Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2024-00290
• Patent #: 8,190,223
• Filed: December 12, 2023
• Petitioner(s): Apple Inc.
• Patent Owner(s): Masimo Corporation
• Challenged Claims: 1-4, 6, 11-22, 27-28, 32, 34, 36-37, and 42-44

2. Patent Overview

• Title: NONINVASIVE MULTI-PARAMETER PATIENT MONITOR
• Brief Description: The ’223 patent relates to patient monitors that display physiological measurements derived from optical sensors. The disclosed technology focuses on a graphical user interface (GUI) that dynamically changes the displayed parameters based on an event, such as a measured parameter approaching a threshold value indicative of a worsening patient state.

3. Grounds for Unpatentability

Ground 1A: Claims 1-4, 6, 11-18, and 20-22 are obvious over Naghavi, Hochstedler, and Burnes.

• Prior Art Relied Upon: Naghavi (Application # 2002/0184055), Hochstedler (Patent 6,707,476), and Burnes (Application # 2006/0064020).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references teaches every limitation of the challenged claims. Naghavi disclosed a healthcare management system with a GUI that automatically changes displayed icons and health objects (e.g., by color, shape, or order) based on the severity of a patient's condition. Hochstedler taught a patient monitoring system with a configurable GUI where display layouts, composed of parameter blocks, could be automatically switched or replaced. Burnes taught categorizing monitored parameters according to predefined thresholds (e.g., "out of range" or "near out of range") and automatically changing the GUI with alerts, colors, or different formatting in response. Petitioner asserted that combining these teachings results in a patient monitor where the display of a first parameter in a common display area is replaced by a second parameter when that second parameter's value approaches a threshold, indicating a worsening patient state.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to create a more effective, clinically relevant, and less cluttered patient monitoring display. The combination applies known techniques (dynamic, multi-parameter displays) to a known system (a patient monitor) to achieve the predictable result of prioritizing important information and reducing the data analysis burden on clinicians.
  • Expectation of Success: A POSITA would have had a high expectation of success because integrating various known display techniques and logic into a patient monitoring system was a conventional and predictable design path at the time.

Ground 1B: Claims 19, 27-28, 32, 34, 36-37, and 42-43 are obvious over Naghavi, Hochstedler, and Burnes in view of Hayashi.

• Prior Art Relied Upon: Naghavi (Application # 2002/0184055), Hochstedler (Patent 6,707,476), Burnes (Application # 2006/0064020), and Hayashi (Patent 6,151,518).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the patient monitoring system established in Ground 1A by incorporating the teachings of Hayashi. Hayashi disclosed a non-invasive optical instrument for measuring the concentration of blood constituents, such as various forms of hemoglobin, using a light source and a light-sensitive detector. Petitioner argued that adding Hayashi's optical sensing technology to the monitor of Ground 1A would have been obvious to satisfy claims requiring that physiological parameters be determined from the output of a light-sensitive detector that measures light attenuated by body tissue.
  • Motivation to Combine: A POSITA would be motivated to incorporate Hayashi's technology to gain the significant clinical utility of monitoring specific blood constituents. Using a non-invasive optical method offered known advantages, such as reduced risk of infection and injury compared to invasive techniques.
  • Expectation of Success: Success would be expected because monitoring blood constituent concentrations was common, and the base system described in Naghavi was disclosed as being flexible regarding the types of sensors that could be integrated.

Ground 1C: Claims 32 and 42-44 are obvious over Naghavi, Hochstedler, Burnes, and Hayashi in view of Mortz.

• Prior Art Relied Upon: Naghavi (Application # 2002/0184055), Hochstedler (Patent 6,707,476), Burnes (Application # 2006/0064020), Hayashi (Patent 6,151,518), and Mortz (Patent 6,385,471).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added the teachings of Mortz to the combination of Ground 1B to address claims requiring a second display capable of showing a pulse rate. Mortz disclosed a pulse oximeter probe that computes and displays both oxygenation level and pulse rate on an associated monitor. Petitioner argued it would have been obvious to add a Mortz-style pulse oximeter and its display capabilities to the multi-parameter monitoring system of Ground 1B.
  • Motivation to Combine: A POSITA would combine Mortz to add pulse rate monitoring, which was a common, clinically advantageous, and inexpensive feature for patient monitors. The addition represented the predictable integration of a standard monitoring technology into a more comprehensive system.
  • Expectation of Success: A POSITA would expect success because pulse oximeters were widely used in patient monitoring systems and the underlying Naghavi system was inherently flexible and designed to accommodate various sensors.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both Fintiv and 35 U.S.C. §325(d).
• Fintiv Factors: Petitioner contended that denial under Fintiv is not warranted because the PTAB's Final Written Decision (FWD) is projected to issue well before the trial date in a parallel district court proceeding, which has not yet been set. Furthermore, Petitioner offered a broad stipulation that it would not pursue in the district court any invalidity ground that utilizes any of the prior art asserted in this petition, thereby preventing overlap and ensuring the inter partes review (IPR) is a true alternative to litigation.
• §325(d) Factors: Petitioner argued that denial under §325(d) is improper because the core prior art combination (Naghavi, Hochstedler, Burnes) was never before the U.S. Patent and Trademark Office during prosecution. While Hayashi and a parent to Mortz were cited in an Information Disclosure Statement, they were not substantively analyzed or applied by the Examiner.

5. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-4, 6, 11-22, 27-28, 32, 34, 36-37, and 42-44 of the ’223 patent as unpatentable.