Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2020-01715
• Patent #: 10,631,765
• Filed: September 30, 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 ’765 patent discloses a physiological measurement system featuring a sensor device. The sensor’s key components include one or more light emitters, at least four light detectors, and a cover with a rigid, protruding convex surface located over the detectors to ensure intimate contact with a user’s skin.

3. Grounds for Unpatentability

Ground 1: Claims 1-8, 10-13, and 15-29 are obvious over Aizawa, Inokawa, Ohsaki, and Mendelson-2006

• Prior Art Relied Upon: Aizawa (Application # 2002/0188210), Inokawa (JP Pub. No. 2006/296564), Ohsaki (Application # 2001/0056243), and Mendelson-2006 (a 2006 IEEE conference proceeding).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references teaches all key limitations of the challenged claims. Aizawa disclosed a base pulse wave sensor with four photodetectors arranged around a central light source. Ohsaki and Inokawa taught using a rigid, protruding convex cover or lens over a sensor’s optical components to improve skin adhesion, prevent slippage, and reduce signal variation caused by user movement. Mendelson-2006 described a complete wearable pulse oximeter system that wirelessly transmits physiological data to a handheld computing device (a PDA) with a touch-screen graphical user interface for display and analysis. The combination of Aizawa’s detector layout, Ohsaki’s/Inokawa’s convex cover, and Mendelson-2006’s wireless system architecture allegedly rendered the system of independent claims 1 and 21 obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to achieve predictable benefits. A POSITA would modify Aizawa’s sensor with a convex cover from Ohsaki or Inokawa to improve signal quality by ensuring better skin contact, a known problem in wearable sensors. Furthermore, a POSITA would integrate this improved sensor into a wireless system with a handheld display like that in Mendelson-2006, as this was a well-established method for making physiological data more accessible and useful for remote monitoring. Finally, a POSITA would incorporate Inokawa’s use of multiple LEDs to distinguish between blood flow and motion artifact, further improving the reliability of Aizawa’s sensor.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying known solutions (convex surfaces, wireless communication to PDAs) to known problems (poor signal quality, data accessibility) in the field of wearable physiological sensors, with each component performing its expected function.

Ground 2: Claim 9 is obvious over Aizawa, Inokawa, Ohsaki, Mendelson-2006, and Bergey

• Prior Art Relied Upon: The combination from Ground 1, plus Bergey (Patent 3,789,601).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically targets claim 9, which adds the limitation that the substrate, wall, and cover of the sensor together "hermetically seal the at least four detectors." Bergey disclosed a wristwatch with internal electronics hermetically sealed within the watch case to protect them from dust, moisture, and shock.
  • Motivation to Combine: Petitioner argued that a POSITA, seeking to improve the durability and reliability of the wearable sensor system from Ground 1, would have been motivated to look to analogous arts, such as wristwatch design. A POSITA would combine Bergey's established technique for hermetically sealing electronics with the sensor design of the primary combination to protect the sensitive optical detectors from environmental damage, a straightforward and predictable improvement.

Ground 3: Claim 14 is obvious over Aizawa, Inokawa, Ohsaki, Mendelson-2006, and Goldsmith

• Prior Art Relied Upon: The combination from Ground 1, plus Goldsmith (Application # 2007/0093786).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses claim 14, which requires the system’s displayed indicia to be "further responsive to temperature." Goldsmith disclosed a watch controller device capable of communicating with various sensors to monitor and display multiple physiological parameters, explicitly including user temperature.
  • Motivation to Combine: A POSITA would have been motivated to add temperature monitoring, as taught by Goldsmith, to the multi-parameter system of Ground 1. The motivation was to provide a more comprehensive and integrated health monitoring device, enhancing convenience and utility for the user. Adding a known monitoring capability like temperature measurement to a device that already measures other physiological parameters (e.g., pulse rate, SpO2) was presented as an obvious design choice to increase the device's functionality.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) and the Fintiv factors would be inappropriate. The parallel district court proceeding was in its early stages, with no claim construction order issued and discovery not yet closed, minimizing concerns of duplicative effort and inefficient use of resources. Petitioner further argued that the trial date in the district court was likely to be delayed, while the PTAB could provide a more timely and certain resolution on validity. Finally, Petitioner stipulated that it would not pursue in the district court the same invalidity grounds raised in the IPR petition, which mitigates concerns of conflicting decisions and weighs in favor of institution.

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.