PTAB

IPR2020-01737

Apple Inc v. Masimo Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Multi-Stream Data Collection System for Noninvasive Measurement of Blood Constituents
  • Brief Description: The ’366 patent discloses noninvasive physiological monitoring systems, such as wearable pulse oximeters, that use a sensor with one or more light emitters and multiple sets of photodiode detectors to measure patient characteristics like pulse rate. The system is designed to be worn by a user, for example, on the wrist.

3. Grounds for Unpatentability

Ground 1: Claims 1-12 and 14-27 are obvious over Aizawa, 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 references teaches all limitations of the challenged claims. Aizawa taught a wrist-worn pulse wave sensor with a central light emitter and a surrounding ring of photodetectors. Mendelson-2003 taught using two concentric rings of photodiodes, each wired in parallel, to improve light collection efficiency and reduce power consumption in wearable pulse oximeters. Ohsaki taught using a rigid, translucent cover with a convex surface to improve skin contact, prevent slippage, and reduce signal variation caused by motion. Finally, Goldsmith disclosed a complete wrist-worn medical monitoring device, like a watch, that incorporates a sensor, a processor, a touchscreen display, and wireless communication capabilities.
    • Motivation to Combine: A POSITA would combine Aizawa and Mendelson-2003 to improve the power efficiency and battery life of Aizawa’s wrist-worn sensor, a predictable improvement for wearable devices. A POSITA would then add Ohsaki’s convex cover to the combined Aizawa/Mendelson-2003 sensor to enhance signal stability and accuracy by ensuring better skin contact and reducing motion artifacts, a known problem in the field. Finally, a POSITA would integrate this improved sensor into Goldsmith's watch-like device to create a complete, user-friendly product with a display and connectivity, which Aizawa itself contemplated by describing transmission of sensor data to an "unshown display."
    • Expectation of Success: The combination involved applying known techniques to solve known problems, such as improving power efficiency and signal quality in wearable sensors. Each element performed its expected function, leading to the predictable result of an integrated, wearable physiological monitor with improved performance and usability.

Ground 2: Claim 13 is obvious over Aizawa, Mendelson-2003, Ohsaki, Goldsmith, and Sherman

  • Prior Art Relied Upon: Aizawa (Application # 2002/0188210), Mendelson-2003, Ohsaki (Application # 2001/0056243), Goldsmith (Application # 2007/0093786), and Sherman (Patent 4,941,236).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1, adding Sherman to teach the specific limitation of claim 13: "a magnet configured to be used as a connecting mechanism." Sherman disclosed a flexible strap for wrist instruments, such as watches, that uses embedded magnetic particles in the overlapping ends of the strap to provide a secure and comfortable fastening mechanism, eliminating the need for conventional buckles or clasps.
    • Motivation to Combine: Goldsmith taught a wrist-worn device with a strap but did not specify the fastening mechanism. A POSITA seeking to implement the combined device from Ground 1 would have been motivated to look for improved fastening solutions for wearable devices. Sherman directly addressed the problems of conventional clasps (e.g., snagging, difficulty in fastening) and provided an elegant solution. A POSITA would combine Sherman's magnetic strap with the Goldsmith device to improve user comfort and convenience, a simple and predictable design choice.
    • Expectation of Success: A POSITA would have had a high expectation of success in incorporating a magnetic clasp into a watch strap, as it was a straightforward mechanical integration that did not affect the electronic or optical functions of the sensor.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The petition was filed well within the one-year statutory bar and only nine weeks after the ’366 patent was asserted in the co-pending litigation. The district court case was in a very early stage, with no claim construction orders issued and discovery not yet closed. Petitioner further argued that the asserted prior art combinations were not considered by the examiner during prosecution. To mitigate concerns of duplicative efforts, Petitioner stipulated that it would not pursue the same invalidity grounds in the district court if the IPR was instituted.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-27 of Patent 10,709,366 as unpatentable under 35 U.S.C. §103.