PTAB

IPR2020-01536

Apple Inc v. Masimo Corp

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Multi-Stream Data Collection System for Noninvasive Measurement of Blood Constituents
  • Brief Description: The ’553 patent discloses a noninvasive optical physiological sensor for measuring blood constituents. The claimed sensor includes at least four detectors, a plurality of light emitters, and a cover with a single protruding convex surface designed to be located between the detectors and user tissue to conform the tissue when worn.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mendelson and Ohsaki - Claims 1-3, 5, 6, 9-18, 20-24, and 29 are obvious over Mendelson in view of Ohsaki.

  • Prior Art Relied Upon: Mendelson (Patent 6,801,799) and Ohsaki (Application # 2001/0056243).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Mendelson taught the core of the claimed sensor, including a pulse oximeter with a light source and an array of more than four discrete detectors (twelve photodiodes) arranged on a planar substrate. However, Mendelson did not explicitly disclose a cover with a protruding convex surface. Petitioner asserted that Ohsaki, which discloses a wrist-worn pulse wave sensor, supplied this missing element by teaching a translucent board with a protruding convex surface placed in "intimate contact" with the user's skin to improve signal quality and prevent slippage. The combination of Mendelson's sensor with Ohsaki's cover would result in a sensor meeting the limitations of the independent claims.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Ohsaki's convex cover with Mendelson's sensor to achieve predictable benefits. These benefits, explicitly taught by Ohsaki, included improved adhesion between the sensor and tissue, enhanced detection efficiency by reducing motion artifacts, and better protection for the underlying optical components.
    • Expectation of Success: The proposed modification was argued to be a straightforward application of a known technique (using a convex cover for better skin contact) to a known device (a reflectance pulse oximeter) to yield predictable results.

Ground 2: Obviousness over Mendelson, Ohsaki, and Schulz - Claims 4, 18, and 24 are obvious over Mendelson in view of Ohsaki and Schulz.

  • Prior Art Relied Upon: Mendelson (Patent 6,801,799), Ohsaki (Application # 2001/0056243), and Schulz (Application # 2004/0054291).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the Mendelson-Ohsaki combination from Ground 1 and adds Schulz to address limitations related to an opaque layer with openings. Petitioner argued that Schulz, which describes a pulse oximetry ear sensor, taught the use of a thin sheet of opaque material with a window or aperture placed over a detector. This layer blocks stray ambient light while allowing light from the tissue to reach the detector, thereby preventing saturation and improving accuracy.
    • Motivation to Combine: A POSITA, having combined Mendelson and Ohsaki, would be further motivated to incorporate the teachings of Schulz to address the well-known problem of ambient light interference in optical sensors. Adding an opaque layer with windows corresponding to each detector in the Mendelson sensor was a known method for improving the signal-to-noise ratio.
    • Expectation of Success: A POSITA would have had a high expectation of success, as implementing an opaque, light-blocking layer with apertures was a common and well-understood design choice for improving the performance of optical physiological sensors.

Ground 3: Obviousness over Mendelson, Ohsaki, and Mendelson 2006 - Claims 7 and 19 are obvious over Mendelson in view of Ohsaki and Mendelson 2006.

  • Prior Art Relied Upon: Mendelson (Patent 6,801,799), Ohsaki (Application # 2001/0056243), and Mendelson 2006 (an IEEE conference proceeding titled “A Wearable Reflectance Pulse Oximeter for Remote Physiological Monitoring”).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground adds Mendelson 2006 to the base Mendelson-Ohsaki combination to teach the limitations of a "touch-screen display" and wireless communication with a mobile device. Mendelson 2006 described a complete wireless wearable pulse oximeter system that included a sensor module that transmitted data to a PDA. The PDA featured a touch-screen graphical user interface (GUI) for displaying physiological data and controlling the device.
    • Motivation to Combine: A POSITA would be motivated to integrate the wireless communication and touch-screen display features of Mendelson 2006 into the Mendelson-Ohsaki sensor system. This combination would provide significant, known advantages such as remote monitoring capabilities, improved user-friendliness, and the ability to transfer physiological data to medics or first responders via a handheld device, reflecting a clear trend in the art toward more portable and connected medical devices.
    • Expectation of Success: Combining a physiological sensor with wireless technology and a PDA-based touch-screen interface was a common and predictable integration of known technologies by the critical date.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including a ground that added Griffin (Patent 7,658,613) to teach a magnetic connector (claim 25), and a final ground combining all references to challenge claims 8 and 26-28.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv was inappropriate. It asserted that the district court proceedings were at an early stage, with trial scheduled well after the statutory deadline for a Final Written Decision (FWD) in the IPR. Petitioner further noted its substantial investment in preparing the petition and stipulated that, if instituted, it would not pursue the same invalidity grounds in the parallel district court litigation, thereby mitigating concerns of duplicative efforts and conflicting decisions.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-29 of the ’553 patent as unpatentable.