Apple Inc v. Masimo Corp

1. Case Identification

• Case #: IPR2024-00294
• 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 mobile pulse oximetry system for measuring blood oxygen saturation (SpO2). The system comprises an optical sensor, a separate processing board that generates SpO2 values from the sensor's signals, and a mobile computing device (e.g., a smartphone) that receives the SpO2 values and displays them via a software application.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mendelson and D'Angelo - Claims 1-2, 5, 7, 9, 12-15, and 17-19 are obvious over Mendelson in view of D'Angelo.

• Prior Art Relied Upon: Mendelson (a 2006 IEEE publication on wearable pulse oximeters) and D'Angelo (a 2011 IEEE publication on interfacing sensor networks with iPhones).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mendelson discloses the core elements of the challenged claims, including a wearable pulse oximetry system with a sensor module, a body-worn receiver module (the processing board) that computes SpO2, and a PDA that wirelessly receives and displays the data on a graphical user interface (GUI) with multiple display portions. D’Angelo was argued to supply the remaining limitations by teaching the use of a modern smartphone (like an iPhone) as the mobile computing device and disclosing a method for a connected management device (equivalent to Mendelson's receiver module) to draw power from the smartphone.
  • Motivation to Combine: A POSITA would combine Mendelson with D'Angelo to replace Mendelson’s outdated PDA with a ubiquitous smartphone. This would leverage a device already owned by most users, thereby reducing system cost, eliminating the need to carry a separate device, and providing inherent cellular communication capabilities for remote monitoring. Further, D'Angelo’s teaching of drawing power from the smartphone would provide a crucial backup power source for the processing board, enhancing system reliability.
  • Expectation of Success: Petitioner asserted that because both references are in the field of mobile physiological monitoring and address complementary aspects of such systems (sensor/processing and smartphone interface), a POSITA would have had a high expectation of success in combining their teachings.

Ground 2: Obviousness over Mendelson and Tran - Claims 4-6, 8, 16, 18, and 20 are obvious over Mendelson in view of Tran.

• Prior Art Relied Upon: Mendelson (a 2006 IEEE publication) and Tran (Application # 2008/0004904).
• Core Argument for this Ground:
  • Prior Art Mapping: Mendelson provided the foundational mobile pulse oximetry system. Tran was asserted to teach the specific application-level functionalities recited in the dependent claims, namely setting reminders for future measurements and outputting alerts to a network or designated care provider when physiological readings are abnormal.
  • Motivation to Combine: A POSITA would combine these references to enhance the clinical utility and efficiency of Mendelson's system. Integrating Tran's user-configurable reminders would ensure periodic data collection without requiring continuous sensor operation, thereby conserving battery life—a key concern noted by Mendelson. Adding Tran’s network-based alerting functionality would improve remote care by ensuring that healthcare providers are promptly notified of abnormal SpO2 readings, a stated goal of the Mendelson system.
  • Expectation of Success: The proposed combination involved adding well-understood software features (reminders and alerts) to an existing monitoring system. Petitioner argued this would be a routine and predictable modification for a POSITA.

Ground 3: Obviousness over Mendelson and Moon (Addressing Motion Artifacts) - Claims 13, 15, and 18-19 are obvious over Mendelson in view of Moon.

• Prior Art Relied Upon: Mendelson (a 2006 IEEE publication) and Moon (Application # 2010/0324387).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative, contingent on the claim term "mobile measurement" being interpreted to require active correction of motion-induced artifacts. Mendelson disclosed a system for mobile users, but Moon explicitly taught techniques to improve measurement accuracy in such scenarios. Moon described a body-worn monitor with motion-detecting sensors used to process signals and exclude noise-corrupted artifacts from the SpO2 calculation.
  • Motivation to Combine: Since Mendelson’s system was designed for active users (e.g., “soldiers during training exercises or combat”), a POSITA would have been highly motivated to address the known problem of motion artifacts degrading the accuracy of pulse oximetry. A POSITA would combine Moon’s advanced signal processing techniques to filter noise caused by user motion, thereby greatly enhancing the accuracy and reliability of the data from Mendelson's system.
  • Expectation of Success: Petitioner contended that applying Moon's artifact-reduction techniques to Mendelson's mobile system was a straightforward application of a known solution to a known problem, with a predictable outcome of improved accuracy.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Kianl (to add trend analysis and graphical charts), Ording (to add pinch-to-zoom gestures on a touchscreen), Goldsmith (to implement the mobile device as a wristwatch), and various permutations of these references with the primary combinations.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) and the Fintiv factors would be inappropriate. The petition contended that the scheduled trial date in the parallel district court litigation is unreliable and likely to occur well after the statutory deadline for a Final Written Decision (FWD) in this inter partes review (IPR). Most significantly, Petitioner argued that the grounds and prior art in the petition are materially different from those in the district court case. Petitioner provided a stipulation that, if the IPR is instituted, it will not pursue in the district court proceeding any invalidity ground for the instituted claims that utilizes any of the prior art asserted in this petition. Petitioner argued this stipulation guarantees no overlap or inefficiency and strongly weighs against denial.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-20 of Patent 10,736,507 as unpatentable.