Apple Inc v. Omni MedSci Inc

1. Case Identification

• Case #: IPR2020-00175
• Patent #: 10,188,299
• Filed: December 11, 2019
• Petitioner(s): Apple Inc.
• Patent Owner(s): Omni MedSci, Inc.; University of Michigan
• Challenged Claims: 7, 10-14

2. Patent Overview

• Title: Wearable Physiological Monitoring System
• Brief Description: The ’299 patent discloses a system for measuring physiological parameters using optical sensors. The system comprises a wearable device with a light source (multiple LEDs, including near-infrared), a lens to direct light to tissue, and a detection system that wirelessly communicates processed data to a personal device (e.g., a smartphone) and a remote device (e.g., a cloud server) for storage and analysis.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lisogurski and Carlson - Claims 7 and 11-13 are obvious over Lisogurski in view of Carlson.

• Prior Art Relied Upon: Lisogurski (Patent 9,241,676) and Carlson (Application # 2005/0049468).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lisogurski, a portable physiological monitoring system, taught nearly all elements of independent claim 7. Lisogurski’s wearable sensor used multiple LEDs (including infrared) to measure pulse rate and oxygen saturation, synchronized its detector with the light source, and wirelessly transmitted data to a monitor (“personal device”) and then to remote servers. Petitioner contended that to the extent Lisogurski did not explicitly teach using a “lens” or increasing the LED “pulse rate” to improve the signal-to-noise ratio (SNR), these features were disclosed by Carlson. Carlson teaches using a lens to focus light and increase optical signal power, and increasing the LED pulse frequency to operate outside the frequency of ambient light, thereby significantly improving the SNR.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Lisogurski and Carlson because both address the same field of wearable pulse oximetry and share the common goals of improving SNR and power efficiency. A POSITA improving Lisogurski’s system would have been motivated to look to analogous art like Carlson for known techniques, such as adding a lens or increasing the pulse rate, to achieve these universally desired improvements.
  • Expectation of Success: Petitioner asserted a POSITA would have a reasonable expectation of success, as the combination involved implementing predictable, well-understood components (lenses) and techniques (adjusting pulse rate) for their known purposes in a known system.

Ground 2: Obviousness over Lisogurski, Carlson, and Mannheimer - Claims 12-13 are obvious over Lisogurski, Carlson, and Mannheimer.

• Prior Art Relied Upon: Lisogurski (Patent 9,241,676), Carlson (Application # 2005/0049468), and Mannheimer (Patent 5,746,206).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on Ground 1 to address the limitations of dependent claim 12, which requires a detector to be located at a different distance from a first LED than from a second LED. Petitioner argued that Mannheimer explicitly teaches this configuration. Mannheimer discloses a pulse oximetry sensor with two LEDs spaced at different distances from a single detector. This arrangement allows the system to differentiate between signals reflected from shallow tissue (more susceptible to noise) and deeper tissue, thereby isolating a more reliable pulsatile signal.
  • Motivation to Combine: A POSITA developing the Lisogurski/Carlson system would be motivated to incorporate Mannheimer’s teachings to solve known problems with optical sensors, such as signal interference from skin pigmentation—a problem Lisogurski itself acknowledges. Mannheimer provides an explicit, detailed solution for improving signal quality by arranging emitters at different distances from the detector to remove surface-level noise.
  • Expectation of Success: Integrating Mannheimer’s known sensor geometry into the Lisogurski system would have been a predictable modification to address a known issue.

Ground 3: Obviousness over Lisogurski, Carlson, and Park - Claims 10 and 14 are obvious over Lisogurski and Carlson in view of Park.

• Prior Art Relied Upon: Lisogurski (Patent 9,241,676), Carlson (Application # 2005/0049468), and Park (Patent 9,596,990).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claims 10 and 14, which add the limitation of a “reflective surface” configured to reflect light from the tissue. Petitioner asserted that Park, which describes a wearable device for measuring physiological data, explicitly teaches this element. Park discloses that its device can have an interior side made of material with a “high reflective characteristic”—such as polished stainless steel or reflective paint—to scatter light back into the skin, thereby “improving the SNR.”
  • Motivation to Combine: A POSITA seeking to improve the SNR of the combined Lisogurski/Carlson device would be motivated to incorporate Park’s teaching. Since improving SNR is a primary goal of Lisogurski, and Park explicitly states that a reflective surface achieves this goal, the motivation to include it is direct and compelling.
  • Expectation of Success: Adding a reflective surface is a straightforward mechanical design choice with a known benefit, and a POSITA would expect success in implementing it.

4. Key Claim Construction Positions

• beam: Petitioner argued the Board should adopt the term’s express definition from the ’299 patent’s specification: “photons or light transmitted to a particular location in space.”
• lens: Petitioner noted that while the district court construed this term to have its plain and ordinary meaning, the prior art discloses lenses that meet even Petitioner's more specific proposed construction of "one or more transparent surfaces used to collimate (make parallel) or focus rays of light."

5. Arguments Regarding Discretionary Denial

• §325(d) (Prior Art Previously Considered): Petitioner argued that discretionary denial would be inappropriate because the examiner’s review of the asserted prior art, which was submitted in an Information Disclosure Statement (IDS), was merely cursory. The examiner provided no substantive analysis of the references, alone or in combination, and did not have the benefit of Petitioner’s expert declaration explaining their relevance.
• §314(a) (Parallel Litigation / Fintiv): Petitioner asserted that denial based on the parallel district court litigation was not warranted because that litigation had been stayed pending the outcome of this IPR and related proceedings. Therefore, concerns about inefficiency and conflicting decisions were not present.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 7 and 10-14 of the ’299 patent as unpatentable.