Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2021-00193
• Patent #: 10,299,708
• Filed: November 20, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Masimo Corporation
• Challenged Claims: 1-29

2. Patent Overview

• Title: Multi-Stream Data Collection System for Noninvasive Measurement of Blood Constituents
• Brief Description: The ’708 patent describes noninvasive physiological sensing systems, such as wrist-worn monitors, for measuring patient characteristics. The system includes a sensor with light emitters and at least four detectors arranged in a housing to measure light attenuated or reflected by a user's tissue.

3. Grounds for Unpatentability

Ground 1: Claims 1-9, 11, 13-15, 19-22, and 24-27 are obvious over Aizawa in view of Inokawa.

• Prior Art Relied Upon: Aizawa (Application # 2002/0188210) and Inokawa (JP 2006-296564).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Aizawa taught a wrist-worn pulse wave sensor that meets the core limitations of the independent claims. Aizawa’s sensor included a housing with a raised edge, a platform with a planar surface, at least four photodetectors arranged symmetrically around a central LED, and a flat, light-permeable acrylic cover that protrudes from the housing. This structure, Petitioner asserted, disclosed the key elements of a "noninvasive optical physiological sensing system" as claimed.
  • Motivation to Combine: Aizawa disclosed that its cover improves "detection efficiency" but provided little detail on its shape. Inokawa taught a similar optical pulse sensor but disclosed that adding a convex lens to its light-permeable cover "increase[s] the light-gathering ability of the LED." Petitioner argued a POSITA would combine these teachings to improve the performance of Aizawa's sensor. A POSITA would have modified Aizawa’s flat cover to include a convex protrusion like the lens in Inokawa to achieve the shared goal of enhancing light collection and improving the signal-to-noise ratio.
  • Expectation of Success: Petitioner contended that a POSITA would have a reasonable expectation of success because both references describe similar wrist-worn optical sensors. The modification involved forming a known material (acrylic) into a lens, which was a routine and predictable design choice.

Ground 2: Claims 1-9, 11-15, and 19-26 are obvious over Mendelson-1988 in view of Inokawa.

• Prior Art Relied Upon: Mendelson-1988 (a 1988 journal article) and Inokawa.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Mendelson-1988 disclosed a reflectance-type pulse oximeter sensor with the claimed core structure. It taught a housing containing emitters and six photodiodes arranged symmetrically on a planar ceramic substrate. The components were encapsulated in an optically clear epoxy, which served as a light-permeable cover. Petitioner argued that removing two detectors to achieve the claimed four-detector grid with perpendicular axes would have been an obvious design choice to, for example, reduce power consumption.
  • Motivation to Combine: Mendelson-1988 was expressly focused on maximizing "reflectance photoplethysmographic signals." Petitioner argued that a POSITA seeking to further this objective would have been motivated to incorporate Inokawa’s convex lens into the flat epoxy cover of Mendelson-1988. This modification would concentrate incoming light signals, thereby increasing light collection efficiency and improving signal reliability, directly advancing Mendelson-1988's stated goal.
  • Expectation of Success: A POSITA would have understood how to mold clear epoxy into a lens shape to implement the combination. The significant technical overlap between the references and the use of conventional manufacturing techniques provided a high expectation of success.

Ground 3: Claims 16-18 and 27-29 are obvious over Aizawa, Inokawa, Mendelson-2006, and Beyer.

• Prior Art Relied Upon: Aizawa, Inokawa, Mendelson-2006 (a 2006 conference proceeding), and Beyer (Patent 7,031,728).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Aizawa-Inokawa combination by adding functionality for claims related to mobile monitoring and touch-screen displays. Aizawa contemplated uploading data to an external display but was silent on the implementation. Mendelson-2006 taught a wearable sensor that wirelessly transmitted physiological data to a PDA with a touch-screen interface. However, Mendelson-2006 did not explicitly state its PDA was a mobile phone. Beyer disclosed combining PDA functionality with cellular technology in a single device.
  • Motivation to Combine: Petitioner argued a POSITA would combine these references to provide a complete, user-friendly system. A POSITA would have first modified the Aizawa-Inokawa sensor with the wireless communication and PDA display system of Mendelson-2006 to provide a convenient interface. To further enhance convenience and enable reliable remote patient monitoring, a POSITA would have then used a PDA with integrated cellular capability, as taught by Beyer. This was argued to be an obvious design choice, as combined PDA/mobile phone devices were common at the time.
  • Expectation of Success: Combining a sensor with a receiver and a mobile display was a well-known system architecture. The integration of cellular technology into PDAs was a predictable technological convergence, and a POSITA would expect to achieve the benefit of remote data communication without issue.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations using Ohsaki to teach a convex cover for improved skin adhesion, Al-Ali for adding a conductive shield to the light permeable cover to reduce noise, and Goldsmith/Lo for disclosing integrated wristwatch sensor and display units.

4. Key Technical Contentions (Beyond Claim Construction)

• Petitioner contended that the challenged claims were not entitled to their earliest asserted priority date of 2008. It was argued that key limitations, such as "a protruding light permeable cover" and a cover with a "conductive layer," were first disclosed in a continuation-in-part application filed on July 2, 2009. Petitioner asserted this later date is the correct effective filing date (the "Critical Date"), which qualifies all cited references as prior art under §102.

5. Relief Requested

• Petitioner requested institution of an inter partes review of claims 1-29 of the ’708 patent and cancellation of those claims as unpatentable.