Apple Inc v. AliveCor Inc

1. Case Identification

• Case #: IPR2022-00873
• Patent #: 10,342,444
• Filed: April 27, 2022
• Petitioner(s): Apple Inc.
• Patent Owner(s): AliveCor, Inc.
• Challenged Claims: 1-15

2. Patent Overview

• Title: Mobile ECG Sensor Apparatus
• Brief Description: The ’444 patent discloses mobile electrocardiogram (ECG) sensors and systems for detecting heart electrical signals. The claimed invention is an apparatus containing an electrode assembly, a converter, and a transmitter within a housing having a credit card or mobile phone case form factor.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 6, 8-12, and 14 are obvious over Libbus in view of Faarbaek.

• Prior Art Relied Upon: Libbus (Application # 2009/0234410) and Faarbaek (Application # 2008/0275327).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Libbus taught a mobile physiological monitor with all key elements of the ’444 patent’s independent claims: an electrode assembly for sensing heart signals, a converter assembly to modulate the signals, a wireless transmitter, and a housing containing these components. However, Libbus did not explicitly disclose a "credit card form factor," instead teaching various shapes like a dogbone or hourglass. Faarbaek, which also taught a mobile physiological monitoring device, disclosed a rectangular housing to make the device "as convenient and safe as possible." Petitioner asserted that the combination of Libbus’s core technology with Faarbaek’s form factor rendered the "credit card form factor" limitation of claim 1 obvious. Dependent claims were allegedly met by further teachings in Libbus (e.g., electrode pads on an exterior surface, use of Bluetooth) or the combination (e.g., a display taught by Faarbaek).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Libbus and Faarbaek because both references were directed to mobile physiological monitoring devices. A POSITA would have been motivated to modify Libbus’s device with Faarbaek's more convenient rectangular shape to improve its usability, a predictable design improvement.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the components in both Libbus and Faarbaek were similar (e.g., electrodes, processors, wireless circuitry on a flexible PCB) and arranged in a comparable manner, making the substitution of one housing shape for another a routine matter of design choice.

Ground 2: Claims 12 and 14 are obvious over Libbus in view of Batkin.

• Prior Art Relied Upon: Libbus (Application # 2009/0234410) and Batkin (Application # 2005/0239493).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims reciting a "mobile phone case form factor." Petitioner again relied on Libbus for the foundational mobile ECG sensor technology. To meet the form factor limitation, Petitioner cited Batkin, which explicitly disclosed a cell phone case that detects and transmits ECG signals. Batkin taught an electronic circuit within a case "designed to be carried by an existing telephone or cell phone." The combination of Libbus's internal components with Batkin's housing concept allegedly rendered claim 12 obvious. Claim 14, which added a Bluetooth communication standard, was argued to be obvious as Libbus itself disclosed using Bluetooth.
  • Motivation to Combine: A POSITA would combine Libbus and Batkin because both references were in the field of mobile physiological monitoring. Given the widespread use of smartphones by the critical date, a POSITA would have been motivated by market trends to adapt Libbus's monitoring technology into the highly convenient and commonplace form factor of a phone case, as taught by Batkin.
  • Expectation of Success: A POSITA would have expected success in this combination because it involved placing known electronic components from Libbus into a known form factor from Batkin. This was presented as a predictable integration of complementary technologies.

Ground 3: Claims 5 and 13 are obvious over Libbus in view of Faarbaek and Vyshedskiy.

• Prior Art Relied Upon: Libbus (Application # 2009/0234410), Faarbaek (Application # 2008/0275327), and Vyshedskiy (Application # 2004/0220488).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the Libbus-Faarbaek combination from Ground 1 to address claims 5 and 13, which required the transmitter to output a frequency modulated (FM) signal with a carrier frequency between 6 kHz and 20 kHz. Petitioner argued that while Libbus disclosed using frequency modulation, it did not specify a carrier frequency. Vyshedskiy, another reference in the field of physiological data acquisition, taught converting ECG signals to audio signals using modulation with specific carrier frequencies (e.g., a channel from 6,500 Hz to 8,500 Hz) for transmission to a computing device. This range was selected to avoid interference from body sounds or human voice. Petitioner contended that adding Vyshedskiy’s specific carrier frequency teachings to the Libbus-Faarbaek combination rendered claims 5 and 13 obvious.
  • Motivation to Combine: A POSITA, implementing the FM communication protocol taught by Libbus, would have needed to select a viable carrier frequency. It would have been obvious to consult other references in the same field, like Vyshedskiy, to find known, effective frequency ranges that avoided common sources of interference.
  • Expectation of Success: Success was reasonably expected because implementing a specific carrier frequency for an FM system was a well-understood and routine aspect of electrical engineering. Other art of record (e.g., Saltzstein, Albert) also confirmed the common practice of transmitting ECG signals using FM.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 13 is obvious over Libbus, Batkin, and Vyshedskiy, and that claims 7 and 15 are obvious over Libbus, Faarbaek, and the Headset Profile of the Bluetooth Communication Standard.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of the ’444 patent as unpatentable.