PTAB

IPR2020-01520

Apple Inc v. Masimo Corp

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Multi-Stream Data Collection System for Noninvasive Measurement of Blood Constituents
  • Brief Description: The ’265 patent describes noninvasive optical physiological measurement devices, such as wrist-worn sensors, that use a plurality of light emitters and detectors to measure a wearer’s physiological parameters like pulse rate. The system features a housing with multiple detectors and a light-permeable cover that can include a protrusion.

3. Grounds for Unpatentability

Ground 1A: Claims 1-4, 6-14, 17, 19-23, and 26-29 are obvious over Aizawa in view of Inokawa.

  • Prior Art Relied Upon: Aizawa (Application # 2002/0188210) and Inokawa (JP 2006-296564).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Aizawa disclosed the core elements of a wearable noninvasive optical physiological measurement device, including a housing with a circular wall, at least four photodetectors arranged symmetrically around a central light-emitting diode (LED), and a flat, light-permeable acrylic cover. However, Aizawa used a single infrared emitter and a flat cover. Inokawa was argued to supply the remaining limitations by teaching a pulse sensor with a convex lens (a protrusion) to increase light-gathering ability and the use of a plurality of emitters (e.g., green and infrared LEDs) to perform different functions, such as sensing pulse and body motion, respectively.
    • Motivation to Combine: A POSITA would combine Inokawa’s teachings with Aizawa for two primary reasons. First, to improve Aizawa's detection efficiency by replacing its flat cover with Inokawa's lens-shaped protrusion, which would better concentrate reflected light onto the detectors. Second, to enhance measurement accuracy by incorporating a second emitter to distinguish physiological signals (pulse) from motion artifacts, a known problem in the art that Inokawa addressed by dedicating different wavelengths to each task.
    • Expectation of Success: Petitioner asserted a high expectation of success, as both references describe similar wrist-worn optical pulse sensors. Modifying the shape of a cover from flat to convex or adding a second standard LED would be routine design choices for a POSITA seeking to improve the performance of Aizawa’s known sensor configuration.

Ground 2A: Claims 1-4, 6-14, 16-22, and 26-30 are obvious over Mendelson-1988 in view of Inokawa.

  • Prior Art Relied Upon: Mendelson-1988 (a 1988 journal article on optical reflectance sensors) and Inokawa (JP 2006-296564).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Mendelson-1988 taught a noninvasive optical reflectance sensor with key features of the challenged claims, including multiple emitters (two red and two infrared LEDs) and multiple detectors (six photodiodes) arranged symmetrically within a housing and covered by a flat layer of optically clear epoxy. The combination with Inokawa was argued to render obvious the claims’ requirement for a light-permeable cover comprising a protrusion.
    • Motivation to Combine: A POSITA would be motivated to modify the flat epoxy cover of Mendelson-1988 to include a convex, lens-like protrusion as taught by Inokawa. The stated purpose of Mendelson-1988 was to maximize "reflectance photoplethysmographic signals." Inokawa’s lens directly addressed this goal by teaching a structure that increases the "light-gathering ability" of the sensor. Therefore, a POSITA would have found it obvious to apply Inokawa’s lens to Mendelson-1988’s sensor to achieve this shared objective of improved signal collection.
    • Expectation of Success: Petitioner argued success would be expected because molding clear epoxy, the material used for the cover in Mendelson-1988, into a lens shape was a well-understood and routine technique at the time. The combination merely applied a known technique (Inokawa's lens) to a known device (Mendelson-1988's sensor) to obtain predictable results.

  • Additional Grounds: Petitioner asserted numerous additional obviousness grounds. Ground 1B argued Aizawa, Inokawa, and Ohsaki (Application # 2001/0056243) was obvious, with Ohsaki providing an additional motivation for a convex protrusion to prevent slippage. Grounds 1C, 1D, and 1E added references like Mendelson-2006, Goldsmith, Lo, and Beyer to the Aizawa/Inokawa combination to teach mobile monitoring with a touch-screen display and communication with a mobile phone. Grounds 2B and 2C similarly added Mendelson-2006 and Beyer to the Mendelson-1988/Inokawa combination.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv, contending that institution would serve judicial efficiency. Key arguments included:
    • The co-pending district court litigation was in its early stages, with claim construction and substantive discovery not yet completed, and a trial date far enough in the future that a Final Written Decision (FWD) from the IPR would likely issue first.
    • Petitioner’s investment in preparing the IPR petitions was substantial and outweighed the resources expended in the nascent litigation.
    • Petitioner stipulated that, if the IPR was instituted, it would not pursue the same invalidity grounds in the district court, thereby mitigating concerns of duplicative efforts and inconsistent rulings.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-4, 6-14, and 16-30 of the ’265 patent as unpatentable.