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
`
`APPLEINC.,
`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 /nter Partes Review
`35 US.C. $314
`
`
`571-272-7822
`
`Paper 15
`Entered: February 23, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`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 /nter Partes Review
`35 US.C. $314
`
`
`
`IPR2022-01466
`Patent 10,687,745 B1
`
`I.
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”)! filed a Corrected Petition pursuantto
`
`35 U.S.C. §§ 311-319 requesting an interpartes 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 interpartes review of the Challenged Claims on different
`
`grounds. Apple, Inc. v. Masimo Corporation, IP R2022-01465, Paper 10
`
`(PTAB October7, 2022) (“the ’1465 Petition’’). Petitioneralso filed a
`
`Notice Ranking Petitions requesting that we consider whetherto institute
`
`review based on the ’1465 Petition prior to considering the Petition in this
`
`proceeding. Paper 2 (“NRP”’). InIPR2022-01465 wegranted the ’1465
`
`Petition and instituted an interpartes 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’’)’ filed a Preliminary Response
`
`to the Petition. Paper 11. Patent Owneralso 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 secondpetition challenging the sameclaims ofthe
`
`samepatent is not warranted and exercise discretion under 35 U.S.C.
`
`§ 314(a) to deny institution of an interpartes review in this proceeding.
`
`' Petitioner identifies no additional real parties in interest. Pet. 70.
`* Patent Owneridentifies no additional real parties in interest. Paper 5, 2.
`
`2
`
`
`
`IPR2022-01466
`Patent 10,687,745 B1
`
`IT.
`
`BACKGROUND
`
`A,
`
`The ’745 Patent
`
`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 summarizesits 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 Index™ (ORI™) 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—S0.
`
`Figures 7A and 7B ofthe ’745 patent are reproducedbelow:
`
`
`
`FIG. 7A
`
`FIG. 7B
`
`Figures 7A and 7B abovedepict side and top views, respectively, of a three-
`
`dimensional pulse oximetry sensor according to an embodimentof the 745
`
`patent.
`
`/d. at 5:28-33. Sensor 700 includes emitter 702, light diffuser 704,
`
`
`
`IPR2022-01466
`Patent 10,687,745 B1
`
`light block (or blocker) 706, light concentrator 708, and detector 710.
`
`/d.
`
`at 10:49-51. The sensor functionsto irradiate tissue measurementsite 102,
`
`e.g., a patient’s wrist, and detects emitted light that is reflected by the tissue
`
`measurementsite. /d. at 10:43—49. “[L]ight blocker 706 includes an annular
`
`ring having a cover portion 707 sized and shapedto formalight isolation
`
`chamberfor the light concentrator 708 and the detector 710.” /d. at 11:10-
`
`12. “[L]ight blocker 706 and cover 707 ensuresthat 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: RIVER
`
`
`
`pee
`
`i NETWORK
`|
`INTERFACE
`
`
`Figure 8 aboveillustrates “a block diagram of an example pulse oximetry
`
`system capable of noninvasively measuring one or more blood analytesin a
`
`monitored patient.” /d. at 5:34—37. Pulse oximetry system 800 includes
`
`sensor 801 (or multiple sensors) coupled to physiological monitor 809.
`
`/d.
`
`at 12:21—23. Sensor 801 includes emitter 804 and detector 806. Jd.
`
`
`
`IPR2022-01466
`Patent 10,687,745 B1
`
`at 12:32—34. Monitor 809 includes signal processor 810, which “includes
`
`processing logic that determines measurementsfor desired analytes based on
`
`the signals received from the detector 806.” /d. at 13:33-40. Monitor 809
`
`also includesuser interface 812 that provides “an output, e.g., ona display,
`
`for presentation to a user of pulse oximetry system 800.” /d. at 13:33-35,
`
`13:64-66.
`
`B.
`
`Illustrative Claim
`
`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 andis
`
`reproduced below,along with claim 1 from whichit 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 betweenthe plurality
`of light-emitting diodes and tissue on a wrist of a user
`when the physiological monitoring device 1s in use, the
`material configured to changethe first shape into a second
`shape by which the light emitted from one or more ofthe
`plurality of light-emitting diodes is projected towardsthe
`tissue;
`a plurality of photodiodes configured to detect at least a
`portion ofthe 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 detectedlight;
`the surface
`a surface comprising a dark-colored coating,
`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
`
`
`
`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
`reachingthe tissue; and
`a processorconfigured to receive and processthe outputted at
`least one signal and determine a physiological parameter
`of the user responsiveto 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.
`
`C.—Asserted Grounds ofUnpatentability
`
`Petitionerasserts that the Challenged Claims are unpatentable based
`
`on the following grounds:
`
`2, 5,6, 8, 10-12,
`
`Ackermans, Savant, Sarantos’
`
`3, 4, 21-26
`
`13, 14
`
`103
`
`103
`
`Ackermans, Savant, Venkatraman®
`
`3 The Leahy-Smith America Invents Act (“AIA”) included revisions
`to 35 U.S.C. § 103 that became effective on March 16, 2013. Weapply
`the post-AIA version of § 103 here, because the earliest provisional
`application identified in the ’745 patent wasfiled after the effective date of
`the AIA. See Ex. 1001, code (60).
`* WO 211/051888 A2, published May 5, 2011 (Ex. 1011, “Ackermans”).
`> U.S. Patent No. 6,158,245, issued Dec. 12, 2000 (Ex. 1012, “Savant”).
`°U.S. Pat. App. Pub. No. 2014/0275854 A1, published Sept. 18, 2014
`(Ex. 1006, “Venkatraman’’).
`TUS. Patent No. 9,392,946 B1, issued July 19, 2016 (Ex. 1005, “Sarantos’”’).
`
`6
`
`
`
`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 Ownerrelies on the
`
`Declaration of R. James Duckworth, dated December 12, 2022. Ex. 2002.
`
`D.
`
`RelatedProceedings
`
`Petitionerfiled three other petitions challenging claims of the
`
`°745 patent in IPR2022-01291, IPR2022-01292, and IPR2022-01465.
`
`Patent Owneridentifies numerousadditional patent applications, patents,
`
`and interpartes review proceedingsas 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 samedistrict 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
`
`interpartes review, the Board found claims6, 14, and 21 of the 695 patent
`
`not patentable “after Patent Ownerdisclaimed the remaining claims of the
`
`’695 Patent following institution of the IPR.” Pet. 71 (citing Apple Inc. v.
`
`Masimo Corp. , 1PR2020-01722, Paper 29 at 2 (PTAB May 5, 2022)).
`
`Patent Ownerfurther identifies Masimo Corporation v. Apple Inc. , Case
`
`No. 22-01895, pending before the U.S. Court ofAppeals for the Federal
`
`Circuit, as an “appeal from final written decision in an interpartes review
`
`proceeding involving a related patent,” and we understand the ’695 patentis
`
`at issue in that appeal. Paper 5, 2-3.
`
`
`
`IPR2022-01466
`Patent 10,687,745 B1
`
`I. ANALYSIS
`
`BecausePetitioner has concurrently filed multiple petitions
`
`challenging the same claimsof the samepatent, wefirst consider whether
`
`we should exercise discretion to deny the secondpetition. See 35 U.S.C.
`
`§ 314(a); SAS nst., Inc. v. lancu, 138 S. Ct. 1348, 1356 (2018) (explaining
`
`that section “314(a) invests the Director with discretion on the question
`
`whetherto 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.”’). Morespecifically, the Patent Trial and
`
`Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)®
`
`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 morepetitionsfiled against the same
`
`patent at or about the sametime (e.g., before the first preliminary response
`
`by the patent owner) mayplace a substantial and unnecessary burden on the
`
`Board and the patent ownerand could raise fairness, timing, and efficiency
`
`concerns.” /d. (citing 35 U.S.C. §316(b)). The CTPGalsosets 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 paperfiled 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 usesits discretion to
`institute any ofthe petitions, and (2) a succinct explanation ofthe
`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 werefiled on the same date and
`
`both seek interpartes review of the sameset of claims of the samepatent.
`
`In the NRP, Petitioner argues that “[m]aterial differences exist between the
`
`petitions,” and that the petitions are “non-redundant”becausetheyrely on
`
`“different combinations of references” applied to “the Challenged Claimsin
`
`materially different ways.” NRP 3. However, we note that Venkatraman
`
`and Sarantosare relied upon byPetitioner in both petitions, indicating some
`
`degree of overlap between the twopetitions.
`
`Petitioner purports to address in the NRP how thepetitions differ, but
`
`merely repeats contentionsset forth in the petitions without substantively
`
`addressing any reasonthe differences are material to our patentability
`
`analysis. According to Petitioner, the references “apply differently” and
`
`“the motivations to combine. .
`
`. materially differ.” /d. 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, accordingto Petitioner, in the
`
`’1465 Petition Sarantosis asserted and “describes a “wristband-type
`
`wearable fitness monitor’ that measures “physiological parameters,” whereas
`
`in the Petition here it relies on Ackermansas describing “an optical sensor
`
`for measuring the blood oxygenation levels of a user.” /d. at 3. Petitioner
`
`offers no explanation other than that the argumentsare “different” to show
`
`whythe differences are material or why a second petition is warranted.
`
`
`
`IPR2022-01466
`Patent 10,687,745 B1
`
`With regard to motivation to combine Venkatraman, wenote that Petitioner
`
`argues in the Petition as follows:
`
`in the art] would have been
`A [person of ordinary skill
`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. Inthe ?1465 Petition, Petitioner argues with regard to motivation to
`
`combine Venkatramanasfollows:
`
`in the art] would have been
`A [person of ordinary skill
`motivated to transmit information from Iwamiya’s[?] wrist-worn
`wearable device, which has limited display space and processing
`power, to a secondary device like a smart phone, as taught by
`Venkatramanin orderto 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 samein 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-twopatents in district
`
`court and ITC proceedings.” NRP 4; see also id. at 5 (arguing that due to
`
`Patent Owner’s “seriallitigation campaign .
`
`.
`
`. institution of both petitionsis
`
`more than justified”’). Petitioner further argues that the references asserted
`
`in the Petition “are highly familiar to the Board” and to Patent Owner,
`
`° U.S. Patent No. 8,670,819 B2, issued Mar. 11, 2014 (Ex. 1004,
`“Twamiya’’).
`
`10
`
`
`
`IPR2022-01466
`Patent 10,687,745 B1
`
`because Ackermanswaspreviously asserted by Petitioner in prior
`
`proceedings against Patent Owner.
`
`/d. at5. But Petitioner does not address
`
`why proceedings involving the claims of other patents in other forums
`
`warrant twopetition’s challenging through interpartes 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.” /d. at5. Given the overlap in arguments asserted between the
`
`Petition and the 1465 Petition, including, for example, the rationale for
`
`combining Venkatramandiscussed above, weare not persuadedin this case
`
`that Petitioner had noalternative but to file multiple petitions challenging the
`
`same claims of the same patent merely based on word count constraints
`
`alone. Further, Petitioner advancesin the ?1465 Petition multiple grounds of
`
`unpatentability for nearly every Challenged Claim. See generally’ 1465
`
`Petition. The only Challenged Claim addressed underonly 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 Sarantosas disclosing
`
`the additionallimitations, based on substantially the same arguments
`
`Petitioner raises in the ’1465 Petition. Pet. 61-62. Given the overlap in
`
`content between the twopetitions, we find no persuasive support for the
`
`proposition that “word count constraints” required twopetitions.
`
`IV.
`
`CONCLUSION
`
`Wehavereviewedthe 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 interpartes reviews based
`
`on twopetitions 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
`
`determinationto institute inferpartes review onall groundspresented 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 beforeus, tt1s:
`
`ORDEREDthatthe Petition 1s denied and notrial 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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