PTAB

IPR2024-00243

Apple Inc v. Masimo Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Physiological Monitoring Devices, Systems, and Methods
  • Brief Description: The ’159 patent describes a non-invasive, optical-based physiological monitoring system, such as a wristwatch, that uses emitters and detectors to measure a user's physiological parameters. Key features include a material to shape the emitted light, a dark-colored coating with an opening for detectors, and a light block to prevent optical crosstalk.

3. Grounds for Unpatentability

Ground 1: Claims 1-2 and 4-13 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 disclosed a wristwatch-style "optical biological information detecting apparatus" that meets most limitations of independent claim 1. Iwamiya taught a device with emitters (LEDs), detectors (photodiodes), an annular light guide that functions as a diffuser to shape emitted light, and a "light shielding frame" to reduce noise. However, Iwamiya was silent on the material of its light shielding frame. Sarantos, which described a similar wrist-worn fitness monitor, explicitly taught using a "dark-colored coating" or a "black... mask" to block stray light from reaching the photodetectors, thereby increasing accuracy. Petitioner asserted that applying Sarantos’s dark-colored coating to Iwamiya’s light shielding frame rendered the claimed invention obvious.
    • Motivation to Combine: A POSITA would combine the references to improve the performance of Iwamiya's device. Since Iwamiya's goal was to reduce noise from external light with its shielding frame, a POSITA would have looked to known solutions, such as the dark-colored, light-absorbing coatings taught by Sarantos for the same purpose in a similar device. This would predictably enhance the frame's ability to shield the photodiodes from stray light, improving measurement accuracy.
    • Expectation of Success: Petitioner contended there was a high expectation of success because using dark-colored coatings to block light in optical sensors was a well-known, simple, and predictable solution. Both references described wrist-worn, reflectance-based physiological sensors, making the integration straightforward.

Ground 2: Claim 3 is obvious over Iwamiya in view of Sarantos and Han.

  • Prior Art Relied Upon: Iwamiya (Patent 8,670,819), Sarantos (Patent 9,392,946), and Han (Application # 2016/0058312).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Iwamiya-Sarantos combination and targeted claim 3, which added a "touch-screen display." The base combination from Ground 1 included a display unit (from Iwamiya). Han was introduced because it explicitly disclosed a wearable photoplethysmographic (PPG) device with a touchscreen for user interaction.
    • Motivation to Combine: A POSITA would add Han's touchscreen to the Iwamiya-Sarantos device to improve its utility and user-friendliness. By 2015, touchscreens were ubiquitous on wrist-worn devices. Incorporating one would provide an intuitive interface for users to navigate menus and view data while allowing for a sleeker design by eliminating the need for physical buttons, representing a predictable design choice.
    • Expectation of Success: Success was reasonably expected because integrating a touchscreen display into a wearable device with a standard display was a common and well-understood modification.

Ground 3: Claims 14-25 are obvious over Iwamiya in view of Sarantos and Utter.

  • Prior Art Relied Upon: Iwamiya (Patent 8,670,819), Sarantos (Patent 9,392,946), and Utter (Patent 8,446,275).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims 14-25, which recited a system comprising the monitoring device and a separate processing device that wirelessly receives data. Utter was added because it described a health management system where wrist-worn sensor bands wirelessly communicate physiological data (e.g., heart rate, blood oxygen) to a secondary device, such as a smartphone or computer. This secondary device would then perform further data analysis, display wellness trends, and provide a user interface.
    • Motivation to Combine: A POSITA would be motivated to add Utter's wireless communication and secondary processing capabilities to the Iwamiya-Sarantos device to enhance functionality without compromising the wearable's form factor. Transmitting data to a more powerful device like a smartphone would offload processing, thereby improving the wearable's battery life and reducing its weight. It would also allow for richer data analysis and a more comprehensive user interface than possible on a small, wrist-worn screen.
    • Expectation of Success: Petitioner argued a POSITA would have reasonably expected success, as wirelessly connecting wearable sensors to secondary computing devices was a conventional approach for expanding the capabilities of portable health monitors.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued extensively that discretionary denial under Fintiv would be inappropriate. The core arguments were that: (1) the Board’s Final Written Decision (FWD) would issue months before any potential trial date in the parallel district court litigation, based on median time-to-trial statistics for the venue; (2) Petitioner offered a broad stipulation that it would not pursue in district court any invalidity ground utilizing any of the prior art asserted in the petition (Iwamiya, Sarantos, Han, or Utter), ensuring no overlap or redundancy; (3) the petition’s grounds were materially different from those in litigation, as the petition challenged all 25 claims while the litigation involved only a subset; and (4) the petition presented a compelling case for unpatentability, which weighs strongly in favor of institution to promote system efficiency and integrity.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-25 of the ’159 patent as unpatentable under 35 U.S.C. §103.