Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2020-01521
• Patent #: 10,292,628
• Filed: September 2, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Masimo Corporation
• Challenged Claims: 1-30

2. Patent Overview

• Title: Multi-Stream Data Collection System for Noninvasive Measurement of Blood Constituents
• Brief Description: The ’628 patent discloses noninvasive optical systems for measuring physiological characteristics like pulse rate. The system generally includes a sensor with light emitters and detectors that is coupled to a processing device or monitor, which can be integrated into a single unit or communicate wirelessly.

3. Grounds for Unpatentability

Ground 1: Obviousness over Aizawa and Inokawa - Claims 1-15, 17, 20-26, and 28 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 Aizawa taught a wrist-worn pulse wave sensor with a centrally located light-emitting diode (LED) emitter surrounded by at least four photodetectors. The sensor components were housed and covered by a flat, light-permeable acrylic plate to improve adhesion and detection efficiency. This combination, Petitioner asserted, met most limitations of the independent claims. However, Aizawa's cover was flat. Petitioner contended Inokawa taught a similar optical vital sensor that used a convex lens over its detectors to increase light-gathering ability and protect the components. The combination of Aizawa's sensor with Inokawa's convex lens cover allegedly rendered the claimed invention obvious, particularly the key limitation of an "outwardly protruding convex surface."
  • Motivation to Combine: A POSITA would combine Aizawa and Inokawa to achieve the shared goal of improving detection efficiency. Aizawa explicitly stated this objective, and Inokawa's lens provided a known method for increasing the light-gathering ability of the detectors. A POSITA would have been motivated to replace Aizawa's flat acrylic plate with Inokawa's convex lens to improve the signal-to-noise ratio and achieve more reliable pulse detection.
  • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success because both references described similar wrist-worn optical sensors. Modifying a flat acrylic or epoxy cover to have a lens shape was a routine and well-understood design choice for improving optical performance in such devices.

Ground 2: Obviousness over Mendelson-1988 and Inokawa - Claims 1-17 and 20-28 are obvious over Mendelson-1988 in view of Inokawa.

• Prior Art Relied Upon: Mendelson-1988 (a 1988 journal article) and Inokawa (JP 2006-296564).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mendelson-1988, a different primary reference, taught a noninvasive optical reflectance sensor for monitoring hemoglobin oxygen saturation. This sensor included multiple red and infrared LED emitters and six silicon photodiodes arranged symmetrically in a hexagonal configuration within a housing. The components were encapsulated by a flat layer of optically clear epoxy, which served as a light-permeable cover. Petitioner argued this base design met the core claim limitations for the sensor structure. As in Ground 1, Petitioner asserted that adding the convex lens taught by Inokawa to the flat epoxy cover of Mendelson-1988 would result in the claimed "outwardly protruding convex surface."
  • Motivation to Combine: The primary motivation was again to improve light collection efficiency. Mendelson-1988 was expressly focused on maximizing "reflectance photoplethysmographic signals." A POSITA would have recognized that incorporating Inokawa's convex lens would directly serve this purpose by refracting and concentrating the light reflected from the user's tissue onto the photodetectors, thereby improving signal quality.
  • Expectation of Success: Petitioner contended a POSITA would expect success because molding optically clear epoxy into a lens shape was a known and routine manufacturing technique. The combination involved applying a known improvement (a lens for light-gathering) to a similar device (an optical sensor) to achieve a predictable result (improved signal detection).

Ground 3: Obviousness over Aizawa, Inokawa, Mendelson-2006, and Beyer - Claims 18, 19, 29, and 30 are obvious over Aizawa, Inokawa, Mendelson-2006, and Beyer.

• Prior Art Relied Upon: Aizawa (Application # 2002/0188210), Inokawa (JP 2006-296564), Mendelson-2006 (a 2006 conference proceeding), and Beyer (Patent 7,031,728).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the Aizawa/Inokawa combination to challenge claims related to a processor and communication with a mobile phone. Petitioner argued that while Aizawa contemplated data transfer, it did not specify how. Mendelson-2006 taught a wearable sensor module that wirelessly transmitted physiological data to a receiver module connected to a portable computer (PDA) with a touch-screen interface. Beyer taught that it was common practice to integrate cellular phone functionality into PDAs. The combination allegedly disclosed a processor (in Mendelson-2006's receiver) configured to receive sensor signals and output information to a mobile phone (the PDA/phone taught by Beyer).
  • Motivation to Combine: A POSITA would combine these references to provide the Aizawa/Inokawa sensor with a convenient, user-friendly interface for displaying data and enabling remote monitoring, a known need in the field. Mendelson-2006 provided a known solution for wirelessly connecting a body-worn sensor to a display device, and Beyer showed it was a conventional design choice for that display device to be a mobile phone for enhanced connectivity and convenience.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including Ground 1B (Aizawa, Inokawa, and Ohsaki), Ground 1D (Aizawa, Inokawa, Goldsmith, and Lo), and Ground 2B (Mendelson-1988, Inokawa, Mendelson-2006, and Beyer), which relied on similar theories but introduced further references to support motivations or supply features for specific dependent claims.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, asserting that instituting the inter partes review (IPR) would serve judicial efficiency. Key arguments included:
  • The scheduled trial date in the parallel district court litigation was after the projected date for a Final Written Decision (FWD), minimizing concerns of inefficiency.
  • The district court case was in its early stages, with no claim construction hearing or significant discovery completed, meaning the Board would not be duplicating substantial work.
  • Petitioner stipulated it would not pursue the same invalidity grounds in district court if the IPR was instituted, mitigating concerns of duplicative efforts and inconsistent rulings.
  • The petition challenged all claims of the patent, while the district court was likely to address a narrower set, making the IPR a more comprehensive forum for resolving validity.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-30 of the ’628 patent as unpatentable.