Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 8
`Entered: May 12, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 8
`Entered: May 12, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1–6, 8, 9, 11–19, and 21–30 (“challenged claims”) of U.S.
`
`Patent No. 10,470,695 B1 (Ex. 1001, “the ’695 patent”). Paper 2 (“Pet.”).
`
`Masimo Corporation (“Patent Owner”) waived filing a preliminary response.
`
`Paper 7.
`
`Petitioner concurrently filed another petition for inter partes review of
`
`claims of the ’695 patent on additional grounds not asserted in this Petition.
`
`Apple, Inc. v. Masimo Corporation, IPR2020-01722, Paper 2 (PTAB
`
`October 2, 2020) (“the ’1722 Petition”).1 As set forth in the Decision on
`
`Institution in IPR2020-01722, we institute an inter partes review of
`
`claims 1–6, 8, 9, 11–19, and 21–30. See IPR2020-01722, Paper 8. For the
`
`reasons provided below and based on the circumstances present here, we
`
`exercise the Director’s discretion under 35 U.S.C. § 314(a) and deny
`
`institution of an inter partes review based on the present Petition.
`
`B. Related Matters
`
`Patent Owner identifies the following matters related to the
`
`’695 patent:
`
`Masimo Corporation v. Apple Inc., Civil Action No. 8:20-cv-00048
`
`(C.D. Cal.) (filed Jan. 9, 2020);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01520 (PTAB
`
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,258,265 B1);
`
`
`1 The ’1722 Petition and the present Petition, both filed October 2, 2020, are
`collectively referred to as the “Concurrent Petitions.”
`
`2
`
`
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`
`Apple Inc. v. Masimo Corporation, IPR2020-01521 (PTAB
`
`Sept. 2, 2020) (challenging claims of U.S. Patent No. 10,292,628 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01523 (PTAB
`
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 8,457,703 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01524 (PTAB
`
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,433,776 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01526 (PTAB
`
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 6,771,994 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01536 (PTAB
`
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01537 (PTAB
`
`Aug. 31, 2020) (challenging claims of U.S. Patent No. 10,588,553 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01538 (PTAB
`
`Sept. 2, 2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01539 (PTAB
`
`Sept. 2, 2020) (challenging claims of U.S. Patent No. 10,588,554 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01713 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,624,564 B1);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01714 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1 patent);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01715 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,631,765 B1 patent);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01716 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,702,194 patent);
`
`
`
`3
`
`
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`
`Apple Inc. v. Masimo Corporation, IPR2020-01722 (PTAB Oct. 2,
`
`2020) (challenging claims of U.S. Patent No. 10,470,695 B2);
`
`Apple Inc. v. Masimo Corporation, IPR2020-01733 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,702,195 B1); and
`
`Apple Inc. v. Masimo Corporation, IPR2020-01737 (PTAB Sept. 30,
`
`2020) (challenging claims of U.S. Patent No. 10,709,366 B1).
`
`Paper 4, 2–3.
`
`Patent Owner also identifies the following pending patent applications
`
`that claim priority to, or share a priority claim with, the ’695 patent:
`
`
`
`
`
`
`
`
`
`
`
`
`
`U.S. Patent Application No. 15/195,199;
`
`U.S. Patent Application No. 16/532,061;
`
`U.S. Patent Application No. 16/532,065;
`
`U.S. Patent Application No. 16/791,955;
`
`U.S. Patent Application No. 16/791,963;
`
`U.S. Patent Application No. 16/835,712;
`
`U.S. Patent Application No. 16/835,772;
`
`U.S. Patent Application No. 16/791,955; and
`
`U.S. Patent Application No. 16/871,874.
`
`
`
`Id. at 1–2.
`
`C. The ’695 Patent
`
`The ’695 patent is titled “Advanced Pulse Oximetry Sensor,” and
`
`issued on November 12, 2019, from U.S. Patent Application No.
`
`16/226,249, filed December 19, 2018. Ex. 1001, codes (21), (22), (45), (54).
`
`The ’695 patent summarizes its disclosure as follows:
`
`This disclosure describes embodiments of non-invasive
`methods, devices, and systems for measuring blood constituents,
`
`4
`
`
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`
`analytes, and/or substances such as, by way of non-limiting
`example, oxygen, carboxyhemoglobin, methemoglobin, total
`hemoglobin, glucose, proteins, lipids, a percentage therefor
`(e.g., saturation, pulse rate, perfusion index, oxygen content,
`total hemoglobin, Oxygen Reserve IndexTM (ORITM) or for
`measuring many other physiologically
`relevant patient
`characteristics. These characteristics can relate to, for example,
`pulse rate, hydration, trending information and analysis, and the
`like.
`
`Id. at 2:36–46.
`
`
`
`Figures 7A and 7B of the ’695 patent are reproduced below:
`
`
`
`
`
`
`
`Figures 7A and 7B above depict side and top views, respectively, of a three-
`
`dimensional pulse oximetry sensor according to an embodiment of the ’695
`
`patent. Id. at 5:28–33. Sensor 700 includes emitter 702, light diffuser 704,
`
`light block (or blocker) 706, light concentrator 708, and detector 710. Id. at
`
`10:49–51. The sensor functions to irradiate tissue measurement site 102,
`
`e.g., a patient’s wrist, and detects emitted light that is reflected by the tissue
`
`5
`
`
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`measurement site. Id. at 10:43–49. “Light blocker 706 includes an annular
`
`ring having cover portion 707 sized and shaped to form a light isolation
`
`chamber for the light concentrator 708 and the detector 710.” Id. at 11:10–
`
`12. “[L]ight blocker 706 and cover 70[7] ensures that the only light detected
`
`by the detector 710 is light that is reflected from the tissue measurement
`
`site.” Id. at 11:16–20.
`
`Figure 8 of the ’695 patent is reproduced below:
`
`
`
`Figure 8 above illustrates “a block diagram of an example pulse oximetry
`
`system capable of noninvasively measuring one or more blood analytes in a
`
`monitored patient.” Id. at 5:34–36. Pulse oximetry system 800 includes
`
`sensor 801 (or multiple sensors) coupled to physiological monitor 809. Id.
`
`at 12:21–23. Monitor 809 includes “signal processor 810 that includes
`
`processing logic that determines measurement for desired analytes based on
`
`the signals received from the detector 806” that is a part of sensor 801. Id. at
`
`6
`
`
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`13:37–40. Monitor 809 also includes user interface 812 that provides an
`
`output, e.g., on a display, for presentation to a user of pulse oximetry system
`
`800. Id. at 13:64–66.
`
`D. Illustrative Claim
`
`Of the challenged claims, claims 1, 9, and 19 are independent.
`
`Claim 1 is illustrative and is reproduced below.
`
`1. A wrist-worn physiological monitoring device configured for
`placement on a user at a tissue measurement site, the device
`comprising:
`
`a light emission source comprising a plurality of emitters
`configured to irradiate the tissue measurement site by emitting
`light
`towards
`the
`tissue measurement site,
`the
`tissue
`measurement site being located on a wrist of the user, the
`plurality of emitters configured to emit one or more wavelengths;
`a plurality of detectors configured to detect the light
`emitted by the plurality of emitters after attenuation by a circular
`portion of the tissue measurement site, the plurality of detectors
`further configured to output at least one signal responsive to the
`detected light;
`a processor configured to receive the at least one signal
`responsive to the output and determine a physiological parameter
`of the user; and
`a light block forming an enclosing wall between the light
`emission source and the plurality of detectors, the light block
`defining the circular portion of the tissue measurement site, the
`light emission source arranged proximate a first side of the
`enclosing wall and the plurality of detectors arranged proximate
`a second side of the enclosing wall, the first side being difference
`than the second side,
`
`7
`
`
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`
`wherein the enclosing wall prevents at least a portion of
`light emitted from the light emission source from being detected
`by the plurality of detectors without attenuation by the tissue, and
`wherein the plurality of detectors are arranged in an array having
`a spatial configuration corresponding to the circular portion of
`the tissue measurement site.
`
`Ex. 1001, 11:32–63.
`
`E. Evidence Relied Upon
`
`Petitioner relies on the following references:
`
`Reference
`
`Mendelson-
`799
`
`Publication/Patent Number
`
`U.S. Patent No.6,801,799 B2 issued Oct. 5,
`2004
`
`Exhibit
`
`1004
`
`1005
`
`1006
`
`1007,
`1008
`
`1010
`
`Chin
`
`Mio Alpha
`
`Venkatraman U.S. Patent No. 8,998,815 B2 issued Apr. 7,
`2015
`U.S. Patent No. 6,343,223 B1 issued Jan. 29,
`2002
`Mio ALPHA Complete User Guide (2014)2
`
`DC RAINMAKER, Mio Alpha Optical Heart
`Rate Monitor In-Depth Review (Feb. 12, 2013)3
`Mendelson et al., A Wearable Reflectance Pulse
`Oximeter for Remote Physiological Monitoring,
`Proceedings of the 28th IEEE EMBS Annual
`International Conference (September 2006)
`
`Mendelson
`2006
`
`
`Pet. 3. Petitioner also relies on the Declaration of Brian W. Anthony, Ph.D.
`
`(Ex. 1003).
`
`
`2 https://www.medisana.com/out/pictures/media/manual/
`mio_alpha_user_guide_en.pdf.
`
`3 https://www.dcrainmaker.com/2013/monitor-bluetooth-smartant.html.
`
`8
`
`
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`
`F. Asserted Grounds
`
`Petitioner asserts that claims 1–6, 8, 9, 11–19, and 21–30 are
`
`unpatentable based upon the following grounds (Pet. 3):
`
`Claims Challenged
`1–5, 8, 9, 11–13, 15–
`19, 22–30
`
`6, 14, 21
`
`1, 2, 4, 5, 8, 9, 11, 13,
`15–17, 19, 22, 24–26,
`28, 29
`
`3, 12, 23
`
`6, 14, 21
`
`18, 27, 30
`
`35 U.S.C. §
`
`References/Basis
`
`103
`
`103
`
`Mendelson-799, Venkatraman
`
`Mendelson-799, Venkatraman,
`Chin
`
`103
`
`Mendelson-799, Mio Alpha
`
`103
`
`103
`
`103
`
`Mendelson-799, Mio Alpha,
`Mendelson 2006
`Mendelson, Mio Alpha, Chin
`Mendelson-799, Mio Alpha,
`Venkatraman
`
`II. ANALYSIS
`
`Institution of inter partes review is discretionary. See 35 U.S.C.
`
`§ 314(a); SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (explaining
`
`that section “314(a) invests the Director with discretion on the question
`
`whether to institute review”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
`
`1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled,
`
`to institute an IPR proceeding.”). Thus, there is no requirement that we must
`
`institute inter partes review based on any given petition, including the
`
`present Petition.
`
`Each of the present Petition and the ’1722 Petition challenges claims
`
`1–6, 8, 9, 11–19, and 21–30 of the ’695 patent. The PTAB Consolidated
`
`Trial Practice Guide (Nov. 2019) (“Consolidated Guide”) conveys that
`
`generally “one petition should be sufficient to challenge the claims of a
`
`patent in most situations” and that “multiple petitions by a petitioner are not
`
`9
`
`
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`necessary in the vast majority of cases.” Consolidated Guide 59. According
`
`to the Consolidated Guide, “[t]wo or more petitions filed against the same
`
`patent at or about the same time (e.g., before the first preliminary response
`
`by the patent owner) may place a substantial and unnecessary burden on the
`
`Board and the patent owner and could raise fairness, timing, and efficiency
`
`concerns.” Id. (citing 35 U.S.C. § 316(b)). The Consolidated Guide also
`
`sets forth the following guidance:
`
`To aid the Board in determining whether more than one
`petition is necessary, if a petitioner files two or more petitions
`challenging the same patent, then the petitioner should, in its
`petitions or in a separate paper filed with the petitions, identify:
`(1) a ranking of the petitions in the order in which it wishes the
`Board to consider the merits, if the Board uses its discretion to
`institute any of the petitions, and (2) a succinct explanation of the
`differences between the petitions, why the issues addressed by
`the differences are material, and why the Board should exercise
`its discretion to institute additional petitions if it identifies one
`petition that satisfies petitioner’s burden under 35 U.S.C.
`§ 314(a).
`
`Id. at 59–60.
`
`Petitioner filed a separate “Notice Ranking and Explaining Material
`
`Differences Between Petitions for Inter Partes Review of U.S. Patent
`
`No. 10,470,695.” Paper 1 (“Notice”). As a part of the Notice, Petitioner
`
`requests that the Board consider the ’1722 Petition before the present
`
`Petition. Notice 2. Petitioner also contends that two petitions are warranted
`
`as the ’695 patent includes 30 claims, which is “larger than [the] normal
`
`number of claims in a U.S. patent.” Id. Petitioner further contends that the
`
`Concurrent Petitions rely on different combinations of prior art as between
`
`them and generally submits that the motivation to combine the different
`
`teachings of the prior art “materially differs.” Id. at 3. We consider whether
`
`10
`
`
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`the reasoning offered by Petitioner evinces a situation that should deviate
`
`from the circumstance in which a single petition is sufficient.
`
`At the outset, we note that although Petitioner characterizes the 30
`
`claims of the ’695 patent as being a basis to justify two petitions, in each of
`
`the Concurrent Petitions, Petitioner challenges the same subset of claims that
`
`is less than all 30 claims of the patent.4 That Petitioner does not challenge
`
`all 30 claims of the ’695 patent yet, nevertheless, offers up the total number
`
`of 30 claims of the ’695 patent as a rationale for multiple petitions is
`
`incongruous.
`
`We further observe that, despite Petitioner’s assessment that the
`
`’695 patent includes a “large” number of claims, each of the Concurrent
`
`Petitions succeeds in advancing challenges to all of the challenged claims
`
`based on multiple theories and multiple combinations of prior art. See
`
`Notice 2. For instance, in the ’1722 Petition, Petitioner proposes seven
`
`distinct grounds of patentability that attack each of the challenged claims
`
`based on multiple approaches involving various combinations of references.
`
`See, e.g., IPR2020-01722, Paper 1, 2–3. By way of example, the ’1722
`
`Petition proposes that claim 1, among other claims, is unpatentable based on:
`
`(1) Sarantos5 taken alone; (2) Sarantos taken with Mendelson-1991;6 and (3)
`
`Ackermans7 taken alone. Id. The present Petition offers six additional
`
`
`4 Petitioner does not challenge claims 7, 10, or 20 as a part of either of the
`Concurrent Petitions.
`
`5 U.S. Patent No. 9,392,946 B1.
`
`6 Mendelson et al., Skin Reflectance Pulse Oximetry: In Vivo Measurements
`from the Forearm and Calf, Journal of Clinical Monitoring Vol. 7 No. 1, pp.
`7–12 (January 1991).
`
`7 PCT Publication No. WO 2011/05188 A2.
`
`11
`
`
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`proposed grounds of unpatentability to the challenged claims and, for
`
`instance, challenges claim 1 based on Mendelson-799 and Venkatraman, and
`
`also Mendelson-799 taken with Mio Alpha. Pet. 3. Such is similarly true
`
`for every other challenged claim. The manifest adequacy of a single petition
`
`in advancing multiple grounds of unpatentability for each and every
`
`challenged claim does not favor a conclusion that a single petition is
`
`somehow insufficient, or that multiple petitions are justified.
`
`Moreover, Petitioner’s assertion that multiple petitions here are
`
`warranted because the two petitions advance different combinations of prior
`
`based on “materially differ[ent]” motivations to combine the art is general
`
`and ill-explained. See Notice 3. Petitioner does not articulate why the mere
`
`presence of different asserted prior art combinations based on alleged and
`
`unspecified different motivations to combine is sufficient to overcome the
`
`inefficiencies and burden to the Board and Patent Owner that would result
`
`from institution of an inter partes review based on each of the Concurrent
`
`Petitions. Indeed, Petitioner does not explain why the burden of multiple
`
`trials pertaining to the ’695 patent would lend itself to a “just speedy, and
`
`inexpensive resolution” where the record conveys that multiple trials appear
`
`unnecessary. See 37 C.F.R. § 42.1(b) (we construe our rules “to secure the
`
`just, speedy, and inexpensive resolution of every proceeding.”)
`
`We are cognizant that the parties here are the same parties involved in
`
`multiple other proceedings that, as noted above, Patent Owner characterizes
`
`as related to the ’695 patent. At least three sets of those proceedings include
`
`multiple petitions directed to the same patent, (1) IPR2020-01538 and
`
`IPR2020-01539 involving U.S. Patent No. 10,588,554 B2, (2) IPR2020-
`
`01714 and IPR2020-01715 involving U.S. Patent No. 10,631,765 B1; and
`
`12
`
`
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`(3) IPR2020-01536 and IPR2020-01537 involving U.S. Patent
`
`No. 10,588,553 B2. The panels in those proceedings declined to exercise
`
`discretion based, in-part, on distinct factual circumstances, including that
`
`“Petitioner represents that, at the time of the filing, Patent Owner had not yet
`
`narrowed the claims asserted in the parallel district court litigation.” See
`
`IPR2020-01538, Paper 8, 3 n.1; IPR 2020-01539, Paper 8, 3 n.1; IPR2020-
`
`01714, Paper 8, 3 n.1; IPR2020-01715, Paper 8, 3 n.1; IPR2020-01536,
`
`Paper 9, 3 n.1; IPR2020-01537, Paper 9, 3 n.1. That circumstance is not
`
`present here. The parties indicate that the ’695 patent is not asserted
`
`presently in any parallel district court lawsuit or litigation. Paper 4, 1 (“The
`
`’695 Patent . . . is not presently asserted in the lawsuit”); IPR2020-01722,
`
`Paper 1, 2 (“[T]he ’695 Patent is no longer asserted in the district court
`
`case.”) Thus, the above-noted rationale for declining to exercise discretion
`
`to deny institution in connection with the related proceedings is not germane
`
`to the situation here.
`
`III. CONCLUSION
`
`We have reviewed the Concurrent Petitions and determine that, on the
`
`record present here, Petitioner has not set forth adequate reasoning that
`
`justifies the institution of multiple inter partes reviews based on two
`
`Petitions directed to the same set of challenged claims of the ’695 patent.
`
`Accordingly, although we have entered a decision instituting inter partes
`
`review on all grounds presented in the ’1722 Petition (see IPR2020-01722,
`
`Paper 8), we exercise the Director’s discretion under 35 U.S.C. § 314(a) to
`
`deny institution of the present Petition.
`
`13
`
`
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is
`
`ORDERED that Petitioner’s request for an inter partes review of
`
`claims 1–6, 8, 9, 11–19, and 21–30 as a part of the present Petition is denied
`
`and no trial is instituted.
`
`
`
`14
`
`
`
`IPR2020-01723
`Patent 10,470,695 B2
`
`FOR PETITIONER:
`
`W. Karl Renner
`Daniel D. Smith
`Kenneth Hoover
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`dsmith@fr.com
`hoover@fr.com
`
`
`FOR PATENT OWNER:
`
`Joseph R. Re
`Stephen W. Larson
`Jarom D. Kesler
`Shannon H. Lam
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2jrr@knobbe.com
`2swl@knobbe.com
`2jzk@knobbe.com
`2sxl@knobbe.com
`
`
`
`
`
`
`15
`
`
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