PTAB

IPR2021-00209

Apple Inc v. Masimo Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Multi-Stream Data Collection System for Non-Invasive Measurement of Blood Constituents
  • Brief Description: The ’191 patent describes a noninvasive optical physiological sensor for measuring patient characteristics. The sensor system includes a plurality of light emitters and at least four detectors housed together, along with a lens positioned between the detectors and the user's tissue that features a single, outwardly protruding convex surface.

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 disclosed the core components of a wrist-worn pulse wave sensor, including a housing, a central light-emitting diode (LED), and at least four photodetectors arranged symmetrically around the emitter. Aizawa also taught a flat, light-permeable acrylic plate covering these components. The key element missing from Aizawa was the claimed "single outwardly protruding convex surface" of the lens. Petitioner asserted that Inokawa, which teaches a similar optical pulse sensor, supplied this missing element by disclosing a convex lens placed over its light-emitting and detecting components to "increase the light-gathering ability" and protect the sensor.
    • Motivation to Combine: A POSITA would combine Inokawa’s convex lens with Aizawa’s sensor for two primary reasons. First, Aizawa explicitly sought to improve "detection efficiency," and Inokawa taught that its convex lens accomplished this by increasing light collection. This provided a direct motivation to modify Aizawa’s flat cover into a convex lens. Second, Petitioner presented an alternative motivation related to sensor functionality. A POSITA would have been motivated to incorporate Inokawa’s teaching of using two different colored LEDs (e.g., infrared for body motion and green for pulse) to enhance the capability of Aizawa’s single-emitter system, thereby improving the reliability of pulse measurements by accounting for motion artifacts.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. Both references describe wrist-worn optical sensors operating on similar principles, making the integration of a known optical element (a lens) to improve light gathering a predictable and straightforward modification.

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 1988 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 contended 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 sensor components were encapsulated by a flat layer of "optically clear epoxy" that served as a light-permeable cover. While Mendelson-1988 taught the fundamental sensor arrangement, its cover was flat. As in Ground 1, Petitioner relied on Inokawa to teach modifying this flat cover to include an "outwardly protruding convex" lens.
    • Motivation to Combine: The primary goal of Mendelson-1988 was maximizing "reflectance photoplethysmographic signals." A POSITA, seeking to achieve this goal, would have looked to known methods for improving light collection. Inokawa’s teaching of using a convex lens to "increase the light-gathering ability" provided a clear solution. Therefore, a POSITA would combine Inokawa’s lens with Mendelson-1988’s sensor design to enhance signal detection, a modification that directly furthered the stated objective of Mendelson-1988.
    • Expectation of Success: Success would have been reasonably expected. The modification involved applying a known optical principle to a standard sensor design. Petitioner further argued that molding optically clear epoxy, the material used in Mendelson-1988, into a lens shape was a well-understood and routine technique at the time, ensuring the combination was predictable.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 1B) based on Aizawa in view of Inokawa and Ohsaki (Application # 2001/0056243). Ohsaki was introduced to provide an alternative motivation for adding a convex surface to Aizawa's sensor: to improve adhesion and prevent the device from slipping on the user's skin.

4. Key Technical Contentions (Beyond Claim Construction)

  • Effective Priority Date: A central contention of the petition was that the challenged claims were not entitled to their earliest claimed priority date of July 3, 2008. Petitioner argued that the key limitation reciting "a lens...compris[ing] a single outwardly protruding convex surface" was not disclosed in the specification until a continuation-in-part (CIP) application was filed on July 2, 2009. Therefore, Petitioner asserted that the critical date for prior art purposes is July 2, 2009, which rendered Aizawa, Inokawa, Ohsaki, and Mendelson-1988 valid prior art references.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-6, 8-16, 18, and 19 of Patent 10,376,191 as unpatentable.