PTAB

IPR2020-01539

Apple Inc v. Masimo Corp

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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 ’554 patent describes a physiological measurement system that includes a sensor device communicating with a separate handheld computing device. The core of the invention is a sensor featuring at least four detectors and a cover with a "single protruding convex surface" that is sufficiently rigid to cause user tissue to conform to its shape, aiming to improve signal quality.

3. Grounds for Unpatentability

Ground 1: Obviousness over Aizawa, Inokawa, Ohsaki, and Mendelson-2006 - Claims 1-7 and 20-28

  • Prior Art Relied Upon: Aizawa (Application # 2002/0188210), Inokawa (JP Publication # 2006/296564), Ohsaki (Application # 2001/0056243), and Mendelson-2006 (a 2006 IEEE conference proceeding).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted this combination rendered the system claims obvious. Aizawa was argued to disclose the foundational pulse wave sensor, including a holder with four photodetectors symmetrically disposed around a central light-emitting diode (LED). Ohsaki and Inokawa were cited for teaching the use of a protruding convex surface or lens over the sensor’s optical components. This feature was described as improving adhesion to the user's skin, preventing sensor slippage, and reducing variation in reflected light caused by movement. Finally, Mendelson-2006 was asserted to teach a complete wearable pulse oximeter system that wirelessly transmits physiological data to a handheld computing device (a PDA) with a graphical user interface, satisfying the system-level limitations of the independent claims.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to create a more robust and user-friendly device. A POSITA would modify Aizawa’s basic sensor with the convex covers taught by Ohsaki and Inokawa to solve the well-known problems of motion artifact and poor skin contact in wearable sensors. Incorporating the wireless communication and handheld display from Mendelson-2006 was presented as a logical next step, reflecting a common trend at the time to make physiological data readily accessible and portable for remote monitoring.
    • Expectation of Success: Petitioner argued a POSITA would have had a reasonable expectation of success, as the combination involved integrating known components and techniques to achieve their predictable functions—improving signal quality with a convex surface and enabling remote data display with a wireless PDA.

Ground 2: Obviousness over Aizawa, Inokawa, Ohsaki, Mendelson-2006, and Bergey - Claims 8-19

  • Prior Art Relied Upon: Aizawa (Application # 2002/0188210), Inokawa (JP Publication # 2006/296564), Ohsaki (Application # 2001/0056243), Mendelson-2006 (a 2006 IEEE conference proceeding), and Bergey (Patent 3,789,601).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to address dependent claims 8-19, which added a limitation that the sensor's substrate, wall, and cover "together hermetically seal the at least four detectors." Petitioner argued that the primary combination from Ground 1 did not explicitly teach hermetic sealing. Bergey was introduced to supply this missing element, as it disclosed a digital wristwatch where the internal electronics were hermetically sealed within the watch case to make the unit shockproof, waterproof, and free from dust and moisture.
    • Motivation to Combine: A POSITA, seeking to improve the durability and reliability of the wearable sensor from the Ground 1 combination, would look to analogous arts like wristwatches for solutions. Petitioner argued a POSITA would be motivated to apply Bergey’s teachings on hermetic sealing to protect the sensitive optical components of the physiological sensor from environmental factors, thereby enhancing its robustness for everyday use.
    • Expectation of Success: The technique of hermetically sealing electronics in a wrist-worn device was well-established. Applying this known method from Bergey’s wristwatch to the similarly-worn physiological sensor would have been a straightforward modification with a high probability of success in protecting the internal components as intended.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial of institution under the Fintiv factors. Key arguments included:
    • Factor 1 (Stay): Institution would increase the likelihood of a stay in the parallel district court litigation, conserving judicial and party resources.
    • Factor 2 (Schedule): A Final Written Decision (FWD) in the inter partes review (IPR) would likely issue before the scheduled trial date in the co-pending litigation.
    • Factor 3 (Investment): Proceedings in the district court were at an early stage, with significant milestones like the Markman hearing and discovery deadlines still months away.
    • Factor 4 (Overlapping Issues): Petitioner stipulated that if the IPR was instituted, it would not pursue the same invalidity grounds in the district court, mitigating concerns of duplicative efforts and potentially conflicting decisions.

5. Relief Requested

  • Petitioner requests the institution of an IPR and the cancellation of claims 1-28 of Patent 10,588,554 as unpatentable under 35 U.S.C. §103.