PTAB

IPR2020-01054

Sotera Wireless Inc v. Masimo Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Arm Mountable Portable Patient Monitor
  • Brief Description: The ’623 patent discloses a wearable, arm-mountable patient monitoring device for on-patient monitoring and wireless transmission of physiological parameters. The invention centers on a housing with a display and multiple sensor ports, with a key disputed feature being the physical configuration of a pulse oximetry sensor wire extending perpendicularly from a side of the housing facing the patient's hand.

3. Grounds for Unpatentability

Ground 1: Obviousness over Goldberg and Kiani - Claims 1-2, 4-5, 12, and 14-17 are obvious over Goldberg in view of Kiani.

  • Prior Art Relied Upon: Goldberg (Patent 6,840,904) and Kiani (WO 00/42911).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Goldberg, a wireless and wearable patient monitoring device, teaches the core limitations of independent claim 1. Specifically, Goldberg discloses a housing strapped to a patient’s wrist with a wired connection to a pulse oximetry sensor. Critically, Petitioner asserted that Goldberg’s figures show the wire extending from a port on the side of the housing facing the hand along a path substantially perpendicular to that side, which was the key feature the examiner relied upon for allowance. Kiani, which describes conventional pulse oximetry, was used to supply any missing details, such as the use of light emitters and detectors, displaying device status indicators (e.g., low battery), and the use of rechargeable batteries.
    • Motivation to Combine: A POSITA would combine Goldberg and Kiani because they address the same problem of portable patient monitoring. The combination involved applying conventional, well-known features from Kiani (like status indicators) to Goldberg's device to improve its functionality and usability, which is a simple substitution of known elements to yield predictable results.
    • Expectation of Success: A POSITA would have a high expectation of success as the combination merely integrated standard pulse oximetry components and features, as taught by Kiani, into the known wearable monitor framework of Goldberg.

Ground 2: Obviousness over Goldberg, Kiani, and Fujisaki - Claim 3 is obvious over Goldberg in view of Kiani and Fujisaki.

  • Prior Art Relied Upon: Goldberg (Patent 6,840,904), Kiani (WO 00/42911), and Fujisaki (Patent 4,425,921).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Goldberg/Kiani combination to address the additional limitations of claim 3, which requires the sensor cable to be "removably coupled" to the sensor port. Petitioner argued that while Goldberg's cable connection is not explicitly described as removable, Fujisaki teaches wearable medical devices with removable cables connected via connector plugs (ports).
    • Motivation to Combine: A POSITA would be motivated to make the sensor cable in Goldberg's device removable as taught by Fujisaki for practical reasons common in the medical field. Removable cables allow for easy replacement of faulty sensors without replacing the entire monitor and enable swapping different types of sensors as needed for a particular patient, improving the device's versatility and serviceability.
    • Expectation of Success: Incorporating a removable connector is a routine design choice with predictable results, and a POSITA would have easily succeeded in implementing this feature.

Ground 3: Obviousness over Money, Kiani, and Akai - Claims 1-2 and 4-19 are obvious over Money in view of Kiani and Akai.

  • Prior Art Relied Upon: Money (Patent 5,919,141), Kiani (WO 00/42911), and Akai (EP 0880936 A2).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented an alternative primary combination, asserting that Money taught a base wearable, portable patient monitor that communicates with numerous sensors (pulse oximetry, ECG, blood pressure) and wirelessly transmits the data. Petitioner argued it would be obvious to modify Money by incorporating the teachings of Akai, which discloses a wrist-mountable monitoring unit with a finger-mounted pulse oximetry sensor. Specifically, Akai teaches the same perpendicular wire configuration that was the basis for allowance of the ’623 patent. Kiani was again used to supply conventional details of pulse oximetry sensors.
    • Motivation to Combine: A POSITA would be motivated to combine Money and Akai to improve the ergonomics and patient quality of life. Substituting Money's cumbersome cuff transducer with Akai's smaller, finger-mounted sensor and adopting Akai's wrist-mounted housing and perpendicular wire path would reduce wiring, avoid tangling, and minimize patient discomfort. This represents using a known technique to improve a similar device.
    • Expectation of Success: The proposed modifications were argued to be straightforward applications of known design principles to create a more compact and user-friendly patient monitor, with a high degree of predictability.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including a ground against claim 20 over a combination of seven references (Goldberg, Kiani, Money, Fujisaki, Estep, Taylor, and Hylton) that relied on similar theories for combining wireless communication protocols and user interface features.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be inappropriate. The petition asserted that the primary references relied upon, particularly Goldberg and Akai, were not before the examiner during prosecution. Furthermore, these new references were argued to teach the very housing and sensor port configuration that the examiner identified as the point of novelty allowing the claims over the previously considered art.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’623 patent as unpatentable under 35 U.S.C. §103.