Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2022-01465
• Patent #: 10,687,745
• Filed: October 7, 2022
• Petitioner(s): Apple Inc.
• Patent Owner(s): Ammar Al-Ali
• Challenged Claims: 2-6, 8, 10-14, 17, 19, 21-26

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, intended for use in wearable devices that contact a user's wrist.

3. Grounds for Unpatentability

Ground 1: Obviousness over Iwamiya and Sarantos - Claims 2-3, 5-6, 8, 10-12, and 14 are obvious over Iwamiya in view of 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 monitor that meets most limitations of claim 1, including a plurality of LEDs, photodiodes, a light block, a processor, and an annular light guide material that changes the shape of emitted light. The primary element supplied by Sarantos is the teaching of a dark-colored coating (e.g., black paint or an in-mold label) on a surface between the photodiodes and tissue to shield against stray light. Petitioner contended that applying Sarantos’s dark coating to Iwamiya’s light-shielding frame renders the base claim obvious. Dependent claims were argued to be met by additional teachings, such as Iwamiya’s disclosure of glass or resin for the light guide and Sarantos’s teaching of using multiple LED wavelengths for different measurements.
  • Motivation to Combine: A POSITA would combine Sarantos’s teaching of a dark-colored coating with Iwamiya’s sensor to serve the explicit and well-understood purpose of shielding photodiodes from stray light, thereby improving sensor accuracy. This represents the application of a known solution to a known problem in optical sensors.
  • Expectation of Success: Both references describe wrist-worn, reflectance-based physiological sensors. Petitioner argued that applying a common light-blocking technique from one such sensor to another would have been a straightforward modification with a high and predictable expectation of success.

Ground 2: Obviousness over Iwamiya, Sarantos, and Venkatraman - Claims 4, 17, 19, and 21-26 are obvious over Iwamiya and Sarantos in view of 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 builds upon the combination of Iwamiya and Sarantos by adding Venkatraman to teach limitations related to a touch-screen display and wireless data transmission. Petitioner asserted that Venkatraman discloses a wrist-worn biometric monitoring device with a capacitive touch screen (addressing claim 4) and the capability to wirelessly transmit physiological data to a separate processor, such as a smartphone, which acts as a user interface (addressing various system claims).
  • Motivation to Combine: A POSITA would add a touch-screen display to the base device to create a more intuitive user interface and streamline the physical design by removing mechanical buttons. Further, a POSITA would incorporate wireless communication to offload data processing and display functions to a more powerful secondary device like a smartphone. This enhances system functionality (e.g., data trending, advanced analysis) without increasing the power consumption, size, or weight of the wearable sensor itself, which are critical design constraints.
  • Expectation of Success: Touch screens and wireless communication technologies like Bluetooth were widely available and commonly integrated into wearable devices by the patent's critical date. Petitioner argued that incorporating these known features from Venkatraman into the sensor of Iwamiya/Sarantos would be a predictable implementation.

Ground 3: Obviousness over Sarantos and Shie - Claims 2, 5-6, 8, 10-11, 13-14, 17, and 19 are obvious over Sarantos in view of 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 wristband-type fitness monitor with LEDs, photodiodes in a reflectance configuration, a processor, a light block, and a dark-colored coating. Shie was introduced to supply the limitation of a "material configured to change the first shape [of light] into a second shape." Shie discloses a light diffuser with "light diffusing and shaping advantages" capable of homogenizing light and producing a predetermined output pattern.
  • Motivation to Combine: A POSITA would incorporate a light-shaping diffuser as taught by Shie into the Sarantos sensor to precisely control and direct the light projected onto the user's tissue. This would improve power efficiency by focusing more light toward the photodetectors and enhance measurement accuracy by creating a more uniform illumination area, thereby reducing signal variability caused by skin aberrations.
  • Expectation of Success: Using diffusers to shape and control light from LED sources was a well-known technique in optical design. Petitioner asserted that a POSITA would have reasonably expected that incorporating Shie's light-shaping material into Sarantos's optical sensor would work successfully for its intended purpose.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Sarantos, Shie, and Venkatraman (for claims 3-4, 17, 19, 21-26) and Sarantos, Shie, and Savant (for claim 12), relying on similar motivations to add display functionality and specific light-shaping geometries.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be improper for several reasons:
  • Fintiv: Denial under Fintiv is inappropriate because the only parallel proceeding is at the ITC. Citing Director Vidal's guidance, Petitioner contended that the PTAB should not deny institution based on a parallel ITC proceeding, particularly where none of the challenged claims are asserted at the ITC.
  • General Plastic: This petition is not an improper follow-on or serial petition. It challenges a set of claims that is mutually exclusive from those challenged in other IPRs filed against the ’745 patent, and it was filed closely in time with those petitions, thus not constituting a staggered challenge.
  • Advanced Bionics (§325(d)): The prior art and arguments presented are new and noncumulative. Petitioner argued the examiner never considered—or was even aware of—the key references (Sarantos, Venkatraman, Shie, Savant) during the patent's highly accelerated prosecution, which concluded with a notice of allowance in just five weeks without any substantive rejection.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 2-6, 8, 10-14, 17, 19, and 21-26 of the ’745 patent as unpatentable.