Apple Inc v. AliveCor Inc

1. Case Identification

• Case #: IPR2022-01297
• Patent #: 8,301,232
• Filed: July 22, 2022
• Petitioner(s): Apple Inc.
• Patent Owner(s): AliveCor, Inc.
• Challenged Claims: 1-14

2. Patent Overview

• Title: Wireless, Ultrasonic Personal Health Monitoring System
• Brief Description: The ’232 patent discloses a personal monitoring device, such as a smartphone case, with integrated electrodes for sensing a user's ECG electric signal. The device converts the signal into a frequency-modulated ultrasonic audio signal and transmits it wirelessly via an audio transmitter to a smartphone's microphone for demodulation and analysis.

3. Grounds for Unpatentability

Ground 1: Claims 1-14 are obvious over Albert, Vyshedskiy, and Platt

• Prior Art Relied Upon: Albert (Patent 5,735,285), Vyshedskiy (Application # 2004/0220488), and Platt (Patent 6,485,416).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the primary references collectively teach all limitations of the challenged claims. Albert disclosed the foundational concept of a portable device that converts an ECG electric signal into a frequency-modulated audio signal and transmits it via a speaker to a computing device's microphone. Vyshedskiy improved upon this by teaching the use of multiple carrier frequencies, including ultrasonic frequencies (e.g., 20 kHz), to transmit physiological data, which avoids creating audible noise for the user. Platt disclosed the form factor of a cell phone accessory—a battery pack container—with ECG electrodes integrated onto its outer surface, which Petitioner argued functions as a protective case.
  • Motivation to Combine: A POSITA would combine Albert and Vyshedskiy to leverage the known benefits of ultrasonic transmission, namely making the device silent during operation and improving the signal-to-noise ratio. A POSITA would then incorporate Platt's integrated, case-like design to improve the Albert/Vyshedskiy system's portability and convenience, eliminating the need for separate components and wires, which was a known design goal for such devices.
  • Expectation of Success: Petitioner argued success would be expected, as the combination involved applying known techniques to solve well-understood problems in a predictable manner. Vyshedskiy’s teaching of using separate frequency channels for different data types demonstrated the feasibility of such integration.

Ground 2: Claims 1-14 are obvious over Albert, Vyshedskiy, Platt, and Batkin

• Prior Art Relied Upon: Albert (Patent 5,735,285), Vyshedskiy (Application # 2004/0220488), Platt (Patent 6,485,416), and Batkin (Application # 2005/0239493).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground reinforces the argument that placing ECG electrodes on a smartphone protective case was obvious. Petitioner argued that Batkin provides an even more explicit disclosure than Platt of a "cell phone case" that integrates ECG electrodes on its outer surface and acoustically transmits the captured signal to the phone's microphone.
  • Motivation to Combine: Petitioner asserted that if Platt's battery container were deemed insufficient to teach a "smartphone protective case," a POSITA would have been motivated to look to other known designs like Batkin's. The motivation was to secure the clear benefits of a dedicated protective case form factor for housing the ECG monitoring components, which was a simple substitution of one known housing design (Platt's) for another (Batkin's) to achieve a predictable result.

Ground 3: Claims 1-14 are obvious over Batkin in view of Vyshedskiy

• Prior Art Relied Upon: Batkin (Application # 2005/0239493) and Vyshedskiy (Application # 2004/0220488).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground begins with Batkin's disclosure of a cell phone case with integrated ECG electrodes. Batkin suggested the capability for "simultaneous transmissions" of the ECG bio-signal and voice telephonic transmissions using "frequency division multiple access," but provided no technical details for its implementation. Vyshedskiy, in contrast, explicitly detailed how to achieve such simultaneous transmission by modulating different signals onto separate carrier frequencies, including those in the ultrasonic range.
  • Motivation to Combine: A POSITA starting with Batkin's device and seeking to implement its proposed simultaneous transmission feature would have been motivated to consult a reference like Vyshedskiy. Vyshedskiy provided a known, enabling technique to achieve the goal that Batkin identified but did not detail. This would involve incorporating Vyshedskiy's converter assembly and modulation scheme into Batkin's integrated case design.
  • Expectation of Success: Success would be highly likely, as Vyshedskiy provided a detailed technical roadmap for implementing a feature that was already conceptually proposed in the primary reference (Batkin).

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations incorporating Boschetti (Patent 7,394,899) for its teaching of using a piezoelectric buzzer as an audio transmitter.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. The key prior art references establishing the "smartphone protective case" limitation (Platt and Batkin) were never applied by the Examiner during prosecution. While Albert and Vyshedskiy were present in a large Information Disclosure Statement, they were not the basis of any rejection and are materially different when combined with Platt or Batkin, presenting arguments and art not previously before the Office.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-14 of the ’232 patent as unpatentable.