PTAB

IPR2023-00728

Masimo Corp v. Apple Inc

Key Events

Petition

petition Intelligence

Title: Electronic Device
Brief Description: The ’936 patent claims the ornamental design for two arc-shaped portions protruding from the back of an electronic device. The underlying article is the sensor array on the back of the Apple Watch Series 4, where the claimed portions function as electrodes for ECG measurements.

Petitioner argued that the scope of the design claim should be limited to its ornamental aspects by "factoring out" elements dictated by function.

Convex Curvature is Functional: Petitioner contended that the convex curvature of the arc-shaped portions is functional and not ornamental. It asserted this shape is necessary to mate snugly with the complementary concave surface of the device's wireless charger, ensuring proper alignment for efficient charging. This argument was supported by references to Apple's own marketing materials and related utility patents (e.g., Patent 10,610,157 and Patent 10,627,783) that describe this mating function.
Arc-Shaped Arrangement is Functional: Petitioner argued that the size, shape, and arrangement of the two arc-shaped portions are dictated by function. The electrodes must be positioned around a central optical heart sensor and a wireless charging coil without causing interference. Petitioner asserted that the arc shape is the most efficient design to maximize the electrodes' skin-contact surface area within the limited available space, thereby improving electrical sensor efficiency for ECG measurements.
Overall Circular Shape is Functional: Petitioner asserted that the overall circular shape of the sensor design is functional, as it is more comfortable for wrist-worn devices and efficiently houses the circular components of the underlying optical sensor.

Prior Art Relied Upon: Paulke (WO 2017/165532).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued Paulke serves as a primary reference because it discloses the same basic design characteristics as the claimed design. Paulke teaches a wearable biosensor featuring two arc-shaped electrodes that surround a central circular biosensor, all located on a surface with a convex curvature that protrudes from the device body. Petitioner asserted this creates basically the same overall visual impression as the ’936 patent’s design.
- Motivation to Combine (for §103 grounds): With Paulke serving as both the primary and secondary reference, Petitioner argued that any minor differences in the precise spacing, size, or shape of the arc-shaped portions between Paulke and the claimed design would have been a routine change. A designer of ordinary skill in the art (DOSA) would have been motivated to modify these dimensions to maximize skin contact or avoid interference with other components, changes suggested within Paulke itself.

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: Petitioner identified Yuen as a primary reference that discloses a smartwatch with two "half-moon shape" ECG electrodes surrounding a central PPG sensor on a protruding back cover. This arrangement was argued to create a visual impression basically the same as the claimed design.
- Motivation to Combine (for §103 grounds): A DOSA would combine Yuen with Mendelson and Bushnell for functional and aesthetic improvements. Yuen expressly suggests using any known PPG sensor, and a DOSA would have been motivated to replace Yuen's asymmetrically located square sensor with Mendelson's circular, radially-symmetric array of photodiodes to create a more visually appealing, symmetrical design consistent with the device's circular shape. A DOSA would also have been motivated to modify Yuen by incorporating the smooth, convex housing of Bushnell to improve user comfort, protect the sensor from debris, and enable alignment with wireless chargers.

Prior Art Relied Upon: Fong (Patent D827,831) and Bushnell (Application # 2017/0086743).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner presented Fong as a primary reference disclosing a wrist-worn health monitoring device (the Verily Study Watch) with two arc-shaped electrodes surrounding a central optical sensor on a circular, protruding back surface. Petitioner argued this design conveys the same overall visual impression as the claimed design.
- Motivation to Combine (for §103 grounds): A DOSA would have been motivated to combine Fong's design with Bushnell's for the same reasons articulated in Ground 2. The combination would replace Fong's specific back surface with Bushnell's smooth, convex housing component. This modification would achieve a more aesthetically pleasing design while providing the known functional benefits of improved user comfort, enhanced sensor protection, better signal quality, and compatibility with concave wireless chargers.

Petitioner requests institution of an inter partes review and cancellation of the sole claim of Patent D962,936 as unpatentable.