AliveCor Inc v. Apple Inc

1. Case Identification

• Case #: IPR2023-00950
• Patent #: Patent 10,076,257
• Filed: June 7, 2023
• Petitioner(s): AliveCor, Inc.
• Patent Owner(s): Apple Inc.
• Challenged Claims: 1-22

2. Patent Overview

• Title: Heart Rate Monitor In An Electronic Device
• Brief Description: The ’257 patent relates to integrating a cardiac sensor into an electronic device. The technology involves using at least two leads with pads embedded in the device's enclosure, such that the pads are positioned underneath an exterior surface (e.g., a bezel) to detect a user's cardiac signals via contact with that surface.

3. Grounds for Unpatentability

Ground 1: Claims 1-22 are obvious over Markel

• Prior Art Relied Upon: Markel (Application # 2007/0021677).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Markel discloses all elements of the challenged claims. Markel teaches a mobile communication device with an integrated cardiac sensor using multiple electrodes that can be "molded into" or "positioned on" various parts of the device's enclosure, which Petitioner mapped to the claimed "pad that is embedded in a first portion of the enclosure." For the key limitation of a pad "positioned underneath the exterior surface," Petitioner contended that Markel's disclosure of "substantially concealed (or hidden)" electrodes made from conductive plastic integrated into the device's molded components rendered this element obvious.
  • Expectation of Success: Petitioner asserted a person of ordinary skill in the art (POSITA) would have an expectation of success in concealing an electrode under conductive plastic, as Markel teaches that such materials provide "sufficient conductivity for an electrode to perform adequately."

Ground 2: Claims 1-22 are obvious over Markel in view of Nissilä

• Prior Art Relied Upon: Markel (Application # 2007/0021677) and Nissilä (Patent 6,775,566).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground supplemented the arguments from Ground 1. Petitioner argued that if Markel's teaching of a "hidden" electrode was considered insufficient, Nissilä provides an explicit blueprint. Nissilä discloses an "improved electrode structure" with a detailed cross-sectional view showing an electrode pad positioned directly underneath an exterior conductive membrane, which Petitioner asserted directly teaches the "positioned underneath the exterior surface of the first portion" limitation.
  • Motivation to Combine: A POSITA would combine Nissilä’s specific implementation of an "inconspicuous" electrode with Markel's general concept of a "hidden" electrode in a mobile device. The motivation was to achieve Markel's stated goals of improved device aesthetics and protection for the electrode from damage.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because both references disclose using conductive plastics as the intermediate conductive material between the user's skin and the underlying electrode.

Ground 3: Claims 12-13 and 19 are obvious over Markel in view of Nissilä and/or Righter

• Prior Art Relied Upon: Markel (Application # 2007/0021677), Nissilä (Patent 6,775,566), and Righter (Patent 5,191,891).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addressed claims requiring a "bezel." Petitioner argued that Righter, which discloses a portable, watch-like ECG monitor, teaches placing conductive electrodes on "opposing side surfaces of the casing" that encircle the device's LCD display. Petitioner contended this casing structure is a bezel, and Righter therefore explicitly teaches the placement of electrodes on a bezel as required by claims 12, 13, and 19.
  • Motivation to Combine: A POSITA would combine the convenient and ergonomic electrode placement taught by Righter with the mobile device of Markel. This combination would make heart monitoring more convenient for the user, encouraging use and increasing the likelihood of a successful ECG measurement, a shared goal of the references.
  • Expectation of Success: Success would be expected, as Markel teaches that its electrodes can be incorporated into an electronic device "in any of a variety of manners" and "in any of a variety of locations."

4. Key Claim Construction Positions

• Petitioner contended that the preamble language "An electronic device for detecting a user’s cardiac signal," found in independent claims 1 and 15, is a limiting element of the claims. The argument was that the preamble provides necessary antecedent basis for terms recited later in the claim body, such as "a user," "the user's cardiac signal," and "the electronic device," and is therefore essential to define the scope of the claimed invention.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors would be inappropriate. The core arguments were that the parallel district court litigation was in its earliest stages, with no trial date set, no substantive motions filed, and no claim construction briefing initiated. Petitioner also stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in the district court, thereby avoiding duplicative efforts.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-22 of Patent 10,076,257 as unpatentable under 35 U.S.C. §103.