PTAB
IPR2020-01723
Apple Inc v. Masimo Corp
Key Events
Petition
Table of Contents
petition Intelligence
1. Case Identification
- Case #: IPR2020-01723
- Patent #: 10,470,695
- Filed: October 2, 2020
- Petitioner(s): Apple Inc.
- Patent Owner(s): Masimo Corporation
- Challenged Claims: 1-6, 8, 9, 11-19, and 21-30
2. Patent Overview
- Title: Advanced Pulse Oximetry Sensor
- Brief Description: The ’695 patent describes a wrist-worn physiological monitoring device, specifically a reflectance pulse oximetry sensor. The purported invention is the use of a circular light blocker between light emitters and detectors to improve measurement accuracy by limiting the detection of photons that have been multiply scattered by the user's tissue.
3. Grounds for Unpatentability
Ground 1: Obviousness over Mendelson-799 and Venkatraman - Claims 1-5, 8, 9, 11-13, 15-19, and 22-30 are obvious over Mendelson-799 in view of Venkatraman.
- Prior Art Relied Upon: Mendelson-799 (Patent 6,801,799) and Venkatraman (Patent 8,998,815).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Mendelson-799 discloses the core sensor technology of the ’695 patent, including a reflectance pulse oximeter with a central light source, a surrounding circular array of photodetectors, and a "light shield" between them to prevent direct optical coupling. Venkatraman discloses a portable, wrist-worn biometric monitoring device (e.g., a watch or bracelet) that uses optical sensors to measure physiological parameters and includes a display. Petitioner contended that combining Mendelson-799's sensor configuration with Venkatraman's wrist-worn form factor and user interface renders the key limitations of the independent claims obvious.
- Motivation to Combine: A POSITA would combine these references to satisfy the known market demand for convenient, wearable health monitors. Specifically, a POSITA would integrate Mendelson-799’s advanced sensor into the comfortable and user-friendly wrist-worn form factor taught by Venkatraman to create a simpler, less-cluttered, and more robust device for continuous physiological monitoring.
- Expectation of Success: Petitioner asserted a high expectation of success, as miniaturization techniques for electronic sensors were well-known. Venkatraman itself teaches a wrist-worn device incorporating similar components (emitters, detectors, processors), demonstrating the feasibility and predictability of such a combination.
Ground 2: Obviousness over Mendelson-799, Venkatraman, and Chin - Claims 6, 14, and 21 are obvious over the combination of Mendelson-799 and Venkatraman in view of Chin.
- Prior Art Relied Upon: Mendelson-799 (Patent 6,801,799), Venkatraman (Patent 8,998,815), and Chin (Patent 6,343,223).
- Core Argument for this Ground:
- Prior Art Mapping: This ground builds on the combination in Ground 1 to address claims reciting a "diffuser." Petitioner argued that Chin explicitly teaches the use of an "optional optical diffuser" in oximetry sensors. The diffuser spreads the emitted light, causing it to penetrate more tissue and blood, thereby enhancing the quality of the reflected signal available for detection.
- Motivation to Combine: A POSITA, seeking to improve the accuracy and reliability of the combined Mendelson-Venkatraman wearable device, would be motivated to incorporate the well-known technique of using a diffuser as taught by Chin. This would be a straightforward application of a known technique to improve a similar device for a predictable result.
- Expectation of Success: The use of diffusers in oximetry was a known method for improving signal quality. Therefore, adding a diffuser to the combined wearable sensor would have been a predictable modification with a high expectation of success.
Ground 3: Obviousness over Mendelson-799 and Mio Alpha - Claims 1-5, 8, 9, 11-13, 15-19, and 22-30 are obvious over Mendelson-799 in view of Mio Alpha.
- Prior Art Relied Upon: Mendelson-799 (Patent 6,801,799) and Mio Alpha (a user guide and an online product review for a commercial heart rate monitor).
- Core Argument for this Ground:
- Prior Art Mapping: This ground presents an alternative to Ground 1. Mendelson-799 again supplied the core sensor technology with its circular light shield and detector array. The Mio Alpha references, describing a commercially successful "strapless, continuous heart rate monitor you can wear on your wrist," provided the teaching of integrating a reflection-based optical sensor into a sports watch form factor for user convenience.
- Motivation to Combine: Petitioner argued a POSITA would be motivated to incorporate Mendelson-799's sensor into a wrist-worn design like the Mio Alpha sports watch. This would allow a user to wear the advanced sensor at all times with minimal discomfort or interference, a recognized benefit in the field of physiological monitoring.
- Expectation of Success: The Mio Alpha product itself served as proof that integrating optical sensors into a wrist-worn device was not only feasible but commercially viable. A POSITA would have had a high expectation of success in combining the known sensor of Mendelson-799 with the known form factor of Mio Alpha as an obvious engineering choice.
- Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Mendelson 2006 (a 2006 IEEE conference paper by the inventor of Mendelson-799) to further support the obviousness of adding a touchscreen display.
4. Relief Requested
- Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 8, 9, 11-19, and 21-30 of Patent 10,470,695 as unpatentable.
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