Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2020-01524
• Patent #: 10,433,776
• Filed: August 31, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Masimo Corporation
• Challenged Claims: 1-16

2. Patent Overview

• Title: LOW POWER PULSE OXIMETER
• Brief Description: The ’776 patent describes a low-power pulse oximeter that uses a signal processor to derive physiological measurements (e.g., oxygen saturation, pulse rate) and signal statistics (e.g., noise, motion artifact). Based on these inputs, the device determines the occurrence of a physiological event or a low signal quality condition and modifies its power consumption by altering sampling mechanisms, such as an emitter's duty cycle.

3. Grounds for Unpatentability

Ground 1: Obviousness over Richardson - Claims 1-8 and 11-16 are obvious over Richardson.

• Prior Art Relied Upon: Richardson (Patent 5,555,882).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Richardson, which aims to reduce electromagnetic noise in pulse oximeters, discloses all limitations of the challenged claims. Richardson’s oximeter operates in different states to manage noise. Petitioner mapped Richardson’s “State 2” (a noise assessment mode) to the claimed “first control protocol” and “State 1” (normal operation) to the “second control protocol.” In State 2, the red LED is off while the infrared (IR) channel remains active to monitor pulse rate, corresponding to a lower-power first protocol. The calculation of a new noise level in State 2 generates a “trigger signal” that causes the oximeter to return to State 1, where both red and IR LEDs are active for full monitoring, corresponding to a higher-power second protocol. Richardson also taught operating the LEDs with a duty cycle of at least 25%, satisfying the duty cycle limitations of the claims.
  • Motivation to Combine (for §103 grounds): This ground did not involve a combination of references.
  • Expectation of Success (for §103 grounds): Not applicable.

Ground 2: Obviousness over Richardson and Turcott - Claims 1-9 and 11-16 are obvious over Richardson in view of Turcott.

• Prior Art Relied Upon: Richardson (Patent 5,555,882) and Turcott (Patent 6,527,729).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that Richardson provided the foundational two-protocol system (State 2 and State 1) as described above. Turcott, which discloses methods to optimize signal-to-noise ratio and minimize power consumption in a pulse oximeter, was argued to supply the explicit teaching of reducing the duty cycle of the light source to conserve energy. Petitioner contended that a person of ordinary skill in the art (POSITA) would have applied Turcott’s teaching to modify Richardson's system. Specifically, a POSITA would reduce the duty cycle of the IR light source in State 2 (the first protocol) compared to the duty cycle used in State 1 (the second protocol) to further minimize power consumption, thereby meeting the claim limitations requiring different duty cycles and corresponding different power consumption levels between the two protocols.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Richardson and Turcott because both references are in the field of pulse oximetry and address the common goals of optimizing signal quality and minimizing power consumption. Turcott’s teaching of using a low duty cycle to conserve energy was presented as a known solution that a POSITA would naturally apply to Richardson’s power-managed, multi-state system to achieve further predictable power savings.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because combining the references involved applying a known power-saving technique (duty cycle reduction from Turcott) to a standard pulse oximeter architecture (Richardson) to achieve the predictable result of improved power efficiency.

Ground 3: Obviousness over Richardson and Bindszus - Claims 9 and 10 are obvious over Richardson in view of Bindszus.

• Prior Art Relied Upon: Richardson (Patent 5,555,882) and Bindszus (Patent 6,178,343).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targeted dependent claims 9 and 10, which specify that the trigger for switching between protocols is a “physiological event” such as an “abnormal pulse rate.” Petitioner argued that while Richardson’s trigger is based on signal quality (noise levels), Bindszus explicitly taught a system for improving pulse oximetry accuracy by detecting such physiological events. Bindszus disclosed comparing a pulse rate from an oximeter with a heart rate from a more reliable source (e.g., an ECG) to detect a mismatch, which indicates an abnormal pulse rate. This mismatch signal was then used to initiate corrective measures. The combination, therefore, taught using the detection of an abnormal pulse rate (from Bindszus) as the trigger signal to cause Richardson’s oximeter to switch between its operating states.
  • Motivation to Combine (for §103 grounds): A POSITA would combine the references to improve the reliability of Richardson’s oximeter. Since both references address inaccuracies in pulse oximetry caused by noise, a POSITA would be motivated to incorporate Bindszus’s more direct method for detecting physiological anomalies into Richardson’s system as the trigger for changing operating modes, thereby creating a more robust device that responds to actual physiological events rather than just signal noise.
  • Expectation of Success (for §103 grounds): Success would be expected, as it involved substituting one type of trigger signal (signal quality) with another known, relevant trigger (physiological event) within a conventional pulse oximeter framework to achieve the predictable benefit of enhanced accuracy.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on alternative "second mappings" of Richardson's teachings and on three-way combinations of the prior art (e.g., Richardson, Turcott, and Bindszus), which relied on similar technical principles and motivations to combine.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate. The parallel district court litigation was in an early phase, with no claim construction order issued and a trial date set for after the statutory deadline for a Final Written Decision (FWD) in the IPR. Petitioner further noted its substantial investment in preparing the petition and its stipulation not to pursue the same invalidity grounds in district court if the IPR was instituted, which would mitigate concerns of duplicative efforts and conflicting decisions.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-16 of the ’776 patent as unpatentable.