Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2022-01291
• Patent #: 10,687,745
• Filed: October 7, 2022
• Petitioner(s): Apple Inc.
• Patent Owner(s): Ammar Al-Ali
• Challenged Claims: 1, 9, 15, 18, 20, and 27

2. Patent Overview

• Title: Physiological Monitoring Devices, Systems, and Methods
• Brief Description: The ’745 patent describes a non-invasive, optical-based physiological monitoring system, such as an advanced pulse oximetry sensor. The technology utilizes light-emitting diodes (LEDs) to project light towards a user's tissue and photodiodes to detect the reflected light to determine physiological parameters.

3. Grounds for Unpatentability

Ground 1A: Obviousness of Claims 1 and 9 over Iwamiya and Sarantos

• Prior Art Relied Upon: Iwamiya (Patent 8,670,819) and Sarantos (Patent 9,392,946).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Iwamiya discloses a wristwatch-style physiological monitoring device that meets most limitations of claim 1. Specifically, Iwamiya teaches a plurality of LEDs, an annular light guide unit that changes the emitted light’s shape into a ring, photodiodes to detect reflected light, and a processor. To meet the limitation of a "dark-colored coating" on a surface between the photodiodes and tissue, Petitioner pointed to Sarantos, which teaches a similar wrist-worn fitness monitor using a dark "in-mold label" or "painted or silk-screened mask" to shield photodetectors from stray light. Petitioner contended that applying Sarantos's dark coating to Iwamiya's "light shielding frame" would be an obvious modification. For dependent claim 9, which requires measuring oxygen saturation, Petitioner argued Sarantos explicitly discloses measuring "blood oxygenation levels."
  • Motivation to Combine: A POSITA would combine Sarantos’s dark, light-blocking material with Iwamiya’s device to improve sensor accuracy. Shielding photodiodes from stray light was a known problem in optical sensors, and using a dark coating, as taught by Sarantos, was a well-known and simple solution to address it.
  • Expectation of Success: Because both Iwamiya and Sarantos describe wrist-worn, reflectance-based physiological sensors operating on similar principles, a POSITA would have a high expectation of success in combining them to achieve the predictable result of improved light shielding.

Ground 1B: Obviousness of Claims 15, 18, 20, and 27 over Iwamiya, Sarantos, and Venkatraman

• Prior Art Relied Upon: Iwamiya (Patent 8,670,819), Sarantos (Patent 9,392,946), and Venkatraman (Application # 2014/0275854).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Iwamiya and Sarantos combination to address the system claims. Petitioner asserted that Venkatraman teaches a portable biometric monitoring device that wirelessly transmits data to a separate device, such as a smartphone. This secondary device serves as a user interface, can feature a touch-screen display, and processes the received data. This disclosure was argued to meet the limitations of claims 15, 20, and 27, which recite transmitting data to a separate processor and a processing device with a user interface. Dependent claim 18 (oxygen saturation) is addressed by Sarantos as in Ground 1A.
  • Motivation to Combine: A POSITA would combine Venkatraman’s wireless communication with the base device of Iwamiya and Sarantos to improve the system's overall functionality and user experience. Offloading data processing and display to a more powerful device like a smartphone would conserve battery life and reduce the size and complexity of the wearable sensor, both of which are significant design goals for such devices.
  • Expectation of Success: Implementing wireless data transmission between a wearable sensor and a smartphone was a routine and well-understood practice in the art. Therefore, a POSITA would have reasonably expected this combination to work predictably.

Ground 2A: Obviousness of Claims 1, 9, 15, and 18 over Sarantos and Shie

• Prior Art Relied Upon: Sarantos (Patent 9,392,946) and Shie (Patent 6,483,976).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Sarantos provides the base device: a wrist-worn monitor with LEDs, photodetectors, a dark-colored coating with openings for light, and light-blocking walls. The key missing element, a "material configured to change the first shape into a second shape," was supplied by Shie. Shie describes a diffuser with "light diffusing and shaping advantages" that uses micro-structures to homogenize and shape light into a predetermined pattern. Petitioner argued it would be obvious to incorporate Shie's diffuser into Sarantos’s device between the LEDs and the user's tissue to control the light projected onto the skin. The remaining limitations of claims 1, 9, 15, and 18 were alleged to be met by Sarantos alone.
  • Motivation to Combine: A POSITA would combine Shie's diffuser with Sarantos's sensor for two primary reasons: to increase power efficiency by precisely directing light, and to improve measurement accuracy by spreading the light over a larger area, thereby mitigating inconsistent readings from skin aberrations like moles.
  • Expectation of Success: Using light-shaping materials like diffusers in optical sensors was a known technique for improving performance. A POSITA would have reasonably expected that incorporating Shie’s diffuser into Sarantos's sensor would successfully and predictably shape the emitted light.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 2B) for claims 15, 18, 20, and 27 based on the combination of Sarantos, Shie, and Venkatraman, relying on a similar design modification theory for adding wireless data transmission capabilities.

6. Arguments Regarding Discretionary Denial

• §314(a) / Fintiv: Petitioner argued that discretionary denial under Fintiv is improper. The only parallel litigation is an International Trade Commission (ITC) proceeding. Citing recent USPTO guidance from the Director, Petitioner contended that the PTAB will not discretionarily deny petitions based on applying Fintiv to a parallel ITC proceeding.
• §325(d) / Advanced Bionics: Petitioner argued that denial under 35 U.S.C. §325(d) is unwarranted because the prior art and arguments presented are new and were never substantively considered by the examiner. Petitioner highlighted the abbreviated prosecution history, where a notice of allowance was issued just five weeks after filing without a single rejection, suggesting the examiner did not consider the same or substantially similar art.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 9, 15, 18, 20, and 27 of Patent 10,687,745 as unpatentable.