Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2020-01733
• Patent #: 10,702,195
• Filed: September 30, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Masimo Corporation
• Challenged Claims: 1-17

2. Patent Overview

• Title: Multi-Stream Data Collection System for Noninvasive Measurement of Blood Constituents
• Brief Description: The ’195 patent relates to user-worn physiological measurement devices, such as wrist-worn sensors, for noninvasively measuring characteristics like pulse rate. The technology uses one or more light emitters and multiple sets of photodiodes to detect light attenuated by the user's tissue, with specific configurations for the photodiode arrays, a protective cover, and processing electronics.

3. Grounds for Unpatentability

Ground 1: Claims 1-17 are obvious over Aizawa in view of Mendelson-2003, Ohsaki, and Goldsmith

• Prior Art Relied Upon: Aizawa (Application # 2002/0188210), Mendelson-2003 (a 2003 IEEE conference proceeding), Ohsaki (Application # 2001/0056243), and Goldsmith (Application # 2007/0093786).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references taught all elements of the challenged claims. Aizawa disclosed a base wrist-worn pulse wave sensor with a central light emitter surrounded by a circular ring of photodetectors and a flat, light-permeable cover. Mendelson-2003 taught improving such sensors by using two concentric rings of photodiodes (a near ring and a far ring), with each ring wired in parallel to improve light collection efficiency and reduce power consumption in wearable devices. Ohsaki taught modifying the sensor's cover to have a convex surface that presses into the user's skin to improve adhesion, reduce motion artifacts, and improve signal quality. Finally, Goldsmith disclosed a medical "watch controller" that integrates physiological sensors into a single wrist-worn unit with a processor, memory, network interface for communicating with handheld devices (e.g., a PDA), and a touchscreen user interface.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to improve Aizawa’s basic sensor design. A POSITA would combine Aizawa with Mendelson-2003's two-ring photodiode arrangement to achieve the known benefits of enhanced light collection and power savings, which are critical for wearable devices. To solve the known problem of motion artifacts affecting signal quality, a POSITA would incorporate Ohsaki’s convex cover design, which improves skin contact and signal stability. Finally, to create a commercially viable, integrated product, a POSITA would implement this improved sensor assembly into the smartwatch platform taught by Goldsmith, thereby providing processing, storage, a touchscreen display, and wireless connectivity in a single user-worn unit.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in making this combination. Each modification involved applying a known solution to address a known problem (e.g., power consumption, motion artifacts, user interface integration) to yield predictable results without altering the fundamental function of the components.

Ground 2: Claims 1-17 are obvious over Aizawa, Mendelson-2003, Ohsaki, Goldsmith, and Ali

• Prior Art Relied Upon: Aizawa (Application # 2002/0188210), Mendelson-2003 (a 2003 IEEE conference proceeding), Ohsaki (Application # 2001/0056243), Goldsmith (Application # 2007/0093786), and Ali (Patent 6,584,336).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented the same core combination and arguments as Ground 1 but added Ali as an additional reference. The addition of Ali was specifically intended to address claim limitation [10g], which recites that the orientation of the user interface is configurable in response to user input. Ali, filed years before the ’195 patent's priority date, explicitly disclosed a pulse oximeter with a display that could switch between portrait and landscape modes based on user selection to provide a better view of the displayed graph.
  • Motivation to Combine: Petitioner contended that while Goldsmith taught a configurable display, to the extent that teaching was considered insufficient, a POSITA would have been motivated to incorporate Ali’s user-selectable display orientation. This feature was a known method for improving the user experience on devices with small screens, like the smartwatch in Goldsmith. Combining this known interface enhancement with the device from Ground 1 would have been a simple and logical step to improve usability.
  • Expectation of Success: Incorporating a selectable display orientation was a well-understood software and interface design feature at the time. A POSITA would have expected this feature to work predictably when integrated into the combined device from Ground 1.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §314(a) based on the Fintiv factors.
  • Factor 1 & 2 (Stay & Trial Date): Petitioner asserted that institution would increase the likelihood of a stay in the parallel district court litigation. While the court's trial date was scheduled near the statutory deadline for a Final Written Decision (FWD), Petitioner argued that court dates frequently shift and could be delayed by the COVID-19 pandemic, making it likely the FWD would issue well before any trial.
  • Factor 3 (Investment): The district court proceeding was in its early stages, with no claim construction hearing or significant discovery completed. Petitioner argued its substantial investment in preparing the IPR petitions should be weighed against the minimal investment in the parallel litigation to date.
  • Factor 4 (Overlapping Issues): Petitioner stipulated that, if the IPR is instituted, it would not pursue the same invalidity grounds in the district court, thus mitigating concerns of duplicative efforts and conflicting decisions.
  • Factor 6 (Merits): Petitioner argued that the merits of the petition were particularly strong, which favors institution to serve the interest of overall system efficiency and integrity.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-17 of Patent 10,702,195 as unpatentable.