PTAB

IPR2024-00169

AliveCor Inc v. Apple Inc

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1. Case Identification

2. Patent Overview

  • Title: Electronic Device With Embedded Heart Sensor
  • Brief Description: The ’257 patent discloses an electronic device, such as a mobile phone, that includes a heart sensor with multiple leads for detecting a user’s cardiac signals. The patent alleges novelty in improving the device’s aesthetic qualities by embedding the sensor leads into the device’s enclosure rather than placing them on the exterior surface.

3. Grounds for Unpatentability

Ground 1: 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. Specifically, Mills’ housing (12) is the claimed “enclosure,” and its wrist-worn monitor is the “heart sensor.” Petitioner asserted that Mills’ upper and lower electrodes (14, 16) are the claimed “first pad” and “second pad,” respectively. The key limitation of the pads being “embedded” was allegedly met by Mills’ disclosure that the electrodes are “integrally molded” with and form an “integral part” of the housing. For dependent claims, Petitioner argued Mills’ upper and lower electrodes are on opposite sides of the device (claim 2) and are separated by an electrically insulating plastic housing (claims 3-4).

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

  • Prior Art Relied Upon: Markel (Application # 2007/0021677) and Mills (Patent 5,351,695).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Markel discloses the basic framework of the claimed invention: a mobile communication device with an enclosure and a heart sensor comprising electrodes “substantially concealed” or “integrated into various molded components” for aesthetic reasons. However, Petitioner argued Markel is silent on the specific internal electrical connections between these external electrodes and the internal processing circuitry. Mills was argued to supply this missing detail. Specifically, Mills teaches using a leaf spring connector (62) to physically and electrically connect an integral electrode to a printed circuit board. Petitioner asserted this leaf spring connector constitutes a “pad” that would be positioned underneath the exterior surface of Markel’s electrode, thereby meeting the limitations of an embedded pad. For independent claim 15, Markel was argued to teach a first lead embedded in the enclosure and a second lead embedded in a display screen.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA), seeking to implement Markel’s conceptual device, would have been motivated to consult analogous art like Mills to find a known, reliable method for connecting external electrodes to internal circuitry. Mills provided a practical solution that solved manufacturing complexities, such as eliminating the need for soldering wires, by using a simple leaf spring connector.
    • Expectation of Success: A POSITA would have had a high expectation of success in combining the references. The combination involved incorporating a well-known type of electrical connector (a leaf spring from Mills) into the design of a mobile device (Markel) to connect its known components (electrodes and processor). This was presented as a predictable integration of known elements from analogous art to achieve a predictable result.

4. Key Claim Construction Positions

  • embedded: Petitioner argued that based on the specification and dictionary definitions, a POSITA would understand “embedded” to mean “an integral part of” a surrounding whole. This construction would encompass structures that are “integrally molded” into a housing or placed within the thickness of a material, even if a surface is exposed to the user. This construction is central to arguing that the prior art’s integrally molded electrodes meet the claim limitation.
  • pad: Petitioner proposed that a POSITA would understand a “pad” in the context of the patent to mean “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 allows both the external electrodes of Mills and Markel, as well as the internal leaf spring connector of Mills, to be considered “pads.”

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under either General Plastic or Fintiv would be inappropriate. The petition was filed conditionally, seeking joinder with an already-instituted inter partes review (IPR) against the same patent (IPR2023-00745, filed by Masimo Corp.) if, and only if, Petitioner’s own previously filed IPR petition is denied. Petitioner contended that this approach avoids duplicative litigation and inconsistent results. Regarding Fintiv, Petitioner argued that the parallel district court case is in its very early stages, with no trial date set, and that Petitioner stipulated to withdraw any identical grounds from the district court litigation if the IPR is instituted, eliminating overlap.

6. Relief Requested

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