Case: 22-1894 Document: 47 Page: 1 Filed: 01/10/2024
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`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`MASIMO CORPORATION,
`Appellant
`
`v.
`
`APPLE INC.,
`Appellee
`______________________
`
`2022-1894
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2020-
`01526.
`
`______________________
`
`Decided: January 10, 2024
`______________________
`
`JEREMIAH HELM, Knobbe, Martens, Olson & Bear, LLP,
`Irvine, CA, argued for appellant. Also represented by JOHN
`M. GROVER, STEPHEN C. JENSEN, SHANNON LAM, JOSEPH R.
`RE.
`
` LAUREN ANN DEGNAN, Fish & Richardson P.C., Wash-
`ington, DC, argued for appellee. Also represented by
`MICHAEL JOHN BALLANCO, WALTER KARL RENNER; ROBERT
`COURTNEY, Minneapolis, MN.
` ______________________
`
`

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`Case: 22-1894 Document: 47 Page: 2 Filed: 01/10/2024
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`MASIMO CORPORATION v. APPLE INC.
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`
`Before LOURIE, PROST, and REYNA, Circuit Judges.
`PROST, Circuit Judge.
`Masimo Corporation (“Masimo”) appeals from a final
`written decision of the Patent Trial and Appeal Board
`(“Board”) in an inter partes review (“IPR”) determining
`claim 15 of U.S. Patent No. 6,771,994 (“the ’994 patent”)
`unpatentable for obviousness. We affirm.
`BACKGROUND
`Apple Inc. (“Apple”) petitioned for IPR of claim 15 of
`the ’994 patent, which recites:
`15. A sensor which generates at least first and sec-
`ond intensity signals from a light-sensitive detector
`which detects light of at least first and second
`wavelengths transmitted through body tissue car-
`rying pulsing blood; the sensor comprising:
`at least one light emission device;
`a light sensitive detector; and
`a plurality of louvers positioned over the
`light sensitive detector to accept light from
`the at least one light emission device origi-
`nating from a general direction of the at
`least one light emission device and then
`transmitting through body tissue carrying
`pulsing blood, wherein the louvers accept
`the light when the sensor is properly ap-
`plied to tissue of a patient.
`’994 patent claim 15 (emphasis added). We refer to the lan-
`guage emphasized above as the “louver element.”
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`Case: 22-1894 Document: 47 Page: 3 Filed: 01/10/2024
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`MASIMO CORPORATION v. APPLE INC.
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`Apple argued in its IPR petition that claim 15 was un-
`patentable because, among other things, it would have
`been obvious over a combination of Webster1 and Melby.2
`Webster undisputedly disclosed everything in claim 15
`except for the louver element. See Apple Inc. v. Masimo
`Corp., No. IPR2020-01526, 2022 WL 1153450, at *7–8
`(P.T.A.B. Apr. 12, 2022) (“Final Written Decision”); see also
`J.A. 333–37; Oral Arg. at 6:15–40.3 Webster described,
`however, the “importan[ce] [of] minimiz[ing] the effects
`from light other than the optical signals of interest,” and
`stated that “[o]ne way to minimize unwanted light incident
`upon the detector is to place some type of light filter over
`the detector.” J.A. 950 (emphasis added). According to
`Webster, doing so “allows light of wavelengths of interest
`to pass through the filter but does not allow light of other
`wavelengths to pass through the filter.” J.A. 950.
`Melby, titled “Light Control Film with Reduced Ghost
`Images,” disclosed a “louvered plastic film.” Melby at [54],
`[57]. Melby contemplates using its louvered film as a “pri-
`vacy filter” on computer displays, see id. at col. 6 ll. 7–10,
`or as a “sunscreen in the rear window of an automobile,”
`id. at col. 4 ll. 66–68, but it observes that such film can be
`“useful in a wide variety of applications,” see id. at col. 5
`ll. 9–10.
`In its final written decision, the Board determined that
`Apple had “persuasively shown that the combination of
`Webster and Melby teach[es] [the louver element] and that
`the combination would have been both predictable and
`
`
`1 Design of Pulse Oximeters (J.G. Webster ed., 1997)
`(“Webster”); J.A. 855–968.
`2 U.S. Patent No. 5,254,388 (“Melby”); J.A. 814–21.
`3 No. 22-1894, https://oralarguments.cafc.uscourts.
`gov/default.aspx?fl=22-1894_12062023.mp3.
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`MASIMO CORPORATION v. APPLE INC.
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`supported by the references.” Final Written Decision,
`2022 WL 1153450, at *12.
`Specifically, the Board found that Webster taught “the
`importance of minimizing the effects of light other than the
`optical signals of interest, including unwanted light inci-
`dent upon the detector, by placing some type of light filter
`over the detector.” Id. Although Masimo had suggested
`that Webster’s “some type of light filter” meant only wave-
`length filters, the Board found “no indication” to that effect;
`instead, wavelength filters were just “one example mecha-
`nism for limiting unwanted light.” Id. at *13. Relying on
`Apple’s expert testimony, the Board found that a person of
`ordinary skill in the art would have understood that
`Melby’s light control film, when placed over a detector,
`would “accept[] light from the light emission device from a
`particular direction based on the angle of the louvers,” id.
`at *12 (citing J.A. 658–60 ¶¶ 102–04), and would “restrict
`the amount of light that reaches the detector from a partic-
`ular direction,”
`id.
`(quoting J.A. 660 ¶ 104)—thus
`“help[ing] minimize light that has not otherwise travelled
`through” body tissue, see id. The Board ultimately deter-
`mined that claim 15 was unpatentable for obviousness. Id.
`at *14.
`Masimo timely appealed. We have jurisdiction under
`28 U.S.C. § 1295(a)(4)(A).
`DISCUSSION
`“We review the Board’s ultimate determination of obvi-
`ousness de novo and its underlying factual determinations
`for substantial evidence.” PersonalWeb Techs., LLC v. Ap-
`ple, Inc., 917 F.3d 1376, 1381 (Fed. Cir. 2019) (cleaned up).
`What the prior art disclosed and whether a person of ordi-
`nary skill in the art would have been motivated to combine
`prior-art references are both fact questions that we review
`for substantial evidence. E.g., Intel Corp. v. PACT XPP
`Schweiz AG, 61 F.4th 1373, 1378 (Fed. Cir. 2023). “Sub-
`stantial evidence is such relevant evidence as a reasonable
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`mind might accept as adequate to support a conclusion.”
`Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1324
`(Fed. Cir. 2017) (cleaned up).
`Masimo first argues that the Board should have read
`Webster’s “some type of light filter” as limited to wave-
`length filters. Appellant’s Br. 23 (arguing that the Board
`“erred by picking out an isolated sentence” from Webster
`“while ignoring the context provided by Webster as a
`whole”). This argument, though styled as a legal error, re-
`ally challenges a factfinding as to what the prior art dis-
`closed. We conclude that a reasonable fact finder could
`have found, as the Board did, that when Webster said
`“some type of light filter,” it did not mean exclusively wave-
`length filters—which were instead just “one example mech-
`anism for limiting unwanted light.” See Final Written
`Decision, 2022 WL 1153450, at *13. Masimo’s disagree-
`ment on this factual matter does not establish that the
`Board failed to consider Webster as a whole or that it oth-
`erwise made or relied on a factfinding lacking substantial
`evidence.
`Masimo next says that the Board’s use of the words
`“could” and “reasonable” show that it applied an incorrect
`legal standard for obviousness. See Appellant’s Br. 19,
`24–25. As an example of the former, the Board stated: “We
`determine that Webster teaches that in one embodiment
`light filters, such as those found in Melby, could be used
`above the detectors.” Final Written Decision, 2022 WL
`1153450, at *13. As an example of the latter, the Board
`stated that “it would have 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.”
`Id. at *12.
`Masimo’s argument is unpersuasive. Throughout the
`Board’s decision, it made findings about what a person of
`ordinary skill in the art would have been motivated to do,
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`not simply what the person could have done. E.g., id. (“[Ap-
`ple] has persuasively shown . . . that a person of ordinary
`skill in the art would have been motivated to create its pro-
`posed combination . . . .” (emphasis added)); id. at *13
`(“[Apple’s expert] persuasively testifies that one of ordinary
`skill would have been motivated to combine Webster and
`Melby . . . .” (emphasis added)). And, as to the Board’s use
`of the word “reasonable” in certain places, we see no indi-
`cation—particularly given the entirety of the Board’s deci-
`sion—that the Board meant anything other than that a
`person of ordinary skill in the art would have had a reason
`(based on the evidence) to do whatever was being dis-
`cussed.
`Masimo also stresses that no reference teaches or sug-
`gests placing louvers over a detector. E.g., Appellant’s
`Br. 28 (heading VI.B.1). Essentially, its argument is: be-
`cause Webster disclosed light-sensitive detectors and light
`filters (but not louvers specifically), and because Melby dis-
`closed louvers (but not in the context of light-sensitive de-
`tectors), the prior art is missing a claim element—and
`therefore, the claimed invention was not shown to be un-
`patentable for obviousness. See id. at 22, 28–30. Masimo
`misunderstands the obviousness inquiry. The question is
`not whether the prior art disclosed the very thing claimed;
`it is whether, in light of the prior art, the claimed invention
`would have nonetheless been obvious to a person of ordi-
`nary skill in the art as of the relevant date. See, e.g.,
`35 U.S.C. § 103; Fleming v. Cirrus Design Corp., 28 F.4th
`1214, 1222 (Fed. Cir. 2022) (“That the proposed combina-
`tion of James and POH—rather than one of the individual
`references—discloses the disputed claim limitations does
`not defeat the Board’s conclusion of obviousness.” (empha-
`sis in original)). Contrary to Masimo’s argument, it suf-
`fices—as the Board found—“that a person of ordinary skill
`in the art would have been motivated to combine the prior
`art in a way such that the combination discloses the claim
`limitation[].” See Fleming, 28 F.4th at 1222.
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`MASIMO CORPORATION v. APPLE INC.
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`Masimo finally argues that substantial evidence does
`not support the Board’s finding that “ambient light” “is the
`type of light the light control film of Melby is designed to
`minimize.” Appellant’s Br. 31 (quoting Final Written Deci-
`sion, 2022 WL 1153450, at *12). According to Masimo,
`Melby is not concerned with minimizing “ambient” light; it
`is concerned instead with reducing ghost images, which are
`“from the emitted light from the screen.” See id. at 31–32.
`Our review of the Board’s decision, however, leads us
`to conclude that, when the Board made its relevant find-
`ings, it conceived of “ambient light” more generally as in-
`cluding a broader subset of light unwanted for the given
`application. For example, over the next two paragraphs of
`its decision, the Board credited Apple’s expert testimony
`concerning Melby’s use of louvers to accept or restrict light
`based on its direction and on what should reach the target
`of interest. See, e.g., Final Written Decision, 2022 WL
`1153450, at *12 (“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.” (quoting J.A. 657 ¶ 100)); id. (“[Ap-
`ple’s expert] persuasively testifies that Melby’s light con-
`trol 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.” (citing J.A. 658–60
`¶¶ 102–04)). Thus, regardless of whether the Board was
`perfectly precise when describing the light minimized by
`Melby’s film as “ambient,” we do not think its use of that
`term undermines its overall reasoning (or the substantial
`evidence supporting it) regarding what the prior art dis-
`closed and whether a person of ordinary skill in the art
`would have been motivated to combine Melby with Webster
`to achieve the claimed invention.
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`MASIMO CORPORATION v. APPLE INC.
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`CONCLUSION
`We have considered Masimo’s remaining arguments
`and find them unpersuasive. For the foregoing reasons, we
`affirm.
`
`AFFIRMED
`
`