Masimo Corporation v. Sotera Wireless, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MASIMO CORPORATION,
Appellant
v.
SOTERA WIRELESS, INC.,
Appellee
______________________
2022-1415
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
01078.
______________________
Decided: September 28, 2023
______________________
BENJAMIN K ATZENELLENBOGEN, Knobbe Martens, Ol-
son & Bear, LLP, Irvine, CA, argued for appellant. Also
represented by J ARED C. BUNKER, J AROM D. K ESLER,
STEPHEN W. L ARSON; J EREMIAH HELM , Washington, DC.
RUDOLPH A. T ELSCHER , J R., Husch Blackwell LLP, St.
Louis, MO, argued for appellee. Also represented by
J ENNIFER E. HOEKEL , D AISY MANNING.
______________________
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MASIMO CORPORATION v. SOTERA WIRELESS , INC .
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Before P ROST , WALLACH , and CHEN, Circuit Judges.
WALLACH , Circuit Judge.
Masimo Corporation (“Masimo”) appeals from a final
written decision of the United States Patent and Trade-
mark Office (“USPTO”) Patent Trial and Appeal Board (the
“Board”) holding claims 1–10 and 12–18 of U.S. Patent No.
RE47,218 (the “’218 patent”) unpatentable as obvious. So-
tera Wireless, Inc. v. Masimo Corp., IPR2020-01078, 2021
WL 6338303 (P.T.A.B. Nov. 29, 2021) (the “Decision”). For
the reasons articulated below, we affirm.
BACKGROUND
The ’218 patent, assigned to Masimo, is directed to an
adaptive alarm system for use in combination with pulse
oximetry sensors in a variety of medical applications. See
’218 patent at 1:34–39, 3:56–5:20.
Sotera petitioned for inter partes review of the ’218 pa-
tent (“Petition”) on June 11, 2020, and the Board issued its
Decision on November 29, 2021, determining all challenged
claims unpatentable as obvious over the combination of
U.S. Patent No. 7,079,035 (“Bock”), U.S. Patent No.
6,597,933 (“Kiani”), and PCT Publication WO 2009/093159
(“Woehrle”) under 35 U.S.C. § 103.
Masimo timely appealed, and we have jurisdiction un-
der 35 U.S.C. §§ 141(c), 319 and 28 U.S.C. § 1295(a)(4)(A).
On appeal, the relevant claims include independent
claims 1, 8, and 12, of which claim 1 is exemplary, and
where the primary disputes involve claim limitations 1(g)
and 1(i):
[1(a)] A system for reducing electronic alarms
in a medical patient monitoring system com-
prising:
[1(b)] an optical sensor configured to transmit
optical radiation into a tissue site of a patient
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MASIMO CORPORATION v. SOTERA WIRELESS , INC . 3
and detect attenuated optical radiation indic-
ative of at least one physiological parameter
of a patient; and
[1(c)] one or more hardware processors in elec-
tronic communication with the optical sensor,
the one or more hardware processors config-
ured to:
[1(d)] determine oxygen saturation values of
the patient over a first period of time;
[1(e)] when at least one oxygen saturation
value obtained over the first period of time ex-
ceeds a first alarm threshold, determine
whether a first alarm should be triggered;
[1(f)] access a second alarm threshold to be ap-
plied during a second period of time subse-
quent to the first period of time, the second
alarm threshold replacing the first alarm
threshold,
[1(g)] wherein the second alarm threshold has
a value less than the at least one oxygen sat-
uration value and greater than a lower limit
and at an offset from the at least one oxygen
saturation value, wherein the offset is dimin-
ished as a difference between the at least first
oxygen saturation value and the lower limit
diminishes;
[1(h)] determine oxygen saturation values of
the patient over the second period of time; and
[1(i)] trigger a second alarm based on at least
one value of the oxygen saturation values ob-
tained over the second period of time exceed-
ing the second alarm threshold.
’218 patent at claim 1, 13:62–14:40 (emphases added).
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MASIMO CORPORATION v. SOTERA WIRELESS , INC .
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Claims 7, 9, and 18 are also in dispute, with claim 7 as
exemplary: “7. The system of claim 1, wherein the first
alarm threshold is predetermined.” ’218 patent at claim 7,
14:66–67 (emphasis added).
D ISCUSSION
Masimo raises four main arguments on appeal: that
(1) the Board erred in its claim construction of the claim
language in limitation 1(i), “trigger a second alarm based
on . . . exceeding the second alarm threshold,” to mean that
crossing the second alarm threshold is a “condition prece-
dent” to the trigger of an alarm but need not actually trig-
ger the alarm; (2) the Board erred in its claim construction
of “predetermined” in claims 7, 9, and 18 to mean the for-
mulaic calculation of a value instead of a fixed value;
(3) the Board abused its discretion in considering an argu-
ment Sotera made in its Reply to Masimo’s responsive brief
and another argument Sotera made at the Oral Hearing
after briefing had concluded; and (4) the Board’s grounds
for determining the ’218 patent obvious over the prior art
were not supported by substantial evidence.
I. Claim Construction
“We review the Board’s claim construction according to
the Supreme Court’s decision in [Teva Pharms. USA, Inc.
v. Sandoz, Inc., 574 U.S. 318 (2015)]. Accordingly, we re-
view the Board’s evaluation of the intrinsic record de novo.
But ‘[w]e review underlying factual determinations con-
cerning extrinsic evidence for substantial evidence.’” Im-
munex Corp. v. Sanofi-Aventis U.S. LLC, 977 F.3d 1212,
1218 (Fed. Cir. 2020) (internal citations omitted) (quoting
In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279–80
(Fed. Cir. 2015)).
Claim construction begins with an analysis of the “ordi-
nary and customary meaning” of the claim. Phillips v.
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)
(quoting Vitronics Corp. v. Conceptronic, 90 F.3d 1576,
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MASIMO CORPORATION v. SOTERA WIRELESS , INC . 5
1582 (Fed. Cir. 1996)). This meaning requires considera-
tion of what a person of ordinary skill in the art (“POSITA”)
would understand the meaning of a claim term to be at the
time of invention. Id. at 1313. Further, the claim must be
read “in the context of the entire patent, including the spec-
ification.” Id.
A
Masimo argues that the Board erred regarding claim
limitation 1(i) in construing the phrase “based on” to mean
a “condition precedent,” and construing that the phrase
“second alarm threshold” need not mean the most extreme
alarm limit that directly triggers an alarm.
We disagree. The Board’s construction of “based on”
and “second alarm threshold” in limitation 1(i) are con-
sistent with the plain language of the claim and what a
POSITA would believe the claim to mean, which is the
standard under Phillips. We agree with the Board that the
plain meaning of “based on” and “threshold” in claim 1 are
both broad, and this broad claim language does not exclude
the use of additional alarm thresholds or other conditions
to trigger an alarm. Further, claim 5 depends from claim
1 and provides for an additional condition in the form of a
time delay, and Masimo does not dispute that the meaning
of “based on” allows for additional conditions for triggering
an alarm. J.A. 0024, 0575. We also agree with the Board
that disclosure of an embodiment in the specification that
does not include any additional thresholds or conditions for
triggering an alarm does not support reading such a limi-
tation into the claim. J.A. 0026; see 3M Innovative Props.
v. Tredegar Corp., 725 F.3d 1315, 1321 (Fed. Cir. 2013)
(“While we construe the claims in light of the specification,
limitations discussed in the specification may not be read
into the claims.”); see also Thorner v. Sony Computer
Entmt. Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012)
(“It is not enough for a patentee to simply disclose a single
embodiment or use a word in the same manner in all
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MASIMO CORPORATION v. SOTERA WIRELESS , INC .
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embodiments, the patentee must ‘clearly express an intent’
to redefine the term.” (quoting Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir.
2008))). Finally, Masimo does not rely on prosecution his-
tory for its proposed construction. J.A. 0028. Thus, in light
of the plain meaning of the claim and the specification, the
Board did not err in construing “based on” in limitation 1(i)
to mean a non-exclusive “condition precedent” to the trig-
gering of an alarm.
On appeal, Masimo first argues that the Board improp-
erly applied “condition precedent” as a legal term of art
sounding in contract law. See Appellant’s Br. 36. We dis-
agree. The Board did not use “condition precedent” as a
legal term of art, but rather as an ordinary and customary
term of logic.
Masimo also argues that the Board’s construction of
“based on” using a dictionary definition was improper as a
violation of Phillips. Specifically, Masimo argues that the
Board’s construction exhibited “heavy reliance on the dic-
tionary divorced from the intrinsic evidence.” Appellant’s
Br. 37 (quoting Phillips, 415 F.3d at 1321). Masimo does
not cite to any specific intrinsic evidence that contradicts
the Board’s interpretation using the dictionary definition
of “base on.”1 See generally Appellant’s Br. 34–38, 44–45.
Masimo notes only that the ’218 patent specification does
not use the term “condition precedent.” Id. at 36.
As reviewed above, the Board extensively considered
the intrinsic evidence. Further, there is nothing
1 The Board cited to a dictionary definition of “base
on” as justification for its construction of “based on” in lim-
itation 1(i) to mean a “condition precedent,” noting it de-
fines “the verb ‘base on’ to mean ‘to use particular . . . facts
to make a decision [or] do a calculation.’” J.A. 0022–23
(quoting Ex. 1043, 3 (Macmillan English Dictionary) (alter-
ation in original)).
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MASIMO CORPORATION v. SOTERA WIRELESS , INC . 7
inconsistent between the plain meaning it derived from the
intrinsic evidence and the meaning it drew from the dic-
tionary. Phillips does not proscribe the Board from con-
sulting a dictionary definition to help explain its
construction when the dictionary definition does not con-
tradict the intrinsic evidence. See Phillips, 415 F.3d at
1322–23 (“[J]udges are free to . . . ‘rely on dictionary defi-
nitions when construing claim terms, so long as the diction-
ary definition does not contradict any definition found in or
ascertained by a reading of the patent documents.’” (quot-
ing Vitronics, 90 F.3d at 1585)); see also Comaper Corp. v.
Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (“[I]n de-
termining the ordinary and customary meaning of the
claim term as viewed by a person of ordinary skill in the
art, it is appropriate to consult a general dictionary defini-
tion of the word for guidance.”).
Finally, Masimo cites to Figure 6 and its associated
text in the specification as an embodiment that shows the
processor triggering an alarm from oxygen saturation val-
ues exceeding a second alarm threshold without exceeding
an additional more extreme alarm threshold. See Appel-
lant’s Br. 31–33. However, the Board considered this ar-
gument that the meaning of the claim language was
limited by disclosed embodiments in the specifications, and
correctly disregarded it based on our precedent. J.A. 0026;
see 3M Innovative Props., 725 F.3d at 1321. There is noth-
ing further in the claim language or specification to limit
“threshold” to mean a value that directly triggers an alarm,
so we instead construe the term broadly.
Thus, on de novo review we agree with the Board and
construe limitation 1(i) to require a condition to be met be-
fore an alarm is triggered, not that the condition actually
trigger the alarm.
B
Masimo also argues that the Board improperly con-
strued “predetermined” as used in dependent claims 7, 9,
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MASIMO CORPORATION v. SOTERA WIRELESS , INC .
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and 18, which depend on independent claims 1, 8, and 12,
respectively. Claims 7, 9, and 18 each recite the identical
clause, “wherein the first alarm threshold is predeter-
mined,” referring to the same “first alarm threshold” re-
cited in independent claims 1, 8, and 12. J.A. 0270–71
(emphasis added).
The Board construed “predetermined” as referring to
the formulaic calculation used to determine the alarm
threshold value, in the context of both the patent’s use of a
variable sensor input data stream and a formula for calcu-
lating the alarm threshold value. See J.A. 0052. Masimo
instead argues that “predetermined” should mean that the
exact value of the alarm threshold is predetermined, and
that a calculated value based on a variable data stream is
not the meaning.
As the Board noted, it is clear from the ’218 patent’s
specification that the alarm threshold is adaptive. J.A.
0270. This is further supported by claim 1 (claims 8 and
12 use identical language to claim 1, in relevant part),
which states that “the second alarm threshold replac[es]
the first alarm threshold” through the adaptive mechanism
described in limitation 1(g). J.A. 0270. A POSITA reading
the patent would readily discern the adaptive function de-
scribed in claims 1, 8, and 12, and would read “predeter-
mined” in such a way to enable this adaptive function. A
fixed value would not allow for the adaptive function dis-
closed in claims 1, 8, and 12, so a POSITA would interpret
“predetermined” in a broader sense, to include a calcula-
tion made from a predetermined formula to produce the
threshold value from an input variable. There is nothing
in the plain meaning of the word “predetermined” that
would preclude such an interpretation, and the adaptive
features of the patent would not be possible absent such an
interpretation. We therefore affirm the Board’s construc-
tion of “predetermined.”
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MASIMO CORPORATION v. SOTERA WIRELESS , INC . 9
Masimo also makes a claim differentiation argument—
that “predetermined” in claims 7, 9, and 18 should be con-
strued consistent with “predetermined” in claims 4 and 15.
Masimo’s argument fails because claims 7, 9, and 18 are
dependent claims referring to the “first alarm threshold” as
part of the adaptive thresholds in claims 1, 8, and 12. J.A.
0270–71. Claims 4 and 15 are dependent claims that refer
instead to the fixed “lower limit” alarm thresholds in
claims 1 and 12. Id. The “same terms appearing in differ-
ent claims of the same patent” are not presumed to have
the same meaning if “it is clear from the specification and
prosecution history that the terms have different meanings
at different portions of the claims.” Wilson Sporting Goods
Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1328 (Fed.
Cir. 2006) (quoting Fin Control Sys. Pty., Ltd. v. OAM, Inc.,
265 F.3d 1311, 1318 (Fed. Cir. 2001)). Because “predeter-
mined” in claims 7, 9, and 18 refer to different portions of
claims 1 and 12 than “predetermined” as used in claims 4
and 15, and these different portions have the different
meanings relevant to fixed and adaptive thresholds, re-
spectively, “predetermined” therefore does not have the
presumption of the same meaning in these different con-
texts.
II. Abuse of Discretion
Masimo argues that the Board abused its discretion in
relying on Sotera’s argument made at an Oral Hearing re-
garding limitation 1(g). Masimo asserts that the argument
was new and that Masimo had no opportunity to challenge
the argument. Appellant’s Br. 59–60. However, as the
Board made clear, Sotera clarified its position to the Board
at the Oral Hearing in response to direct questioning by
the Board about the meaning of limitation 1(g) after nei-
ther Sotera nor Masimo addressed the Institution Deci-
sion’s preliminary reading of the Petition on this issue.
J.A. 0044. By responding to the Board’s question about its
argument in the Petition at the Oral Hearing, Sotera did
not make a new argument. Further, because the argument
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MASIMO CORPORATION v. SOTERA WIRELESS , INC .
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was raised in the Petition and the initial decision made a
preliminary finding, Masimo was properly noticed as to the
issue, had every opportunity to address it in its briefs, and
should have been prepared to address it at the Oral Hear-
ing.
Regarding the combination of Bock and Woehrle,
Masimo also argues that the Board improperly heard So-
tera’s argument for motivation to replace Bock’s alarm
limit 316 as an “effective delay” with a pre-set delay from
Woehrle, instead of adding the delay to Bock as Sotera
originally argued. Appellant’s Br. 63, 66–69. Masimo ar-
gues that Sotera’s argument was newly made in Sotera’s
Reply Brief before the Board and that it did not have the
opportunity to respond to the new theory. Appellant’s Br.
64–65, 68.
The Board addressed Masimo’s argument by noting
that the Petition asserted “two ways” of reducing nuisance
alarms, and the testimony of Dr. Yanulis explained that
the “two ways” would be the adaptive alarm delay taught
by Bock and the pre-set delay taught by Woehrle. J.A.
0059–60. The Board properly concluded that the reliance
by Sotera in its Reply on the testimony of Dr. Yanulis did
not constitute a new argument, but instead was an exten-
sion of its original argument from the Petition. This did
not violate the prohibition on presentation of new argu-
ment or evidence in a reply. Genzyme Therapeutic Prod.
Ltd. P’Ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366
(Fed. Cir. 2016) (“[I]ntroduction of new evidence in the
course of the trial is expected in inter partes review trial
proceedings and, as long as the opposing party is given no-
tice of the evidence and an opportunity to respond to it, the
introduction of such evidence is perfectly permissible under
the APA.”). Masimo had the opportunity to respond to the
assertion of replacing Bock’s alarm limit 316 with the time
delay from Woehrle in its Sur-Reply, but chose not to do so.
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MASIMO CORPORATION v. SOTERA WIRELESS , INC . 11
The Board also did not err in considering the descrip-
tion of Bock’s alarm limit 316 as “effectively an alarm de-
lay” as part of the Petition’s original obviousness theory, as
this was merely descriptive language regarding one of the
“two ways” of reducing nuisance alarms asserted in the Pe-
tition. See J.A. 0060 (Decision); J.A. 0331 (Petition). The
Petition describes Bock as generally teaching “an alarm
system that reduces false alarms,” and Woehrle as
“provid[ing] additional methods of reducing those alarms.”
J.A. 0328, 0330. The reference to the teachings of Bock as
an “effective delay” by Sotera in its Reply is consistent with
this language as one method of reducing false alarms, so
was not a new argument in the Reply.
III. Obviousness
“We review the Board’s ultimate obviousness determi-
nation of obviousness de novo and its underlying factual
findings for substantial evidence.” Personal Web Techs.,
LLC v. Apple, Inc., 848 F.3d 987, 991 (Fed. Cir. 2017).
“[T]he test for obviousness is what the combined teachings
of the references would have suggested to those having or-
dinary skill in the art.” In re Mouttet, 686 F.3d 1322, 1333
(Fed. Cir. 2012). Here, the Board’s Decision was based on
substantial evidence.
The Board found the ’218 patent claims 1–4, 7, and 12–
15 obvious over the combination of Bock and Kiani, J.A.
0034, 0075, and claims 5, 6, 8–10, and 16–18 obvious over
the combination of Bock, Kiani, and Woehrle, J.A. 0055,
0076.
First, Masimo asserts that the Board’s obviousness de-
terminations lack substantial evidence under Masimo’s
proposed claim constructions of “based on” and “predeter-
mined.” See Appellant’s Br. 45–57. However, Masimo does
not argue that the Board lacked substantial evidence for
its obviousness determinations under the Board’s adopted
claim constructions. See generally id. Because we affirm
the Board’s claim constructions of “based on” and
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“predetermined,” we also affirm its obviousness determina-
tions to the extent that they depend on these claim con-
structions.
Second, Masimo argues that after excluding Sotera’s
argument to the Board from its Reply to replace Bock’s
alarm limit with a time delay, there is no evidence in the
Petition that Bock’s alarm limit is an effective delay or that
Bock’s alarm limit can be replaced by a time delay. Appel-
lant’s Br. 66–69. However, as discussed above, the Board
properly considered Sotera’s replacement argument from
its Reply. Further, the Board considered Sotera’s replace-
ment argument as persuasive, citing to Dr. Bergeron’s tes-
timony as to the motivation to replace alarm limit 316 in
Bock with Woehrle’s time delay. J.A. 0063–64. The Board
also considered and found unpersuasive the arguments of
Masimo and the testimony of Mr. Goldberg that there
would be no motivation to replace Bock’s alarm limit 316
with Woehrle’s time delay. J.A. 0064–66. On appeal,
Masimo does not address the Board’s analysis of the testi-
mony of Dr. Bergeron and Mr. Goldberg. See generally Ap-
pellant’s Br. 61–70. The Board’s conclusion of motivation
to replace Bock’s alarm limit 316 with Woehrle’s time delay
was therefore supported by substantial evidence.
Finally, Masimo argues that replacing Bock’s alarm
limit 316 with Woehrle’s time delay would render Bock
non-functional because the alarm limit 316 is required to
trigger the alarm within Bock. Appellant’s Br. 69–70.
However, the Board considered this argument and found it
unpersuasive and unsupported by the record before it. J.A.
0066–70. The Board noted the ’218 patent does not de-
scribe how claim 5 is implemented. J.A. 0067. The Board
further cited evidence in the record that a POSITA would
have known how to do so. J.A. 0067–68. The Board also
relied on Dr. Bergeron’s testimony that replacing Bock’s
alarm limit 316 with Woehrle’s preset time delay is a “sim-
ple substitution of one delay for another delay, and would
have been advantageous,” and further “would not
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MASIMO CORPORATION v. SOTERA WIRELESS , INC . 13
materially increase the risk of the alarm system missing
true alarm, or life threatening, situations.” J.A. 0064. This
all amounts to substantial evidence for the Board’s conclu-
sion that a POSITA would have been motivated to combine
Bock and Woehrle.
CONCLUSION
We have considered Masimo’s remaining arguments
and find them unpersuasive. For the foregoing reasons,
the Board’s Decision is affirmed.
AFFIRMED
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