Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Entered: February 23, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2022-01466
`Patent 10,687,745 B1
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 15
`Entered: February 23, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2022-01466
`Patent 10,687,745 B1
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`IPR2022-01466
`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 2–6, 8,
`10–14, 17, 19, and 21–26 (“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, IPR2022-01465, Paper 10
`(PTAB October 7, 2022) (“the ’1465 Petition”). Petitioner also filed a
`Notice Ranking Petitions requesting that we consider whether to institute
`review based on the ’1465 Petition prior to considering the Petition in this
`proceeding. Paper 2 (“NRP”). In IPR2022-01465 we granted the ’1465
`Petition and instituted an inter partes review of claims 1–6, 8, 10–14, 17, 19,
`and 21–26 of the ’745 patent. IPR2022-01291, Paper 15 (PTAB February 1,
`2023).
`Masimo Corporation (“Patent Owner”)2 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. 70.
`2 Patent Owner identifies no additional real parties in interest. Paper 5, 2.
`
`2
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`IPR2022-01466
`Patent 10,687,745 B1
`
`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,
`
`3
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`IPR2022-01466
`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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`4
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`IPR2022-01466
`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 2–6, 8, 10–14, 17, 19, and 21–26 of the
`’745 patent. Pet. 1. Claims 2–6, 8, and 10–14 depend from claim 1.
`Claims 17 and 19 depend from claim 15. Claims 21–26 depend from
`claim 20. Claim 3 is illustrative of the claimed subject matter and is
`reproduced below, along with claim 1 from which it depends.
`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
`
`5
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`IPR2022-01466
`Patent 10,687,745 B1
`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
`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.
`3. The physiological monitoring device of claim 1, further
`comprising a display configured to present a visual feedback
`responsive to the determined physiological parameter.
`Id. at 16:1–3.
`
`Asserted Grounds of Unpatentability
`C.
`Petitioner asserts that the Challenged Claims are unpatentable based
`on the following grounds:
`Claims Challenged 35 U.S.C. §3
`2, 5, 6, 8, 10–12,
`103
`17, 19
`3, 4, 21–26
`103
`13, 14
`103
`
`References/Basis
`Ackermans, 4 Savant5
`Ackermans, Savant, Venkatraman6
`Ackermans, Savant, Sarantos7
`
`
`3 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).
`4 WO 211/051888 A2, published May 5, 2011 (Ex. 1011, “Ackermans”).
`5 U.S. Patent No. 6,158,245, issued Dec. 12, 2000 (Ex. 1012, “Savant”).
`6 U.S. Pat. App. Pub. No. 2014/0275854 A1, published Sept. 18, 2014
`(Ex. 1006, “Venkatraman”).
`7 U.S. Patent No. 9,392,946 B1, issued July 19, 2016 (Ex. 1005, “Sarantos”).
`
`6
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`IPR2022-01466
`Patent 10,687,745 B1
`Pet. 1–2. Petitioner further relies on the supporting Declaration of Dr. Brian
`W. Anthony, dated August 26, 2022. Ex. 1003. Patent Owner relies on the
`Declaration of R. James Duckworth, dated December 12, 2022. Ex. 2002.
`Related Proceedings
`D.
`Petitioner filed three other petitions challenging claims of the
`’745 patent in IPR2022-01291, IPR2022-01292, and IPR2022-01465.
`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. 70;
`Paper 5, 1. Petitioner also states that on December 12, 2022, Patent Owner
`asserted the ’745 patent against Petitioner in the 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. 71 (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, 2–3.
`
`7
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`IPR2022-01466
`Patent 10,687,745 B1
`
`III. ANALYSIS
`Because Petitioner has concurrently filed multiple petitions
`challenging the same claims of the same patent, we first consider whether
`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”)8
`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
`
`8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`8
`
`
`
`IPR2022-01466
`Patent 10,687,745 B1
`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).
`The Petition and the ’1465 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 3. However, we note that Venkatraman
`and Sarantos are 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
`’1465 Petition Sarantos is asserted and “describes a ‘wristband-type
`wearable fitness monitor’ that measures ‘physiological parameters,” whereas
`in the Petition here 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.
`
`9
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`IPR2022-01466
`Patent 10,687,745 B1
`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
`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. 40. In the ’1465 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[9] 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.
`’1465 Petition, 29. 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 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,
`
`
`9 U.S. Patent No. 8,670,819 B2, issued Mar. 11, 2014 (Ex. 1004,
`“Iwamiya”).
`
`10
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`IPR2022-01466
`Patent 10,687,745 B1
`because Ackermans was previously asserted by Petitioner in prior
`proceedings against Patent Owner. Id. at 5. But Petitioner does not address
`why proceedings involving the claims of other 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. Given the overlap in arguments asserted between the
`Petition and the ’1465 Petition, including, for example, the rationale for
`combining Venkatraman discussed above, we are not persuaded in this case
`that Petitioner had no alternative but to file multiple petitions challenging the
`same claims of the same patent merely based on word count constraints
`alone. Further, Petitioner advances in the ’1465 Petition multiple grounds of
`unpatentability for nearly every Challenged Claim. See generally ’1465
`Petition. The only Challenged Claim addressed under only one ground in
`the ’1465 Petition is claim 13, where Petitioner relies on Sarantos as
`disclosing the additional limitations. ’1465 Petition, 50–52. In the Petition
`here, as to claim 13, Petitioner once again relies on Sarantos as disclosing
`the additional limitations, based on substantially the same arguments
`Petitioner raises in the ’1465 Petition. Pet. 61–62. 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 ’1465 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 2–6, 8, 10–14, 17, 19, and 21–26 of
`
`11
`
`
`
`IPR2022-01466
`Patent 10,687,745 B1
`the ’745 patent. See generally NRP. Accordingly, in light of our
`determination to institute inter partes review on all grounds presented in the
`’1465 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.
`
`
`12
`
`
`
`IPR2022-01466
`Patent 10,687,745 B1
`FOR PETITIONER:
`Walter Renner
`Dan Smith
`Andrew Patrick
`Nicholas Stephens
`FISH & RICHARDSON P.C.
`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
`
`13
`
`
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