Case: 22-1393 Document: 42 Page: 1 Filed: 10/24/2023
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`
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`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`MASIMO CORPORATION,
`Appellant
`
`v.
`
`SOTERA WIRELESS, INC.,
`Appellee
`______________________
`
`2022-1393
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2020-
`00967.
`
`______________________
`
`Decided: October 24, 2023
`______________________
`
`JEREMIAH HELM, Knobbe, Martens, Olson & Bear, LLP,
`Washington, DC, argued for appellant. Also represented
`by JAROM D. KESLER, STEPHEN W. LARSON, Irvine, CA.
`
` RUDOLPH A. TELSCHER, JR., Husch Blackwell LLP, St.
`Louis, MO, argued for appellee. Also represented by
`JENNIFER E. HOEKEL, DAISY MANNING.
` ______________________
`
`
`

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`Case: 22-1393 Document: 42 Page: 2 Filed: 10/24/2023
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`MASIMO CORPORATION v. SOTERA WIRELESS, INC.
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`Before PROST, WALLACH, and CHEN, Circuit Judges.
`PROST, Circuit Judge.
`Masimo Corporation (“Masimo”) appeals from an inter
`partes review final written decision determining all claims
`of U.S. Patent No. RE47,244 (“the ’244 patent”) are un-
`patentable. Sotera Wireless, Inc. v. Masimo Corp., No.
`IPR2020-00967, 2021 WL 6338280 (P.T.A.B. Nov. 19, 2021)
`(“Board Decision”). For the following reasons, we affirm.
`BACKGROUND
`The ’244 patent, titled “Alarm Suspend System,” is as-
`signed to Masimo. It relates to an alarm suspension sys-
`tem for medical alarms where the duration of an alarm
`delay or suspension is responsive to the specific physiolog-
`ical parameter measured. ’244 patent col. 2 l. 18–col. 4. l.
`8. The ’244 patent delays or suspends these alarms “so as
`to prevent unnecessary disturbance to the patient and dis-
`traction of the caregiver.” Id. at col. 2 ll. 34–36.
`Claims 1, 13, and 18 are independent. Claim 13 is il-
`lustrative and states:
`A method of electronically delaying or suspend-
`ing an alarm while an electronically calculated
`measurement of a physiological parameter sat-
`isfies an alarm activation threshold, the meas-
`urement of
`the physiological parameter
`responsive to a signal from a noninvasive sen-
`sor positioned at a monitored patient, the
`method comprising:
`electronically processing a signal from a nonin-
`vasive sensor;
`responsive to processing the signal, electroni-
`cally determining a first measurement of a first
`physiological parameter and a second measure-
`ment of a second physiological parameter using
`a patient monitoring device, the patient
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`Case: 22-1393 Document: 42 Page: 3 Filed: 10/24/2023
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`MASIMO CORPORATION v. SOTERA WIRELESS, INC.
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`monitoring device including a processor and a
`memory device;
`electronically storing, using the patient moni-
`toring device, a first parameter-specific alarm
`delay or suspension period of time correspond-
`ing to the first physiological parameter and a
`second parameter-specific alarm delay or sus-
`pension period of time corresponding to the sec-
`ond physiological parameter,
`the
`first
`parameter-specific alarm delay or suspension
`period of time being different from the second
`parameter-specific alarm delay or suspension
`period of time;
`electronically determining, using the patient
`monitoring device, that the first measurement
`of the first physiological parameter satisfies a
`first alarm activation threshold;
`electronically initiating, using the patient mon-
`itoring device, the first parameter-specific
`alarm delay or suspension period of time; and
`electronically activating, using the patient
`monitoring device, a first alarm for the first
`physiological parameter in response to expira-
`tion of a first amount of delay or suspension as-
`sociated with the first parameter-specific alarm
`delay or suspension period of time.
`’244 patent claim 13 (emphasis added).
`
`Sotera Wireless, Inc. (“Sotera”) petitioned for inter
`partes review of all claims of the ’244 patent. Sotera ar-
`gued obviousness on four grounds using U.S. Patent No.
`5,865,736 (“Baker”) as a reference and on two grounds us-
`ing U.S. Patent Publication No. 2005/0038332 (“Saidara”)
`as a reference. The Board determined all claims are un-
`patentable on the Saidara grounds. Masimo timely
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`Case: 22-1393 Document: 42 Page: 4 Filed: 10/24/2023
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`MASIMO CORPORATION v. SOTERA WIRELESS, INC.
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`appealed, and we have jurisdiction under 28 U.S.C.
`§ 1295(a)(4)(A).
`
`DISCUSSION
`Masimo argues that the Board erred by incorrectly con-
`struing several claims and by improperly concluding that
`the prior art rendered the claims of the ’244 patent obvious.
`Specifically, Masimo argues: (1) that claims 1 and 13 re-
`quire the noninvasive measurement of two physiological
`parameters; (2) that the Board erred by not giving claim 18
`a means-plus-function construction; and (3) that the Board
`erred by construing the “parameter-specific alarm delay or
`suspension period of time” limitation to encompass only
`pre-alarm delays. Masimo also independently argues that
`the Board’s obviousness determinations cannot stand be-
`cause several of its factual findings are unsupported by
`substantial evidence. We address each argument in turn.
`I
` We review the Board’s ultimate claim construction and
`any determinations based on intrinsic evidence de novo
`and review subsidiary factual findings involving extrinsic
`evidence for substantial evidence. Personalized Media
`Commc’ns, LLC v. Apple Inc., 952 F.3d 1336, 1339 (Fed.
`Cir. 2020). We address Masimo’s claim construction argu-
`ments in the order discussed above.
`A
`claim-construction dispute,
`first
`the
`Regarding
`Masimo argues that the Board erred by determining all
`claims were obvious over Sotera’s proposed combination
`consisting of one physiological parameter measured from a
`noninvasive sensor and another physiological parameter
`measured from an invasive sensor. Claim 13 recites “elec-
`tronically processing a signal from a noninvasive sensor”
`and “responsive to processing the signal, electronically de-
`termining a first measurement of a first physiological pa-
`rameter and a second measurement of a second
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`physiological parameter.” ’244 patent claim 13. Claim 1
`similarly recites a “noninvasive physiological sensor” con-
`figured to output a signal, where “responsive to processing
`the signal,” the system “determine[s] a measurement of a
`physiological parameter based at least in part upon the sig-
`nal.” Id. at claim 1. Claim 1 also recites “at least one other
`physiological parameter for which the one or more proces-
`sors are configured to determine at least one measure-
`ment.” Id. Claim 8, which depends from claim 1, further
`recites “determin[ing] a measurement of a second physio-
`logical parameter based at least in part upon the signal.”
`Id. at claim 8.
`Relying on this language, Masimo argues that claims 1
`and 13 require the noninvasive measurement of two differ-
`ent physiological parameters. Appellant’s Br. 23–28. So-
`tera responds that Masimo did not present this issue as a
`claim-construction dispute before the Board. We agree
`with Sotera. None of Masimo’s arguments before the Board
`presented or implicated a construction for claims 1 or 13
`requiring the noninvasive measurement of two physiologi-
`cal parameters. We therefore conclude that Masimo for-
`feited this argument.
`In its petition, Sotera stated that “Saidara discloses a
`noninvasive sensor.” J.A. 236 (claim 1); see also J.A. 248
`(claim 13). In its preliminary response, Masimo presented
`proposed constructions for several terms, but it did not as-
`sert how many parameters must be measured noninva-
`sively in claims 1 and 13. J.A. 303–07. And in its post-
`institution patent owner response, Masimo merely stated
`that “Saidara focuses on invasive sensors,” J.A. 549, and
`that Sotera’s expert “admitted Saidara does not teach a
`[skilled artisan] how to monitor blood glucose noninva-
`sively,” J.A. 562 n.7. Thus, the parties’ initial dispute con-
`cerned the nature of Saidara’s disclosure—not how many
`parameters must be measured noninvasively.
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`MASIMO CORPORATION v. SOTERA WIRELESS, INC.
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`In the petitioner’s reply, Sotera stated that “Masimo
`does not dispute Saidara discloses noninvasive sensors.”
`J.A. 618 n.7. In the patent owner sur-reply, Masimo noted
`that “[c]laims 1 and 13 require noninvasive sensors,” e.g.,
`J.A. 678, and argued that Saidara discloses only invasive
`sensors and monitors, J.A. 676, 678–79. Masimo’s argu-
`ments thus again concerned the contents of the prior art
`(namely, whether Saidara disclosed noninvasive sen-
`sors)—not how many parameters must be measured non-
`invasively.
`The Board “recognize[d] [Masimo’s] argument that
`claim 1 recites a noninvasive sensor,” Board Decision, 2021
`WL 6338280, at *25, but concluded that Sotera demon-
`strated a skilled artisan would have used a noninvasive
`sensor, as described in Sotera’s proposed combination, id.
`Masimo’s argument on appeal—that two parameters
`must be measured noninvasively—does not reflect the ar-
`guments Masimo made before the Board. Masimo limited
`its arguments before the Board to the disclosures of So-
`tera’s prior-art combination. Under these circumstances,
`we conclude that Masimo did not make this claim-construc-
`tion argument before the Board. Masimo has thus forfeited
`this argument. See In re Google Tech. Holdings LLC, 980
`F.3d 858, 864 (Fed. Cir. 2020) (“Even under the most gen-
`erous of readings, Google’s arguments below did not sug-
`gest any definition of ‘network penalty,’ let alone the highly
`particularized definition it presents on appeal.”).
`B
`Masimo’s second claim construction argument presents
`an issue about whether Sotera complied with 37 C.F.R.
`§ 42.104(b). We review decisions related to compliance
`with the Board’s procedural requirements for abuse of dis-
`cretion. Ericsson Inc. v. Intell. Ventures I LLC, 901 F.3d
`1374, 1379 (Fed. Cir. 2018).
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`Masimo argues that Sotera’s failure to present a
`means-plus-function construction for the limitation “a
`physiological measurement system comprising: a physio-
`logical sensor means . . . .” requires reversing the Board’s
`unpatentability determination for claim 18. We disagree.
`Masimo argues that the presence of “means” in claim
`18 necessitates a means-plus-function construction. Ac-
`cording to Masimo, Sotera’s failure to present a means-
`plus-function construction for claim 18 signifies that So-
`tera’s petition did not comply with 37 C.F.R. § 42.104(b)(3),
`thus prohibiting the Board from determining claim 18 is
`unpatentable.
`Claim 18 does not warrant a means-plus-function con-
`struction. Under our precedent, the use of “means” in a
`claim does not require a means-plus-function construction
`where the claim itself provides a sufficiently definite struc-
`ture. Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`1348–49 (Fed. Cir. 2015) (en banc). Claim 18 recites “a
`physiological sensor means,” while claim 1 recites “a non-
`invasive physiological sensor.” ’244 patent claims 1, 18.
`Masimo, understandably, does not argue that claim 1 lacks
`a sufficiently definite structure or that the use of “physio-
`logical sensor” renders claim 1 indefinite. See Oral Arg. at
`12:22–35,
`No.
`22-1393,
`https://oralarguments.
`cafc.uscourts.gov/default.aspx?fl=22-1393_08092023.mp3
`(agreeing that “physiological sensor” should not be under-
`stood as a means-plus-function limitation and that “physi-
`ological sensor” does not render claim 1 indefinite). The
`use of “physiological sensor” in claim 1, combined with
`Masimo’s failure to dispute that claim 1 recites adequate
`structure, suggests that a skilled artisan would under-
`stand the structure of a physiological sensor from the
`words “physiological sensor” alone. We have determined
`means-plus-function construction is not appropriate in
`similar situations where the limitation preceding “means”
`provides a sufficiently definite structure to a skilled arti-
`san. Lighting Ballast Control LLC v. Philips Elecs. N. Am.
`
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`MASIMO CORPORATION v. SOTERA WIRELESS, INC.
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`Corp., 790 F.3d 1329, 1338–39 (Fed. Cir. 2015) (concluding
`that a “voltage source means” provides sufficient structure
`where a skilled artisan would understand that the voltage
`source is a class of structures providing direct current volt-
`age); TecSec, Inc. v. Int’l Bus. Machs. Corp., 731 F.3d 1336,
`1347–48 (Fed. Cir. 2013) (concluding that a “system
`memory means” provides sufficient structure for the func-
`tion of storing data).
`We now address the Board’s determination that Sotera
`complied with 37 C.F.R. § 42.104(b)(3) in light of our con-
`clusion that claim 18 does not warrant a means-plus-func-
`tion construction. Section 42.104(b)(3) states: “Where the
`claim to be construed contains a means-plus-function or
`step-plus-function limitation as permitted by 35 U.S.C.
`§ 112(f), the construction of the claim must identify the spe-
`cific portions of the specification that describe the struc-
`ture, material, or acts corresponding to each claimed
`function.” This regulation applies only where the limita-
`tion at issue necessitates a mean-plus-function construc-
`tion. Since we have concluded that claim 18 does not, the
`Board did not abuse its discretion in determining that So-
`tera complied with this regulation.
`C
`Masimo next argues that the Board’s construction of
`the “parameter-specific alarm delay or suspension period
`of time” limitation in claims 1, 13, and 18 was “gratuitous”
`and incorrect. See Appellant’s Br. 50, 59.
`Masimo’s argument that the Board gratuitously con-
`strued “parameter-specific alarm delay or suspension pe-
`riod of time” is meritless. Sotera petitioned for inter partes
`review on six grounds—four grounds using Baker as a ref-
`erence and two grounds using Saidara as a reference. So-
`tera explained in its petition that it was presenting
`alternative grounds for alternative constructions of “pa-
`rameter-specific alarm delay or suspension period of time.”
`The Baker grounds address obviousness under a
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`construction where the alarm delay term covers pre-alarm
`delays, while the Saidara grounds address obviousness un-
`der a construction where the alarm delay term covers only
`post-alarm delays. J.A. 187 (“Grounds 1–4 [Baker] of this
`Petition are directed to a construction encompassing delays
`before an alarm is activated (i.e., pre-alarm delays), and
`Grounds 5–6 [Saidara] are directed to temporary suspen-
`sion of active alarms (i.e., post-alarm suspensions).”). The
`Board did not err by construing the “parameter-specific
`alarm delay or suspension period of time” limitation that
`governed which grounds it would analyze in evaluating ob-
`viousness.
`The Board also correctly construed “parameter-specific
`alarm delay or suspension period of time” to cover only
`post-alarm delays or suspensions. We interpret patent
`claims by looking to the claim language, the specification,
`the prosecution history, and, where relevant, extrinsic evi-
`dence. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.
`Cir. 2005) (en banc). This interpretation is done “in the
`context of the entire patent, including the specification.”
`Id. at 1313.
`Here, the claim language itself is not particularly in-
`formative. Claims 1, 13, and 18 contain no language eluci-
`dating whether the “parameter-specific alarm delay or
`suspension period of time” limitation covers pre-alarm de-
`lays or only post-alarm delays, nor do the dependent
`claims. The specification, however, provides significant in-
`formation regarding the scope of this limitation. The spec-
`ification is uniform in its description of the alarm delay and
`suspensions as post-alarm delays and suspensions. It re-
`fers throughout to the silencing or suspending of audible or
`active alarms and the reactivation of alarms. E.g., ’244 pa-
`tent Abstract, Fig. 4, col. 2 ll. 33–38, col. 2 ll. 55–57, col. 2
`ll. 61–63, col. 3 ll. 1–6, col. 3 ll. 31–32, col. 3 ll. 34–36, col. 3
`ll. 43–47, col. 3 ll. 58–60, col. 3 l. 65–col. 4 l. 1, col. 4 ll. 46–
`48, col. 4 ll. 58–60, col. 5 l. 42, col. 5 ll. 52–65, col. 6 ll. 1–
`12. This uniformity of description leads us to conclude that
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`the ’244 patent uses “parameter-specific alarm delay or
`suspension period of time” to mean a post-alarm delay or
`suspension. See Trs. of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359, 1368 (Fed. Cir. 2016) (construing “probabil-
`istic model of normal computer system usage” in line with
`the specification’s consistent disclosures).
`We thus affirm the Board’s construction of “parameter-
`specific alarm delay or suspension period of time.”
`II
`We turn now to Masimo’s obviousness arguments. We
`review the Board’s legal conclusion of obviousness de novo
`and review its subsidiary fact findings, including the scope
`and content of the prior art and the presence or absence of
`a motivation to combine, for substantial evidence. Intelli-
`gent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
`1359, 1366 (Fed. Cir. 2016); Randall Mfg. v. Rea, 733 F.3d
`1355, 1362 (Fed. Cir. 2013).
`Masimo first argues that the Board lacked substantial
`evidence to conclude that a skilled artisan would modify
`Saidara by adding a noninvasive pulse oximeter that
`measures blood oxygen levels to Saidara’s sensor set, both
`as to the existence of a motivation to combine and the dis-
`closure of a noninvasive sensor. We disagree. Substantial
`evidence supports the Board’s findings that a skilled arti-
`san would modify Saidara to noninvasively measure blood
`oxygen levels by adding a noninvasive pulse oximeter to
`Saidara’s sensor set. See J.A. 1644 ¶ [0076] (Saidara dis-
`closing the monitoring of multiple physiological parame-
`ters); J.A. 1496 ¶ 168 (Sotera’s expert explaining why a
`skilled artisan would make the proposed combination); J.A.
`3936 at 23:2–11 (Masimo’s expert agreeing a skilled arti-
`san would use a noninvasive pulse oximeter to measure
`blood oxygen levels).
` Masimo also argues that the prior art does not disclose
`multiple alarm delay or suspension periods of time for
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`different parameters, as required by the independent
`claims. We disagree and conclude that substantial evi-
`dence supports the Board’s findings that the prior art dis-
`closes multiple alarm delay or suspension periods of time
`for different parameters. J.A. 1644 ¶ [0073] (Saidara dis-
`closing the use of multiple sensors and multiple measure-
`ments); J.A. 1651 ¶ [0133] (Saidara disclosing a multiple
`alarm function for blood sugar levels); J.A. 1498–99, 1501–
`02 ¶¶ 174, 178 (Sotera’s expert explaining why a skilled ar-
`tisan would modify Saidara to use multiple alarm timings);
`J.A. 4237 at 324:3–17 (Masimo’s expert admitting that Sa-
`idara discloses multiple sensors measuring multiple phys-
`iological characteristics).
`CONCLUSION
`We have considered Masimo’s remaining arguments
`and find them unpersuasive. For the foregoing reasons, we
`affirm.
`
`AFFIRMED
`
`