PTAB

IPR2021-00195

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 ’190 patent relates to noninvasive optical systems for measuring physiological parameters. The technology involves a wearable sensor with light emitters and at least four detectors arranged within a housing, which is covered by a light permeable cover that includes a protrusion arranged over the detectors to improve signal quality.

3. Grounds for Unpatentability

Ground 1: Obviousness over Aizawa and Inokawa - Claims 1-14, 16, 17, 19-23, and 26-29 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 disclosed all elements of the independent claims except for a "protrusion" on the light permeable cover. Aizawa teaches a wrist-worn pulse wave sensor with a light emitter (LED) and four photodetectors arranged symmetrically in a circular housing. Aizawa’s sensor is covered by a flat, transparent acrylic plate that serves as a light permeable cover. To supply the missing "protrusion" element, Petitioner relied on Inokawa, which teaches an optical pulse sensor with a lens placed over the sensor’s light-emitting and detecting components. Petitioner asserted this lens corresponds to the claimed protrusion.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Inokawa’s lens with Aizawa’s sensor to achieve Aizawa’s stated goal of improving "detection efficiency." Inokawa explicitly teaches that its lens increases the "light-gathering ability" of the sensor. A POSITA would have recognized that modifying Aizawa’s flat cover to include an Inokawa-like lens was a straightforward way to enhance light collection and thus improve the reliability of pulse detection.
    • Expectation of Success: Petitioner contended a POSITA would have had a reasonable expectation of success. Both Aizawa and Inokawa relate to wearable optical pulse sensors and address the common challenge of efficient light detection. The proposed modification—forming Aizawa’s acrylic cover into a convex lens shape—was a routine design choice using conventional materials and manufacturing techniques, leading to the predictable result of improved light concentration.

Ground 2: Obviousness over Mendelson-1988 and Inokawa - Claims 1-14, 16-22, and 26-30 are obvious over Mendelson-1988 in view of Inokawa.

  • Prior Art Relied Upon: Mendelson-1988 (a 1988 journal article on optical reflectance sensors) and Inokawa (JP 2006-296564).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Mendelson-1988, a foundational reference on reflectance pulse oximetry, disclosed a wearable optical sensor with multiple emitters (four LEDs) and detectors (six photodiodes) arranged symmetrically in a housing. The sensor components in Mendelson-1988 are encapsulated in a flat layer of "optically clear epoxy," which functions as a light permeable cover. As in the first ground, Petitioner asserted that Inokawa’s teaching of a protective lens over the sensor components supplied the claimed "protrusion" limitation.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Inokawa’s lens into the design of Mendelson-1988 to further its primary objective of maximizing "reflectance photoplethysmographic signals." Petitioner argued that since Mendelson-1988 sought to optimize signal quality, a POSITA would have looked to known techniques for improving light collection, such as the lens taught by Inokawa. The combination would predictably enhance the performance of the Mendelson-1988 sensor by concentrating reflected light onto the photodiodes.
    • Expectation of Success: Success was reasonably expected because the combination involved applying a known optical component (a lens) to a similar device for its intended purpose. Molding an optically clear epoxy, the material used in Mendelson-1988, into a lens structure was a well-understood and routine process at the time, ensuring a predictable improvement in light-gathering ability without requiring undue experimentation.

  • Additional Grounds: Petitioner asserted numerous other obviousness challenges, primarily building upon the Aizawa/Inokawa and Mendelson-1988/Inokawa combinations. These grounds added tertiary or quaternary references to teach specific dependent claim features, including:

    • Adding Ohsaki (Application # 2001/0056243) for providing an additional motivation to use a convex protrusion to prevent slippage on the skin.
    • Adding Mendelson-2006 (a 2006 conference proceeding) to render claims related to a "mobile monitoring device" with a "touch-screen display" obvious.
    • Adding Al-Ali (Application # 2008/0242958) to teach a "conductive layer configured to shield" the detectors from noise.
    • Combining Goldsmith (Application # 2007/0093786) and Lo (Application # 2004/0138568) to teach a mobile monitoring system with a touchscreen.

4. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-14 and 16-30 of Patent 10,376,190 as unpatentable under 35 U.S.C. §103.