PTAB

IPR2020-01714

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 ’765 patent describes a physiological measurement system featuring a sensor device with a rigid, protruding convex cover positioned above at least four detectors. The system is designed for non-invasively measuring blood parameters.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mendelson-799, Ohsaki, Schulz, and Mendelson-2006 - Claims 1-8, 10-13, 15-16, 20-29 are obvious over the combination.

  • 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 proceeding).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the prior art collectively disclosed all elements of the challenged claims. Mendelson-799 taught a base optical sensor with an array of discrete light detectors for measuring blood parameters. Ohsaki taught a wrist-worn pulse wave sensor with a light-permeable, protruding convex cover that improves adhesion to the user’s skin and enhances signal quality. Schulz taught using a thin sheet of opaque material with windows corresponding to the detectors to prevent sensor saturation from ambient light. Finally, Mendelson-2006 described a complete wireless wearable pulse oximeter system that communicated physiological data to a handheld computing device (a PDA) with a touch-screen display.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Mendelson-799’s sensor with Ohsaki’s protruding convex cover to achieve the known benefits of improved skin adhesion and better signal detection. To address the known problem of detector saturation, a POSITA would incorporate Schulz’s opaque layer with windows, a straightforward solution for shielding detectors from ambient light. To add modern functionality and remote monitoring capabilities, a POSITA would integrate the resulting sensor into the wireless system of Mendelson-2006, enabling communication with a PDA for data display and storage.
    • Expectation of Success: Petitioner asserted that a POSITA would have had a high expectation of success, as the combination involved integrating known components using standard techniques to achieve their predictable functions and benefits.

Ground 2: Obviousness over Mendelson-799, Ohsaki, Schulz, Mendelson-2006, and Bergey - Claim 9 is obvious over the combination.

  • Prior Art Relied Upon: The combination from Ground 1, further in view of Bergey (Patent 3,789,601).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically targeted claim 9, which added the limitation that the sensor's substrate, wall, and cover "together hermetically seal the at least four detectors." Bergey disclosed a wristwatch with electronics hermetically sealed within the case to protect them from dust and moisture.
    • Motivation to Combine: A POSITA would be motivated to apply Bergey’s conventional hermetic sealing technique to the sensor from the primary combination to enhance its durability and reliability. Protecting the sensitive optical detectors from environmental contaminants like moisture and dust was a well-understood engineering goal for wearable devices.
    • Expectation of Success: Applying hermetic sealing to a wearable sensor was a known technique for improving robustness, and a POSITA would have reasonably expected to successfully seal the sensor components using the methods taught by Bergey.

Ground 3: Obviousness over Mendelson-799, Ohsaki, Schulz, Mendelson-2006, and Goldsmith - Claim 14 is obvious over the combination.

  • Prior Art Relied Upon: The combination from Ground 1, further in view of Goldsmith (Application # 2007/0093786).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground targeted claim 14, which requires the system's displayed indicia to be "further responsive to temperature." Goldsmith disclosed a watch controller device that could receive data from various sensors and display physiological measurements, including heart rate and user temperature.
    • Motivation to Combine: A POSITA would combine the teachings of Goldsmith to add temperature monitoring to the primary system. This would create a more comprehensive and integrated health monitoring device, providing the user with multiple wellness parameters (e.g., oxygen saturation, heart rate, and temperature) on a single display, thereby increasing its convenience and utility.
    • Expectation of Success: Integrating an additional, known physiological sensor like a thermometer into a multi-parameter monitoring system was a routine design choice, and a POSITA would have expected success in displaying this data on the existing user interface.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 17-19 based on the Ground 1 combination in view of Aizawa (Application # 2002/0188210), which taught specific cross-pattern detector arrangements to improve detection efficiency.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the PTAB should not exercise discretionary denial under the Fintiv factors. The arguments centered on the fact that the parallel district court proceeding was in its early stages, with discovery not yet closed and a trial date that was distant and subject to potential delay. Petitioner contended that its investment in preparing the IPR was substantial and that it had stipulated not to pursue the same invalidity grounds in the district court if the IPR was instituted, thereby mitigating concerns of duplicative efforts and conserving judicial resources.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-29 of the ’765 patent as unpatentable under 35 U.S.C. §103.