Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2024-00244
• Patent #: 10,722,159
• Filed: December 12, 2023
• Petitioner(s): Apple Inc.
• Patent Owner(s): Masimo Corporation
• Challenged Claims: 1-5, 7-14, and 16-25

2. Patent Overview

• Title: Physiological Monitoring Devices, Systems, and Methods
• Brief Description: The ’159 patent describes a non-invasive, optical-based physiological monitoring device, such as a wrist-worn monitor, that uses emitters and detectors to measure parameters like pulse rate and blood oxygen saturation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sarantos - Claims 1-5, 7-9, and 12-13 are obvious over Sarantos.

• Prior Art Relied Upon: Sarantos (Patent 9,392,946).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Sarantos, which discloses a wristband-type wearable fitness monitor, teaches all limitations of the challenged claims. Sarantos’s photoplethysmography (PPG) sensor includes a plurality of emitters (LEDs) and detectors. Petitioner mapped Sarantos’s opaque in-mold label to the “dark-colored coating,” its walls between emitters and detectors to the “light block,” and its control logic to the “processor.” For the limitation requiring a material that changes the shape of light, Petitioner contended that the window region through which light shines would inherently change the light’s shape due to its refractive properties.
  • Motivation to Combine (for §103 grounds): As a single-reference ground, the motivation focused on obvious design choices. Petitioner argued a person of ordinary skill in the art (POSITA) would have found it obvious to implement Sarantos’s processor and memory to communicate via signals to determine physiological parameters, or to include standard intermediary components to pre-process raw sensor signals.

Ground 2: Obviousness over Sarantos and Shie - Claims 1-5, 7-14, and 16-18 are obvious over Sarantos in view of Shie.

• Prior Art Relied Upon: Sarantos (’946 patent) and Shie (Patent 6,483,976).
• Core Argument for this Ground:
  • Prior Art Mapping: This combination builds upon Sarantos by incorporating the teachings of Shie to explicitly satisfy the claim limitation of a "material configured to change the first shape into a second shape." Shie discloses various optical elements, such as diffusers with micro-structures, specifically designed for light diffusing and shaping. Petitioner argued for implementing Shie’s diffuser as the window material in Sarantos’s device. The remaining limitations were met by Sarantos as argued in the first ground.
  • Motivation to Combine (for §103 grounds): Petitioner asserted a POSITA would combine Shie’s light-shaping material with Sarantos’s sensor for several reasons: to increase power efficiency by directing light more precisely towards the tissue; to improve measurement accuracy by illuminating a larger skin area, thereby reducing errors from moles or other aberrations; and to improve device aesthetics by obscuring the internal light source from the user’s view.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because using diffusers and lenses to shape and direct light was a well-known and routine technique in optical instrumentation.

Ground 3: Obviousness over Sarantos and Utter - Claims 14, 16-25 are obvious over Sarantos in view of Utter.

• Prior Art Relied Upon: Sarantos (’946 patent) and Utter (Patent 8,446,275).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed the system claims, which recite a physiological monitoring device that wirelessly communicates with a separate processing device (e.g., a smartphone) having a user interface and touch-screen display. While Sarantos provided the core wrist-worn monitoring device, Utter provided the system architecture. Utter describes wrist-worn bands that wirelessly transfer physiological data to a secondary device (like a mobile phone) for analysis, wellness tracking, and display on a graphical user interface.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to combine these teachings to improve the overall system functionality and user experience. Transmitting data to a secondary device would offload power-intensive processing and display tasks from the resource-constrained wearable, thus preserving battery life and allowing for a smaller device. It would also enable more complex data analysis and a richer user interface on the secondary device’s more capable screen.
  • Expectation of Success (for §103 grounds): The proposed modification was a routine implementation of the well-established wearable-plus-smartphone-app paradigm. A POSITA would have reasonably expected that integrating Sarantos’s sensor into Utter’s wireless system architecture would work predictably.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Sarantos with Brady (Application # 2006/0253010) to add a display, and further adding Han (Application # 2016/0058312) to make the display a touch-screen. These grounds relied on similar motivations of adding conventional features to improve user interaction.

4. Arguments Regarding Discretionary Denial

• Petitioner argued extensively that discretionary denial under Fintiv would be inappropriate. The core arguments were that the Board’s Final Written Decision (FWD) would issue months before any potential trial date in the parallel district court litigation. Petitioner also asserted that its grounds are strong and materially different from those in the litigation, supported by a stipulation that it would not raise the IPR grounds in court if the petition is instituted. Finally, Petitioner argued that the merits are compelling, noting that the Board had previously instituted review and found claims invalid in related patents owned by Masimo based on some of the same prior art, including Sarantos. Petitioner also contended that denial under §325(d) was unwarranted because the key prior art references were never considered during the ’159 patent’s prosecution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5, 7-14, and 16-25 of the ’159 patent as unpatentable.