Masimo Corporation v. Apple Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MASIMO CORPORATION,
Appellant
v.
APPLE INC.,
Appellee
______________________
2022-1894
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
01526.
______________________
Decided: January 10, 2024
______________________
J EREMIAH HELM , Knobbe, Martens, Olson & Bear, LLP,
Irvine, CA, argued for appellant. Also represented by J OHN
M. G ROVER , STEPHEN C. J ENSEN, SHANNON L AM , J OSEPH R.
RE.
L AUREN A NN D EGNAN, Fish & Richardson P.C., Wash-
ington, DC, argued for appellee. Also represented by
MICHAEL J OHN BALLANCO, WALTER K ARL RENNER; ROBERT
COURTNEY , Minneapolis, MN.
______________________
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MASIMO CORPORATION v. APPLE INC. 2
Before L OURIE, P ROST , and REYNA, Circuit Judges.
P ROST , Circuit Judge.
Masimo Corporation (“Masimo”) appeals from a final
written decision of the Patent Trial and Appeal Board
(“Board”) in an inter partes review (“IPR”) determining
claim 15 of U.S. Patent No. 6,771,994 (“the ’994 patent”)
unpatentable for obviousness. We affirm.
BACKGROUND
Apple Inc. (“Apple”) petitioned for IPR of claim 15 of
the ’994 patent, which recites:
15. A sensor which generates at least first and sec-
ond intensity signals from a light-sensitive detector
which detects light of at least first and second
wavelengths transmitted through body tissue car-
rying pulsing blood; the sensor comprising:
at least one light emission device;
a light sensitive detector; and
a plurality of louvers positioned over the
light sensitive detector to accept light from
the at least one light emission device origi-
nating from a general direction of the at
least one light emission device and then
transmitting through body tissue carrying
pulsing blood, wherein the louvers accept
the light when the sensor is properly ap-
plied to tissue of a patient.
’994 patent claim 15 (emphasis added). We refer to the lan-
guage emphasized above as the “louver element.”
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MASIMO CORPORATION v. APPLE INC. 3
Apple argued in its IPR petition that claim 15 was un-
patentable because, among other things, it would have
been obvious over a combination of Webster1 and Melby.2
Webster undisputedly disclosed everything in claim 15
except for the louver element. See Apple Inc. v. Masimo
Corp., No. IPR2020-01526, 2022 WL 1153450, at *7–8
(P.T.A.B. Apr. 12, 2022) (“Final Written Decision”); see also
J.A. 333–37; Oral Arg. at 6:15–40.3 Webster described,
however, the “importan[ce] [of] minimiz[ing] the effects
from light other than the optical signals of interest,” and
stated that “[o]ne way to minimize unwanted light incident
upon the detector is to place some type of light filter over
the detector.” J.A. 950 (emphasis added). According to
Webster, doing so “allows light of wavelengths of interest
to pass through the filter but does not allow light of other
wavelengths to pass through the filter.” J.A. 950.
Melby, titled “Light Control Film with Reduced Ghost
Images,” disclosed a “louvered plastic film.” Melby at [54],
[57]. Melby contemplates using its louvered film as a “pri-
vacy filter” on computer displays, see id. at col. 6 ll. 7–10,
or as a “sunscreen in the rear window of an automobile,”
id. at col. 4 ll. 66–68, but it observes that such film can be
“useful in a wide variety of applications,” see id. at col. 5
ll. 9–10.
In its final written decision, the Board determined that
Apple had “persuasively shown that the combination of
Webster and Melby teach[es] [the louver element] and that
the combination would have been both predictable and
1 Design of Pulse Oximeters (J.G. Webster ed., 1997)
(“Webster”); J.A. 855–968.
2 U.S. Patent No. 5,254,388 (“Melby”); J.A. 814–21.
3 No. 22-1894, https://oralarguments.cafc.uscourts.
gov/default.aspx?fl=22-1894_12062023.mp3.
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MASIMO CORPORATION v. APPLE INC. 4
supported by the references.” Final Written Decision,
2022 WL 1153450, at *12.
Specifically, the Board found that Webster taught “the
importance of minimizing the effects of light other than the
optical signals of interest, including unwanted light inci-
dent upon the detector, by placing some type of light filter
over the detector.” Id. Although Masimo had suggested
that Webster’s “some type of light filter” meant only wave-
length filters, the Board found “no indication” to that effect;
instead, wavelength filters were just “one example mecha-
nism for limiting unwanted light.” Id. at *13. Relying on
Apple’s expert testimony, the Board found that a person of
ordinary skill in the art would have understood that
Melby’s light control film, when placed over a detector,
would “accept[] light from the light emission device from a
particular direction based on the angle of the louvers,” id.
at *12 (citing J.A. 658–60 ¶¶ 102–04), and would “restrict
the amount of light that reaches the detector from a partic-
ular direction,” id. (quoting J.A. 660 ¶ 104)—thus
“help[ing] minimize light that has not otherwise travelled
through” body tissue, see id. The Board ultimately deter-
mined that claim 15 was unpatentable for obviousness. Id.
at *14.
Masimo timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
“We review the Board’s ultimate determination of obvi-
ousness de novo and its underlying factual determinations
for substantial evidence.” PersonalWeb Techs., LLC v. Ap-
ple, Inc., 917 F.3d 1376, 1381 (Fed. Cir. 2019) (cleaned up).
What the prior art disclosed and whether a person of ordi-
nary skill in the art would have been motivated to combine
prior-art references are both fact questions that we review
for substantial evidence. E.g., Intel Corp. v. PACT XPP
Schweiz AG, 61 F.4th 1373, 1378 (Fed. Cir. 2023). “Sub-
stantial evidence is such relevant evidence as a reasonable
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MASIMO CORPORATION v. APPLE INC. 5
mind might accept as adequate to support a conclusion.”
Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1324
(Fed. Cir. 2017) (cleaned up).
Masimo first argues that the Board should have read
Webster’s “some type of light filter” as limited to wave-
length filters. Appellant’s Br. 23 (arguing that the Board
“erred by picking out an isolated sentence” from Webster
“while ignoring the context provided by Webster as a
whole”). This argument, though styled as a legal error, re-
ally challenges a factfinding as to what the prior art dis-
closed. We conclude that a reasonable fact finder could
have found, as the Board did, that when Webster said
“some type of light filter,” it did not mean exclusively wave-
length filters—which were instead just “one example mech-
anism for limiting unwanted light.” See Final Written
Decision, 2022 WL 1153450, at *13. Masimo’s disagree-
ment on this factual matter does not establish that the
Board failed to consider Webster as a whole or that it oth-
erwise made or relied on a factfinding lacking substantial
evidence.
Masimo next says that the Board’s use of the words
“could” and “reasonable” show that it applied an incorrect
legal standard for obviousness. See Appellant’s Br. 19,
24–25. As an example of the former, the Board stated: “We
determine that Webster teaches that in one embodiment
light filters, such as those found in Melby, could be used
above the detectors.” Final Written Decision, 2022 WL
1153450, at *13. As an example of the latter, the Board
stated that “it would have been reasonable for a person of
ordinary skill in the art to look to Melby to provide a light
control film to help control ambient light and further to
place that film over the photodiode detectors of Webster.”
Id. at *12.
Masimo’s argument is unpersuasive. Throughout the
Board’s decision, it made findings about what a person of
ordinary skill in the art would have been motivated to do,
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MASIMO CORPORATION v. APPLE INC. 6
not simply what the person could have done. E.g., id. (“[Ap-
ple] has persuasively shown . . . that a person of ordinary
skill in the art would have been motivated to create its pro-
posed combination . . . .” (emphasis added)); id. at *13
(“[Apple’s expert] persuasively testifies that one of ordinary
skill would have been motivated to combine Webster and
Melby . . . .” (emphasis added)). And, as to the Board’s use
of the word “reasonable” in certain places, we see no indi-
cation—particularly given the entirety of the Board’s deci-
sion—that the Board meant anything other than that a
person of ordinary skill in the art would have had a reason
(based on the evidence) to do whatever was being dis-
cussed.
Masimo also stresses that no reference teaches or sug-
gests placing louvers over a detector. E.g., Appellant’s
Br. 28 (heading VI.B.1). Essentially, its argument is: be-
cause Webster disclosed light-sensitive detectors and light
filters (but not louvers specifically), and because Melby dis-
closed louvers (but not in the context of light-sensitive de-
tectors), the prior art is missing a claim element—and
therefore, the claimed invention was not shown to be un-
patentable for obviousness. See id. at 22, 28–30. Masimo
misunderstands the obviousness inquiry. The question is
not whether the prior art disclosed the very thing claimed;
it is whether, in light of the prior art, the claimed invention
would have nonetheless been obvious to a person of ordi-
nary skill in the art as of the relevant date. See, e.g.,
35 U.S.C. § 103; Fleming v. Cirrus Design Corp., 28 F.4th
1214, 1222 (Fed. Cir. 2022) (“That the proposed combina-
tion of James and POH—rather than one of the individual
references—discloses the disputed claim limitations does
not defeat the Board’s conclusion of obviousness.” (empha-
sis in original)). Contrary to Masimo’s argument, it suf-
fices—as the Board found—“that a person of ordinary skill
in the art would have been motivated to combine the prior
art in a way such that the combination discloses the claim
limitation[].” See Fleming, 28 F.4th at 1222.
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MASIMO CORPORATION v. APPLE INC. 7
Masimo finally argues that substantial evidence does
not support the Board’s finding that “ambient light” “is the
type of light the light control film of Melby is designed to
minimize.” Appellant’s Br. 31 (quoting Final Written Deci-
sion, 2022 WL 1153450, at *12). According to Masimo,
Melby is not concerned with minimizing “ambient” light; it
is concerned instead with reducing ghost images, which are
“from the emitted light from the screen.” See id. at 31–32.
Our review of the Board’s decision, however, leads us
to conclude that, when the Board made its relevant find-
ings, it conceived of “ambient light” more generally as in-
cluding a broader subset of light unwanted for the given
application. For example, over the next two paragraphs of
its decision, the Board credited Apple’s expert testimony
concerning Melby’s use of louvers to accept or restrict light
based on its direction and on what should reach the target
of interest. See, e.g., Final Written Decision, 2022 WL
1153450, at *12 (“Melby’s film could be used in the Webster
device as the ‘light filter’ to control light such that only
light originating from the direction of the light emitters
reaches the detector.” (quoting J.A. 657 ¶ 100)); id. (“[Ap-
ple’s expert] persuasively testifies that Melby’s light con-
trol film placed above Webster’s photodiode would reduce
noise by accepting light from the light emission device from
a particular direction based on the angle of the louvers
within the light control film.” (citing J.A. 658–60
¶¶ 102–04)). Thus, regardless of whether the Board was
perfectly precise when describing the light minimized by
Melby’s film as “ambient,” we do not think its use of that
term undermines its overall reasoning (or the substantial
evidence supporting it) regarding what the prior art dis-
closed and whether a person of ordinary skill in the art
would have been motivated to combine Melby with Webster
to achieve the claimed invention.
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MASIMO CORPORATION v. APPLE INC. 8
CONCLUSION
We have considered Masimo’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm.
AFFIRMED
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