Samsung Electronics Co Ltd v. Oura Health Oy

1. Case Identification

• Case #: IPR2024-01080
• Patent #: 10,842,429
• Petitioner(s): Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.
• Patent Owner(s): Oura Health Oy
• Challenged Claims: 1-6

2. Patent Overview

• Title: Method for Assessing Readiness
• Brief Description: The ’429 patent is directed to a method for determining a user's readiness by processing and analyzing biological signals and physical activity data to calculate a "readiness score," which estimates the user's capacity to perform well on a given day.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ahmed, optionally in view of Shiga - Claims 1-6 are obvious over Ahmed alone or in view of Shiga.

• Prior Art Relied Upon: Ahmed (Application # 2015/0250396) and Shiga (Application # 2011/0201902).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ahmed alone taught every limitation of the challenged claims. Ahmed disclosed a method for determining a user's "recovery score," which Petitioner equated to the claimed "readiness score." This method involved collecting movement data via wearable sensors (e.g., accelerometers), distinguishing between rest (sleep) and activity periods, and measuring biosignals like heart rate. Ahmed determined a "sleep score" (rest summary) and an "intensity score" (activity summary), both based on current and historical data. These summaries were combined to calculate the final recovery score. Furthermore, Ahmed taught a user interface on a mobile device that displayed elements contributing to the recovery score (e.g., HRV, sleep quality, recent strain) and provided instructions for improvement, such as "may need rest" or implicit instructions to reduce psychological stress.
  • Motivation to Combine (for §103 grounds): Petitioner asserted that if the claimed "body response summary" is construed to require a discrete numerical value calculated before the final readiness score, a POSITA would combine Ahmed with Shiga. Shiga taught a numerical "lifestyle index" generated by combining an "exercise related index" and a "sleep related index." A POSITA would combine Shiga’s numerical index concept with Ahmed's system to provide a more tangible and user-friendly summary of the user's combined rest and activity status, which was argued to be a simple and predictable improvement.
  • Expectation of Success (for §103 grounds): A POSITA would have an expectation of success because Ahmed and Shiga are analogous art, both involving physiological monitoring devices that use similar biometric data (heart rate, activity) for the same purpose: evaluating health and providing recommendations.

Ground 2: Obviousness over Wisbey in view of Shiga - Claims 1-6 are obvious over Wisbey in view of Shiga.

• Prior Art Relied Upon: Wisbey (Application # 2015/0119732) and Shiga (Application # 2011/0201902).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Wisbey taught a method for "providing a recovery status" based on an "interpreted recovery score." This score was calculated from a "fatigue level," which in turn was based on the user's sleep amount, physical activity, and HRV over past periods (e.g., 48 hours). Wisbey's recovery score indicated the user's readiness for further physical activity. The system determined a rest summary (based on sleep over the last 48 hours), an activity summary (a "metabolic activity score" based on past and present activity), and a body response summary ("fatigue level") to calculate the final readiness score using both current and historical data.
  • Motivation to Combine (for §103 grounds): Petitioner argued that Wisbey did not explicitly teach displaying the score components and improvement instructions on a user interface of a mobile communication device. A POSITA would combine Wisbey with Shiga to address this. Shiga taught a well-known, user-friendly mobile interface for displaying an "improvable factor" (akin to a readiness score) and its contributing elements (exercise, sleep), showing progress against past data and averages. Implementing Shiga's interface was argued to be an obvious way to enhance Wisbey's system for better presentation of information to the user.
  • Expectation of Success (for §103 grounds): Success would be expected as both references concerned analogous physiological monitoring technologies, measured similar biological markers during similar activities, and shared the goal of providing health recommendations.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-6 over Wisbey in view of Ahmed, relying on a similar design modification theory where Ahmed provided the mobile user interface to enhance Wisbey's system.

4. Key Claim Construction Positions

• "obtaining the user's movements" (Claim 1): Petitioner applied the construction "collecting data regarding the user's movements," which was agreed upon by the Patent Owner in a related district court litigation.
• "instruction related to physical activity and mental activity for improving the readiness score" (Claim 1): Petitioner applied the construction "instructions related to at least one physical activity and at least one mental activity for improving the readiness score," also based on an agreement in the same related litigation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §325(d). The core argument was that the primary prior art combinations in the petition were not before the PTO during prosecution. Specifically, Ahmed and Shiga were never cited or considered by the Examiner. While Wisbey was cited, it is presented here in new combinations with art the Examiner never considered. This, Petitioner argued, failed the first prong of the Advanced Bionics framework.
• Petitioner also argued against discretionary denial under Fintiv, stating that while a declaratory judgment action is pending between the parties, it includes no invalidity claims and therefore presents no overlap with the petition.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-6 of the ’429 patent as unpatentable.