Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2024-00241
• Patent #: 10,687,743
• Filed: December 12, 2023
• Petitioner(s): Apple Inc.
• Patent Owner(s): Masimo Corporation
• Challenged Claims: 1-25

2. Patent Overview

• Title: Physiological Measurement Devices, Systems, and Methods
• Brief Description: The ’743 patent discloses a non-invasive, optical-based physiological monitoring system, such as a pulse oximeter. The system uses a sensor with emitters, detectors, a light block, and an optical transmission material to measure physiological parameters from light reflected by a user's tissue, for example, at the wrist.

3. Grounds for Unpatentability

Ground 1: Obviousness over Iwamiya and Sarantos - Claims 1-6, 9-13, 24, and 25 are obvious over Iwamiya in view of Sarantos.

• Prior Art Relied Upon: Iwamiya (Patent 8,670,819) and Sarantos (Patent 9,392,946).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Iwamiya discloses a wristwatch-style optical sensor that meets most limitations of independent claim 1. Iwamiya teaches a device with light emitters, an annular light guide unit (optical transmission material) that shapes an output light pattern, a plurality of detectors, a light block (reflection layers), and a processor. Sarantos, which discloses a wrist-worn fitness monitor, teaches using a dark-colored coating or opaque mask to block stray light from reaching photodetectors, thereby improving measurement accuracy. Petitioner contended that Sarantos’s teaching of a dark-colored coating satisfies the "dark-colored coating" limitation of claim 1[1e].
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine the teachings of Sarantos with Iwamiya’s device to improve its performance. Petitioner asserted that a POSITA would have been motivated to apply the dark-colored, light-absorbing coating taught by Sarantos to Iwamiya’s light shielding frame. This modification would predictably improve the accuracy of Iwamiya's sensor by minimizing stray ambient light and internal reflections from reaching the photodiodes, which was a known problem with a known solution.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success, as applying a dark coating to block light is a simple, well-understood technique that would predictably enhance the light-blocking function of Iwamiya's existing components without unexpected results.

Ground 2: Obviousness over Iwamiya, Sarantos, Utter, and Han - Claims 14-21 are obvious over Iwamiya, Sarantos, Utter, and Han.

• Prior Art Relied Upon: Iwamiya (Patent 8,670,819), Sarantos (Patent 9,392,946), Utter (Patent 8,446,275), and Han (Application # 2016/0058312).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addresses independent claim 14 and its dependents, which add features like wireless data transmission and a touch-screen display. Petitioner argued that the combination of Iwamiya and Sarantos teaches the core physiological measurement device, as established in Ground 1. Utter teaches a wearable health-monitoring device that wirelessly transmits physiological data to a separate device, such as a mobile phone, for further analysis and display. Han teaches a wearable photoplethysmography (PPG) device that includes a touch-screen display for presenting information and receiving user input.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Utter's wireless transmission capabilities to enhance the functionality of the base sensor. Offloading data processing and display to a more powerful secondary device like a smartphone improves user experience with richer data visualization and trend analysis, while conserving power and reducing the weight of the wearable device. A POSITA would further incorporate Han's touch-screen display to provide a sleek, modern, and intuitive user interface, which was a ubiquitous and expected feature for wearable devices at the time.
  • Expectation of Success (for §103 grounds): The integration of wireless communication and touch-screen displays into wearable sensors were common and well-established design choices. A POSITA would have reasonably expected success in combining these conventional features to create an improved, more functional device with predictable results.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 7 is obvious over Iwamiya, Sarantos, and Utter; claim 8 is obvious over Iwamiya, Sarantos, and Han; and claims 22-23 are obvious over Iwamiya alone.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under both 35 U.S.C. §314(a) (Fintiv) and 35 U.S.C. §325(d) (Advanced Bionics) is unwarranted.
• Fintiv Factors: Petitioner contended that the Fintiv factors favor institution. The Final Written Decision (FWD) in the inter partes review (IPR) is projected to issue months before any potential trial date in the parallel district court litigation. Furthermore, Petitioner offered a stipulation that it would not pursue any invalidity ground in district court that utilizes any of the prior art asserted in the petition, thereby eliminating concerns of duplicative efforts. Petitioner also asserted that the merits of the petition are particularly strong, as evidenced by the Board’s institution of IPRs against related patents on similar grounds.
• §325(d) Factors: Petitioner argued that the prior art and arguments presented are new and were not substantively considered by the examiner during prosecution. The '743 patent issued after an accelerated examination with no rejections, and the asserted prior art combinations were never applied. Petitioner maintained that the mere citation of Iwamiya and Han in an Information Disclosure Statement (IDS), without more, does not constitute substantive review by the USPTO.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-25 of the ’743 patent as unpatentable.