• Apple Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · May 5, 2022 · IPR2020-01722 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 6, 14, and 21 are unpatentable as obvious over Sarantos, Mendelson-1991, and Chin, and over Ackermans and Chin.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not offer its own assessment of the level of ordinary skill. Patent Owner, however, does level a measure of criticism of Petitioner’s assessment of the level of skill in the art as not accounting for experience in optics or physiology, and focusing on “data processing and not sensor design.” PO Resp. 13. Nevertheless, Patent Owner expresses that it “applies [Petitioner’s] asserted level of skill.” Id. (citing Ex. 2001 ¶¶ 34– 36). We determine that the Petitioner’s expressed level of ordinary skill in the art is consistent with the ’695 patent and the prior art of record. Accordingly, we adopt it in this Decision.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We also question the significance of the “experiments” performed by Dr. Madisetti as alleged support for the proposition that a diffuser would have “detrimental consequences” if applied to a “reflectance-type” pulse oximeter sensor, presumably such as in Sarantos or Mendelson-1991. See PO Resp. 20–21; Ex. 2001 ¶¶ 57–60, Appendix. Evidently, Dr. Madisetti applied diffusers of different diffuser material to one commercially available “reflectance-type” pulse oximeter sensor and conducted experiments to detect light based on the different materials juxtaposed with a sensor without any diffuser material. Left unexplained, however, is the basis to conclude that the commercially available sensor and the particular diffuser materials used somehow should be regarded as constituting the type of sensor that emerges from the combined teachings of Sarantos, Mendelson-1991, and Chin. The record provides considerable doubt in that regard. For instance, as noted by Petitioner (see Pet. Reply 6–9), the commercially available sensor used by Dr. Madisetti is one that has only a single detector, whereas the type of sensors involved in the context of the ’695 patent and the pertinent prior art are those that include multiple detectors. On its face, that difference appears significant, but is not addressed or accounted for by Patent Owner or Dr. Madisetti. Neither Patent Owner nor Dr. Madisetti provides any meaningful explanation as to why the outcome of the experiments sheds light on the question of the obviousness of claims 6, 14, and 21 of the ’695 patent in view of the particular prior art teachings on which Petitioner relies. We do not find Patent Owner’s assertions of non-obviousness based on Dr. Madisetti’s experiments to be adequate or particularly probative of the obviousness question. Lastly, we do not find credible Patent Owner’s argument that a skilled artisan lacks motivation to incorporate a diffuser into a “Sarantos- Mendelson[-1991] device” because Sarantos discloses positioning of its detectors in such a way that allegedly already maximizes light receipt by the detector, which would be “negat[ed]” were the device to incorporate a diffuser. PO Resp. 31–32 (citing Ex. 2001 ¶ 74). Neither Patent Owner nor Dr. Madisetti adequately explains why a skilled artisan would have regarded Sarantos’s teachings as being limited solely to a singular light spreading pattern that effectively precludes any modification that alters the pattern. Indeed, we agree with Petitioner that it simply does not follow from the teachings of the prior art, specifically Chin, that a diffuser applied to a different device such as that arising from the Sarantos and Mendelson-1991 combination, would have some sort of negating effect that would disrupt operation of the device. See Pet. Reply 12. Rather, it follows from the evidence of record that a skilled artisan would have recognized that a diffuser provides for light to be desirably “further spread[]” to pass, in some instances, through more tissue and more blood. See Pet. Reply 12; Ex. 1006 2:4–9, 8:25–29; Ex. 1003 ¶¶ 96–101. We credit Dr. Anthony’s testimony in that respect over the contrary testimony of Dr. Madisetti (see, e.g., Ex. 2001 ¶ 74), as we conclude that Dr. Anthony’s testimony is more consistent with the teachings of the prior art of record.” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Figures 7A and 7B (id. at 8:25–29),9 but there is nothing that suggests that Chin limits the benefits of a diffuser to one particular tissue type (e.g., nostril tissue). We find persuasive Petitioner’s view, and the supporting testimony of Dr. Anthony, that a skilled artisan would have recognized from Chin’s disclosure that the light spreading benefits of a diffuser provide for a “stronger reflected signal” that facilitates determining measured physiological parameters. Pet. 63 (citing Ex. 1006, 2:4–7, 8:25–29, 9:64– 10:7; Ex. 1003 ¶ 99). Patent Owner simply provides no cogent basis to conclude that Chin’s diffuser would not function predictably as is disclosed, i.e., spreading light so that it passes through more tissue and blood, when used in conjunction with other types of sensor devices, such as those of Santos and Mendelson-1991. See KSR, 550 U.S. 398 at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”) We additionally find unavailing Patent Owner’s general argument that a skilled artisan would not have had a reasonable expectation of success in applying a diffuser used in one type of oximeter sensor, such as that in Chin, to other types of oximeter sensors, such as those of Sarantos and Mendelson- 1991. See, e.g., PO Resp. 24–25. We do not agree that “Chin fails to disclose any specific way of implement[ing]” its diffuser into a sensor. See id. at 24. It clearly does. Chin shows, at least in Figure 7B, a diffuser associated with a nostril sensor. Chin also does not limit its teachings as to a diffuser to any one particular type of sensor, e.g., a nostril sensor. We are 9 “Also shown is an optional optical diffuser 180 for diffusing the light from emitter 176, which causes a further spreading or mixing of light and may enhance the amount of tissue penetrated in some instances.” Ex. 1006, 8:25–29. not satisfied by Patent Owner’s arguments that some structural and operational differences between the sensors of Sarantos and Mendelson- 1991 as compared with that of Chin means that a skilled artisan would not have expected success in combining those teachings. See id. at 24; see also id. at 25–29 (discussing differences between wrist-worn sensors and nostril sensors). A person of ordinary skill in the art is a person of ordinary creativity. See KSR, 550 U.S. at 421. It follows readily that a person of ordinary skill and creativity reasonably would have understood how to implement such diffusers in other types of heart rate or pulse oximeter sensors, such as those of Sarantos and Mendelson-1991, in structural configurations necessary to harness the recognized benefits of such diffusers. We credit Dr. Anthony’s testimony to that effect. See, e.g., Ex. 1003 ¶¶ 96–101.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner

    “Patent Owner’s and Dr. Madisetti’s opposing views are rooted only in speculation that a skilled artisan would not have appreciated the benefits of a diffuser in other sensors beyond Chin’s nostril sensor, which are intended for application to different body parts. See, e.g., PO Resp. 25–29; Ex. 2001 ¶¶ 69–71. Patent Owner and Dr. Madisetti also seemingly attempt to draw distinctions between a wrist-worn “reflectance-type sensor” and a “transmittance-type sensor” for a nostril in connection with use of a diffuser. See PO Resp. 25–29; Ex. 2001 ¶¶ 69–71. Yet, those views overly focus on the specific configurations of single embodiments of each of the pertinent references and do not reflect an appropriate obviousness analysis that takes into account the inferences and creatives steps that a skilled artisan would employ. See KSR, 550 U.S. at 421 (“[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). Specifically, those views do not account adequately for Chin’s plain disclosure recognizing the general benefits of a diffuser and that its sensor may be attached “to any body part” in the form of either a “reflectance or a transmittance sensor.” See Ex. 1003, 2:4–7, 5:54–57. From at least that disclosure, a person of ordinary skill and creativity reasonably would have recognized that Chin contemplates various sensor types and that those sensors, including use of a diffuser, may be applied to various body parts of a user. See, e.g., Ex. 1003 ¶¶ 96–101.” slip op. at 22

  Patent outcomesUS 10,470,695 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,470,695
• Apple Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · May 4, 2022 · IPR2020-01737 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–27 are unpatentable as obvious: claims 1–12 and 14–27 over Aizawa, Mendelson-2003, Ohsaki, and Goldsmith; claim 13 over that combination plus Sherman.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). Accordingly, we construe the claims according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Petitioner submits that no claim term requires express construction. Pet. 3. Patent Owner asserts that the claims should be given their ordinary and customary meaning, consistent with the specification. PO Resp. 9. Based on our analysis of the issues in dispute, we conclude that no claim terms require express construction. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information.” Pet. 3 (citing Ex. 1003 ¶¶ 21–22). “Alternatively, the person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline.” Id. Patent Owner makes several observations regarding Petitioner’s identified level of skill in the art but, “[f]or this proceeding, [Patent Owner] nonetheless applies Petitioner’s asserted level of skill.” PO Resp. 9. We adopt Petitioner’s assessment as set forth above, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Rationales 1 and 2 The evidence of record persuades us that adding a convex cover, such as that taught by Ohsaki, would have improved adhesion between the sensor and the user’s skin, which would have increased the signal strength of the sensor. Ohsaki teaches as much: [T]he convex surface of the translucent board 8 is in intimate contact with the surface of the user’s skin. Thereby it is prevented that the detecting element 2 slips off the detecting position of the user’s wrist 4. If the translucent board 8 has a flat surface, the detected pulse wave is adversely affected by the movement of the user’s wrist 4 as shown in Fig. 4B. However, in the case that the translucent board 8 has a convex surface like the present embodiment, the variation of the amount of the reflected light which is emitted from the light emitting element 6 and reaches the light receiving element 7 by being reflected by the surface of the user’s skin is suppressed. It is also prevented that noise such as disturbance light from the outside penetrates the translucent board 8. Therefore the pulse wave can be detected without being affected by the movement of the user’s wrist 4 as shown in FIG. 4A. Ex. 1014 ¶ 25 (emphasis added); see also id. ¶ 27 (“detecting element 2 is stably fixed”). We credit Dr. Kenny’s testimony that a person of ordinary skill in the art would have been motivated by such teachings to apply a cover with a convex surface to Aizawa to improve that similar device in the same way and to yield predictable results, i.e., to resist movement of the sensor on the user’s wrist and to suppress variation. See, e.g., Ex. 1003 ¶¶ 77 (“[T]his contact between the convex surface and the user’s skin is said to prevent slippage, which increases the strength of the signals obtainable by Ohsaki’s sensor.”), 79 (One of ordinary skill would have understood that this would “improve adhesion between the user’s wrist and the sensor’s surface, improve detection efficiency.”). We find persuasive Dr. Kenny’s explanation that the person of ordinary skill in the art “would have understood that a protruding convex cover would reduce the adverse effects of user movement on signals obtainable by photodetectors which are positioned to detect light reflected from user tissue.” Ex. 1060 ¶ 13. Indeed, Ohsaki expressly compares the performance of a wrist-worn” slip op. at 54

  • Strike new argumentNew argument consideredDecided for petitioner

    “We additionally do not agree with Patent Owner’s argument that Petitioner’s Reply presents new arguments and evidence that should have been first presented in the Petition, to afford Patent Owner an adequate opportunity to respond. See Sur-reply 16–19. The Petition proposed a specific modification of Aizawa to include a convex protrusion in the cover, for the purpose of increasing the light gathering ability of Aizawa’s device. See Pet. 26–29. The Patent Owner Response then challenged that contention, with several arguments that Petitioner’s proposed convex protrusion would not operate in the way the Petition alleges it would operate. See PO Resp. 45–53. This opened the door for Petitioner to provide, in the Reply, arguments and evidence attempting to rebut the contentions in the Patent Owner Response. See PTAB Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated Guide”),9 73 (“A party also may submit rebuttal 9 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. evidence in support of its reply.”). This is what Petitioner did here. The Reply does not change Petitioner’s theory for obviousness; rather, the Reply presents more argument and evidence in support of the same theory for obviousness presented in the Petition. Compare Pet. 26–29, with Pet. Reply 20–30.” slip op. at 66

  Patent outcomesUS 10,709,366 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,709,366
• Apple Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · May 2, 2022 · IPR2020-01713 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–30 are unpatentable as obvious under § 103 over the stated combinations of Aizawa, Ohsaki, and Goldsmith, with Sherman, Rantala, or Ali as applicable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Based on the final record, we maintain our initial interpretation of the term “processor” as meaning “part of a computer system that operates on data.” See Ex. 1012, 5. This definition is consistent with the general operation of the signal processor in the ’564 patent, where the signal processor is described to include “processing logic that determines measurements . . . based on the signals received from the detectors.” Ex. 1001, 15:31–35; 15:35–39 (“signal processor 110 can be implemented using one or more microprocessors or subprocessors . . . digital signal processors, application specific integrated circuits (ASICs), field programmable gate arrays (FPGAs), combinations of the same”).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner identifies the appropriate level of skill in the art as that possessed by a person having “a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information.” Pet. 8 (citing Ex. 1003 ¶¶ 21–22). “Additional education in a relevant field or industry experience may compensate for one of the other aspects of the . . . characteristics stated above.” Id. Patent Owner makes several observations regarding Petitioner’s identified level of skill in the art but, “[f]or this proceeding, [Patent Owner] nonetheless applies Petitioner’s asserted level of skill.” PO Resp. 7–8. We adopt Petitioner’s assessment as set forth above, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “contention that a person of ordinary skill in the art would have provided “a light permeable cover with a protruding convex surface,” such as that taught by Ohsaki, to Aizawa’s sensor: (1) to improve adhesion between the sensor and the user’s tissue; (2) to improve detection efficiency; and (3) to protect the elements within the sensor housing. Pet. 20–23 (citing, e.g., Ex. 1003 ¶¶ 67–70; Ex. 1009 ¶ 25). As further examined below, we determine all three rationales are supported by the evidence, and further that any single rationale standing alone would have been sufficient to establish a basis for the person of ordinary skill in the art to combine the references as proposed. Rationales 1 and 2 The evidence of record persuades us that adding a convex cover, such as that taught by Ohsaki, would have improved adhesion between the sensor and the user’s skin, which would have increased the signal strength of the sensor. Ohsaki teaches as much: [T]he convex surface of the translucent board 8 is in intimate contact with the surface of the user’s skin. Thereby it is prevented that the detecting element 2 slips off the detecting position of the user’s wrist 4. If the translucent board 8 has a flat surface, the detected pulse wave is adversely affected by the movement of the user’s wrist 4 as shown in Fig. 4B. However, in the case that the translucent board 8 has a convex surface like the present embodiment, the variation of the amount of the reflected light which is emitted from the light emitting element 6 and reaches the light receiving element 7 by being reflected by the surface of the user’s skin is suppressed. It is also prevented that noise such as disturbance light from the outside penetrates the translucent board 8. Therefore the pulse wave can be detected without being affected by the movement of the user’s wrist 4 as shown in FIG. 4A. Ex. 1009 ¶ 25 (emphasis added); see also id. ¶ 27 (“detecting element 2 is stably fixed”). We credit Dr. Kenny’s testimony that a person of ordinary skill in the art would have been motivated by such teachings to apply a cover with a convex surface to Aizawa to improve that similar device in the same way and to yield predictable results, i.e., to resist movement of the sensor on the user’s wrist and to suppress variation. See, e.g., Ex. 1003 ¶¶ 68 (“[T]his contact between the convex surface and the user’s skin prevents slippage, which increases the strength of the signals obtainable by Ohsaki’s [sensor].”), 70, 103 (One of ordinary skill would have understood that this “would have been used to realize improved adhesion between the user’s wrist and the sensor’s surface, improve detection efficiency.”). We find persuasive Dr. Kenny’s explanation that the person of ordinary skill in the art “would have understood that a protruding convex cover would reduce the adverse effects of user movement on signals obtainable by photodetectors which are positioned to detect light reflected from user tissue.” Ex. 1050 ¶ 13.” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “[b]ased on Aizawa’s teaching that a flat acrylic plate improves adhesion on the palm side of the wrist, and Ohsaki’s teaching that a convex surface tends to slip on the palm side of the wrist, a [person of ordinary skill in the art] would have come to the opposite conclusion from Dr. Kenny: that modifying Aizawa’s flat adhesive plate “to include a lens/protrusion . . . similar to Ohsaki’s translucent board” would not “improve adhesion.” Ex. 2004 ¶ 78 (emphasis omitted); see also id. ¶ 76. We disagree with this reading of Aizawa. It is true that Aizawa’s plate 6 is illustrated as having a flat surface (Ex. 1006, Fig. 1(b)), and that Aizawa states the plate “improve[s] adhesion” (id. ¶ 13). Aizawa further states: “the above belt 7 is fastened such that the acrylic transparent plate 6 becomes close to the artery 11 of the wrist 10,” and “[t]hereby, adhesion between the wrist 10 and the pulse rate detector 1 is improved.” Id. ¶ 26. These disclosures, however, indicate the improved adhesion is provided by the acrylic material of plate 6, not the shape of the surface of the plate, which is never specifically addressed. See also id. ¶¶ 30, 34 (“Since the acrylic transparent plate 6 is provided . . . adhesion between the pulse rate detector 1 and the wrist 10 can be improved.”). Aizawa does not associate this benefit of improved adhesion with the surface shape of the plate, but rather, with the existence of an acrylic plate to begin with. Thus, there is no teaching away from using a convex surface to improve the adhesion of Aizawa’s detector to the user’s wrist.” slip op. at 44

  Patent outcomesUS 10,624,564 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,624,564
• Arconic Technologies LLC v. Novelis Inc.Rehearing denied
  PTAB · May 2, 2022 · DER2018-00004 · APJ James T Moore · DER · Rehearing

  The Board denied Arconic’s rehearing request, leaving in place denial of institution because it had not shown sufficiently corroborated prior conception for derivation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “documents cited by Petitioner for each of the six steps of claim 22 and explained why they were insufficient to corroborate Mr. Marinelli’s testimony. Id. at 16–22. We concluded that “[s]ubstantial evidence does not support Petitioner’s assertion that its inventors conceived of the inventions allegedly communicated to Respondent’s inventors (i.e., the six-step processes of each of Respondent’s claims)” and denied institution of a derivation proceeding. Id. at 23.” slip op. at 4

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “[w]e are not informed as to which of Mr. Marinelli, Mr. Dennis, and Mr. Shoemaker conceived what portions of the invention of claim 22 or how the three individuals jointly conceived of the recited process. Petitioner provides no explanation as to what the contributions of each individual were (other than that they were all “involved” in the development of the A951 process), the circumstances surrounding those contributions, or even when conception occurred. Indeed, Mr. Marinelli testifies that Petitioner began development of chromium-free aluminum pretreatments that provided the same performance characteristics of a chromate conversion coating in 1992 and that the development work spanned “the next two decades,” but does not explain when during that time he conceived of the process of claim 22 with Mr. Dennis and Mr. Shoemaker. Again, there is no meaningful information provided about what work was done by whom or the circumstances under which the claimed invention was conceived, other than a general assertion that it was Petitioner undertaking the work.” slip op. at 3

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part

    “a trial, a party may file a motion to expunge confidential information from the record.” 37 C.F.R. § 42.56. The Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 21–22, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”), provides: Confidential information that is subject to a protective order ordinarily would become public 45 days after denial of a petition to institute a trial or 45 days after final judgment in a trial. There is an expectation that information will be made public where the existence of the information is referred to in a decision to grant or deny a request to institute a review or is identified in a final written decision following a trial. A party seeking to maintain the confidentiality of information, however, may file a motion to” slip op. at 13

  None
  Patents in suitUS 11,807,942
• Apple Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Apr 28, 2022 · IPR2020-01733 · APJ Amanda F Wieker · IPR · Final written decision

  Claims 1–17 are unpatentable as obvious over Aizawa, Mendelson-2003, Ohsaki, and Goldsmith; the Board did not reach the additional ground including Ali.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). Petitioner submits that no claim term requires express construction. Pet. 3. Patent Owner submits that claim terms should be given their ordinary and customary meaning, consistent with the Specification. PO Resp. 9. We agree that no claim terms require express construction. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information.” Pet. 3 (citing Ex. 1003 ¶¶ 21–22). “Alternatively, the person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline.” Id. Patent Owner makes several observations regarding Petitioner’s identified level of skill in the art but, “[f]or this proceeding, [Patent Owner] nonetheless applies Petitioner’s asserted level of skill.” PO Resp. 9 (citing Ex. 2004 ¶¶ 30–32). We adopt Petitioner’s assessment as set forth above, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “ordinary skill in the art would not have made the proposed combination because it “introduces signal processing problems requiring a further redesign for Aizawa’s sensor” to include a second amplifier to account for signals of different strengths between the near and far rings. PO Resp. 63– 64. A person of ordinary skill in the art must be presumed to understand something about the art beyond what is disclosed in the references. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). After all, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Neither Patent Owner nor Dr. Madisetti assert that adding a second amplifier would be beyond the level of skill in the art or would introduce any specific problems, beyond its mere addition. We credit Dr. Kenny’s testimony that a person of ordinary skill would have recognized that, in order to account for the disparate currents generated by the two rings, the rings would be separately wired with separate amplifiers (Ex. 1003 ¶ 109) and that this would have been a routine and conventional design choice, within the level of ordinary skill in the art (id. ¶ 106).” slip op. at 38

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “The evidence of record persuades us that adding a single protruding convex surface, such as that taught by Ohsaki, to Aizawa’s cover would have improved adhesion between the sensor and the user’s skin, which would have increased the signal strength of the sensor. Ohsaki teaches as much: [T]he convex surface of the translucent board 8 is in intimate contact with the surface of the user’s skin. Thereby it is prevented that the detecting element 2 slips off the detecting position of the user’s wrist 4. If the translucent board 8 has a flat surface, the detected pulse wave is adversely affected by the movement of the user’s wrist 4 as shown in Fig. 4B. However, in the case that the translucent board 8 has a convex surface like the present embodiment, the variation of the amount of the reflected light which is emitted from the light emitting element 6 and reaches the light receiving element 7 by being reflected by the surface of the user’s skin is suppressed. It is also prevented that noise such as disturbance light from the outside penetrates the translucent board 8. Therefore the pulse wave can be detected without being affected by the movement of the user’s wrist 4 as shown in FIG. 4A. Ex. 1014 ¶ 25 (emphases added); see also id. ¶ 27 (“stably fixed”). We credit Dr. Kenny’s testimony that a person of ordinary skill in the art would have been motivated by such teachings to apply a cover with a convex surface to Aizawa to improve that similar device in the same way, i.e., to “simply improv[e] Aizawa-Mendelson-2003’s transparent plate 6 that has a flat surface to improve adhesion to a subject’s skin and reduce variation in the signals detected by the sensor.” See, e.g., Ex. 1003 ¶ 81; id. ¶¶ 78 (“[T]his contact between the convex surface and the user’s skin is said to prevent slippage, which increases the strength of the signals obtainable by Ohsaki’s sensor.”), 78–79. We also credit Dr. Kenny’s testimony that, in light of these teachings, a person of ordinary skill in the art would have” slip op. at 52

  Patent outcomesUS 10,702,195 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,702,195
• Apple Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Apr 28, 2022 · IPR2020-01716 · APJ Amanda F Wieker · IPR · Final written decision

  Claims 1–30 are unpatentable as obvious: claims 1–18, 20, and 22–30 over Aizawa, Mendelson-2003, Ohsaki, and Mendelson-2006; claims 19 and 21 with Beyer added.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “possessed by a person having “a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information.” Pet. 3 (citing Ex. 1003 ¶¶ 20–21). “Alternatively, the person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline.” Id. Patent Owner makes several observations regarding Petitioner’s identified level of skill in the art but, “[f]or this proceeding, [Patent Owner] nonetheless applies Petitioner’s asserted level of skill.” PO Resp. 10 (citing Ex. 2004 ¶¶ 30–32). We adopt Petitioner’s assessment as set forth above, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). Petitioner submits that no claim term requires express construction. Pet. 3. Patent Owner submits that claim terms should be given their ordinary and customary meaning, consistent with the Specification. PO Resp. 9–10. We agree that no claim terms require express construction. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “The evidence of record persuades us that adding a convex protruding surface, such as that taught by Ohsaki, to Aizawa’s cover would have improved adhesion between the sensor and the user’s skin, which would have increased the signal strength of the sensor. Ohsaki teaches as much: [T]he convex surface of the translucent board 8 is in intimate contact with the surface of the user’s skin. Thereby it is prevented that the detecting element 2 slips off the detecting position of the user’s wrist 4. If the translucent board 8 has a flat surface, the detected pulse wave is adversely affected by the movement of the user’s wrist 4 as shown in Fig. 4B. However, in the case that the translucent board 8 has a convex surface like the present embodiment, the variation of the amount of the reflected light which is emitted from the light emitting element 6 and reaches the light receiving element 7 by being reflected by the surface of the user’s skin is suppressed. It is also prevented that noise such as disturbance light from the outside penetrates the translucent board 8. Therefore the pulse wave can be detected without being affected by the movement of the user’s wrist 4 as shown in FIG. 4A. Ex. 1014 ¶ 25 (emphases added); see also id. ¶ 27 (“stably fixed”). We credit Dr. Kenny’s testimony that a person of ordinary skill in the art would have been motivated by such teachings to apply a cover with a convex surface to Aizawa to improve that similar device in the same way and to yield predictable results, i.e., to resist movement of the sensor on the user’s wrist. See, e.g., Ex. 1003 ¶¶ 76 (“[T]his contact between the convex surface and the user’s skin is said to prevent slippage, which increases the strength of the signals obtainable by Ohsaki’s sensor.”), 78–79. We also credit Dr. Kenny’s testimony that, in light of these teachings, a person of ordinary skill in the art would have made such a modification to improve the pulse sensor’s ability to emit light into, and detect light reflected from, the user’s wrist, to generate an improved pulse signal. Ex. 1003 ¶¶ 76–78; Ex. 1060 ¶¶ 13, 29. Indeed, Ohsaki expressly compares the performance of a wrist-worn pulse wave sensor depending on whether translucent board 8 is convex or flat, and concludes the convex surface results in improved performance over the flat surface, especially when the user is moving. Ex. 1014, Figs. 4A–4B, ¶¶ 15, 25 (stating that with “a flat surface, the detected pulse wave is adversely affected by the movement of the user’s wrist 4,” and with “a convex surface like the present embodiment, the variation of the amount of the reflected light” collected by the sensor “is suppressed”). Ohsaki also states that, with a convex surface, “[i]t is also prevented that noise such as disturbance light from the outside penetrates the translucent board 8.” Id. ¶ 25. We also credit Dr. Kenny’s testimony that the proposed modification would have been within the skill level of an ordinary artisan. For example, Dr. Kenny testifies: [A person of ordinary skill in the art] would have combined the teachings of Aizawa-Mendelson-2003 and Ohsaki as doing so would have amounted to nothing more than the use of a known technique to improve similar devices in the same way. For instance, [a person of ordinary skill in the art] would have recognized that incorporating Ohsaki’s convex surface is simply improving Aizawa-Mendelson-2003’s transparent plate 6 that has a flat surface to improve adhesion to a subject’s skin and reduce variation in the signals detected by the sensor. Furthermore, the elements of the combined system would each perform similar functions they had been known to perform prior to the combination. That is, Aizawa-Mendelson-2003’s transparent plate 6 would remain in the same position, performing the same function, but with a convex surface as taught by Ohsaki. Ex. 1003 ¶ 79. In light of Ohsaki’s express disclosure of the benefits of a convex cover, we credit Dr. Kenny’s testimony that a person of ordinary skill in the art would have been motivated to modify Aizawa as proposed, and would have had a reasonable expectation of success in doing so.” slip op. at 54

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Dr. Madisetti testifies that “[b]ased on Aizawa’s teaching that a flat acrylic plate improves adhesion on the palm side of the wrist, and Ohsaki’s teaching that a convex surface tends to slip on the palm side of the wrist, a [person of ordinary skill in the art] would have come to the opposite conclusion from Dr. Kenny: that modifying Aizawa’s flat adhesive plate ‘to include a lens/protrusion . . . similar to Ohsaki’s translucent board’ would not ‘improve adhesion.’” Ex. 2004 ¶ 85. We disagree with this reading of Aizawa. It is true that Aizawa’s plate 6 is illustrated as having a flat surface (Ex. 1006, Fig. 1(b)), and that Aizawa states the plate “improve[s] adhesion” (id. ¶ 13). Aizawa further states: “the above belt 7 is fastened such that the acrylic transparent plate 6 becomes close to the artery 11 of the wrist 10,” and “[t]hereby, adhesion between the wrist 10 and the pulse rate detector 1 is improved.” Id. ¶ 26. These disclosures, however, indicate the improved adhesion is provided by the acrylic material of plate 6, not the shape of the surface of the plate, which is never specifically addressed. Id. ¶¶ 30, 34 (“Since the acrylic transparent plate 6 is provided . . . adhesion between the pulse rate detector 1 and the wrist 10 can be improved . . . .”). Aizawa does not associate this benefit of improved adhesion with the surface shape of the plate, but rather, with the existence of an acrylic plate to begin with. Thus, there is no teaching away from using a convex surface to improve the adhesion of Aizawa’s detector to the user’s wrist.” slip op. at 61

  Patent outcomesUS 10,702,194 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,702,194
• Apple Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Apr 12, 2022 · IPR2020-01526 · APJ Robert L Kinder · IPR · Final written decision

  Claim 15 is unpatentable as obvious over Webster and Melby; the Board did not reach the three remaining grounds.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “why it is even necessary to adopt its proposed claim construction. Inst. Dec. 8–9. We noted that for purposes of our analysis, we accept that the embodiment Petitioner relies upon (positioned opposite) is within the claim scope of clause 15[c], but we were not prepared to limit the claim to just this embodiment without further explanation and evidence. Id. We determined that clause 15[c] provides sufficient detail as to the positioning of elements such that further defining the limitation did not seem necessary. We invited the parties to further explain why these terms would require construction for this proceeding. Id. at 9.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner makes several observations regarding Petitioner’s identified level of skill in the art but, “for this proceeding, Masimo nonetheless applies Apple’s asserted level of skill.” PO Resp. 21. We adopt Petitioner’s assessment as set forth above, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “been reasonable for a person of ordinary skill in the art to look to Melby to provide a light control film to help control ambient light and further to place that film over the photodiode detectors of Webster, as depicted below. See Ex. 1003 ¶¶ 96, 99, 100 (“Melby’s film could be used in the Webster device as the ‘light filter’ to control light such that only light originating from the direction of the light emitters reaches the detector.”), 101–103. Dr. Anthony’s modified and annotated version of Webster Figure 7.1 depicts an added light control film (red) over Webster’s existing photodiode (green), which is also labeled “Light Sensitive Detector.” Ex. 1003 ¶ 102; Pet. 43. We find persuasive Dr. Anthony’s testimony that one of ordinary skill would have understood that a light control film placed over the detector would thus accept light from the light emission device from a particular direction based on the angle of the louvers within the light control film. Ex. 1003 ¶ 104. We also find persuasive the testimony that “[i]n the combination, one of ordinary skill would have understood the light control film to restrict the amount of light that reaches the detector from a particular direction, and therefore that the louvers accept the light when the sensor is properly applied to the patient’s body.” Id. Petitioner’s combination of Webster and Melby depicted above adds a light control film atop the photodiode and such a placement would have been reasonable and predictable for a person of ordinary skill in the art. The proposed combination recognizes that although the LEDs are transmitting light through the finger and toward the photodiode not all of the light from the LEDs is actually to go through that finger and light that has not gone through the finger would then be a source of noise. To limit that noise, Dr. Anthony persuasively testifies that Melby’s light control film placed above Webster’s photodiode would reduce noise by accepting light from the light emission device from a particular direction based on the angle of the louvers within the light control film. Ex. 1003 ¶¶ 102–104. This would in turn help minimize light that has not otherwise travelled through the finger. Id.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundDecided for petitioner

    “through body tissue carrying pulsing blood, wherein the louvers accept the light when the sensor is properly applied to tissue of a patient.” Ex. 1001, 8:29–36. Although Patent Owner recognizes that Webster teaches use of light filters, and Melby teaches louvers, Patent Owner contends that it is only Webster’s light impervious barriers that limit the light and these barriers cannot be over the detector, because doing so would make the detector non-functional. PO Resp. 42–43. Further, Patent Owner believes that Webster’s discussion of a filter over the detectors “[c]ould not be clearer[,] [t]he discussion of a filter has to do with wavelengths.” Tr. 28:2– 11. Patent’s Owner’s contentions, however, are based on an overly narrow reading of the combination of references and ignore other likely embodiments. We determine that Webster teaches that in one embodiment light filters, such as those found in Melby, could be used above the detectors. Based on the combined teachings of Webster and Melby, a person of ordinary skill in the art would have found the combination a reasonable solution to the problems identified by Webster. Melby teaches a louvered plastic film that collimates light and reduces the influence of ambient light. Ex. 1008, 3:63–4:25. Webster teaches the benefits of using such a plastic film, identified broadly as some type of light filter, atop its photodiode to help minimize unwanted incident light. Ex. 1010, 79. Specifically, Webster is clear that to minimize unwanted light upon the detector, one could “place some type of light filter over the detector.” Id. There is no indication that this “some type of light filter” should be limited to just wavelength filters, which are certainly provided as one example mechanism for limiting unwanted light. Notably, such filters” slip op. at 32

  Patent outcomesUS 6,771,994 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,771,994
• Apple Inc. v. Masimo CorporationNo claims unpatentable
  PTAB · Apr 12, 2022 · IPR2020-01524 · APJ Robert L Kinder · IPR · Final written decision

  The Board held claims 1–16 not unpatentable because Petitioner failed to prove obviousness over the asserted Richardson-based grounds, including the required distinct, nonzero duty cycles.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Based on the final record, we find Patent Owner’s proposed interpretation of “duty cycle” persuasive. The evidence cited supports “duty cycle” to mean “the ratio of operating time (or on time) of a light source to the total time period during which the light source is intermittently operated, expressed as a percentage.” See Ex. 2002 ¶ 36 (relying on an electronics dictionary and testifying as to how the ’776 patent uses “duty cycle” consistent with its plain and ordinary meaning to require a ratio of operating time to total elapsed time). We are persuaded by the Specification of the ’776 patent describing the “duty cycle” as the ratio of the operating time (or on time) of the red and infrared LEDs to the total time period during which the LEDs are intermittently operated, expressed as a percentage. See Ex. 1001, 2:43–44; Ex. 2004, 225; Ex. 2002 ¶¶ 37, 39. The duty cycle is described as consistently being “in the range of about 3.125% to about 25%.” Ex. 1001, 2:43–44, Figs. 5, 8. The weight of the evidence, including the claim language and Specification, convinces us that neither the first nor the second duty cycles can be 0%. The claims require the first and second control protocol light sources to generate light so that the patient monitor can calculate a pulse rate based on the light. See Ex. 1001, 11:45–12:21 (“when operating according to the first control protocol, calculating . . . measurement values of the pulse rate, . . . responsive to light from the first control protocol light source” and “calculating the measurement values of the pulse rate, . . . responsive to light from the second control protocol light source”); Ex. 2002 ¶¶ 41, 42. The first and second duty cycles cannot be 0% because the light sources of the first and second control protocol light source would not generate light to enable pulse rate calculation as required by the claims. See Ex. 2002 ¶ 42 (“[I]f the first control protocol light source had a duty cycle of 0%, the light source would be inactive and would not generate light. If the light source did not generate light the monitor could not calculate the ‘measurement” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner identifies the appropriate level of skill in the art as that possessed by a person having “a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies.” Pet. 6 (citing Ex. 1003 ¶ 32 (“someone with a working knowledge of physiological monitoring technologies”)). “Alternatively, the person could have also had a 1 Neither party has introduced objective evidence of non-obviousness. See Tr. 23:25–24:3. Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline.” Id. Patent Owner makes several observations regarding Petitioner’s identified level of skill in the art but, “for this proceeding, [Patent Owner] applies the asserted level of skill identified in the Petition.” PO Resp. 11– 12. We adopt Petitioner’s assessment as set forth above, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 22

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “generated by the source is adjusted to optimize the signal to noise ratio and to minimize power consumption.” Ex. 1006, 11:54–57; Pet. 46, 49, 50. Turcott conveys that this “can be done by adjusting the drive current, the frequency of the pulse train, the pulse duration, or the duty cycle of the pulse train.” Ex. 1006, 11:57–59. Dr. Anthony contends that Turcott describes shifting the frequency of the pulse train and adjusting the duty cycle from one duty cycle to another, and infers that these things could be done during normal operation of the device to reduce power consumption. See, e.g., Ex. 1003 ¶¶ 81, 82, 87. We do not agree that Turcott teaches shifting the frequency of the pulse train or adjusting the duty cycle during normal operation of the device as alleged by Petitioner. We have considered Dr. Anthony’s testimony as to these points, but we determine that the scope of Turcott’s teachings are better explained by Dr. Madisetti. We find more persuasive Dr. Madisetti’s testimony and reasoning that a person of ordinary skill in the art would have understood that Turcott’s adjustments would happen during device design or setup, and not during operation of the device. Ex. 2002 ¶¶ 101–105. This is so because Turcott discloses operating at a single, low duty cycle that minimizes power consumption. See Ex. 2002 ¶ 104; Ex. 1006, 11:51–52 (“To conserve energy, the source is preferably driven with a low duty cycle pulse train.”). We also find persuasive Dr. Madisetti’s cross-examination testimony that the use of the terminology “optical power generated by the source is adjusted” in Turcott, “refers and describes to a POSA that it’s adjusted, past tense, at design time or manufacturing or setup,” and that “Turcott refers to this adjusted in past tense through the term ‘adjusting’ referring to that time at manufacturing or setup.” Ex. 1038, 22:16–24:15.” slip op. at 43

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “As we determined above, the claimed first and second duty cycles cannot be 0%. This determination precludes Petitioner’s first mapping of Richardson from reading on claims 1 and 11. Petitioner identifies the first mapping of Richardson as the transition of Richardson’s oximeter from State 2 to State 1. Pet. 10 (“For this first mapping of Richardson . . . the claim elements . . . are mapped to disclosure in Richardson describing the oximeter transitioning from State 2 (as the first control protocol) to State 1 (as the second control protocol).”). Petitioner argues that State 2 (blue below) is the “first control protocol” and State 1 (orange below) is the “second control protocol” required by claims 1 and 11. Patent Owner’s annotated Figure 2 of Richardson (Ex. 1004) describes implementing the noise reduction methods in a pulse oximeter having three states, including State 1 (highlighted in orange) and State 2 (highlighted in blue). PO Resp. 33. Richardson’s pulse oximeter transitions from State 1 to State 2 “[e]very 30 seconds,” and “[t]he purpose of State 2 is to detect new noise sources that may have appeared since the last State 0 measurements.” Ex. 1004, 9:39–42. In State 2, the oximeter reassesses the noise “by turning off one LED; typically the red LED,” for about 1.4 seconds. Id. at 6:2–3, 9:52–53. When the 1.4 seconds (i.e., idle time) expires, the oximeter automatically returns to State 1 where it uses the newly estimated noise values. Id. at 9:63–65; see also id. at 9:66–10:5 (discussing idle time). When operating in State 1, the oximeter has both LEDs turned on. Id. at 5:55–67. Petitioner argues that the red LED “has a duty cycle of 0%” in State 2 and a duty cycle of “at least 25%” in State 1. Pet. 16. Petitioner admits that in State 2 “the red light source is turned off.” Id. As we determined in the claim construction analysis, a person of ordinary skill in the art would have understood that the “first duty cycle” cannot be 0% based on the claims and Specification. Thus, under the proper construction of “first duty cycle,” turning off the red LED in State 2 (Petitioner’s “first control protocol”) is not operating according to a “first duty cycle” as required by claims 1 and 11. Ex. 2002 ¶ 66.” slip op. at 28

  Patent outcomesUS 10,433,776 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,433,776
• Apple Inc. v. Masimo CorporationNo claims unpatentable
  PTAB · Apr 11, 2022 · IPR2020-01523 · APJ Josiah C Cocks · IPR · Final written decision

  Apple did not prove claims 1–7, 9–18, and 20–24 unpatentable; the asserted obviousness grounds failed to establish the claimed power reduction or the required light detector-derived processing characteristics.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “In our view, Patent Owner has the better explanation for what a person of ordinary skill in the art would understand from the ’703 patent as to what constitutes the “processing characteristics” that factor into the patient monitoring described by the claims. In that respect, we agree with Patent Owner’s above-noted assessments of the requirements of claims 4 and 8. Patent Owner persuasively explains that claim 4 does not emerge as meaningless based on Patent Owner’s construction of “processing characteristics” but instead claim 4 further refines the understanding of the type of processing characteristics that are received from the light detectors, i.e., signal characteristics rather than physiological measurements. We also share Patent Owner’s view that the understanding of claim 8 taken in the context of the Specification (e.g., Fig. 4), establishes that the estimate of power consumption is determined based on signals from light detector 490. We agree that Petitioner’s views as to how claims 4 and 8 inform the meaning of “processing characteristics” lack support and fall short. We conclude that it is inconsistent with the ’703 patent to tease out the sweeping premise advanced by Petitioner that simply any information that is processed, regardless of its source, can constitute the “processing characteristics” that are employed as a part of all of the challenged claims to monitor a patient based on light signals. Rather, we rely on the written description of the ’703 patent as a useful guide in informing the meaning of “processing characteristics,” and conclude that the proper understanding of the term is that such characteristics are derived from signals from light detectors. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“It is therefore entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims.”). Accordingly, we conclude that, in the context of the ’703 patent, “processing characteristics” are determined from a signal received from one or more detectors configured to detect light.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “2. Other Claim Terms Upon consideration of the entirety of the arguments and evidence presented, we conclude no further explicit construction of any claim term is needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not offer its own assessment of the level of ordinary skill. Patent Owner, however, does level a measure of criticism of Petitioner’s assessment of the level of skill in the art as being inconsistent with Petitioner’s own declarant, Dr. Anthony, in not accounting for experience in “non-invasive optical biosensors.” PO Resp. 16–17. Nevertheless, Patent Owner expresses that it “applies the asserted level of skill identified in the Petition.” Id. at 17 (citing Ex. 2001 ¶ 22). We determine that the Petitioner’s expressed level of ordinary skill in the art is consistent with the ’703 patent and the prior art of record. Accordingly, we adopt it in this Decision.” slip op. at 16

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We are not persuaded by Petitioner’s view that suspending Diab’s motion artifact suppression module necessarily will result in reduced power consumption. Although Amano does describe that its particular system enjoys reduced power consumption when its body movement component eliminating section 30 is suspended (Ex. 1004, 21:65–22:6), Patent Owner presents plausible reasoning and evidence that such power reduction may not occur in Diab’s differently structured and configured system. As between the conflicting testimony of Dr. Anthony and Dr. Madisetti on this matter, we find more credible the testimony of Dr. Madisetti in explaining why the same power consumption reduction attributed in Amano may not occur in Diab’s differently structured system. See, e.g., Ex. 2001 ¶¶ 76–77, 87–90. Yet, the premise of supposed power reduction is the foundational reason that Petitioner advances in combining the teachings of Amano with Diab. We conclude that Petitioner has not met its burden of persuasion on this issue. See Dynamic Drinkware, 800 F.3d at 1378.” slip op. at 31

  Patent outcomesUS 8,457,703 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,457,703
• Apple Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Apr 11, 2022 · IPR2020-01521 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–30 are unpatentable; the Board found the challenged claims obvious over the asserted combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner identifies the appropriate level of skill in the art as that” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “1. “cover” Each of independent claims 1, 7, and 20 requires “a light permeable” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “Patent Owner finally argues that a conclusion of obviousness “strains” slip op. at 61

  Patent outcomesUS 10,292,628 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,292,628

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.