Apple, Inc. v. Masimo Corporation
Docket No. 2022-1891 (IPR2020-01524 (https://cafc.uscourts.gov/opinions-orders/22-1891.OPINION.1-12-2024_2252724.pdf) (Non-Precedential)
LOURIE, PROST, REYNA
January 12, 2024
Brief Summary: Board IPR findings that Apple did not show Masimo’s pulse oximeter claims obvious affirmed. Summary: Apple appealed USPTO Board holding that it did not show the challenged claims of Masimo’s US 8,457,703 obvious. The ‘703 claims are directed to a method of managing the power consumption of a pulse oximeter by intermittently changing the duty cycle of the current supplied to the LEDs that light the patient’s tissues. A prior art patent discloses a pulse oximeter including a “motion artifact suppression module” and another “discloses a wristwatch type of pulse wave detector mounted on a finger.” Based on its finding that “the claimed ‘processing characteristics’ as ‘determined from a signal received from one or more detectors configured to detect light’”, the USPTO Board found Apple had not shown the claims to be obvious in view of that art. In its appeal, Apple argued “the Board’s construction of ‘processing characteristics’ as too limiting”, “the Board failed to address its alternative argument as to Diab’s teachings”, and that “the Board applied an inherency standard to Apple’s obviousness argument based on the combination of” of the prior art patents. Regarding “processing characteristics”, the FC panel concluded that “[b]oth the claim language and the specification support the Board’s claim construction” (“Although the specification does not state the term in explicit definitional format, the Board’s reading of the term is consistent with how the invention is described in the specification”, “Apple’s proposed construction improperly takes the term out of context of the patented invention and lacks support”). The FC panel also found Apple failed to raise the alternative argument issue before the Board (Netflix, FC 2023; In re Google, FC 2020). On Apple’s inherency argument, the FC panel concluded that “[r]ather than applying an ‘inherency’ standard, the Board addressed Apple’s reasoning for combining Diab and Amano and explained why it found Apple’s arguments unpersuasive.” The FC panel therefore concluded “that the Board’s finding of a lack of motivation to combine Diab and Amano is supported by substantial evidence.” The Board decision was therefore affirmed.