PTAB
IPR2021-00208
Apple Inc v. Masimo Corp
Key Events
Petition
Table of Contents
petition
1. Case Identification
- Case #: IPR2021-00208
- Patent #: 10,258,266
- Filed: November 20, 2020
- Petitioner(s): Apple Inc.
- Patent Owner(s): Masimo Corporation
- Challenged Claims: 1-6, 8-16, 18, and 19
2. Patent Overview
- Title: Multi-Stream Data Collection System for Noninvasive Measurement of Blood Constituents
- Brief Description: The ’266 patent discloses noninvasive optical physiological sensors for measuring patient characteristics. The technology involves a sensor with a plurality of emitters and detectors housed together, with a lens positioned between the detectors and the user's tissue to improve measurement.
3. Grounds for Unpatentability
Ground 1: Claims 1-6, 8-16, 18, and 19 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 comprising key elements of the challenged claims, including a housing, at least four photodetectors arranged symmetrically around a central light-emitting diode (LED), and a flat, transparent acrylic plate covering the components. However, Aizawa’s cover was flat. Petitioner contended that Inokawa, which also disclosed a wrist-worn optical pulse sensor, taught the key missing element: a lens placed over the sensor components to "increase the light-gathering ability of the LED." The combination of Aizawa's sensor layout with Inokawa's lens would render the configuration of claim 1 obvious. Dependent claims were allegedly met by Aizawa’s symmetrical detector arrangement and the inherent properties of using a rigid acrylic material for the lens, as taught by Aizawa.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Aizawa and Inokawa to pursue the shared and explicit goal of improving detection efficiency. A POSITA would have recognized that modifying Aizawa's flat acrylic cover to incorporate Inokawa's convex lens was a simple and predictable way to enhance light collection and achieve more reliable pulse detection. A POSITA was also motivated to incorporate Inokawa’s teaching of using a second emitter (e.g., an infrared LED for motion sensing and a green LED for pulse sensing) into Aizawa’s device to gain the known benefit of correcting for motion artifacts, a common problem in the field.
- Expectation of Success: A POSITA would have had a reasonable expectation of success because combining the references involved applying known optical principles (using a lens to focus light) to a known sensor configuration. The modification required only routine knowledge of sensor design and assembly.
Ground 2: Claims 1-6, 8-16, 18, and 19 are obvious over Mendelson-1988 in view of Inokawa.
Prior Art Relied Upon: Mendelson-1988 (a journal article titled "Design and Evaluation of a New Reflectance Pulse Oximeter Sensor") and Inokawa (JP 2006-296564).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Mendelson-1988 disclosed an optical reflectance sensor with a plurality of emitters (two red and two infrared LEDs) and detectors (six silicon photodiodes) arranged symmetrically in a housing. The components were encapsulated by a flat layer of "optically clear epoxy" that served as a cover. As in the first ground, Petitioner relied on Inokawa to teach modifying this flat cover with a convex lens. Petitioner argued that modifying the number of detectors from six to four or eight to achieve a grid pattern with perpendicular axes (as recited in dependent claims) was a matter of simple design choice to meet system requirements for power consumption or signal strength.
- Motivation to Combine: The primary motivation was to improve the performance of the Mendelson-1988 sensor. Mendelson-1988 expressly stated an objective of maximizing "reflectance photoplethysmographic signals." A POSITA would have been motivated to modify the flat epoxy cover of Mendelson-1988 to include a lens, as taught by Inokawa, to better concentrate reflected light onto the detectors, thereby directly advancing Mendelson-1988's stated goal.
- Expectation of Success: A POSITA would have expected success because molding optically clear epoxy into a lens shape was a well-understood technique at the time. The modification was a predictable application of a known component (a lens) to improve the function (light collection) of a similar device.
Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 1B) based on Aizawa in view of Inokawa and Ohsaki (Application # 2001/0056243). Ohsaki was argued to provide a further motivation for adding a convex surface to Aizawa's flat cover, as Ohsaki taught that a convex surface helps prevent the sensor from slipping on the user's skin.
4. Relief Requested
- Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 8-16, 18, and 19 of the ’266 patent as unpatentable.
Analysis metadata