Case: 22-1890 Document: 36 Page: 1 Filed: 01/12/2024
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`
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`APPLE INC.,
`Appellant
`
`v.
`
`MASIMO CORPORATION,
`Appellee
`______________________
`
`2022-1890
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2020-
`01523.
`
`______________________
`
`Decided: January 12, 2024
`______________________
`
`THOMAS GREGORY SPRANKLING, Wilmer Cutler Picker-
`ing Hale and Dorr LLP, Palo Alto, CA, argued for appel-
`lant. Also represented by MICHAEL JOHN BALLANCO,
`LAUREN ANN DEGNAN, CHRISTOPHER DRYER, WALTER KARL
`RENNER, Fish & Richardson P.C., Washington, DC.
`
` STEPHEN C. JENSEN, Knobbe, Martens, Olson & Bear,
`LLP, Irvine, CA, argued for appellee. Also represented by
`JAROM D. KESLER, JOSEPH R. RE, JOSHUA STOWELL.
` ______________________
`
`
`
`
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`APPLE INC.,
`Appellant
`
`v.
`
`MASIMO CORPORATION,
`Appellee
`______________________
`
`2022-1890
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2020-
`01523.
`
`______________________
`
`Decided: January 12, 2024
`______________________
`
`THOMAS GREGORY SPRANKLING, Wilmer Cutler Picker-
`ing Hale and Dorr LLP, Palo Alto, CA, argued for appel-
`lant. Also represented by MICHAEL JOHN BALLANCO,
`LAUREN ANN DEGNAN, CHRISTOPHER DRYER, WALTER KARL
`RENNER, Fish & Richardson P.C., Washington, DC.
`
` STEPHEN C. JENSEN, Knobbe, Martens, Olson & Bear,
`LLP, Irvine, CA, argued for appellee. Also represented by
`JAROM D. KESLER, JOSEPH R. RE, JOSHUA STOWELL.
` ______________________
`
`
`
`Case: 22-1890 Document: 36 Page: 2 Filed: 01/12/2024
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`2
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`APPLE INC. v. MASIMO CORPORATION
`
`Before LOURIE, PROST, and REYNA, Circuit Judges.
`REYNA, Circuit Judge.
`Apple Inc. appeals a final written decision of the
`United States Patent and Trademark Office Patent Trial
`and Appeal Board, which determined that claims 1–7, 9–
`18, and 20–24 of U.S. Patent No. 8,457,703 were not un-
`patentable as obvious. We affirm.
`BACKGROUND
`A. U.S. Patent No. 8,457,703
`Masimo Corporation (“Masimo”) is the assignee of U.S.
`Patent No. 8,457,703 (“’703 patent”), which relates to re-
`ducing power consumption of a pulse oximeter. ’703 pa-
`tent, Abstract. The patent discloses regulating power
`consumption by intermittently changing the number of
`samples received and processed by the oximeter. Id. at 6:9–
`11. Based on physiological measurements and signal sta-
`tistics, the oximeter determines whether to increase or de-
`crease sampling. Id. at 6:25–39. In one embodiment, the
`patent discloses controlling sampling by intermittently
`changing the duty cycle of the current supplied to drive the
`LEDs that project light onto the patient’s tissue. Id. at
`5:55–66, 6:56–7:8.
`Claim 1 is representative and recites,
`1. A method of managing power consumption dur-
`ing continuous patient monitoring by adjusting be-
`havior of a patient monitor,
`the method
`comprising:
`driving one or more light sources configured to emit
`light into tissue of a monitored patient;
`receiving one or more signals from one or more de-
`tectors configured to detect said light after attenu-
`ation by said tissue;
`
`
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`Case: 22-1890 Document: 36 Page: 3 Filed: 01/12/2024
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`APPLE INC. v. MASIMO CORPORATION
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`3
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`continuously operating a patient monitor at a lower
`power consumption level to determine measure-
`ment values for one or more physiological parame-
`ters of a patient;
`comparing processing characteristics to a predeter-
`mined threshold; and
`when said processing characteristics pass said
`threshold, transitioning to continuously operating
`said patient monitor at a higher power consump-
`tion level,
`wherein said continuously operating at said lower
`power consumption level comprises reducing acti-
`vation of an attached sensor,
`said sensor positioning said light sources and said
`detectors proximate said tissue.
`Id. at 11:32–51 (emphasis added).
`B. Prior Art References
`Two references are relevant to this appeal: Diab (U.S.
`Patent No. 5,632,272) and Amano
`(U.S. Patent
`No. 6,293,915).
`Diab discloses a pulse oximeter that includes a sensor,
`a digital signal processing system, and a display. Diab,
`34:11–26, Fig. 11. The digital signal processing system
`provides several outputs to be displayed, including “blood
`oxygen saturation, heart rate, and a clean plethysmo-
`graphic waveform.” Id. at 34:26–28. Within the digital sig-
`nal processing system, as shown in Figure 20, heart rate
`module 410 includes motion artifact suppression module
`580. Id. at 47:30–38, Fig. 20 (below).
`
`
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`Case: 22-1890 Document: 36 Page: 4 Filed: 01/12/2024
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`APPLE INC. v. MASIMO CORPORATION
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`In case of motion, motion artifact suppression module
`580 suppresses motion artifacts, namely, artifacts intro-
`duced by patient movement that may distort the measured
`signal. Id. at 3:6–9, 47:55–56. “If motion is not detected,
`spectral estimation on the signals is carried out directly
`without motion artifact suppression.” Id. at 47:52–54.
`Amano discloses a wristwatch type of pulse wave de-
`tector mounted on a finger. See Amano, Figs. 37A and 37B
`(below).
`
`
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`Case: 22-1890 Document: 36 Page: 5 Filed: 01/12/2024
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`APPLE INC. v. MASIMO CORPORATION
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`5
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`In the embodiment illustrated in Figure 1, pulse wave
`detecting section 10 detects a pulse waveform and outputs
`the detected signal to body movement component eliminat-
`ing section 30. Id. at 21:5–8, Fig. 1 (excerpt below).
`
`The device also includes body movement detecting sec-
`tion 20 and waveform treating section 21. Id. at 21:9–12.
`If no body movement is present, the operations of waveform
`treating section 21 and body movement component elimi-
`nating section 30 are suspended. Id. at 21:65–22:2. Ac-
`cording to Amano, this suspension reduces the power
`consumption of the device. Id. at 22:4–6.
`C. Procedural History
`After Masimo sued Apple Inc. (“Apple”) for infringing
`the ’703 patent, Apple petitioned for inter partes review
`(“IPR”) of claims 1–7, 9–18, and 20–24 of the ’703 patent.
`The Patent Trial and Appeal Board (“Board”) con-
`strued the claimed “processing characteristics” as “deter-
`mined from a signal received from one or more detectors
`configured to detect light.” J.A. 14. Based on this construc-
`tion, the Board assessed Apple’s eight obviousness
`grounds, each of which addressed either or both of Diab and
`Amano. Ultimately, the Board concluded that Apple failed
`to show obviousness of the challenged claims.
`
`
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`Case: 22-1890 Document: 36 Page: 6 Filed: 01/12/2024
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`6
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`APPLE INC. v. MASIMO CORPORATION
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`Apple appealed. We have jurisdiction pursuant to
`28 U.S.C. § 1295(a)(4)(A).
`STANDARD OF REVIEW
`Claim construction is a question of law with underlying
`questions of fact. Wasica Fin. GmbH v. Cont’l Auto. Sys.,
`Inc., 853 F.3d 1272, 1278 (Fed. Cir. 2017). We review de
`novo the Board’s ultimate claim construction and its sup-
`porting determinations that are based on intrinsic evi-
`dence. Personalized Media Commc’ns, LLC v. Apple Inc.,
`952 F.3d 1336, 1339 (Fed. Cir. 2020). Subsidiary factual
`findings involving extrinsic evidence are reviewed for sub-
`stantial evidence. Id.
`We review the Board’s ultimate obviousness determi-
`nations on a de novo basis and any underlying factual de-
`terminations for substantial evidence. In re Gartside,
`203 F.3d 1305, 1316 (Fed. Cir. 2000). The scope and con-
`tent of the prior art and whether a person of ordinary skill
`in the art would have been motivated to combine teachings
`in the prior art are both questions of fact. Intel Corp. v.
`PACT XPP Schweiz AG, 61 F.4th 1373, 1378 (Fed. Cir.
`2023). Substantial evidence means “such relevant evi-
`dence as a reasonable mind might accept as adequate to
`support a conclusion.” Id. (citation omitted).
`DISCUSSION
`Apple challenges the Board’s construction of “pro-
`cessing characteristics” as too limiting. Apple also raises
`two arguments relating to the prior art references. First,
`Apple contends that the Board failed to address its alter-
`native argument as to Diab’s teachings. Second, Apple ar-
`gues that the Board applied an inherency standard to
`Apple’s obviousness argument based on the combination of
`Diab and Amano.
`
`
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`Case: 22-1890 Document: 36 Page: 7 Filed: 01/12/2024
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`APPLE INC. v. MASIMO CORPORATION
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`7
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`A. “Processing Characteristics”
`The Board concluded 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.” J.A. 14. The Board rejected Apple’s expan-
`sive construction interpreting this term to encompass any
`information that is processed. Id. To the Board, such a
`“sweeping premise” is inconsistent with the ’703 patent.
`Id. We agree with the Board.
`Both the claim language and the specification support
`the Board’s claim construction. In the claim language,
`“processing characteristics” refers to the processing of “one
`or more signals from one or more detectors configured to
`detect” light attenuated by the tissue. See ’703 patent,
`11:32–51. These signals represent the only signals re-
`ceived and processed in the claimed patient-monitoring in-
`vention.
` Throughout the specification, “processing
`characteristics” are described as being determined based
`on the signals received from the light detectors, the sole
`source of signals that are then processed. See, e.g., id. at
`5:11–23, 5:40–48, Figs. 3 & 4. Although the specification
`does not state the term in explicit definitional format, the
`Board’s reading of the term is consistent with how the in-
`vention is described in the specification.
`Contrary to Apple’s contention, the additional limita-
`tions to “processing characteristics” recited in dependent
`claims 4 and 8 do not support Apple’s proposed expansive
`construction. The additional limitations1 further define
`
`
`1 Dependent claim 4 recites that the “processing
`characteristics comprise signal characteristics from one or
`more light sensitive detectors.” ’703 patent, 11:59–61. De-
`pendent 8 claim recites that the “processing characteristics
`include determining an estimate of current power
`
`
`
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`Case: 22-1890 Document: 36 Page: 8 Filed: 01/12/2024
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`8
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`APPLE INC. v. MASIMO CORPORATION
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`and restrict “processing characteristics” to a subset of the
`resulting downstream data generated from processing the
`received signals. They do not support reading “processing
`characteristics” to encompass information untethered to
`the underlying processing of the invention as described in
`the patent. Apple’s proposed construction improperly
`takes the term out of context of the patented invention and
`lacks support. For these reasons, we hold that the Board
`correctly construed the term “processing characteristics” as
`“determined from a signal received from one or more detec-
`tors configured to detect light.” See J.A. 14.
`B. Apple’s Partial-Suspension Argument
`Apple asserts that the Board failed to grasp its alter-
`native argument that Diab teaches suspending a subset of
`the operations of its motion artifact suppression module.
`Appellant Br. 41–45. In Apple’s view, this partial suspen-
`sion, like its argument based on the suspension of the en-
`tire module, would read on the claimed limitation of
`reducing power consumption. Id. at 41–42.
`We note that Apple failed to raise the purported par-
`tial-suspension argument before the Board. The record
`demonstrates that Apple raised a singular argument that
`Diab teaches suspending its motion artifact suppression
`module if there is no motion. Apple did not identify a dis-
`tinct alternative argument relying on suspending a subset
`of components within that module. In its petition, Apple
`contended that Diab “teaches not executing the motion ar-
`tifact suppression module 580” and that it would have been
`obvious to “suspend and not execute” operations of that
`module if there is no motion. J.A. 85. Apple’s argument
`focused on suspending operations of the motion artifact
`suppression module altogether. The petition made no
`
`consumption and comparing said estimate with a target
`power consumption.” Id. at 12:1–4.
`
`
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`Case: 22-1890 Document: 36 Page: 9 Filed: 01/12/2024
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`APPLE INC. v. MASIMO CORPORATION
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`9
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`mention of suspending a subset of the operations performed
`by the motion artifact suspension module.
`To show that it made the partial-suspension argument
`before the Board, Apple cites several pages from its peti-
`tioner’s reply and certain statements made at the oral
`hearing. Appellant Br. 44. To the extent Apple raised a
`new argument in its reply or at the oral hearing, such ar-
`gument is untimely and improper.2 See Intelligent Bio-
`Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369
`(Fed. Cir. 2016).
`We hold that Apple failed to properly present to the
`Board the partial-suspension argument it now raises on
`appeal. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1377–
`78 (Fed. Cir. 2023). Absent exceptional circumstances, ar-
`guments not properly presented before the Board are gen-
`erally not considered on appeal. In re Google Tech.
`Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020). We find
`no exceptional circumstances here justifying exercising our
`discretion to hear Apple’s forfeited argument. See id.
`C. Motivation to Combine
`Apple also contends that the Board improperly applied
`an inherency standard when evaluating Apple’s motiva-
`tion-to-combine theory. Apple argues that the Board re-
`quired it to show that suspending Diab’s motion artifact
`suppression module based on Amano would “necessarily”
`or “inherently” reduce power consumption. Appellant
`
`2 A review of Apple’s citations to its reply shows that
`it continued to argue suspending “all the operations of the
`motion artifact suppression module 580” and that “a
`POSITA would have found it obvious not to execute opera-
`tions of [that module].” J.A. 1689–90. The reply did not
`raise an alternative argument based on suspending a sub-
`set of the operations. Apple’s reliance on counsel state-
`ments at the oral hearing fails for similar reasons.
`
`
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`Case: 22-1890 Document: 36 Page: 10 Filed: 01/12/2024
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`10
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`APPLE INC. v. MASIMO CORPORATION
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`Br. 56–57. We disagree. Rather than applying an “inher-
`ency” standard, the Board addressed Apple’s reasoning for
`combining Diab and Amano and explained why it found Ap-
`ple’s arguments unpersuasive.
`During the IPR, the Board addressed and found unper-
`suasive Apple’s proposed reasoning to combine Diab with
`Amano. J.A. 28–32. The Board explained that although
`both relate to physiological monitoring, the two references
`“disclose different processing algorithms that result in dif-
`ferent outputs that are not directly applicable to each
`other.” J.A. 29. Given these differences, the Board found
`Apple failed to adequately explain why one skilled in the
`art would have applied Amano’s teaching of suspending
`certain processing to Diab’s motion artifact suppression
`module. J.A. 30.
`The Board further addressed Apple’s contention that
`applying Amano’s teaching to Diab’s motion artifact sup-
`pression module “would” reduce power consumption in
`Diab. Id. This “supposed power reduction is the founda-
`tional reason” Apple advanced for combining the two refer-
`ences. J.A. 31–32. But the Board found that Masimo
`persuasively showed that Amano’s “power reduction may
`not occur in Diab’s differently structured and configured
`system.” J.A. 31. To the Board, even assuming one were
`to apply Amano’s teachings to suspend Diab’s motion arti-
`fact suppression module, it may not reduce power con-
`sumption in Diab’s system. Id. The Board also considered
`the parties’ expert testimony and found Masimo’s expert
`testimony more credible. Id. The Board therefore rejected
`Apple’s proffered premise for finding a motivation to com-
`bine. We conclude that the Board’s finding of a lack of mo-
`tivation to combine Diab and Amano is supported by
`substantial evidence.
`
`
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`Case: 22-1890 Document: 36 Page: 11 Filed: 01/12/2024
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`APPLE INC. v. MASIMO CORPORATION
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`11
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`CONCLUSION
`We have considered Apple’s remaining arguments and
`find them unpersuasive. Accordingly, the decision of the
`Board is affirmed.
`
`AFFIRMED
`COSTS
`
`Costs against Appellant.
`
`
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