Masimo Corp v. Apple Inc

1. Case Identification

• Case #: IPR2023-00745
• Patent #: 10,076,257
• Filed: March 22, 2023
• Petitioner(s): Masimo Corporation
• Patent Owner(s): Apple Inc.
• Challenged Claims: 1-4, 8-22

2. Patent Overview

• Title: Electronic Device with Embedded Heart Sensor
• Brief Description: The ’257 patent describes an electronic device, such as a mobile phone, that includes a heart sensor with several embedded leads for detecting a user’s cardiac signals. The patent emphasizes improving the aesthetic qualities of the device by embedding or concealing the leads within the device’s enclosure.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 1-4, 8, 10, 11, and 14 are anticipated by Mills.

• Prior Art Relied Upon: Mills (Patent 5,351,695).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mills, which discloses a wrist-worn cardiac monitor with dry skin electrodes integral to its housing, teaches every limitation of the challenged claims. Mills’ device includes an "enclosure" (housing 12), a "heart sensor" (ECG monitor), and a "processor" (VLSI circuit chip). Petitioner asserted that Mills’ electrodes (14, 16) are the claimed "pads," and they are "embedded" because they are "integrally molded" with the housing. The electrodes are located on opposite sides of the device (upper and lower), and the housing is made of an insulating plastic (ABS), meeting the limitations of claims 2 and 3. Petitioner further contended that the layered construction of Mills’ electrodes, with a base metal underneath a conductive surface, forms the claimed "pocket" for claim 8, and the internal leaf spring (62) is a pad positioned on an interior surface, meeting claim 14.

Ground 2: Obviousness - Claims 1-4 and 8-22 are obvious over Markel in view of Mills.

• Prior Art Relied Upon: Markel (Application # 2007/0021677), Mills (Patent 5,351,695).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Markel discloses the core concept of a mobile communication device with aesthetically integrated cardiac sensors but lacks specific details on internal connections, which Mills supplies. Markel teaches an electronic device with a heart sensor comprising electrodes that are "substantially concealed" or "molded into" various components of the device, including the housing, display, or bezel. Petitioner contended that while Markel discloses the external arrangement, it is silent on how to connect these electrodes to internal circuitry. Mills provides a detailed implementation of this connection, disclosing leaf springs and coil springs that serve as connectors between external electrodes and an internal processor. The combination of Markel's aesthetic integration of electrodes with Mills' well-known internal connection mechanism would render the claims of the ’257 patent obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA), seeking to implement Markel's device, would need a practical way to connect the concealed electrodes to the internal processing components. Petitioner argued a POSITA would consult analogous art, like Mills, which addresses the same technical problem in a similar device (a portable cardiac monitor). Mills’ use of leaf springs provides a known, reliable, and simple solution for creating these electrical connections, making it an obvious component to incorporate into Markel’s design.
  • Expectation of Success: Petitioner asserted there was a high expectation of success. Combining Markel’s concealed electrodes with Mills’ internal leaf spring connectors was a straightforward integration of known components for their intended purposes. It was a predictable solution to a known design challenge, involving a mere rearrangement of conventional mechanical and electrical components to achieve the desired result.

4. Key Claim Construction Positions

• "Embedded": Petitioner argued that based on the patent’s specification and dictionary definitions, "embedded" means "an integral part of" a surrounding whole. This includes being placed within the thickness of a material, potentially forming an outer or inner surface, or being positioned underneath an exterior surface. This construction is broad enough to encompass the "integrally molded" electrodes of Mills and the "concealed" electrodes of Markel.
• "Lead": Petitioner proposed that a "lead" in the context of the ’257 patent means "one or more conductive components that form at least a part of an electrical path from the user’s skin to the processor." This interpretation encompasses the entire conductive path, including the electrode (or "pad") that contacts the skin and the connector that links it to the processor, which is consistent with how the term is used in the prior art.
• "Pad": Petitioner contended that a "pad" means "a thin mat that may be part of the electrical path of a lead, such as an electrode or a connection that is part of the lead." This construction covers both the skin-contacting electrodes and internal connection points like the top of a leaf spring.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a), based on Fintiv factors, would be inappropriate. The final written decision in this inter partes review (IPR) is expected long before the trial date in the parallel Delaware litigation. Furthermore, investment in the district court case has been minimal, with no discovery or claim construction briefing having occurred. Petitioner also stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in the district court, mitigating any concerns of duplicative efforts and weighing strongly in favor of institution.

6. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-4 and 8-22 of the ’257 patent as unpatentable.