DCT

8:20-cv-00048

Masimo Corp v. Apple Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:20-cv-00048, C.D. Cal., 03/25/2020
  • Venue Allegations: Venue is alleged to be proper in the Central District of California because Apple has a regular and established place of business in Orange County and has committed alleged acts of infringement and misappropriation within the district.
  • Core Dispute: Plaintiffs allege that Defendant’s Apple Watch Series 4 and later devices infringe twelve patents related to noninvasive physiological monitoring technology, which uses light-based sensors to measure blood constituents.
  • Technical Context: The technology at issue, photoplethysmography (PPG), enables non-invasive monitoring of physiological parameters like heart rate and is a foundational technology for the health and wellness features of wearable consumer electronics.
  • Key Procedural History: The complaint alleges that in 2013, Apple engaged in discussions with Masimo regarding a potential collaboration under a confidentiality agreement, and subsequently hired key Masimo and Cercacor personnel, including their Chief Medical Officer and Chief Technical Officer. These events are presented as the basis for Plaintiffs' claims of trade secret misappropriation and are used to support allegations that Apple had knowledge of Plaintiffs' technology and patents.

Case Timeline

Date Event
2000-06-16 Priority Date for U.S. Patent No. 6,771,994
2001-07-02 Priority Date for U.S. Patent Nos. 8,457,703 and 10,433,776
2004-08-03 U.S. Patent No. 6,771,994 Issued
2008-08-04 Priority Date for U.S. Patent Nos. 10,258,265; 10,258,266; 10,292,628; 10,299,708; 10,376,190; 10,376,191; 10,470,695; 10,588,553; and 10,588,554
2013-06-04 U.S. Patent No. 8,457,703 Issued
2017-09-22 Apple Watch Series 3 Released
2018-09-12 Apple Watch Series 4 Announced
2019-04-16 U.S. Patent Nos. 10,258,265 and 10,258,266 Issued
2019-05-21 U.S. Patent Nos. 10,292,628 and 10,299,708 Issued
2019-08-13 U.S. Patent Nos. 10,376,190 and 10,376,191 Issued
2019-09-10 Apple Watch Series 5 Announced
2019-10-08 U.S. Patent No. 10,433,776 Issued
2019-11-12 U.S. Patent No. 10,470,695 Issued
2020-03-17 U.S. Patent Nos. 10,588,553 and 10,588,554 Issued
2020-03-25 First Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,258,265 - "Multi-stream data collection system for noninvasive measurement of blood constituents"

The Invention Explained

  • Problem Addressed: The patent addresses the general challenge of using spectroscopic analysis for non-invasive patient monitoring, such as in a pulse oximeter, where a sensor is adapted to a patient's finger to measure blood constituents like glucose or oxygen saturation (’265 Patent, col. 1:65–2:13).
  • The Patented Solution: The invention is a non-invasive physiological measurement device comprising a specific physical structure. This structure includes a housing with a surface and a protruding circular wall, multiple light emitters, at least four detectors arranged on the surface, and a light-permeable cover with a protrusion that is arranged to cover the detectors (’265 Patent, Abstract; Fig. 1). This configuration is designed to manage the interface between the sensor and the patient's tissue to obtain physiological data.
  • Technical Importance: The specified arrangement of emitters, multiple detectors, and a protruding cover represents a design intended to improve the quality of signals obtained from light attenuated by tissue, a key challenge in wearable health sensors (’265 Patent, col. 7:1–8:50).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶44, 46).
  • Claim 1 of the ’265 Patent recites a device with the following essential elements:
    • A plurality of emitters of different wavelengths.
    • A housing having a surface and a circular wall protruding from the surface.
    • At least four detectors arranged on the surface and spaced apart from each other, configured to output signals indicative of a physiological parameter.
    • A light permeable cover arranged over at least a portion of the housing, where the cover includes a protrusion arranged to cover the at least four detectors.
  • The complaint reserves the right to assert additional claims, including dependent claims 2-3, 6-11, 13, 17, and 17-25 (Compl. ¶44).

U.S. Patent No. 10,258,266 - "Multi-stream data collection system for noninvasive measurement of blood constituents"

The Invention Explained

  • Problem Addressed: The patent addresses the technical need for a non-invasive sensor that can deform a patient's tissue in a way that increases signal gain, particularly for certain desired wavelengths of light used in physiological monitoring (’266 Patent, col. 7:22–25).
  • The Patented Solution: The invention is a non-invasive sensor that includes a plurality of light emitters and detectors, a housing, and a distinct "lens." This lens is located between the user's tissue and the detectors and features a "single outwardly protruding convex surface" designed to cause the user's tissue to conform to it during operation (’266 Patent, Abstract). This physical conformation of the tissue is described as a way to improve signal quality (’266 Patent, col. 19:1–20:67).
  • Technical Importance: The use of a shaped lens to physically manipulate the tissue at the measurement site is a specific mechanical approach aimed at improving the reliability of optical measurements, which can be degraded by factors like patient motion and low perfusion (Compl. ¶11).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶58, 60).

  • Claim 1 of the ’266 Patent recites a sensor with the following essential elements:

    • A plurality of emitters.
    • A plurality of detectors.
    • A housing for the detectors.
    • A lens located between the user's tissue and the detectors.
    • The lens comprises a "single outwardly protruding convex surface" that is "configured to cause tissue of the user to conform" to it.

  • The complaint reserves the right to assert additional claims, including dependent claims 2-19 (Compl. ¶58).

  • Multi-Patent Capsule: U.S. Patent No. 10,292,628

    • Patent Identification: U.S. Patent No. 10,292,628, "Multi-stream data collection system for noninvasive measurement of blood constituents," issued May 21, 2019.
    • Technology Synopsis: This patent describes a non-invasive optical physiological sensor with a specific cover design. The cover has an outwardly protruding convex surface that causes user tissue to conform to it, and the detectors are configured to receive light that passes through this convex surface after being attenuated by the tissue (’628 Patent, Abstract).
    • Asserted Claims: The complaint asserts at least Claim 1 (Compl. ¶72).
    • Accused Features: The complaint alleges the Apple Watch Series 4 and later devices include a housing for the detectors and a light permeable cover with an outwardly protruding convex surface that conforms the user's tissue (Compl. ¶75, 77).

  • Multi-Patent Capsule: U.S. Patent No. 10,299,708

    • Patent Identification: U.S. Patent No. 10,299,708, "Multi-stream data collection system for noninvasive measurement of blood constituents,” issued May 21, 2019.
    • Technology Synopsis: The technology relates to a sensor with a specific detector layout. It describes a platform with a planar surface, a housing with a raised edge, and at least four detectors arranged in a grid pattern on the planar surface, with detectors arranged across from each other on opposite sides of a central point along perpendicular axes (’708 Patent, Abstract).
    • Asserted Claims: The complaint asserts at least Claim 1 (Compl. ¶86).
    • Accused Features: The complaint alleges the Apple Watch Series 4 and later devices have a platform, a housing, and at least four detectors arranged in the claimed grid pattern (Compl. ¶89–90).

  • Multi-Patent Capsule: U.S. Patent No. 10,376,190

    • Patent Identification: U.S. Patent No. 10,376,190, "Multi-stream data collection system for noninvasive measurement of blood constituents," issued August 13, 2019.
    • Technology Synopsis: This patent describes a device with a housing that has a circular raised edge and a light permeable cover. The cover has a protrusion specifically arranged to cover at least four detectors (’190 Patent, Abstract).
    • Asserted Claims: The complaint asserts at least Claim 1 (Compl. ¶99).
    • Accused Features: The complaint alleges the Apple Watch Series 4 and later devices possess a housing with a circular raised edge and a light permeable cover with a protrusion covering the detectors (Compl. ¶103).

  • Multi-Patent Capsule: U.S. Patent No. 10,376,191

    • Patent Identification: U.S. Patent No. 10,376,191, "Multi-stream data collection system for noninvasive measurement of blood constituents,” issued August 13, 2019.
    • Technology Synopsis: The technology is directed to a non-invasive optical sensor with a housing configured to hold detectors in a circular portion and a lens. The lens has a "single outwardly protruding convex surface" designed to make the user's tissue conform to its shape during operation (’191 Patent, Abstract).
    • Asserted Claims: The complaint asserts at least Claim 1 (Compl. ¶112).
    • Accused Features: The complaint alleges the Apple Watch includes a housing that houses detectors in a circular portion and a lens with a single outwardly protruding convex surface (Compl. ¶116).

  • Multi-Patent Capsule: U.S. Patent No. 10,470,695

    • Patent Identification: U.S. Patent No. 10,470,695, "Advanced pulse oximetry sensor," issued November 12, 2019.
    • Technology Synopsis: This patent describes a wrist-worn monitoring device with a light emission source and detectors configured for a tissue measurement site on the wrist. It includes a "light block" forming an enclosing wall between the emitters and detectors to prevent light from being detected without first passing through the tissue (’695 Patent, Abstract).
    • Asserted Claims: The complaint asserts at least Claim 1 (Compl. ¶125).
    • Accused Features: The complaint alleges the Apple Watch is a wrist-worn device with emitters, detectors, a processor, and a light block that forms an enclosing wall between the light sources and detectors (Compl. ¶127–129).

  • Multi-Patent Capsule: U.S. Patent No. 6,771,994

    • Patent Identification: U.S. Patent No. 6,771,994, "Pulse oximeter probe-off detection system," issued August 3, 2004.
    • Technology Synopsis: The technology is a sensor system with a plurality of "louvers" positioned over a light-sensitive detector. These louvers are designed to accept light primarily from a specific direction (from the light emission device through body tissue) and reject oblique light rays, which can occur when a sensor is improperly applied (’994 Patent, Abstract).
    • Asserted Claims: The complaint asserts at least Claim 15 (Compl. ¶138).
    • Accused Features: The complaint alleges the Apple Watch includes a plurality of louvers positioned over its light-sensitive detector (Compl. ¶143).

  • Multi-Patent Capsule: U.S. Patent No. 8,457,703

    • Patent Identification: U.S. Patent No. 8,457,703, "Low power pulse oximeter," issued June 4, 2013.
    • Technology Synopsis: The technology describes a method for a low-power pulse oximeter that can switch between a lower power consumption level and a higher power consumption level. The device transitions to the higher power level when processing characteristics, such as signal quality, pass a predetermined threshold (’703 Patent, Abstract).
    • Asserted Claims: The complaint asserts at least Claim 1 (Compl. ¶152).
    • Accused Features: The complaint alleges the Apple Watch continuously operates at a lower power level and transitions to a higher power level by comparing processing characteristics to a threshold, such as by increasing LED brightness and sampling rate to compensate for low signal levels (Compl. ¶157–158).

  • Multi-Patent Capsule: U.S. Patent No. 10,433,776

    • Patent Identification: U.S. Patent No. 10,433,776, "Low power pulse oximeter,” issued October 8, 2019.
    • Technology Synopsis: The technology is a patient monitor that operates under different control protocols to manage power consumption. It operates under a first, lower-power protocol and, in response to a trigger signal (e.g., a physiological event or signal quality issue), switches to a second, different control protocol, with the two protocols having different duty cycles and power consumption levels (’776 Patent, Abstract).
    • Asserted Claims: The complaint asserts at least Claim 1 (Compl. ¶167).
    • Accused Features: The complaint alleges the Apple Watch operates under a first control protocol (e.g., using infrared light for background heart rate) and, in response to a trigger, operates under a second protocol (e.g., using green LEDs for workouts), with different power consumption levels (Compl. ¶171–172).

  • Multi-Patent Capsule: U.S. Patent No. 10,588,553

    • Patent Identification: U.S. Patent No. 10,588,553, "Multi-Stream Data Collection System For Noninvasive Measurement of Blood Constituents," issued March 17, 2020.
    • Technology Synopsis: The patent describes a sensor with at least four detectors on a substrate, a "wall" configured to circumscribe the detectors, and a cover with a single protruding convex surface. The wall operably connects the substrate and the cover (’553 Patent, Abstract).
    • Asserted Claims: The complaint asserts at least Claim 1 (Compl. ¶181).
    • Accused Features: The complaint alleges the Apple Watch includes a wall circumscribing at least four detectors and a cover with a single protruding convex surface, where the wall connects the substrate and cover (Compl. ¶186).

  • Multi-Patent Capsule: U.S. Patent No. 10,588,554

    • Patent Identification: U.S. Patent No. 10,588,554, "Multi-Stream Data Collection System For Noninvasive Measurement of Blood Constituents," issued March 17, 2020.
    • Technology Synopsis: The technology describes a physiological measurement system including a sensor with at least four detectors, each with a corresponding window that allows light to pass through. The system communicates wirelessly with a handheld computing device (’554 Patent, Abstract).
    • Asserted Claims: The complaint asserts at least Claim 21 (Compl. ¶195).
    • Accused Features: The complaint alleges the Apple Watch is a physiological measurement system that works in combination with an iPhone, with the Watch having at least four detectors with corresponding windows, and communicates wirelessly with the iPhone (Compl. ¶197, 198, 201).

III. The Accused Instrumentality

Product Identification

  • The accused products are the Apple Watch Series 4 and later devices, including the Apple Watch Series 5 (Compl. ¶25, 44).

Functionality and Market Context

  • The accused products are wearable devices that provide indications of physiological parameters, such as heart rate, to the user (Compl. ¶46). To perform this function, they include a plurality of light emitters (e.g., green and infrared LEDs) and at least four light detectors (e.g., photodiode sensors) on the back of the device that contacts the user's skin (Compl. ¶47). An image from Apple's support website, included in the complaint, depicts the arrangement of these emitters and detectors on the back of the watch (Compl. ¶47, p. 13). The complaint alleges that these devices include technology that tracks Plaintiffs' technologies to solve performance issues present in earlier Apple Watch models (Compl. ¶25).

IV. Analysis of Infringement Allegations

  • U.S. Patent No. 10,258,265 Infringement Allegations
Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a noninvasive optical physiological measurement device adapted to be worn by a wearer... The Apple Watch Series 4 and later devices are adapted to be worn by a wearer and provide an indication of a physiological parameter, such as heart rate. ¶46 col. 1:1–13
a plurality of emitters of different wavelengths; The devices include a plurality of emitters of different wavelengths, such as green and infrared LEDs. ¶47 col. 11:54–57
a housing having a surface and a circular wall protruding from the surface; The devices are alleged to include a housing with a surface and a circular wall protruding from it, as described in U.S. Patent Application Publication 2019/0072912. ¶49 col. 24:3–9
at least four detectors arranged on the surface and spaced apart from each other... The devices include at least four photodiode sensor detectors spaced apart from each other. ¶47 col. 11:58–63
a light permeable cover arranged above at least a portion of the housing, the light permeable cover comprising a protrusion arranged to cover the at least four detectors. The devices include a light permeable cover arranged above a portion of the housing that covers the detectors, as described in U.S. Patent Application Publication 2019/0072912. ¶49 col. 24:6–9
  • U.S. Patent No. 10,258,266 Infringement Allegations
Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A noninvasive optical physiological sensor adapted to be worn by a user... The Apple Watch Series 4 and later devices are worn by a user and provide physiological parameter indications. ¶60 col. 1:1–13
a plurality of emitters...a plurality of detectors... The devices include multiple emitters (green and infrared LEDs) and multiple detectors (photodiode sensors). ¶61 col. 11:54–63
a housing configured to house the plurality of detectors; and The devices include a housing configured to house the detectors, as shown in Fig. 4C of U.S. Patent Application Publication 2019/0072912. ¶62 col. 24:3–9
a lens located between the tissue of the user and the plurality of detectors...wherein the lens comprises a single outwardly protruding convex surface configured to cause tissue of the user to conform... The devices' lens is alleged to have a single outwardly protruding convex surface configured to cause the user's tissue to conform to it during operation. ¶63 col. 7:12–15
  • Identified Points of Contention:
    • Structural Questions: A primary point of contention may be whether the physical structure of the Apple Watch's sensor array meets the specific claim limitations. The complaint relies on an Apple patent application publication ('912 publication) to describe the internal housing structures of the accused devices (Compl. ¶49, 62). A key question for the court will be whether this publication accurately reflects the structure of the commercially sold Apple Watch Series 4 and later devices.
    • Scope Questions: The dispute may turn on the interpretation of claim terms. For the ’266 Patent, a central question will be whether the back crystal of the Apple Watch constitutes a "lens" as that term is used in the patent. For the ’265 Patent, a question may arise as to whether the accused device contains a "circular wall protruding from the surface" that is distinct from the "protrusion" of the "light permeable cover."

V. Key Claim Terms for Construction

  • U.S. Patent No. 10,258,265

    • The Term: "a circular wall protruding from the surface"
    • Context and Importance: This term defines a specific structural element of the claimed housing. Practitioners may focus on this term because the infringement allegation relies on a diagram from a patent application, and the defense may argue that the actual product's structure does not meet this limitation or that the "wall" is not distinct from other claimed features like the "protrusion" on the cover.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification may describe the wall functionally as a means to enclose or position components, potentially allowing for a range of structures to meet the definition (’265 Patent, col. 8:26–30).
      • Evidence for a Narrower Interpretation: The figures in the patent, such as the embodiment shown in Fig. 14D (element 1430), depict the "circular wall" as a distinct, raised ring structure on the submount, separate from the lens or cover. This may support an interpretation that requires a physically separate and distinct wall component.

  • U.S. Patent No. 10,258,266

    • The Term: "lens"
    • Context and Importance: The definition of "lens" is critical because it is a central component of the asserted independent claim. Practitioners may focus on this term because the accused component is the back crystal of the Apple Watch, which serves protective and structural functions. The dispute may center on whether this component functions as a "lens" in the manner required by the patent.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification states that the "protrusion can be a lens...used to thin out the measurement site" and "to increase the area from which attenuated light can be measured," suggesting a functional definition related to shaping tissue and collecting light, not necessarily requiring traditional refractive properties (’266 Patent, col. 7:12–18).
      • Evidence for a Narrower Interpretation: The patent repeatedly describes the lens in the context of focusing light onto detectors and uses optical terminology, which may support an interpretation requiring a component designed with specific optical properties to manipulate light, beyond merely being a transparent, convex cover (’266 Patent, col. 35:63–36:11).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is alleged based on Apple's marketing, selling, and providing of instructions, manuals, and training that direct end users to use the Apple Watch in an infringing manner (Compl. ¶51, 65). Contributory infringement is alleged on the basis that Apple sells components of the Apple Watch that are material parts of the patented inventions, are not staple articles of commerce, and are known to be especially adapted for use in an infringing way (Compl. ¶53, 67).
  • Willful Infringement: Willfulness is alleged for all asserted patents. The basis for willfulness includes alleged pre-suit knowledge of Masimo's technology and patents through the hiring of key personnel like Marcelo Lamego, a named inventor on several of the patents-in-suit, and Michael O'Reilly (Compl. ¶50, 64). The complaint also alleges Apple continued its infringing acts after the lawsuit was filed, establishing post-suit knowledge (Compl. ¶54, 68).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can the term "lens" from the ’266 patent, described in the context of a medical sensor designed to conform tissue, be construed to cover the integrated back crystal of the Apple Watch, which serves multiple functions including protection and housing for sensors? This question extends to other structural terms like "circular wall" and "housing" across the asserted patents.
  • A central dispute will likely be one of structural identity: does the physical construction of the Apple Watch's sensor module meet the specific multi-part structural limitations recited in the claims? The complaint's reliance on diagrams from an Apple patent application to prove infringement of a commercial product suggests that a key evidentiary battle will focus on whether that application accurately depicts the accused devices.
  • The case also presents a foundational question of technological origin and knowledge: did Apple develop its technology independently, or did it, as the complaint alleges, incorporate proprietary information and patented technology from Masimo following the hiring of key employees? While this is central to the trade secret and inventorship claims, it will also heavily influence the willfulness allegations in the patent infringement counts.