Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2020-01538
• Patent #: 10,588,554
• Filed: September 2, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Masimo Corporation
• Challenged Claims: 1-7 and 20-28

2. Patent Overview

• Title: Multi-Stream Data Collection System for Noninvasive Measurement of Blood Constituents
• Brief Description: The ’554 patent describes a physiological measurement system featuring a sensor with a specific physical interface. The system’s sensor includes at least four detectors and a cover with a "single protruding convex surface" that is sufficiently rigid to cause a user's tissue to conform to its shape when worn, purportedly improving signal quality.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 and 20-28 are obvious over Mendelson-799, Ohsaki, Schulz, and Mendelson-2006.

• Prior Art Relied Upon: Mendelson-799 (Patent 6,801,799), Ohsaki (Application # 2001/0056243), Schulz (Application # 2004/0054291), and Mendelson-2006 (a 2006 IEEE conference publication).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that the prior art collectively discloses every element of the challenged claims. The combination begins with the foundational sensor design from Mendelson-799, which taught an optical measurement sensor with a light source and an array of twelve discrete photodetectors arranged in concentric rings on a planar substrate. To this base sensor, Petitioner argued a person of ordinary skill in the art (POSITA) would add features from the other references.

    Ohsaki was cited for teaching a wrist-worn pulse wave sensor with a translucent, light-permeable cover having a protruding convex surface. This cover was designed to press into the user's skin to improve adhesion, prevent sensor slippage, and enhance signal strength—directly addressing the core feature of the ’554 patent’s claims.

    Schulz was introduced for its teaching of preventing detector saturation. It described a pulse oximetry sensor that incorporated a thin sheet of opaque material beneath a lens. This opaque layer included windows sized and positioned to allow sufficient light for measurement while blocking extraneous ambient light, a known issue in optical sensor design.

    Finally, Mendelson-2006 described a complete "wireless wearable pulse oximeter" system. This system included a sensor module that communicated wirelessly with a handheld Personal Digital Assistant (PDA). The PDA featured a processor, touch-screen display, storage, and a graphical user interface (GUI) for displaying physiological data like SpO2 and heart rate, corresponding to the system claims of the ’554 patent.

  • Motivation to Combine (for §103 grounds): Petitioner argued a POSITA would combine these known elements to achieve their predictable and well-understood benefits. A POSITA would have been motivated to add Ohsaki's convex cover to Mendelson-799's multi-detector sensor to improve its performance by ensuring better skin contact and signal stability, a common design goal. Similarly, adding Schulz's opaque layer with windows was presented as a straightforward solution to the known problem of ambient light interference and detector saturation. Finally, integrating this improved sensor into the wireless framework taught by Mendelson-2006 would have been a logical step to gain the significant, known advantages of remote monitoring, data portability, and enhanced user interaction via a handheld device.

  • Expectation of Success (for §103 grounds): Petitioner contended that a POSITA would have had a high expectation of success because the combination involved the application of known techniques to improve similar devices in predictable ways. Each element would perform its known function without unexpected results.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §314(a) based on the Fintiv factors. The petition asserted that the parallel district court litigation against the Patent Owner was at a very early stage, with no claim construction order issued and a trial date set for April 2022, after a Final Written Decision (FWD) in the inter partes review (IPR) would be due in March 2022. Petitioner also highlighted its substantial investment in preparing the IPR and noted it had stipulated not to pursue the same invalidity grounds in the district court case, mitigating concerns of duplicative efforts and inefficient use of resources.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-7 and 20-28 of Patent 10,588,554 as unpatentable.