Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2020-01537
• Patent #: 10,588,553
• Filed: August 31, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Masimo Corporation
• Challenged Claims: 1-29

2. Patent Overview

• Title: Multi-Stream Data Collection System for Noninvasive Measurement of Blood Constituents
• Brief Description: The ’553 patent describes a noninvasive optical physiological sensor for measuring blood constituents. The claimed sensor includes at least four detectors arranged on a substrate and a cover with a single protruding convex surface designed to conform user tissue to the sensor to improve signal quality when worn.

3. Grounds for Unpatentability

Ground 1: Claims 1-6, 9-18, 20-24, and 29 are obvious over Aizawa, Inokawa, and Ohsaki.

• Prior Art Relied Upon: Aizawa (Application # 2002/0188210), Inokawa (JP Publication No. 2006/296564), and Ohsaki (Application # 2001/0056243).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Aizawa taught the core elements of a noninvasive pulse wave sensor, including a central light-emitting diode (LED) and "four photodetectors" disposed symmetrically around it within a holder. However, Aizawa used a flat cover plate. The combinations of Inokawa and Ohsaki were asserted to supply the remaining limitations. Inokawa taught using a second LED (e.g., infrared) to distinguish between blood flow and body motion, improving signal accuracy. Ohsaki taught using a cover with a convex surface that contacts the user's skin to prevent sensor slippage and reduce signal variation caused by movement.
  • Motivation to Combine: A POSITA would combine Inokawa with Aizawa to implement the known technique of using multiple light sources to improve signal quality by compensating for motion artifacts, a recognized problem in wearable sensors. A POSITA would then be further motivated to modify the combined sensor's flat cover by incorporating the convex surface taught by Ohsaki. This modification would address the known problems of poor skin adhesion and signal degradation from movement, which Ohsaki explicitly solves with its design.
  • Expectation of Success: Petitioner asserted that combining these known elements from the prior art would have been predictable. Each element would perform its known function to achieve the expected benefits of improved signal accuracy and stability, representing a simple application of known techniques to improve a known device.

Ground 2: Claims 7 and 19 are obvious over Aizawa, Inokawa, Ohsaki, and Mendelson-2006.

• Prior Art Relied Upon: Aizawa, Inokawa, Ohsaki, and Mendelson-2006 ("A Wearable Reflectance Pulse Oximeter for Remote Physiological Monitoring," IEEE EMBS Annual International Conference, 2006).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the sensor combination of Ground 1 and added Mendelson-2006 to address limitations related to a processing and display system. Claims 7 and 19 require a physiological monitoring device that includes the sensor, a touch-screen display, and processors to communicate physiological data to the display. While the primary combination in Ground 1 transmitted data to an "unshown display," Mendelson-2006 taught a complete wireless system where a sensor module transmits physiological data to a PDA with a touch-screen graphical user interface.
  • Motivation to Combine: A POSITA, seeking to implement the "unshown display" for the sensor from Ground 1, would have looked to contemporary systems like Mendelson-2006. The motivation was to use a well-known, commercially common component (a PDA with a touch-screen) to provide a user interface for the sensor data. This would predictably enhance usability and allow for easy visualization of physiological waveforms, an established benefit taught by Mendelson-2006.
  • Expectation of Success: Integrating a sensor with a PDA-based display was a common design choice at the time. A POSITA would have had a reasonable expectation of success in wirelessly connecting the sensor from Ground 1 to the display system of Mendelson-2006 to create a complete, functional monitoring device.

Ground 3: Claims 8 and 25-28 are obvious over Aizawa, Inokawa, Ohsaki, Mendelson-2006, and Sherman.

• Prior Art Relied Upon: Aizawa, Inokawa, Ohsaki, Mendelson-2006, and Sherman (Patent 4,941,236).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Sherman to the combination of Ground 2 to address claim limitations requiring a magnet as a connecting mechanism for the device's strap. The underlying prior art, such as Aizawa, disclosed a generic "attachment belt" without specifying the clasp mechanism. Sherman taught an "improved clasp for a flexible strap" for wrist-worn instruments that used embedded magnetic particles to create a secure, easy-to-use, and snag-free closure.
  • Motivation to Combine: Petitioner argued that a POSITA would have been motivated to replace the generic buckle or clasp on the Aizawa-based device with the magnetic mechanism from Sherman. The motivation was to solve the well-known problems associated with conventional clasps, such as difficulty in fastening and the tendency to catch on clothing. Sherman provided a known solution to these problems, making it a simple and logical substitution to improve the wearability and user experience of the monitoring device from Ground 2.
  • Expectation of Success: Applying a known fastening technique (magnetic clasp) to a wrist-worn device was a predictable design choice. A POSITA would have reasonably expected that substituting Sherman's clasp would successfully secure the device to a user's wrist while providing the known benefits of improved comfort and ease of use.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the PTAB should not exercise discretionary denial under Fintiv. The petition asserted that a Final Written Decision (FWD) would issue in March 2022, before the scheduled April 2022 trial in the parallel district court case. Petitioner contended that its investment in preparing the IPR was substantial and that the district court proceedings were at an early stage, with no claim construction order issued. Furthermore, Petitioner stipulated that it would not pursue the same invalidity grounds in district court if the IPR was instituted, mitigating concerns over duplicative efforts and conflicting decisions.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-29 of the ’553 patent as unpatentable under 35 U.S.C. §103.