Case: 22-1891 Document: 37 Page: 1 Filed: 01/12/2024
`
`
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`APPLE INC.,
`Appellant
`
`v.
`
`MASIMO CORPORATION,
`Appellee
`______________________
`
`2022-1891
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2020-
`01524.
`
`______________________
`
`Decided: January 12, 2024
`______________________
`
`BRITTANY BLUEITT AMADI, Wilmer Cutler Pickering
`Hale and Dorr LLP, Washington, DC, argued for appellant.
`Also represented by MICHAEL JOHN BALLANCO, LAUREN
`ANN DEGNAN, CHRISTOPHER DRYER, WALTER KARL RENNER
`Fish & Richardson P.C., Washington, DC.
`
` JOSHUA STOWELL, Knobbe, Martens, Olson & Bear,
`LLP, Irvine, CA, argued for appellee. Also represented by
`STEPHEN C. JENSEN, JAROM D. KESLER, JOSEPH R. RE.
` ______________________
`
`
`
`
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`APPLE INC.,
`Appellant
`
`v.
`
`MASIMO CORPORATION,
`Appellee
`______________________
`
`2022-1891
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2020-
`01524.
`
`______________________
`
`Decided: January 12, 2024
`______________________
`
`BRITTANY BLUEITT AMADI, Wilmer Cutler Pickering
`Hale and Dorr LLP, Washington, DC, argued for appellant.
`Also represented by MICHAEL JOHN BALLANCO, LAUREN
`ANN DEGNAN, CHRISTOPHER DRYER, WALTER KARL RENNER
`Fish & Richardson P.C., Washington, DC.
`
` JOSHUA STOWELL, Knobbe, Martens, Olson & Bear,
`LLP, Irvine, CA, argued for appellee. Also represented by
`STEPHEN C. JENSEN, JAROM D. KESLER, JOSEPH R. RE.
` ______________________
`
`
`
`Case: 22-1891 Document: 37 Page: 2 Filed: 01/12/2024
`
`2
`
`APPLE INC. v. MASIMO CORPORATION
`
`
`Before LOURIE, PROST, and REYNA, Circuit Judges.
`LOURIE, Circuit Judge.
`Apple Inc. (“Apple”) appeals from a decision of the U.S.
`Patent and Trademark Office Patent Trial and Appeal
`Board (“the Board”) holding that claims 1−16 of Masimo’s
`U.S. Patent 10,433,776 (the “’776 patent”) were not un-
`patentable as obvious in view of the asserted prior art. Ap-
`ple Inc. v. Masimo Corp., No. IPR2020-01524 (P.T.A.B.
`Apr. 29, 2022), J.A. 1−52 (“Decision”). For the following
`reasons, we affirm.
`
`BACKGROUND
`Masimo’s ’776 patent is directed to a pulse oximeter
`that operates by reducing or increasing power consumption
`after comparing various processing characteristics, like
`pulse rate or signal-to-noise ratios, to predetermined
`thresholds. See ’776 patent, col. 2 ll. 25−33, col. 3 ll. 14−25.
`Alterations to power consumption levels are achieved using
`sampling mechanisms that process incoming signal sam-
`ples to determine whether subsequent sampling processing
`should be reduced during high-signal-quality periods or in-
`creased during low-signal-quality periods or when critical
`physiological measurements are necessary. Id. at col. 2 ll.
`25−44. Sampling thus modifies the oximeter’s power con-
`sumption by modifying the number of input samples re-
`ceived and processed.
`One exemplary sampling mechanism involves “an emit-
`ter duty cycle control” that “determines the duty cycle of
`the current supplied by the emitter drive outputs . . . to
`both red and IR sensor emitters.” ’776 patent, col. 5 l.
`64−col. 6 l. 2; see col. 2 ll. 34−44 (noting that the associated
`duty cycle “may be in the range of about 3.125% to about
`25%”). A duty cycle is, essentially, the fraction of time dur-
`ing which a signal is active. Thus, a 25% duty cycle means
`
`
`
`Case: 22-1891 Document: 37 Page: 3 Filed: 01/12/2024
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`APPLE INC. v. MASIMO CORPORATION
`
`3
`
`that the signal is on 25% of the time and off for the other
`75% of the time.
`The ’776 patent specification also notes that, “[i]n con-
`junction with an intermittently reduced duty cycle or as an
`independent sampling mechanism, there may be a ‘data off’
`time period longer than one drive current cycle where the
`emitter drivers . . . are turned off.” Id. at col. 7 ll. 11−15.
`Independent claim 1 of the ’776 patent recites:
`1. A method of operating a patient monitor config-
`ured to monitor at least a pulse rate of a patient by
`processing signals responsive to light attenuated
`by body tissue, the method comprising:
`operating the patient monitor according to a first
`control protocol, wherein said operating includes
`activating a first control protocol light source in ac-
`cordance with the first control protocol, the first
`control protocol light source including one or more
`of a plurality of light sources;
`when operating according to the first control proto-
`col, calculating, by the patient monitor, measure-
`ment values of the pulse rate, the measurement
`values responsive to light from the first control pro-
`tocol light source, detected by a detector of an opti-
`cal sensor after attenuation by body tissue of the
`patient using the patient monitor;
`generating a trigger signal, wherein generating
`said trigger signal is responsive to at least one of: a
`comparison of processing characteristics to a pre-
`determined threshold, a physiological event, or sig-
`nal quality characteristics of signals received from
`the detector;
`in response to receiving the trigger signal, operat-
`ing the patient monitor according to a second con-
`trol protocol different from the first control
`
`
`
`Case: 22-1891 Document: 37 Page: 4 Filed: 01/12/2024
`
`4
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`APPLE INC. v. MASIMO CORPORATION
`
`protocol, wherein said operating includes activat-
`ing a second control protocol light source in accord-
`ance with the second control protocol, the second
`control protocol light source including one or more
`of the plurality of light sources; and
`when operating the patient monitor according to
`the second control protocol, calculating the meas-
`urement values of the pulse rate, the measurement
`values responsive to light from the second control
`protocol light source, detected by the detector after
`attenuation by the body tissue of the patient using
`the patient monitor,
`wherein said operating of the patient monitor ac-
`cording to the first control protocol operates the
`first control protocol light source according to a
`first duty cycle and said operating of the patient
`monitor according to the second control protocol op-
`erates the second control protocol light source ac-
`cording to a second duty cycle, wherein power
`consumption of the first control protocol light
`source according to the first duty cycle is different
`than power consumption of the second control pro-
`tocol light source according to the second duty cy-
`cle.
`’776 patent, col. 11 l. 41−col. 12 l. 21 (emphases added). In-
`dependent claim 11 recites similar limitations for the pur-
`poses of this appeal. See id. at col. 12 l. 60−col. 14 l. 9.
`
`In its final written decision, the Board held that nei-
`ther the first nor the second duty cycle recited in the claims
`could be 0%. Decision at 11−21. In particular, the Board
`construed “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, ex-
`pressed as a percentage” in view of a similar disclosure in
`the specification. Id. at 16−17 (citing the ’776 patent, col.
`2 ll. 43−44). The Board then held that neither the first nor
`
`
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`Case: 22-1891 Document: 37 Page: 5 Filed: 01/12/2024
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`APPLE INC. v. MASIMO CORPORATION
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`5
`
`the second duty cycle can be 0%, given that both of the as-
`sociated first and second control protocol light sources must
`generate light. Decision at 17−18. The Board subsequently
`held that, based on its construction of “duty cycle,” Apple
`had not established that any of the challenged claims
`would have been unpatentable as obvious, as Apple only
`asserted prior art that taught devices operating with a 0%
`duty cycle. Id. at 28−33, 41−50.
`Apple timely appealed. We have jurisdiction under
`28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141(c).
`DISCUSSION
`We review the Board’s legal determinations de novo, In
`re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
`Board’s factual findings for substantial evidence, In re
`Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding
`is supported by substantial evidence if a reasonable mind
`might accept the evidence as adequate to support the find-
`ing. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
`Apple contends that the Board erred in holding that the
`claims prohibit a 0% duty cycle. Although Apple does not
`challenge the Board’s construction of “duty cycle,” it asserts
`that the claims provide no restriction on specific ratios nec-
`essary for each duty cycle. Appellant’s Br. at 13−17. We
`disagree.
`As the Board held, a 0% duty cycle would mean that the
`associated light source in the device is turned off. However,
`the claims require a light source to remain on during both
`the first and second duty cycles because the claims also re-
`quire calculating pulse rate in each cycle based upon light
`from a light source. See Decision at 17−18. If the light
`source were turned off, the device could not calculate the
`heart rate as required. Id.
`Apple further contends that intrinsic evidence supports
`a conclusion that a duty cycle may be 0%. For example,
`claim 6, which depends from claim 1, recites that the first
`
`
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`Case: 22-1891 Document: 37 Page: 6 Filed: 01/12/2024
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`6
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`APPLE INC. v. MASIMO CORPORATION
`
`control protocol, which is associated with the first duty cy-
`cle, comprises “operating the first control protocol light
`source in a data off state.” ’776 patent, col. 12 ll. 43−46; see
`also id. at col. 14 ll. 27−30 (reciting the same limitation in
`claim 15, which depends from independent claim 11). Ap-
`ple further points to a disclosure in the specification dis-
`cussing a “data off” state. See, e.g., id. at col. 8 l. 14−col. 9
`l. 18. According to Apple, that “data off” state constitutes
`a duty cycle of 0%. Appellant’s Br. at 20−24, 28−30. We
`disagree.
`As the Board held, the specification sets forth that the
`first and second duty cycles are independent of the “data
`off” state. Decision at 19−21. Claims 6 and 15 require that
`the first control protocol includes a period of “data off” time
`as well as a period associated with the first duty cycle dur-
`ing which a light must be on. Id. They do not require or
`imply that a duty cycle as recited in the independent claims
`of the ’776 patent may be 0%.
`For the above reasons, we see no error in the Board’s
`determination that the claims prohibit a 0% duty cycle, De-
`cision at 11–21, and thus conclude that it was supported by
`substantial evidence. Hence, it correctly concluded that
`the claims were not shown to have been obvious over the
`cited prior art.
`
`CONCLUSION
`We have considered Apple’s remaining arguments and
`do not find them persuasive. For the foregoing reasons, we
`affirm the Board’s final written decision.
`AFFIRMED
`
`
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