the issue of whether the more limited
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`record in the IPR2022-01465 supported such a combination. The substantially
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`different arguments and corroborating evidence in the present proceeding
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`demonstrates that there is a “material difference” between the issue decided in
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`IPR2022-01465 and the issue before the Board in the present proceeding. See
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`Nestlé USA, Inc. v. Steuben Foods, Inc., 884 F.3d 1350, 1352 (Fed. Cir. 2018).
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`B. A POSITA would have been motivated to combine Sarantos and
`Shie
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`Contrary to Masimo’s assertions (POR, 31-40), the Petition identified
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`specific lenses disclosed by Shie that, when applied to Sarantos, would have
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`achieved the benefits discussed in the Petition. APPLE-1079, ¶¶74-78. For
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`example, Apple identified lenses having “directing characteristics” such as “a
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`parabolic convex lens…designed to shape the light into a narrow distribution” to
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`achieve the benefit of more precisely directing light to achieve power efficiency.
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`Pet., 36-37. Apple also discussed corroborating evidence regarding the knowledge
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`of a POSITA on how to achieve more precise light direction using a lens. Pet., 32-
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`33.
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`Furthermore, Shie describes lens “to shape the light output into a desired
`
`distribution pattern” and a POSITA would have been able to perform the routine
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`17
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`experimentation required to accurately direct the light “to result in transmitted
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`Case No. IPR2024-00244
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`Attorney Docket: 50095-0134IP2
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`signals that have sufficient amplitude to provide accurate readings.” APPLE-1007,
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`5:29-45, 9:36-45; APPLE-1022, 3:40-48; APPLE-1009, 105;