`571-272-7822
`
`Paper No. 15
`Date: February 1, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2022-01292
`Patent 10,687,745 B1
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`
`Before JOSIAH C. COCKS, NEIL T. POWELL, and JAMES A. TARTAL,
`Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
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`IPR2022-01292
`Patent 10,687,745 B1
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”)1 filed a Corrected Petition pursuant to
`35 U.S.C. §§ 311–319 requesting an inter partes review of claims 1, 9, 15,
`18, 20, and 27 (“Challenged Claims”) of U.S. Patent No. 10,687,745 B1
`(Ex. 1001, “the ’745 patent”). Paper 10 (“Pet.”). Petitioner concurrently
`filed another petition in another proceeding requesting inter partes review of
`the Challenged Claims on different grounds. Apple, Inc. v. Masimo
`Corporation, IPR2022-01291, Paper 10 (PTAB July 22, 2022) (“the ’1291
`Petition”). Petitioner also filed a Notice Ranking Petitions requesting that
`we consider whether to institute review based on the ’1291 Petition prior to
`considering the Petition in this proceeding. 2 Paper 2 (“NRP”). In IPR2022-
`01291 we granted the ’1291 Petition and instituted an inter partes review of
`claims 1, 9, 15, 18, 20, and 27 of the ’745 patent. IPR2022-01291, Paper 15
`(PTAB February 1, 2023).
`Masimo Corporation (“Patent Owner”)3 filed a Preliminary Response
`to the Petition. Paper 11. Patent Owner also filed a Response to the NRP of
`Petitioner. Paper 12.
`For the reasons provided below, and based on the circumstances
`present here, we find a second petition challenging the same claims of the
`same patent is not warranted and exercise discretion under 35 U.S.C.
`§ 314(a) to deny institution of an inter partes review in this proceeding.
`
`
`1 Petitioner identifies no additional real parties in interest. Pet. 79.
`2 In the NRP Petitioner misidentifies what references are asserted in each
`petition; however, Petitioner’s discussion in the NRP of the references
`asserted in each petition makes clear that Petitioner seeks consideration of
`the ’1291 Petition prior to our consideration of the Petition in this
`proceeding. See Paper 2.
`3 Patent Owner identifies no additional real parties in interest. Paper 5, 2.
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`IPR2022-01292
`Patent 10,687,745 B1
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`II. BACKGROUND
`The ’745 Patent
`A.
`The ’745 patent is titled “Physiological Monitoring Devices, Systems,
`and Methods,” and issued on June 23, 2020, from U.S. Patent Application
`No. 16/835,772, filed March 31, 2020. Ex. 1001, codes (21), (22), (45),
`(54). The ’745 patent summarizes its disclosure as follows:
`This disclosure describes embodiments of non-invasive
`methods, devices, and systems for measuring blood constituents,
`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 2:40–50.
`Figures 7A and 7B of the ’745 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 ’745
`patent. Id. at 5:28–33. Sensor 700 includes emitter 702, light diffuser 704,
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`Patent 10,687,745 B1
`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
`measurement site. Id. at 10:43–49. “[L]ight blocker 706 includes an annular
`ring having a 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 707 ensures that the only light detected
`by the detector 710 is light that is reflected from the tissue measurement
`site.” Id. at 11:16–19.
`Figure 8 of the ’745 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 5:34–37. Pulse oximetry system 800 includes
`sensor 801 (or multiple sensors) coupled to physiological monitor 809. Id.
`at 12:21–23. Sensor 801 includes emitter 804 and detector 806. Id.
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`Patent 10,687,745 B1
`at 12:32–34. Monitor 809 includes signal processor 810, which “includes
`processing logic that determines measurements for desired analytes based on
`the signals received from the detector 806.” Id. at 13:33–40. 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 13:33–35,
`13:64–66.
`
`Illustrative Claim
`B.
`Petitioner challenges claims 1, 9, 15, 18, 20, and 27 of the ’745 patent.
`Pet. 1. Claims 1, 15, and 20 are independent. Claim 1 is illustrative of the
`claimed subject matter and is reproduced below.
`1. A physiological monitoring device comprising:
`a plurality of light-emitting diodes configured to emit light in
`a first shape;
`a material configured to be positioned between the plurality
`of light-emitting diodes and tissue on a wrist of a user
`when the physiological monitoring device is in use, the
`material configured to change the first shape into a second
`shape by which the light emitted from one or more of the
`plurality of light-emitting diodes is projected towards the
`tissue;
`a plurality of photodiodes configured to detect at least a
`portion of the light after the at least the portion of the light
`passes through the tissue, the plurality of photodiodes
`further configured to output at least one signal responsive
`to the detected light;
`a surface comprising a dark-colored coating, the surface
`configured to be positioned between the plurality of
`photodiodes and the tissue when the physiological
`monitoring device is in use, wherein an opening defined in
`the dark-colored coating is configured to allow at least a
`portion of light reflected from the tissue to pass through
`the surface;
`a light block configured to prevent at least a portion of the
`light emitted from the plurality of light-emitting diodes
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`Patent 10,687,745 B1
`from reaching the plurality of photodiodes without first
`reaching the tissue; and
`a processor configured to receive and process the outputted at
`least one signal and determine a physiological parameter
`of the user responsive to the outputted at least one signal.
`Ex. 1001, 15:32–61.
`Asserted Grounds of Unpatentability
`C.
`Petitioner asserts that the Challenged Claims are unpatentable based
`on the following grounds:
`Claims Challenged 35 U.S.C. §4
`1, 9, 15, 18
`103
`20, 27
`103
`
`References/Basis
`Ackermans, 5 Savant6
`Ackermans, Savant, Venkatraman7
`Mendelson-799, 8 Haar,9
`Venkatraman, Savant
`Pet. 2. Petitioner further relies on the supporting Declaration of Dr. Brian
`W. Anthony, dated July 22, 2022. Ex. 1003. Patent Owner relies on the
`Declaration of R. James Duckworth, dated November 4, 2022. Ex. 2002.
`
`1, 9, 15, 18, 20, 27
`
`103
`
`
`4 The Leahy-Smith America Invents Act (“AIA”) included revisions
`to 35 U.S.C. § 103 that became effective on March 16, 2013. We apply
`the post-AIA version of § 103 here, because the earliest provisional
`application identified in the ’745 patent was filed after the effective date of
`the AIA. See Ex. 1001, code (60).
`5 WO 211/051888 A2, published May 5, 2011 (Ex. 1011, “Ackermans”).
`6 U.S. Patent No. 6,158,245, issued Dec. 12, 2000 (Ex. 1012, “Savant”).
`7 U.S. Pat. App. Pub. No. 2014/0275854 A1, published Sep. 18, 2014
`(Ex. 1006, “Venkatraman”).
`8 U.S. Patent No. 6,801,799 B2, issued Oct. 5, 2004 (Ex. 1008,
`“Mendelson-799”).
`9 U.S. Patent No. 5,893,364, issued Apr. 13, 1999 *ex. 1015, “Haar”).
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`Related Proceedings
`D.
`Petitioner filed three other petitions challenging claims of the
`’745 patent in IPR2022-01291, IPR2022-01465, and IPR2022-01466.
`Patent Owner identifies numerous additional patent applications, patents,
`and inter partes review proceedings as related to the ’745 patent. Paper 5,
`1–2; Paper 14, 2.
`The parties further identify the ’745 patent as a subject of Masimo
`Corporation, et al. v. Apple Inc., ITC Inv. No. 337-TA-1276. Pet. 47;
`Paper 5, 1. Petitioner also states that on December 12, 2022, Patent Owner
`asserted the ’745 patent against Petitioner in U.S. District Court for the
`District of Delaware (Case No. 1:22-cv-01378-MN), Paper 13, 1; see also
`Paper 14, 1 (identifying the same district court case).
`Additionally, the application that issued as the ’745 patent was a
`continuation of an application that issued as U.S. Patent No. 10,470,695
`(“the ’695 patent”). Ex. 1001, code (63). Petitioner states that through an
`inter partes review the Board found claims 6, 14, and 21 of the ’695 patent
`not patentable “after Patent Owner disclaimed the remaining claims of the
`’695 Patent following institution of the IPR.” Pet. 80 (citing Apple Inc. v.
`Masimo Corp., IPR2020-01722, Paper 29 at 2 (PTAB May 5, 2022)).
`Patent Owner further identifies Masimo Corporation v. Apple Inc., Case
`No. 22-01895, pending before the U.S. Court of Appeals for the Federal
`Circuit, as an “appeal from final written decision in an inter partes review
`proceeding involving a related patent,” and we understand the ’695 patent is
`at issue in that appeal. Paper 5, 2.
`III. ANALYSIS
`Because Petitioner has concurrently filed multiple petitions
`challenging the same claims of the same patent, we first consider whether
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`we should exercise discretion to deny the second petition. 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.”). More specifically, the Patent Trial and
`Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)10
`states 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 necessary in the vast majority of cases.” CTPG 59.
`According to the CTPG, “[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 CTPG 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 (footnote omitted).
`
`
`10 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`Patent 10,687,745 B1
`The Petition and the ’1291 Petition were filed on the same date and
`both seek inter partes review of the same set of claims of the same patent.
`In the NRP, Petitioner argues that “[m]aterial differences exist between the
`petitions,” and that the petitions are “non-redundant” because they rely on
`“different combinations of references” applied to “the Challenged Claims in
`materially different ways.” NRP 2. However, we note that Venkatraman is
`relied upon by Petitioner in both petitions, indicating some degree of overlap
`between the two petitions.
`Petitioner purports to address in the NRP how the petitions differ, but
`merely repeats contentions set forth in the petitions without substantively
`addressing any reason the differences are material to our patentability
`analysis. According to Petitioner, the references “apply differently” and
`“the motivations to combine . . . materially differ.” Id. at 3.
`Lacking from the NRP is any explanation of how the references apply
`differently or how the motivations to combine differ to show that two
`petitions are warranted. For example, according to Petitioner in the ’1292
`Petition Sarantos11 is asserted and “describes a ‘wristband-type wearable
`fitness monitor’ that measures ‘physiological parameters,” whereas in the
`Petition it relies on Ackermans as describing “an optical sensor for
`measuring the blood oxygenation levels of a user.” Id. at 3. Petitioner offers
`no explanation other than that the arguments are “different” to show why the
`differences are material or why a second petition is warranted. With regard
`to motivation to combine Venkatraman, we note that Petitioner argues in the
`Petition as follows:
`A [person of ordinary skill in the art] would have been
`motivated to wirelessly connect the wristband-type physiological
`
`11 U.S. Patent No. 9,392,946 B1, issued Jul. 19, 2016 (Ex. 1005, “Sarantos).
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`monitoring device of Ackermans (as previously modified based
`on Savant) to a secondary processing device, such as a
`smartphone, having a user interface with a touch screen display,
`as taught by Venkatraman, in order to increase the functionality
`of the system without significantly
`increasing the power
`consumption of Ackermans’ sensor.
`Pet. 33. In the ’1291 Petition, Petitioner argues with regard to motivation to
`combine Venkatraman as follows:
`A [person of ordinary skill in the art] would have been
`motivated to transmit information from Iwamiya’s[12] wrist-
`worn wearable device, which has limited display space and
`processing power, to a secondary device like a smart phone, as
`taught by Venkatraman in order to increase the functionality of
`the system without significantly
`increasing
`the power
`consumption of Iwamiya’s sensor.
`’1291 Petition, 25–26. Rather than materially differ, as Petitioner asserts, at
`least with regard to Venkatraman, the purported motivation to combine
`appears to be substantially the same in both petitions.
`Petitioner also appears to suggest that two petitions challenging the
`same claims of the ’745 patent are warranted in light of the campaign against
`it involving “several hundred claims across twenty-two patents in district
`court and ITC proceedings.” NRP 3–4; see also id. at 5 (arguing that due to
`Patent Owner’s “serial litigation campaign . . . institution of both petitions is
`more than justified”). Petitioner further argues that the references asserted
`in the Petition “are highly familiar to the Board” and to Patent Owner,
`because Ackermans and Mendelson-799 were previously asserted by
`Petitioner in prior proceedings against Patent Owner. Id. at 4–5. But
`Petitioner does not address why proceedings involving the claims of other
`
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`12 U.S. Patent No. 8,670,819 B2, issued Mar. 11, 2014 (Ex. 1004,
`“Iwamiya”).
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`patents in other forums warrant two petition’s challenging through inter
`partes review the same claims of the ’745 patent.
`Lastly, according to Petitioner, “[d]ue to word count constraints, two
`petitions were needed to address grounds based on the asserted primary
`references.” Id. at 5. Counsel for Petitioner certified that the word count for
`the ’1291 Petition “totals 8,558 words, which is less than the 14,000 allowed
`under 37 CFR § 42.24.” ’1291 Petition, 51. Thus, Petitioner advances in
`the ’1291 Petition multiple grounds of unpatentability for each and every
`Challenged Claim, without approaching the word limit for a single petition.
`See generally ’1291 Petition. Given the overlap in content between the two
`petitions, we find no persuasive support for the proposition that “word count
`constraints” required two petitions.
`IV. CONCLUSION
`We have reviewed the Petition and the ’1291 Petition and determine
`that, on the record present here, Petitioner has not set forth adequate
`reasoning that supports the institution of multiple inter partes reviews based
`on two petitions both directed to claims 1, 9, 15, 18, 20, and 27 of the ’745
`patent. See generally NRP. Accordingly, in light of our determination to
`institute inter partes review on all grounds presented in the ’1291 Petition,
`we exercise discretion under 35 U.S.C. § 314(a) to deny institution of the
`Petition in this proceeding.
`
`IV. ORDER
`Upon consideration of the record before us, it is:
`ORDERED that the Petition is denied and no trial is instituted in this
`proceeding.
`
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`IPR2022-01292
`Patent 10,687,745 B1
`FOR PETITIONER:
`Walter Renner
`Dan Smith
`Andrew Patrick
`Nicholas Stephens
`FISH & RICHARDSON
`Axf-ptab@fr.com
`dsmith@fr.com
`patrick@fr.com
`nstephens@fr.com
`
`FOR PATENT OWNER:
`
`Brian C. Claassen
`Jarom D. Kesler
`Jacob L. Peterson
`Carol Pitzel Cruz
`Daniel Kiang
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2bcc@knobbe.com
`2jzk@knobbe.com
`2jup@knobbe.com
`2cmp@knobbe.com
`2dck@knobbe.com
`
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