Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2020-01523
• Patent #: 8,457,703
• Filed: September 9, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Masimo Corporation
• Challenged Claims: 1-7, 9-18, and 20-24

2. Patent Overview

• Title: LOW POWER PULSE OXIMETER
• Brief Description: The ’703 patent describes a low power pulse oximeter that utilizes multiple sampling mechanisms to alter its power consumption. The system is designed to reduce the amount of processing during periods of high signal quality and increase processing during periods of low signal quality or when critical measurements are necessary.

3. Grounds for Unpatentability

Ground 1: Claims 9-10, 12-14, 20, and 22-24 are obvious over Diab in view of Amano

• Prior Art Relied Upon: Diab (Patent 5,632,272) and Amano (Patent 6,293,915).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Diab taught a physiological monitor for pulse oximetry that adjusts its behavior based on patient motion. Specifically, Diab’s signal processor performs spectral estimation on sensor signals directly when no motion is detected but engages a “motion artifact suppression module” when motion is detected. Amano taught a pulse wave apparatus that explicitly reduces power consumption by suspending unnecessary processing operations, such as its "body movement component eliminating section," when no body movement is present. Petitioner contended that the combination of Diab’s motion-dependent processing path with Amano’s express teaching of power savings from suspending such processing renders the claimed method of operating at a lower power level obvious.
  • Motivation to Combine: Petitioner asserted a POSITA would combine these references as both are in the same field of pulse waveform analysis and address eliminating motion-induced noise. A POSITA reviewing Diab's disclosure would have looked to a reference like Amano to understand the power consumption effects of bypassing the motion artifact suppression module, thereby arriving at the claimed invention.
  • Expectation of Success: Petitioner argued the combination would yield the predictable result of reduced power consumption without altering the primary function of Diab's oximeter.

Ground 2: Claims 11 and 21 are obvious over Diab, Amano, and Edgar

• Prior Art Relied Upon: Diab (Patent 5,632,272), Amano (Patent 6,293,915), and Edgar (Patent 6,393,311).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds the teachings of Edgar to the Diab/Amano combination to address limitations regarding data processing. Petitioner argued that Edgar taught a method to remove motion-induced noise by processing less data when the noise level is low. Edgar’s system uses data from only the latest pulse to calculate oxygen saturation when noise is low (resulting in no overlap of data blocks), but combines and averages multiple pulses when noise is high (resulting in an overlap of data blocks). Petitioner mapped this teaching directly to claim 11’s limitation of “reducing an overlap in data blocks being processed” during lower-power operation.
  • Motivation to Combine: A POSITA would be motivated to incorporate Edgar’s computationally simple technique for handling noise into the Diab/Amano system. This would provide an improved and efficient method for calculating blood oxygen saturation depending on the level of noise present, a known problem in the field.
  • Expectation of Success: Petitioner contended that implementing Edgar's data processing method into the Diab/Amano oximeter would be a routine modification with a high expectation of success.

Ground 3: Claims 1-3 and 15-17 are obvious over Amano in view of Turcott

• Prior Art Relied Upon: Amano (Patent 6,293,915) and Turcott (Patent 6,527,729).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground focused on the power-saving feature of reducing sensor activation. Petitioner argued that Amano taught the broader concept of switching to a lower power state by suspending processing when no motion is detected. Turcott was introduced for its specific teaching on minimizing power consumption in a pulse oximeter by adjusting the "drive current" or "the duty cycle of the pulse train" for the light-emitting diodes (LEDs). The combination, Petitioner asserted, renders obvious a system that reduces activation of the attached sensor (per Turcott's duty cycle reduction) while operating in the lower power consumption state identified by Amano.
  • Motivation to Combine: A POSITA would combine these references to further optimize the power savings in Amano's device. Since Amano's apparatus is a portable monitor, minimizing power consumption to extend battery life is a key design goal, and Turcott provides a well-known technique to achieve this by reducing the sensor's power draw.
  • Expectation of Success: Petitioner asserted that reducing the emitter duty cycle is a known technique for power conservation, and a POSITA would have reasonably expected it to work as intended when combined with Amano's system.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Diab, Amano, Edgar, and Turcott, including substituting certain references with the general knowledge of a POSITA, but relied on similar power-saving and processing-reduction theories.

4. Key Claim Construction Positions

• Petitioner argued for a specific construction of the term "reducing/reduce activation of an attached sensor" (claims 1 and 15).
• Petitioner proposed this term be construed as “reducing the duty cycle of an emitter driver output to the sensor” or “entering a data off state for a time period in which the emitter drivers are turned off.” This construction was asserted to be consistent with the patent’s disclosure and was critical to mapping the teachings of Turcott, which explicitly discloses reducing the duty cycle of an emitter to conserve energy.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the PTAB should not exercise discretionary denial under the Fintiv factors. It was contended that the co-pending district court litigation was in a very early stage, with claim construction and discovery not yet complete. Petitioner asserted that a Final Written Decision (FWD) in the inter partes review (IPR) would likely issue before the scheduled trial date. Furthermore, Petitioner noted it had stipulated not to raise the same invalidity grounds in the district court case if the IPR was instituted, thereby mitigating concerns of duplicative efforts and conserving judicial resources.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-7, 9-18, and 20-24 of the ’703 patent as unpatentable.