PTAB

IPR2023-00702

Masimo Corp v. Apple Inc

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Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Electronic Device
  • Brief Description: The ’842 patent claims the ornamental design for a portion of an electronic device, specifically showing two arc-shaped elements surrounding a circular array of eight small rectangles on a convex surface. The design corresponds to the sensor and electrode assembly on the rear of an Apple Watch.

3. Grounds for Unpatentability

Ground 1: The sole claim is obvious over Paulke in view of Mendelson.

  • Prior Art Relied Upon: Paulke (WO 2017/165532) and Mendelson (Patent 6,801,799).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Paulke serves as a primary reference because it discloses a wearable biosensor with a design that creates basically the same visual impression as the challenged claim. Paulke teaches a convex, protruding sensor module with two arc-shaped electrodes surrounding a central, circular biosensor. The secondary reference, Mendelson, discloses a photoplethysmography (PPG) sensor design with a circular array of rectangular photodiodes surrounding central LEDs. Petitioner asserted that Mendelson's sensor is a suitable replacement for the central biosensor disclosed in Paulke.
    • Motivation to Combine: Petitioner contended that Paulke expressly suggests replacing its central biosensor with any suitable alternative, including an oxygen saturation sensor like that disclosed in Mendelson. A designer of ordinary skill in the art (DOSA) would have been motivated to combine Mendelson’s symmetrical and functionally superior photodiode array with Paulke’s wearable design to achieve a more marketable, visually appealing, and symmetrical appearance consistent with Paulke’s other design elements. Further motivation arises from the goal of improving sensor accuracy, as Mendelson teaches that its radially-symmetric array maximizes the detection of backscattered light.
    • Expectation of Success: The combination involved replacing a known sensor component with another known sensor component for its intended purpose, which a DOSA would have reasonably expected to be successful.

Ground 2: The sole claim is obvious over Yuen in view of Mendelson and Bushnell.

  • Prior Art Relied Upon: Yuen (Application # 2019/0196411), Mendelson (Patent 6,801,799), and Bushnell (Application # 2017/0086743).
  • Core Argument for this Ground:
    • Prior Art Mapping: Yuen was presented as a primary reference disclosing a smartwatch with a convex back surface featuring arc-shaped "half-moon" ECG electrodes that surround a central PPG sensor, creating a visually similar design. Mendelson was used as a secondary reference to provide a specific, functionally superior design for the central PPG sensor. Bushnell, an Apple patent publication, was used as a secondary reference to teach a smooth, convex sensor housing that includes vertical and chamfered edges, which Petitioner argued modifies Yuen’s design to more closely resemble the claimed design.
    • Motivation to Combine: Petitioner argued that Yuen suggests using "any PPG sensor...known in the art," which would have directed a DOSA to consider alternatives like Mendelson. The motivation to combine Mendelson was to improve sensor accuracy and achieve a more symmetrical and visually appealing design compared to Yuen's asymmetrically placed sensor. A DOSA would have been motivated to incorporate Bushnell's housing design to achieve a smoother, more simplistic back surface, to protect the PPG sensor from debris, and to improve user comfort with chamfered edges—all known design goals for wearable devices.
    • Expectation of Success: The proposed modifications involved combining known sensor and housing designs to achieve predictable improvements in function and aesthetics, leading to a high expectation of success.

Ground 3: The sole claim is obvious over Fong in view of Mendelson and Bushnell.

  • Prior Art Relied Upon: Fong (Patent D827,831), Mendelson (Patent 6,801,799), and Bushnell (Application # 2017/0086743).
  • Core Argument for this Ground:
    • Prior Art Mapping: Fong was asserted as a primary reference that discloses a design for a "Health Monitoring Wrist Wearable" with arc-shaped electrodes surrounding a central optical sensor, conveying the same basic visual impression as the ’842 patent. As in the other grounds, Mendelson was cited to teach a circular array of rectangular photodiodes for the central sensor, and Bushnell was cited to teach the specific convex housing shape with chamfered edges.
    • Motivation to Combine: Petitioner argued that a DOSA would have been motivated to modify Fong’s design for the same reasons articulated in Ground 2. This included replacing Fong's central sensor with Mendelson's functionally superior and more visually consistent circular array of photodiodes. A DOSA would also have been motivated to apply the teachings of Bushnell's housing to Fong's design to improve aesthetics, comfort, and sensor protection.
    • Expectation of Success: A DOSA would have had a reasonable expectation of success in combining these known elements from analogous art to achieve a predictable and improved wearable sensor design.

4. Key Claim Construction Positions

  • Petitioner dedicated a substantial portion of the petition to arguing that most, if not all, of the claimed design elements are dictated by function and should be "factored out" of the ornamental claim scope for the obviousness analysis.
  • Convex Curvature: Argued to be functional for mating with a complementary concave wireless charger and for improving sensor-to-skin contact to enhance signal quality. Petitioner cited Apple's own utility patents and statements from litigation.
  • Arc-Shaped Portions' Arrangement: Argued to be functional as electrodes arranged to maximize skin contact area while avoiding interference with the central optical sensor and a wireless charging coil located between the two.
  • Rectangles' Arrangement: Argued to be functional photodiodes arranged in a radially-symmetric array around central LEDs to maximize the detection of backscattered light and improve the signal-to-noise ratio of the PPG sensor.
  • Overall Circular Sensor Shape: Argued to be functional because it is more comfortable for a wrist-worn device and most efficiently houses the circular array of internal sensor components with minimal wasted space.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of the sole claim of the ’842 patent as unpatentable.