Masimo Corp v. Apple Inc

1. Case Identification

• Case #: IPR2023-00807
• Patent #: 11,474,483
• Filed: April 4, 2023
• Petitioner(s): Masimo Corporation
• Patent Owner(s): Apple, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Wearable Electronic Device with Physiological Sensors
• Brief Description: The ’483 patent discloses a wearable electronic device, such as a smartwatch, incorporating a biosensor module on its rear surface. The device is configured to measure multiple physiological parameters using both an optical sensor (e.g., for pulse rate) and a multi-electrode electrical sensing system (e.g., for an electrocardiogram).

3. Grounds for Unpatentability

Ground 1: Obviousness over Kotanagi and Coppola

• Claims Challenged: 1–3, 5–6, 8, 10–14, and 16–20 are obvious over Kotanagi in view of Coppola.
• Prior Art Relied Upon: Kotanagi (WO 2005/092182) and Coppola (WO 2015/150199).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kotanagi, a 2005 publication on a "wristwatch-type device," discloses the core features of the independent claims. This included a housing, a display, a front cover, and a rear biosensor module with an optical sensor (LED and photodetector) under a transparent cover and two electrodes on the rear surface for detecting skin contact. Petitioner asserted that Coppola teaches the missing element: a biosensing watch with multiple electrodes, including a third electrode positioned on the side of the device, for performing electrocardiogram (ECG) measurements.
  • Motivation to Combine: A POSITA would combine these references to add the significant health and safety benefits of ECG monitoring, as taught by Coppola, to Kotanagi's existing pulse-rate monitoring watch. Coppola was cited for its express teaching of advantageously combining optical (PPG) and electrical (ECG) sensors in a single wearable device to provide deeper insights into a user's cardiac health.
  • Expectation of Success: A POSITA would have a high expectation of success because both references are analogous art in the biosensing watch field. Adding a third electrode to a different surface of the watch housing was presented as a simple design modification that would yield the predictable result of enabling ECG functionality.

Ground 2: Obviousness over Kotanagi and Schmid

• Claims Challenged: 1–3, 5–6, and 10–14 are obvious over Kotanagi in view of Schmid.

• Prior Art Relied Upon: Kotanagi (WO 2005/092182) and Schmid (Patent 4,375,219).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground relied on Kotanagi for the same base device features as Ground 1. To teach the third electrode for measuring a second physiological parameter (ECG), Petitioner asserted Schmid as an alternative to Coppola. Petitioner argued Schmid, a 1983 patent, discloses a "heart-frequency measuring assembly" in a wristwatch with various three-electrode configurations for EKG measurement. Schmid was shown to teach that a reference electrode could be formed by the watch housing itself, which effectively places a third electrode on the side of the device.
  • Motivation to Combine: A POSITA would be motivated to incorporate Schmid's teachings to enhance Kotanagi's device with the established benefits of EKG analysis, such as diagnosing heart conditions and monitoring cardiac activity. Schmid’s disclosure of a compact EKG configuration using electrodes in close proximity would have been an attractive and known method for implementation.
  • Expectation of Success: Success would be expected because both Kotanagi and Schmid disclose skin-contact electrodes on the rear of a watch. Therefore, integrating Schmid’s side/housing reference electrode into Kotanagi’s design would have been a simple and feasible modification.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations relying on:

  • • Tran (Application # 2007/0276270) to teach measuring a galvanic skin response (Claim 4).
  • • Fraser (Application # 2015/0355604) to teach using a second optical emitter with a different wavelength for measuring parameters like blood oxygen saturation (Claim 7).
  • • Honda (Patent 6,265,789) to teach a wireless charging system receiving power through the rear surface from an external dock (Claim 9).
  • • Kateraas (Application # 2012/0221254) to teach that the rear cover comprises sapphire (Claim 15).
  • • Miller (Patent 8,624,836) to teach an input device capable of both rotational and translational input (Claim 8).

4. Key Claim Construction Positions

• "defining an optically transparent window": Petitioner argued this term does not require a distinct physical aperture for each sensor. Instead, it should be construed to mean that a cover allows the passage of light to a relevant component. Citing the ’483 patent's specification, Petitioner contended that a single, continuous rear cover can "define" multiple windows by simply having optically transparent portions that align with the underlying optical sensors, allowing light to pass through.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv. The core arguments were that the parallel district court litigation was in its earliest stages, with a trial date nearly three years away and well after the statutory deadline for a Final Written Decision in the IPR. To mitigate concerns of duplicative efforts, Petitioner stipulated that, if the IPR is instituted, it will not pursue in the district court the specific invalidity grounds raised in the petition. Furthermore, Petitioner argued that the grounds rely on new prior art and arguments never presented to the examiner, weighing against denial under 35 U.S.C. §325(d).

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of Patent 11,474,483 as unpatentable under 35 U.S.C. §103.