Apple Inc v. Omni MedSci Inc

1. Case Identification

• Case #: IPR2021-00453
• Patent #: 10,517,484
• Filed: January 22, 2021
• Petitioner(s): Apple Inc.
• Patent Owner(s): Omni Medsci, Inc.
• Challenged Claims: 1-23

2. Patent Overview

• Title: System for Measuring Physiological Parameters
• Brief Description: The ’484 patent relates to a wearable optical sensor system for measuring physiological parameters using photoplethysmography (PPG). The claimed system includes a wearable device with multiple light sources (LEDs), lenses, and detectors, configured to communicate with a smartphone or tablet and a cloud service for data processing, storage, and analysis.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lisogurski and Carlson - Claims 1, 7, 15, and 17 are obvious over Lisogurski in view of Carlson.

• Prior Art Relied Upon: Lisogurski (Patent 9,241,676) and Carlson (Application # 2005/0049468).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lisogurski, the primary reference, disclosed a portable physiological monitoring system with nearly all elements of the independent claims. This included a wearable sensor for the wrist or ear, multiple LEDs and spatially separated detectors, wireless communication with a monitor, and processing circuitry. Lisogurski also taught techniques for improving the signal-to-noise ratio (SNR), such as increasing light intensity or adjusting the LED "firing rate" (pulse rate). Petitioner contended that although Lisogurski does not explicitly disclose "lenses," adding them would have been obvious. Carlson was introduced to teach the use of lenses in a portable optical sensor to direct and focus light, thereby increasing the optical signal power and improving SNR.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) aiming to improve the power efficiency and signal quality of Lisogurski's wearable sensor would have been motivated to incorporate the teachings of Carlson. Both references address analogous problems in portable pulse oximetry devices. Carlson’s use of lenses to improve SNR was a known solution to a known problem that would predictably enhance the performance of Lisogurski’s system.
  • Expectation of Success: A POSITA would have had a high expectation of success in integrating lenses, a basic and well-understood component of optical systems, into Lisogurski's sensor to achieve the predictable benefit of improved signal measurement efficiency.

Ground 2: Obviousness over Lisogurski, Carlson, and Tran - Claims 1-4, 7-12, and 15-22 are obvious over Lisogurski and Carlson in view of Tran.

• Prior Art Relied Upon: Lisogurski (Patent 9,241,676), Carlson (Application # 2005/0049468), and Tran (Patent 8,108,036).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Lisogurski and Carlson to address dependent claims reciting the use of artificial intelligence (AI). Tran disclosed a heart monitoring system where a wearable sensor communicates with a smartphone and a server. Crucially, Tran taught using "artificial neural networks" (a form of AI) to analyze physiological data, perform pattern identification and classification, and generate warnings for dangerous health conditions. These teachings directly mapped to the limitations in claims 2, 10, 11, 12, 18, 19, 21, and 22 related to AI, pattern matching, and spectral fingerprinting. Tran also reinforced the use of a smartphone as the system's monitor.
  • Motivation to Combine: A POSITA would have been motivated to combine Tran's advanced data analysis techniques with the sensor system of Lisogurski/Carlson. This combination would provide more clinically significant outputs and user alerts, which was a known objective in the field of mobile health monitoring and aligned with prevailing industry trends at the time.

Ground 3: Obviousness over Lisogurski, Carlson, Tran, and Isaacson - Claims 5 and 13 are obvious over the combination in view of Isaacson.

• Prior Art Relied Upon: Lisogurski (Patent 9,241,676), Carlson (Application # 2005/0049468), Tran (Patent 8,108,036), and Isaacson (Patent 8,725,226).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims 5 and 13, which recited specific spatial arrangements of the light emitters and detectors. While Lisogurski taught using multiple spaced detectors, it did not provide specific guidance on their arrangement. Isaacson disclosed a pulse oximetry sensor with a specific configuration of two emitters and two detectors at different, defined distances from each other. This arrangement was explicitly taught to enable measurements at different tissue depths and to subtract signals from surface tissue, thereby improving accuracy by mitigating interference from factors like skin pigmentation.
  • Motivation to Combine: A POSITA seeking to improve the signal quality of the combined Lisogurski/Carlson/Tran system, particularly to address known issues like signal attenuation through tissue as noted in Lisogurski, would combine Isaacson’s sensor geometry. Isaacson provided a clear, known solution for arranging sensors to enhance measurement accuracy in wearable devices.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 6, 14, and 23 based on the primary combination in further view of Valencell-093 (Application # 2012/0197093), which taught adding a "reflective surface" around the sensor to further improve SNR by guiding light and reducing environmental noise.

4. Key Claim Construction Positions

• “Lens”: Petitioner argued for the plain and ordinary meaning, consistent with its dictionary definition and the patent’s disclosure, as one or more transparent surfaces used to collimate or focus light.
• “Optical Light”: Petitioner asserted this term was expressly defined in the specification as “photons or light transmitted to a particular location in space” and should be construed as such.
• “Cloud”: Petitioner proposed the plain and ordinary meaning: a remote device or network of devices hosted on a network and used to store, manage, or process data.

6. Arguments Regarding Discretionary Denial

• Against §325(d) Denial: Petitioner argued that although Lisogurski and Carlson were cited in an Information Disclosure Statement (IDS) during prosecution, the Examiner’s consideration was merely cursory. This was evidenced by the lack of any substantive discussion of these references in the notice of allowability. Petitioner contended the Examiner committed a material error, as the Board previously found claims in a parent patent (the ’533 patent) unpatentable over the same core references in a Final Written Decision (FWD).
• Against §314(a) (Fintiv) Denial: Petitioner argued that the parallel district court litigation was in its infancy and had been stayed shortly after filing, pending an appeal on the Patent Owner's standing. No trial date was set, no significant discovery had occurred, and no claim construction had taken place. Given the early stage of the litigation and the strong merits of the petition, Petitioner asserted that the Fintiv factors weighed heavily against discretionary denial.

7. Relief Requested

• Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-23 of Patent 10,517,484 as unpatentable.