PTAB

IPR2020-01713

Apple Inc v. Masimo Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Multi-Stream Data Collection System for Noninvasive Measurement of Blood Constituents
  • Brief Description: The ’564 patent describes a user-worn physiological measurement device (PMD) for noninvasively measuring blood constituents. The device includes one or more light emitters and at least four detectors arranged on a substrate, all covered by a rigid, protruding convex surface designed to contact the user's tissue.

3. Grounds for Unpatentability

Ground 1: Obviousness over Aizawa, Ohsaki, and Goldsmith - Claims 1-10 and 13-30 are obvious over Aizawa, Ohsaki, and Goldsmith.

  • Prior Art Relied Upon: Aizawa (Application # 2002/0188210), Ohsaki (Application # 2001/0056243), and Goldsmith (Application # 2007/0093786).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references, which it termed the "AOG" combination, taught all limitations of the challenged claims. Aizawa disclosed the core sensor structure: a wrist-worn pulse wave detector with a central light-emitting diode (LED) and four surrounding photodetectors arranged on a substrate within a holder. Ohsaki taught that modifying a flat sensor surface to be a protruding convex surface improves adhesion to the user's skin, prevents slippage, and increases the detectable signal strength. Goldsmith disclosed a wrist-worn medical watch controller device that integrates physiological sensors with features like a processor, memory, network interface for communication with a mobile phone, and a touchscreen user interface to display health data like heart rate. The AOG combination would result in Aizawa’s sensor, improved with Ohsaki’s convex cover, integrated into Goldsmith’s full-featured wearable device.
    • Motivation to Combine: A POSITA would combine Aizawa and Ohsaki to solve the known problem of sensor slippage and poor signal quality in wrist-worn devices, as Ohsaki’s convex surface was a known technique to improve similar devices. A POSITA would be further motivated to incorporate this improved Aizawa-Ohsaki sensor into Goldsmith’s watch platform to provide a comprehensive, user-friendly device that could not only measure physiological parameters but also display, store, and transmit the data, enhancing the user experience and utility for remote monitoring.
    • Expectation of Success: Petitioner asserted a POSITA would have had a high expectation of success, as the combination involved applying known techniques (a convex cover for adhesion, a feature-rich watch platform for user interaction) to similar devices to achieve predictable results.

Ground 2: Obviousness over AOG in view of Sherman - Claim 11 is obvious over the AOG combination in view of Sherman.

  • Prior Art Relied Upon: Aizawa (’210 application), Ohsaki (’243 application), Goldsmith (’786 application), and Sherman (Patent 4,941,236).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the AOG combination to address claim 11, which added the limitation of "a magnet configured to be used as a connecting mechanism." While Goldsmith disclosed a strap, it did not specify the fastening mechanism. Sherman disclosed an improved flexible strap for wrist instruments, such as watches, that uses embedded magnetic particles as a connecting mechanism to eliminate buckles and prevent snagging.
    • Motivation to Combine: A POSITA looking to implement the strap disclosed in Goldsmith would have been motivated to look to other wrist-worn devices for a specific fastening mechanism. Sherman provided a known solution that was thinner, more comfortable, and easier to engage than traditional buckles, directly addressing common problems with watch straps.
    • Expectation of Success: Implementing a known magnetic strap from Sherman on the AOG wearable device would have been a straightforward design choice with predictable results.

Ground 3: Obviousness over AOG in view of Rantala - Claim 12 is obvious over the AOG combination in view of Rantala.

  • Prior Art Relied Upon: Aizawa (’210 application), Ohsaki (’243 application), Goldsmith (’786 application), and Rantala (Patent 6,912,413).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed claim 12, which required a processor configured to "modulate a duty cycle of one or more of the...emitters" including "pulse width time slots and off time slots." Rantala disclosed a method for minimizing power consumption in battery-operated mobile pulse oximeters by having a control unit change parameters of the pulse train driving the LEDs, such as pulse width and repetition rate.
    • Motivation to Combine: The AOG device, as a battery-operated mobile device, would present the same power consumption challenges addressed by Rantala. A POSITA would have been motivated to implement Rantala's known power-saving techniques to improve the battery life of the AOG device, a predictable improvement for such devices.
    • Expectation of Success: Applying Rantala's power optimization strategy to the emitters in the AOG device was a known technique to improve similar devices and would yield the predictable result of extended battery life.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including Ground 4, which argued claims 1-10 and 13-30 are obvious over AOG and Ali (Patent 6,584,336) to teach a user-configurable display orientation. Grounds 5 and 6 applied these secondary references to dependent claims 11 and 12, respectively.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The petition was filed within nine weeks of the patent being asserted, well within the statutory timeframe. Petitioner asserted that institution would increase the likelihood of a stay in the parallel district court litigation (Case No. 8:20-cv-00048, C.D. Cal.), thereby simplifying issues for trial. While the district court trial was scheduled near the statutory deadline for a Final Written Decision (FWD), Petitioner argued that court dates are often uncertain and subject to delay. Furthermore, Petitioner stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in the district court, mitigating concerns of duplicative efforts.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of the ’564 patent as unpatentable under 35 U.S.C. §103.