PTAB

IPR2020-01722

Apple Inc v. Masimo Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Advanced Pulse Oximetry Sensor
  • Brief Description: The ’695 patent discloses a wrist-worn pulse oximetry sensor that uses a circular light block between its light emitters and detectors. This configuration is intended to improve measurement accuracy by ensuring that the detectors only receive light that has been reflected from the user's tissue, thereby limiting the effects of photon scattering.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sarantos - Claims 1, 4, 5, 8, 9, 13, 15-19, and 24-30 are obvious over Sarantos

  • Prior Art Relied Upon: Sarantos (Patent 9,392,946)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sarantos discloses every element of the challenged claims. Sarantos teaches a "wristband-type wearable fitness monitor" that uses a photoplethysmographic (PPG) sensor to measure physiological parameters like heart rate and blood oxygenation. This sensor comprises a light source with multiple emitters and an array of photodetectors arranged in a circular configuration around the light source. Petitioner asserted that Sarantos's disclosure of "light blocking walls" between the light source and photodetectors, combined with the circular arrangement of the detectors, renders obvious the claimed "enclosing wall" that defines a "circular portion of the tissue measurement site" and prevents direct light detection. Sarantos further discloses a processor for analyzing signals from the detectors to determine physiological parameters.
    • Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference ground. Petitioner contended that Sarantos alone renders the claims obvious.
    • Expectation of Success (for §103 grounds): Not applicable.

Ground 2: Obviousness over Sarantos and Mendelson-1991 - Claims 1, 2, 4, 5, 8, 9, 11, 13, 15-19, 22, and 24-30 are obvious over Sarantos in view of Mendelson-1991

  • Prior Art Relied Upon: Sarantos (Patent 9,392,946) and Mendelson-1991 (a January 1991 article in the Journal of Clinical Monitoring)
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground relied on Sarantos for the primary teachings of a wrist-worn PPG sensor, as detailed in Ground 1. Mendelson-1991 was introduced to cure any perceived deficiency in Sarantos regarding the explicit disclosure of a circular optical shield and the inclusion of a display. Mendelson-1991 teaches a reflectance pulse oximeter sensor with an array of photodetectors arranged symmetrically around light-emitting diodes, separated by a circular "optical shield." Petitioner argued that Mendelson-1991’s explicit teaching of a circular shield confirms the obviousness of implementing the light-blocking walls of Sarantos in a circular manner. For claims requiring a display (e.g., claim 2), Mendelson-1991 teaches using a pulse oximeter to display oxygen saturation and pulse levels, which Sarantos is silent on.
    • Motivation to Combine (for §103 grounds): A POSITA would combine the references to use a known technique (a circular optical shield from Mendelson-1991) to improve a similar device (Sarantos's sensor) to ensure that only light attenuated by tissue is detected. Adding a display as taught by Mendelson-1991 would have been an obvious improvement to enhance the usability of Sarantos's device by allowing a user to view measurement data.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because both references relate to reflectance-based physiological monitoring, and combining their respective elements—a sensor architecture and a display feature—involves predictable results.

Ground 3: Obviousness over Ackermans - Claims 1, 4, 5, 8, 9, 13, 15-17, 19, 24-26, 28, and 29 are obvious over Ackermans

  • Prior Art Relied Upon: Ackermans (WO 2011/051888)

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner presented Ackermans as an alternative primary reference disclosing all claimed features. Ackermans teaches a wrist-worn optical sensor for measuring blood oxygenation that includes at least one light emitter and photodetectors. Critically, the sensor features a circular "inner ring" that "shadows the photodetector from emitted light" and an "outer ring," with the photodetectors arranged between them. Petitioner argued this inner ring functions as the claimed "light block forming an enclosing wall." Because the inner ring is circular and separates the emitter from the detectors, it defines the "circular portion of the tissue measurement site" and prevents direct light detection. Ackermans also discloses using a plurality of emitters (LEDs) and detectors (photodiodes), and processing electrical signals to determine an oximetry value.
    • Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference ground.
    • Expectation of Success (for §103 grounds): Not applicable.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Sarantos/Mendelson-1991 or Ackermans with Venkatraman (Patent 8,998,815) to teach a touchscreen display and with Chin (Patent 6,343,223) to teach a diffuser for spreading light into the tissue.

4. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 1-6, 8, 9, 11-19, and 21-30 of the ’695 patent as unpatentable.