Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2024-00293
• Patent #: 10,736,507
• Filed: December 12, 2023
• Petitioner(s): Apple Inc.
• Patent Owner(s): Masimo Corporation
• Challenged Claims: 1-20

2. Patent Overview

• Title: Physiological Monitor with Mobile Computing Device Connectivity
• Brief Description: The ’507 patent discloses a physiological monitoring system, specifically a mobile pulse oximetry system for measuring blood oxygen saturation (SpO2). The system comprises an optical sensor, a separate processing board that receives sensor signals and calculates SpO2 values, and a mobile computing device (e.g., smartphone, wristwatch) that wirelessly receives the calculated values and displays them to a user via a dedicated software application.

3. Grounds for Unpatentability

Ground 1: System and Method Claims with Power and UI Features - Claims 1-2, 5, 7, 9, 12-15, 17, and 19 are obvious over Bailey in view of D'Angelo.

• Prior Art Relied Upon: Bailey (a 2010 university paper on a remote pulse oximeter) and D'Angelo (a 2011 IEEE conference paper on interfacing medical sensors with smartphones).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bailey discloses the core elements of the claimed system: an optical sensor, a processing board with a microcontroller, and wireless communication to an iPhone running an application to display SpO2 data on a graphical user interface (GUI) with multiple display portions. D'Angelo was argued to supply the remaining limitations of independent claim 1, including teaching a processing board configured to draw power from a connected smartphone and disclosing a more advanced user interface for displaying various physiological parameters.
  • Motivation to Combine: A POSITA would combine D'Angelo with Bailey to improve the system's functionality and reliability. D'Angelo's teaching of drawing power from the smartphone provides a crucial backup power source, a significant benefit for a portable medical device. Additionally, incorporating D'Angelo's enhanced UI features would improve the user experience by providing more versatile data visualization and alarm-setting capabilities.
  • Expectation of Success: Petitioner asserted a high expectation of success because both references describe similar three-component architectures (sensor, processor, mobile device). Integrating D'Angelo's teachings would involve straightforward hardware and software modifications to achieve the predictable benefits of improved power management and a more flexible user interface.

Ground 2: Method Claims with Reminders and Alerts - Claims 4, 6, 8, 16, 18, and 20 are obvious over Bailey in view of Tran.

• Prior Art Relied Upon: Bailey (a 2010 university paper) and Tran (Application # 2008/0004904).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the base system taught by Bailey. Petitioner argued that Tran teaches a patient monitoring system with software features that allow a user to set up reminders for taking future measurements and to automatically send alerts over a network to a designated physician or caregiver in response to abnormal readings.
  • Motivation to Combine: A POSITA would be motivated to add Tran's features to Bailey's system to enhance patient compliance and enable timely clinical intervention, which are primary goals of remote monitoring. Providing reminders for periodic measurements improves data consistency and conserves battery life compared to continuous monitoring. Sending automated alerts for abnormal SpO2 readings allows for a more rapid response from healthcare providers.
  • Expectation of Success: Petitioner argued that success was predictable. Implementing reminder and alert functions are well-known software features that could be readily integrated into the iPhone application described in Bailey using standard software development kits (SDKs), as suggested by both references.

Ground 3: Method Claims with Motion Artifact Correction - Claims 13-15 and 19 are obvious over Bailey in view of Moon.

• Prior Art Relied Upon: Bailey (a 2010 university paper) and Moon (Application # 2010/0324387).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this ground to address a potential interpretation of the claim preamble term "mobile measurement" as requiring active reduction of motion artifacts. While Bailey discloses a mobile system, Moon was argued to explicitly teach a body-worn pulse oximeter with motion-detecting sensors. Moon uses data from these sensors to process the optical signal, filter out noise, and exclude corrupted artifacts from the SpO2 calculation, thereby enhancing measurement accuracy during user activity.
  • Motivation to Combine: A POSITA would combine Moon with Bailey to improve the accuracy and reliability of a pulse oximeter intended for ambulatory users. Since Bailey’s system is designed to be worn during normal activity, motion artifacts are a known and significant problem that can lead to inaccurate readings and false alarms. Moon provides a direct and known solution to this problem.
  • Expectation of Success: The combination was asserted to be predictable. Bailey already contemplates using filters to limit signal noise, and Moon provides specific, known signal processing techniques for motion artifact correction, making the integration straightforward for a skilled artisan.
• Additional Grounds: Petitioner asserted numerous additional obviousness challenges based on other combinations, including adding Kianl (Patent 6,658,276) for advanced trend analysis views, Ording (Patent 7,812,826) for pinch-to-zoom gestures on a touchscreen, and Goldsmith (Application # 2007/0093786) for implementing the mobile computing device as a wearable wristwatch.

4. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued against discretionary denial of institution. It contended that a Final Written Decision (FWD), expected by July 2025, would likely issue months before a potential trial date in the parallel district court litigation. Crucially, Petitioner stipulated that if the IPR is instituted, it will not pursue in court any invalidity ground that uses any of the prior art asserted in the petition, eliminating meaningful overlap (Factor 4). Petitioner also noted that this IPR challenges all 20 patent claims, whereas the parallel litigation involves only a subset, arguing this disparity weighs in favor of institution.
• §325(d): Petitioner argued that denial under §325(d) is unwarranted because the petition raises new issues. The primary prior art references, such as Bailey and Moon, were never before the examiner during original prosecution. Furthermore, while the Kianl reference was cited on the face of the ’507 patent, it was never substantively addressed by the examiner or considered in the combinations asserted in this petition.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 10,736,507 as unpatentable.