PTAB

IPR2022-01466

Apple Inc v. Masimo Corp

Key Events

Petition

petition Intelligence

Title: Physiological Monitoring Devices, Systems, and Methods
Brief Description: The ’745 patent describes a non-invasive, optical-based physiological monitoring system, such as a wrist-worn pulse oximetry sensor, for measuring user health parameters. The technology involves light emitters, photodetectors, and processing components arranged in a reflectance configuration.

Prior Art Relied Upon: Ackermans (International Publication No. WO 2011/051888) and Savant (Patent 6,158,245).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Ackermans taught a wrist-worn optical sensor with a housing, light emitters (LEDs), and photodetectors arranged in a reflectance configuration to measure physiological parameters like blood oxygenation. The key limitation of a "material configured to change the... shape" of the emitted light was allegedly met by Savant, which taught a "light shaping diffuser" (LSD) specifically designed to precisely control and shape light beams from sources including LEDs.
- Motivation to Combine: A POSITA would combine Savant's diffuser with Ackermans' sensor to more precisely control the distribution of light projected onto the user's tissue. Petitioner asserted this known technique would predictably improve the signal-to-noise ratio by optimizing the area of illumination and thereby increasing the amount of reflected light captured by the photodetectors.
- Expectation of Success: Success was predictable because Savant taught that its diffusers were versatile and effective with "almost any [light] source, including LEDs," such as those used in the Ackermans sensor. The combination was presented as a straightforward application of a known component to improve a known device.

Prior Art Relied Upon: Ackermans (WO 2011/051888), Savant (Patent 6,158,245), and Venkatraman (Application # 2014/0275854).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon the Ackermans/Savant combination by adding features from Venkatraman to meet limitations related to a display and communication with a secondary processing device. Venkatraman taught a wrist-worn biometric monitoring device featuring a touchscreen display and wireless technology to transmit data to a device like a smartphone, which could then act as a user interface for processing and displaying health metrics.
- Motivation to Combine: A POSITA would integrate Venkatraman's display and wireless communication features into the Ackermans/Savant device to enhance its functionality. By offloading data display and complex processing to a smartphone, the wrist-worn sensor could remain simple, lightweight, and power-efficient—addressing key design constraints for wearable devices that Ackermans itself highlighted.
- Expectation of Success: Petitioner argued the modification would have been routine and predictable, as Venkatraman described a physiological monitoring system that operated in precisely the proposed manner, demonstrating the feasibility and known benefits of such an architecture.

Prior Art Relied Upon: Ackermans (WO 2011/051888), Savant (Patent 6,158,245), and Sarantos (Patent 9,392,946).
Core Argument for this Ground:
- Prior Art Mapping: This ground modified the Ackermans/Savant combination with teachings from Sarantos to meet limitations requiring specific openings in a dark-colored coating. Sarantos taught using high-aspect-ratio (HAR) photodetectors arranged in a circular array to improve signal collection. Critically, Sarantos also taught using a black, opaque "masking" layer with openings coextensive with the photodetectors to block stray ambient light and improve the quality of the desired signal.
- Motivation to Combine: A POSITA would modify the Ackermans sensor with Sarantos's HAR photodetectors and its coextensive masking technique for the express purpose of improving signal quality. The combination would increase the sensitivity of the photodetectors in a power-efficient manner while simultaneously blocking stray light, a known problem in optical sensors.
- Expectation of Success: Success was expected because Sarantos's teachings were directly applicable to wrist-worn optical sensors like Ackermans. Petitioner asserted that implementing specifically shaped openings in an adhesive or coating layer is a simple technical matter with predictable results.

Petitioner argued that discretionary denial under 35 U.S.C. §314(a) and §325(d) would be inappropriate.
Fintiv Factors (§314(a)): Petitioner contended that denial under Fintiv is unwarranted because the only parallel proceeding is an ITC investigation where the specific claims challenged in this petition are not asserted. It was further argued that PTAB guidance under Director Vidal disfavors discretionary denial based on parallel ITC proceedings.
Advanced Bionics Factors (§325(d)): Petitioner asserted that the prior art and arguments presented are new and noncumulative. The examiner never substantively considered the asserted combinations during the patent’s expedited prosecution, which concluded with a notice of allowance only five weeks after filing and without issuing a single rejection. Therefore, there was no prior, substantive Office examination of the asserted invalidity theories.

Petitioner requested 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.