Masimo Corp v. Apple Inc

1. Case Identification

• Case #: IPR2023-00634
• Patent #: 10,627,783
• Filed: February 27, 2023
• Petitioner(s): Masimo Corporation
• Patent Owner(s): Apple Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Wearable Electronic Device
• Brief Description: The ’783 patent relates to wearable electronic devices, such as smartwatches, that incorporate a biosensor module and a wireless charging system on the rear side of the device housing. The claims focus on the arrangement of a ceramic cover over a biosensor and wireless charging coil.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kotanagi and Honda - Claims 9-11, 15, 19, and 20 are obvious over Kotanagi in view of Honda.

• Prior Art Relied Upon: Kotanagi (WO 2005/092182) and Honda (Patent 6,265,789).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kotanagi taught a biosensing wristwatch with nearly all elements of independent claims 9 and 15, including a housing with a bottom opening, an aligned biosensor module for detecting pulse rate, a rechargeable battery, and a cover glass configured to pass optical signals. To add the claimed wireless charging functionality, Petitioner asserted a POSITA would look to Honda. Honda disclosed a contactless charging system for a similar biosensing wristwatch, teaching a "watch-side coil" (a wireless charging receive coil) positioned within the housing, aligned with a rear opening, and operably coupled to a secondary battery.
  • Motivation to Combine: A POSITA would combine the references because Kotanagi expressly stated its battery could be recharged "in a contactless state," which would directly motivate incorporating a known method for contactless charging, such as that taught by Honda. Both references are from the analogous art of biosensing watches, were assigned to subsidiaries of the same parent company (Seiko), and described compatible structures, making the combination predictable.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because Honda's watch structure was similar in size and purpose to Kotanagi's. The available space within Kotanagi's housing near the rear opening could readily accommodate Honda's wireless charging coil without undue experimentation.

Ground 2: Obviousness over Kotanagi, Honda, and Park - Claim 16 is obvious over Kotanagi and Honda, in further view of Park.

• Prior Art Relied Upon: Kotanagi (WO 2005/092182), Honda (Patent 6,265,789), and Park (Application # 2015/0214749).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Kotanagi and Honda taught the base limitations of claim 15 and the core concept of claim 16: receiving power from an external inductive power transmitter dock (Honda’s “station”) via magnetic coupling. To the extent claim 16 required magnetic alignment in addition to inductive coupling, Petitioner asserted Park supplied this teaching. Park explicitly disclosed using permanent magnets in a charging station and a receiving device to create an attractive force that optimizes alignment and improves wireless power transfer efficiency.
  • Motivation to Combine: A POSITA, having combined Kotanagi and Honda, would be motivated to improve the charging alignment. Honda taught that its watch body is "seated in alignment" in a "socket," and Park addressed the known problem of poor efficiency from misalignment in wireless charging. A POSITA would therefore be motivated to incorporate Park’s use of permanent magnets into the Honda charging station to ensure a reliable and efficient charging connection for the Kotanagi-based watch.
  • Expectation of Success: The combination was asserted to be predictable, as it involved incorporating a known alignment solution (magnets) into a known system (wireless charging dock) to achieve a known benefit (improved charging efficiency).

Ground 3: Obviousness over Kotanagi, Honda, and Kateraas - Claims 1-7 and 14 are obvious over Kotanagi and Honda, in further view of Kateraas.

• Prior Art Relied Upon: Kotanagi (WO 2005/092182), Honda (Patent 6,265,789), and Kateraas (Application # 2012/0221254).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued the combination of Kotanagi and Honda taught most elements of independent claim 1, including a housing with two opposing openings (one for a display, one for a biosensor), a band, a biosensor, and a wireless charging coil aligned with the second opening. The key distinction addressed by this ground is the claimed "ceramic cover." Kotanagi and Honda both taught a "cover glass" in this location. Petitioner contended that a POSITA would have considered glass a subset of ceramic and that, in any event, it would have been obvious to substitute other ceramics for glass. Kateraas, a biosensing wristwatch reference, explicitly taught that the window for its infrared sensors could be made from materials including sapphire and IR glass, confirming the interchangeability of ceramic and glass for this purpose.
  • Motivation to Combine: A POSITA seeking to implement the biosensing watch of Kotanagi and Honda would be motivated to use the optimal material for the sensor window. Kateraas provided a known and suitable list of transparent materials, including both glass and ceramics like sapphire, to achieve the goal of efficiently passing optical signals for biological detection. A POSITA would combine Kateraas to select from these well-known material options.
  • Expectation of Success: The substitution of one known transparent material (ceramic) for another (glass) in a known application (a sensor window on a watch) would have been a simple and predictable design choice with a high expectation of success.
• Additional Grounds: Petitioner asserted additional obviousness challenges against claims 3, 8, 12-14, and 17-18 based on combinations including Jabori (WO 2015/116111) for teaching convex/concave alignment features, and Fraser (Application # 2015/0355604) for further teaching covers with distinct openings for light transmission and reception.

4. Key Claim Construction Positions

• “a ceramic cover”: Petitioner argued this term should be construed to mean a solid, nonmetallic, inorganic material, which would include common materials like glass and sapphire. This construction is central because the primary prior art references (Kotanagi, Honda) disclose a "cover glass," which Petitioner contended satisfies this limitation.
• “biosensor module”: Petitioner contended this should be construed as a portion of the device including one or more sensors and optionally a cover. This is important for mapping references where the cover and sensors are described as part of a single assembly.
• “ceramic cover defines a [first/second] opening”: Petitioner argued this should be construed as a "ceramic cover that includes [first/second] locations that allow the passage of light." This construction allows a single, continuous transparent cover to satisfy the limitation for multiple "openings" if it permits light passage at multiple distinct locations aligned with different sensors.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, asserting that a final written decision in the IPR would issue long before a potential trial in the parallel Delaware litigation, which was in its very early stages. Petitioner noted that little investment had been made in the district court case, with no discovery or claim construction briefing started. Furthermore, Petitioner stipulated that if the IPR is instituted, it will not pursue the same or reasonably related invalidity grounds in the district court, mitigating concerns of duplicative efforts. Petitioner also argued that the petition relies on prior art not considered during prosecution, weighing against denial under §325(d).

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’783 patent as unpatentable under 35 U.S.C. §103.