PTAB

IPR2023-00734

Masimo Corp v. Apple Inc

Key Events

Petition

petition

Title: Wearable Electronic Device
Brief Description: The ’491 patent discloses a wearable electronic device, such as a smartwatch, with a conductive housing and a rear non-conductive cover. The device integrates a biosensor module and a wireless charging coil, both of which operate through the rear cover.

Prior Art Relied Upon: Kotanagi (WO 2005/092182) and Honda (Patent 6,265,789).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued Kotanagi teaches a wristwatch-type device with a biosensor (LED and photodetector) positioned behind a glass cover that seals a rear opening in the housing. Kotanagi suggests the device can be charged in a "contactless state" but does not detail the mechanism. Honda, an earlier patent from the same corporate family (Seiko), explicitly discloses a biosensing watch with a wireless charging receive coil positioned behind a similar non-conductive glass cover on its rear side, enabling inductive charging through the cover. Petitioner asserted that combining Honda's well-known wireless charging system with Kotanagi's biosensor watch renders the independent claims obvious.
- Motivation to Combine: A POSITA, seeking to implement Kotanagi's suggestion of "contactless" charging, would look to familiar solutions like Honda. Both references originate from Seiko companies, making it likely a POSITA would be aware of both. The structural similarities of the devices—both being watches with rear-facing sensors under a glass cover—provided a clear and predictable path for integration.
- Expectation of Success: A POSITA would have a high expectation of success because the combination involved implementing a known wireless charging system (Honda) into a compatible device (Kotanagi) to achieve a predictable result.

Prior Art Relied Upon: Kotanagi, Honda, and Choi (Korean Patent Application No. 10-2013-0107833).
Core Argument for this Ground:
- Prior Art Mapping: This ground builds on the Kotanagi/Honda combination. Petitioner contended Choi teaches additional key features missing from the primary combination: a touch-sensitive display and the use of electrodes on the front and back of a watch to measure an electrocardiogram (ECG). Petitioner argued that adding Choi's touch-sensitive display and ECG functionality to the base device of Kotanagi and Honda would have been an obvious improvement.
- Motivation to Combine: A POSITA would combine Choi’s teachings to create a more feature-rich and competitive health monitoring device, a known trend in the field. Adding ECG measurement to a device already capable of optical heart rate sensing (from Kotanagi/Honda) was a predictable next step to enhance its biosensing capabilities. Similarly, replacing physical buttons with a touchscreen was a known method to improve user interface and device functionality.
- Expectation of Success: Success was expected because combining different known sensor types (optical and electrical) and user interfaces (touchscreens) in a single wearable device was a common and well-understood design practice.

Prior Art Relied Upon: Kotanagi, Honda, and Park (Application # 2015/0214749).
Core Argument for this Ground:
- Prior Art Mapping: This ground also builds on the Kotanagi/Honda combination for a wirelessly charging watch. Petitioner pointed out that Honda itself notes that achieving precise alignment of charging coils by simply placing a device in a socket is "difficult." Park directly addresses this known problem by teaching the use of a magnet in a device and a corresponding magnet in a charging dock to ensure proper alignment for efficient wireless power transfer.
- Motivation to Combine: A POSITA, recognizing the alignment difficulty disclosed in Honda, would be motivated to find a known solution to improve charging reliability and efficiency. Park provides an elegant and straightforward solution using magnets, which would be a predictable improvement to the Kotanagi/Honda device.
- Expectation of Success: A POSITA would have a high expectation of success in incorporating magnets for alignment, as it is a simple application of known magnetic principles to solve a recognized problem in the art of wireless charging.
Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Fraser (for multiple, discrete sensor windows), Orr (for using a set of multiple photodetectors), and Jabori (for using convex/concave surfaces to facilitate alignment).

"non-conductive cover material": Petitioner argued this term should be understood to include materials like glass and sapphire. This construction is supported by the patent's specification (which recites glass/sapphire for a "dielectric" cover in claim 1) and the prior art, which describes glass as an "insulating" material suitable for passing optical signals and magnetic fields for charging.
"defines at least one window": Petitioner contended that a single, continuous sheet of transparent material (e.g., a glass cover) positioned over an optical sensor "defines" a window for that sensor by allowing light to pass through. This interpretation does not require a physically separate aperture for each sensor, as the transparent nature of the entire cover provides the necessary operational access.

Petitioner argued that discretionary denial under Fintiv would be inappropriate. The Final Written Decision in this IPR is expected long before the trial date in the parallel Delaware litigation, where investment by the court and parties is still in its early stages. Crucially, Petitioner stipulated that if the IPR is instituted, it will not pursue in the district court any invalidity grounds that were raised or reasonably could have been raised in the petition. Petitioner also argued that the petition presents new prior art and arguments not considered by the USPTO during prosecution, weighing against denial under §325(d).

Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of the ’491 patent as unpatentable.