Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2024-00242
• Patent #: 10,687,743
• Filed: December 12, 2023
• Petitioner(s): Apple Inc.
• Patent Owner(s): Ammar Al-Ali
• Challenged Claims: 1, 3-14, 16-25

2. Patent Overview

• Title: Physiological Measurement Devices, Systems, and Methods
• Brief Description: The ’743 patent discloses non-invasive, optical-based physiological monitoring systems, such as pulse oximeters. The technology involves a sensor with one or more light emitters, a plurality of detectors, an optical transmission material (e.g., a diffuser) to shape the light pattern directed at a user's tissue, and a light block to prevent ambient light interference.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-6, 9-13, and 22-25 are obvious over Sarantos in view of Shie.

• Prior Art Relied Upon: Sarantos (Patent 9,392,946) and Shie (Patent 6,483,976).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Sarantos disclosed a wrist-worn fitness monitor with a photoplethysmography (PPG) sensor that meets most limitations of the challenged claims, including emitters, a plurality of detectors, a light block, and a dark-colored coating with openings. However, Sarantos’s window is merely transparent. Shie was cited for its teaching of a diffuser, an "optical transmission material" that has "light diffusing and shaping advantages," which alters the shape of light passing through it. Petitioner asserted that incorporating Shie's diffuser into the window of Sarantos’s device renders the combination obvious. Dependent claims related to materials (glass, plastic), detector arrangement, coating color (black), and measured parameters (oxygen saturation, pulse rate) were also argued to be disclosed or made obvious by the combination.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Shie’s diffuser with Sarantos’s sensor for several reasons: 1) to improve power efficiency by directing more emitted light toward the tissue and photodiodes; 2) to increase measurement accuracy by illuminating a larger skin area, thus reducing errors from local aberrations like moles; and 3) to improve device aesthetics by obscuring the internal electronic components from the user’s view.
  • Expectation of Success: Petitioner contended that using optical diffusers to shape and direct light was a well-known technique. Therefore, a POSITA would have reasonably expected that incorporating Shie’s diffuser into Sarantos’s PPG sensor would successfully and predictably achieve the desired improvements in performance and appearance.

Ground 2: Claim 7 is obvious over Sarantos and Shie in view of Utter.

• Prior Art Relied Upon: Sarantos (Patent 9,392,946), Shie (Patent 6,483,976), and Utter (Patent 8,446,275).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Sarantos-Shie combination and added Utter to address claim 7, which recites wirelessly transmitting physiological parameter data to a separate device. Utter disclosed wrist-worn health monitoring bands that gather physiological data (like heart rate) and use wireless communication to transfer that data to secondary devices such as mobile phones or computers for processing and display.
  • Motivation to Combine: A POSITA would be motivated to add the wireless transmission taught by Utter to the base device of Sarantos-Shie. This modification would enhance functionality by allowing for more complex data analysis and graphical display on a more powerful secondary device. It would also improve the wearable device’s design by offloading power-intensive tasks, thereby extending battery life and allowing for a smaller, lighter form factor, which are critical considerations for wearable consumer electronics.
  • Expectation of Success: By the patent's priority date, wireless communication between wearable sensors and smartphones was a conventional and well-established technology. A POSITA would have had a high expectation of success in integrating this standard feature.

Ground 3: Claim 8 is obvious over Sarantos and Shie in view of Han.

• Prior Art Relied Upon: Sarantos (Patent 9,392,946), Shie (Patent 6,483,976), and Han (Application # 2016/0058312).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targeted claim 8, which adds a touch-screen display for presenting the determined physiological parameter. The Sarantos-Shie combination formed the base device, while Han was introduced for its disclosure of a wearable PPG device that includes a touchscreen display. Han explicitly taught that its wearable device could display physiological data to the user on its touchscreen.
  • Motivation to Combine: Petitioner argued a POSITA would find it obvious to incorporate Han's touchscreen into the Sarantos-Shie device to provide an intuitive, modern, and user-friendly interface. Touchscreens were ubiquitous in wrist-worn devices by 2015, and adding one would improve utility by allowing for easy user input and data visualization, while also enabling a sleeker design by eliminating the need for physical buttons.
  • Expectation of Success: Integrating a touchscreen into a wrist-worn electronic device was a routine and predictable design choice, presenting no significant technical hurdles.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 2D) for claims 14 and 16-21 based on the four-way combination of Sarantos, Shie, Utter, and Han, relying on similar motivations to combine to arrive at a device with all the features of the prior art.

4. Arguments Regarding Discretionary Denial

• Fintiv Factors (§314(a)): Petitioner argued against discretionary denial, asserting that the Fintiv factors weigh in favor of institution. Key arguments included: 1) the parallel district court litigation has no firm trial date, and statistical analysis showed a Final Written Decision (FWD) in the IPR would likely issue months before any trial; 2) Petitioner stipulated that it would not pursue the same grounds or prior art in the district court if the IPR is instituted, eliminating concerns of overlapping efforts; and 3) the merits of the petition are exceptionally strong, as evidenced by successful invalidations of related patents on similar grounds.
• Advanced Bionics Factors (§325(d)): Petitioner contended that denial under §325(d) is unwarranted because the examiner did not substantively consider the asserted prior art or arguments during prosecution. The patent issued after an accelerated examination with no rejections. Petitioner stated that the primary references of Sarantos, Shie, and Utter were never before the examiner, and while Han was listed in a large IDS, it was never applied. Thus, the petition presented new, non-cumulative art and arguments that warrant review.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-14, and 16-25 of the ’743 patent as unpatentable.