Masimo Corp v. Apple Inc

1. Case Identification

• Case #: IPR2024-00071
• Patent #: 10,076,257
• Filed: October 19, 2023
• Petitioner(s): Masimo Corporation
• Patent Owner(s): Apple Inc.
• Challenged Claims: 6-7

2. Patent Overview

• Title: Electronic Device with Embedded Heart Sensor
• Brief Description: The ’257 discloses an electronic device, such as a mobile phone, that incorporates a heart sensor with multiple embedded leads for detecting a user's cardiac signals. The alleged novelty focuses on the aesthetic improvement of embedding these leads into the device's enclosure.

3. Grounds for Unpatentability

Ground 1: Claims 6-7 are obvious over Batkin in view of Larson.

• Prior Art Relied Upon: Batkin (Application # 2005/0239493) and Larson (Patent 4,230,127).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Batkin disclosed a cell phone with an enclosure and integrated electrocardiogram (ECG) electrodes (leads) for detecting cardiac signals. While Batkin suggested the electrodes could be capacitive, it did not detail their structure. Larson taught a capacitive electrode structure for a portable electronic device (a watch) comprising a conductive layer ("pad") placed underneath an insulating dielectric layer. Petitioner asserted that combining Larson’s capacitive electrode structure with Batkin’s cell phone would result in an embedded conductive pad (Larson’s conductive layer) positioned underneath an exterior surface (Larson’s dielectric layer), which would be integrated into Batkin’s device enclosure. This combination allegedly met the limitations of an embedded first pad and second pad. The insulating properties of the materials taught in the references met the specific conductivity requirements of dependent claims 6 and 7.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because Batkin expressly taught that its electrodes could be capacitive. A POSITA seeking to implement Batkin's device would have looked to known capacitive electrode designs like that in Larson. Additional motivation stemmed from the known benefits of capacitive electrodes, such as providing a more aesthetically pleasing flush surface and improved signal quality, which aligned with the ’257 patent’s stated goal of improving aesthetics.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying a known and well-understood electrode structure (Larson) to a compatible electronic device (Batkin), which constituted a predictable application of existing technologies.

Ground 2: Claims 6-7 are obvious over Markel in view of Mills, Stratbucker, and Stejskal.

• Prior Art Relied Upon: Markel (Application # 2007/0021677), Mills (Patent 5,351,695), Stratbucker (Patent 5,678,545), and Stejskal (a 1997 non-patent reference).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Markel disclosed a mobile device with ECG electrodes made of conductive plastic that were molded into or substantially concealed within the device's housing. However, Markel was silent on the method of internal electrical connection. Mills addressed this gap by teaching an integrally molded electrode in a watch housing connected to internal circuitry via a leaf spring connector. Petitioner argued this leaf spring constituted a "pad" that was embedded underneath the exterior electrode surface. The combination of Markel's molded electrodes with Mills' internal leaf spring connector met the "embedded pad" limitations. To meet the specific conductivity requirements of claims 6 and 7, Petitioner introduced Stratbucker and Stejskal. These references taught the desirability and method of creating conductive materials with anisotropic properties—conducting electricity through their thickness but insulating laterally. This property is crucial for preventing signal crosstalk between closely spaced electrodes, as shown in Markel.
  • Motivation to Combine: A POSITA implementing Markel's concealed electrodes would have been motivated to look to references like Mills for known internal connection methods. Leaf springs were common, reliable, and solved manufacturing complexities. Further, to optimize the performance of Markel’s closely spaced electrodes, a POSITA would have been motivated by Stratbucker and Stejskal to use anisotropic conductive plastic. This would improve signal accuracy by preventing lateral current flow, a known problem in the art.
  • Expectation of Success: The combination represented a predictable integration of known elements to solve a known problem. Combining Markel's molded electrodes with a standard connector from Mills and a performance-enhancing material from Stratbucker and Stejskal would have been a straightforward design choice with a high expectation of success.

4. Key Claim Construction Positions

• "embedded": Petitioner proposed this term be construed as "an integral part of" a surrounding material, such as by "being placed in the thickness of a surrounding material" or "placed underneath an exterior surface and against an inner surface." This construction was central to arguing that prior art electrodes with layers placed underneath an exterior surface (like Larson's conductive layer under a dielectric) or with internal connectors pressed against them (like Mills' leaf spring) met the claim limitations.
• "pad": Petitioner proposed construing "pad" as "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 broad construction was argued to encompass not only the conductive layer of an electrode but also internal connection components like the leaf spring taught by Mills.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d) and §314(a). It asserted this was not an improper follow-on petition to its earlier-filed IPR2023-00745 because this petition challenged different claims (6-7) that Patent Owner Apple first asserted after the initial petition was filed. Regarding the Fintiv factors, Petitioner argued for institution by stipulating that, if inter partes review (IPR) is instituted, it will not pursue the same invalidity grounds in the parallel Delaware litigation. Petitioner also noted that a Final Written Decision (FWD) in the IPR would likely issue well before the trial date in the district court, favoring institution to promote efficiency and avoid conflicting outcomes.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 6-7 of the ’257 patent as unpatentable.