PTAB

IPR2020-01716

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 ’194 patent describes noninvasive physiological measurement systems comprising a sensor device that communicates with a separate handheld computing device. The sensor uses multiple sets of photodetectors to measure characteristics like pulse rate from a user's tissue.

3. Grounds for Unpatentability

Ground 1: Claims 1-18, 20, and 22-30 are obvious over Aizawa, Mendelson-2003, Ohsaki, and Mendelson-2006.

  • Prior Art Relied Upon: Aizawa (Application # 2002/0188210), Mendelson-2003 (a 2003 conference paper on wearable oximeters), Ohsaki (Application # 2001/0056243), and Mendelson-2006 (a 2006 conference paper on wireless oximeters).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the claimed system is a predictable combination of known elements. Aizawa was asserted to disclose a base wrist-worn pulse sensor with a single ring of photodetectors, individual windows for the detectors, and a surrounding wall. Mendelson-2003 was argued to teach adding a second, concentric ring of photodetectors wired in parallel to improve light collection efficiency and save power in wearable devices. Ohsaki was asserted to teach modifying the sensor's flat cover to be a protruding, rigid, convex surface to improve skin adhesion, reduce motion artifacts, and improve signal quality. Finally, Mendelson-2006 was argued to teach wirelessly connecting the body-worn sensor to a handheld computing device (a PDA with a touch-screen) for convenient data display and monitoring.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Aizawa with Mendelson-2003 to achieve the known benefit of improved power efficiency in a wrist-worn sensor, a primary concern for battery-powered devices. A POSITA would further incorporate Ohsaki’s convex cover to solve the known problem of motion-induced signal noise by ensuring better, more stable skin contact. Finally, a POSITA would add the wireless PDA taught by Mendelson-2006 to provide a convenient user interface and remote monitoring capability, which were common and desirable features for such physiological sensors.
    • Expectation of Success (for §103 grounds): Petitioner contended that combining these known elements to solve known problems would yield only predictable results. Each element would perform its known function without altering the function of the others, leading a POSITA to have a high expectation of success.

Ground 2: Claims 19 and 21 are obvious over Aizawa, Mendelson-2003, Ohsaki, and Mendelson-2006, in further view of Beyer.

  • Prior Art Relied Upon: Aizawa (Application # 2002/0188210), Mendelson-2003 (a 2003 conference paper), Ohsaki (Application # 2001/0056243), Mendelson-2006 (a 2006 conference paper), and Beyer (Patent 7,031,728).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1, which provided a sensor system wirelessly communicating with a PDA. To meet the "mobile phone" limitation of claims 19 and 21, Petitioner argued it was a well-known and obvious design choice to use a PDA that integrated cellular phone capabilities. Beyer was asserted to explicitly teach "cellular PDA/GPS phones" that allow users to communicate data and access information remotely, demonstrating the known practice of combining these technologies.
    • Motivation to Combine (for §103 grounds): A POSITA would be motivated to modify the PDA of Mendelson-2006 to include cellular phone functionality as taught by Beyer for the added convenience of a single, integrated device and to enable more reliable remote patient monitoring over a cellular network. Petitioner argued this was a routine and conventional design choice, representing a simple substitution of one type of PDA for another with enhanced, known features.
    • Expectation of Success (for §103 grounds): Because combining PDA and cellular phone functionalities was a common and well-understood practice at the time, a POSITA would have reasonably expected the resulting device to function predictably.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under the NHK-Fintiv rule. The core arguments were:
    • Factor 1 (Stay): Institution of the IPR would increase the likelihood of a stay in the parallel district court litigation, promoting efficiency.
    • Factor 2 (Schedule): While the Final Written Decision (FWD) date was near the scheduled trial date, district court trial dates are frequently delayed, making it likely the FWD would issue well before any trial.
    • Factor 3 (Investment): The district court case was in its early stages, with no claim construction order issued and discovery still open, while Petitioner's investment in preparing the IPR was substantial.
    • Factor 4 (Unique Issues): Petitioner stipulated it would not assert these IPR grounds in the district court, mitigating concerns of duplicative efforts. The IPR also challenged all patent claims, whereas the district court proceeding would likely be narrowed to fewer claims.
    • Factor 5 & 6 (Other Circumstances): Petitioner asserted the petition was strong on the merits and that institution would serve the interest of overall system efficiency and integrity.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-30 of the ’194 patent as unpatentable.