Apple Inc. v. Masimo Corporation

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Appellant
v.
MASIMO CORPORATION,
Appellee
______________________
2022-1890
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
01523.
______________________
Decided: January 12, 2024
______________________
T HOMAS G REGORY SPRANKLING, Wilmer Cutler Picker-
ing Hale and Dorr LLP, Palo Alto, CA, argued for appel-
lant. Also represented by MICHAEL J OHN BALLANCO,
L AUREN A NN D EGNAN , CHRISTOPHER D RYER , WALTER K ARL
RENNER, Fish & Richardson P.C., Washington, DC.
STEPHEN C. J ENSEN, Knobbe, Martens, Olson & Bear,
LLP, Irvine, CA, argued for appellee. Also represented by
J AROM D. K ESLER, J OSEPH R. RE, J OSHUA S TOWELL .
______________________
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APPLE INC. v. MASIMO CORPORATION 2
Before L OURIE, P ROST , and REYNA, Circuit Judges.
REYNA, Circuit Judge.
Apple Inc. appeals a final written decision of the
United States Patent and Trademark Office Patent Trial
and Appeal Board, which determined that claims 1–7, 9–
18, and 20–24 of U.S. Patent No. 8,457,703 were not un-
patentable as obvious. We affirm.
BACKGROUND
A. U.S. Patent No. 8,457,703
Masimo Corporation (“Masimo”) is the assignee of U.S.
Patent No. 8,457,703 (“’703 patent”), which relates to re-
ducing power consumption of a pulse oximeter. ’703 pa-
tent, Abstract. The patent discloses regulating power
consumption by intermittently changing the number of
samples received and processed by the oximeter. Id. at 6:9–
11. Based on physiological measurements and signal sta-
tistics, the oximeter determines whether to increase or de-
crease sampling. Id. at 6:25–39. In one embodiment, the
patent discloses controlling sampling by intermittently
changing the duty cycle of the current supplied to drive the
LEDs that project light onto the patient’s tissue. Id. at
5:55–66, 6:56–7:8.
Claim 1 is representative and recites,
1. A method of managing power consumption dur-
ing continuous patient monitoring by adjusting be-
havior of a patient monitor, the method
comprising:
driving one or more light sources configured to emit
light into tissue of a monitored patient;
receiving one or more signals from one or more de-
tectors configured to detect said light after attenu-
ation by said tissue;
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APPLE INC. v. MASIMO CORPORATION 3
continuously operating a patient monitor at a lower
power consumption level to determine measure-
ment values for one or more physiological parame-
ters of a patient;
comparing processing characteristics to a predeter-
mined threshold; and
when said processing characteristics pass said
threshold, transitioning to continuously operating
said patient monitor at a higher power consump-
tion level,
wherein said continuously operating at said lower
power consumption level comprises reducing acti-
vation of an attached sensor,
said sensor positioning said light sources and said
detectors proximate said tissue.
Id. at 11:32–51 (emphasis added).
B. Prior Art References
Two references are relevant to this appeal: Diab (U.S.
Patent No. 5,632,272) and Amano (U.S. Patent
No. 6,293,915).
Diab discloses a pulse oximeter that includes a sensor,
a digital signal processing system, and a display. Diab,
34:11–26, Fig. 11. The digital signal processing system
provides several outputs to be displayed, including “blood
oxygen saturation, heart rate, and a clean plethysmo-
graphic waveform.” Id. at 34:26–28. Within the digital sig-
nal processing system, as shown in Figure 20, heart rate
module 410 includes motion artifact suppression module
580. Id. at 47:30–38, Fig. 20 (below).
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APPLE INC. v. MASIMO CORPORATION 4
In case of motion, motion artifact suppression module
580 suppresses motion artifacts, namely, artifacts intro-
duced by patient movement that may distort the measured
signal. Id. at 3:6–9, 47:55–56. “If motion is not detected,
spectral estimation on the signals is carried out directly
without motion artifact suppression.” Id. at 47:52–54.
Amano discloses a wristwatch type of pulse wave de-
tector mounted on a finger. See Amano, Figs. 37A and 37B
(below).
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APPLE INC. v. MASIMO CORPORATION 5
In the embodiment illustrated in Figure 1, pulse wave
detecting section 10 detects a pulse waveform and outputs
the detected signal to body movement component eliminat-
ing section 30. Id. at 21:5–8, Fig. 1 (excerpt below).
The device also includes body movement detecting sec-
tion 20 and waveform treating section 21. Id. at 21:9–12.
If no body movement is present, the operations of waveform
treating section 21 and body movement component elimi-
nating section 30 are suspended. Id. at 21:65–22:2. Ac-
cording to Amano, this suspension reduces the power
consumption of the device. Id. at 22:4–6.
C. Procedural History
After Masimo sued Apple Inc. (“Apple”) for infringing
the ’703 patent, Apple petitioned for inter partes review
(“IPR”) of claims 1–7, 9–18, and 20–24 of the ’703 patent.
The Patent Trial and Appeal Board (“Board”) con-
strued the claimed “processing characteristics” as “deter-
mined from a signal received from one or more detectors
configured to detect light.” J.A. 14. Based on this construc-
tion, the Board assessed Apple’s eight obviousness
grounds, each of which addressed either or both of Diab and
Amano. Ultimately, the Board concluded that Apple failed
to show obviousness of the challenged claims.
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APPLE INC. v. MASIMO CORPORATION 6
Apple appealed. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(4)(A).
STANDARD OF REVIEW
Claim construction is a question of law with underlying
questions of fact. Wasica Fin. GmbH v. Cont’l Auto. Sys.,
Inc., 853 F.3d 1272, 1278 (Fed. Cir. 2017). We review de
novo the Board’s ultimate claim construction and its sup-
porting determinations that are based on intrinsic evi-
dence. Personalized Media Commc’ns, LLC v. Apple Inc.,
952 F.3d 1336, 1339 (Fed. Cir. 2020). Subsidiary factual
findings involving extrinsic evidence are reviewed for sub-
stantial evidence. Id.
We review the Board’s ultimate obviousness determi-
nations on a de novo basis and any underlying factual de-
terminations for substantial evidence. In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). The scope and con-
tent of the prior art and whether a person of ordinary skill
in the art would have been motivated to combine teachings
in the prior art are both questions of fact. Intel Corp. v.
PACT XPP Schweiz AG, 61 F.4th 1373, 1378 (Fed. Cir.
2023). Substantial evidence means “such relevant evi-
dence as a reasonable mind might accept as adequate to
support a conclusion.” Id. (citation omitted).
D ISCUSSION
Apple challenges the Board’s construction of “pro-
cessing characteristics” as too limiting. Apple also raises
two arguments relating to the prior art references. First,
Apple contends that the Board failed to address its alter-
native argument as to Diab’s teachings. Second, Apple ar-
gues that the Board applied an inherency standard to
Apple’s obviousness argument based on the combination of
Diab and Amano.
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APPLE INC. v. MASIMO CORPORATION 7
A. “Processing Characteristics”
The Board concluded that “in the context of the ’703
patent, ‘processing characteristics’ are determined from a
signal received from one or more detectors configured to
detect light.” J.A. 14. The Board rejected Apple’s expan-
sive construction interpreting this term to encompass any
information that is processed. Id. To the Board, such a
“sweeping premise” is inconsistent with the ’703 patent.
Id. We agree with the Board.
Both the claim language and the specification support
the Board’s claim construction. In the claim language,
“processing characteristics” refers to the processing of “one
or more signals from one or more detectors configured to
detect” light attenuated by the tissue. See ’703 patent,
11:32–51. These signals represent the only signals re-
ceived and processed in the claimed patient-monitoring in-
vention. Throughout the specification, “processing
characteristics” are described as being determined based
on the signals received from the light detectors, the sole
source of signals that are then processed. See, e.g., id. at
5:11–23, 5:40–48, Figs. 3 & 4. Although the specification
does not state the term in explicit definitional format, the
Board’s reading of the term is consistent with how the in-
vention is described in the specification.
Contrary to Apple’s contention, the additional limita-
tions to “processing characteristics” recited in dependent
claims 4 and 8 do not support Apple’s proposed expansive
construction. The additional limitations1 further define
1 Dependent claim 4 recites that the “processing
characteristics comprise signal characteristics from one or
more light sensitive detectors.” ’703 patent, 11:59–61. De-
pendent 8 claim recites that the “processing characteristics
include determining an estimate of current power
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APPLE INC. v. MASIMO CORPORATION 8
and restrict “processing characteristics” to a subset of the
resulting downstream data generated from processing the
received signals. They do not support reading “processing
characteristics” to encompass information untethered to
the underlying processing of the invention as described in
the patent. Apple’s proposed construction improperly
takes the term out of context of the patented invention and
lacks support. For these reasons, we hold that the Board
correctly construed the term “processing characteristics” as
“determined from a signal received from one or more detec-
tors configured to detect light.” See J.A. 14.
B. Apple’s Partial-Suspension Argument
Apple asserts that the Board failed to grasp its alter-
native argument that Diab teaches suspending a subset of
the operations of its motion artifact suppression module.
Appellant Br. 41–45. In Apple’s view, this partial suspen-
sion, like its argument based on the suspension of the en-
tire module, would read on the claimed limitation of
reducing power consumption. Id. at 41–42.
We note that Apple failed to raise the purported par-
tial-suspension argument before the Board. The record
demonstrates that Apple raised a singular argument that
Diab teaches suspending its motion artifact suppression
module if there is no motion. Apple did not identify a dis-
tinct alternative argument relying on suspending a subset
of components within that module. In its petition, Apple
contended that Diab “teaches not executing the motion ar-
tifact suppression module 580” and that it would have been
obvious to “suspend and not execute” operations of that
module if there is no motion. J.A. 85. Apple’s argument
focused on suspending operations of the motion artifact
suppression module altogether. The petition made no
consumption and comparing said estimate with a target
power consumption.” Id. at 12:1–4.
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APPLE INC. v. MASIMO CORPORATION 9
mention of suspending a subset of the operations performed
by the motion artifact suspension module.
To show that it made the partial-suspension argument
before the Board, Apple cites several pages from its peti-
tioner’s reply and certain statements made at the oral
hearing. Appellant Br. 44. To the extent Apple raised a
new argument in its reply or at the oral hearing, such ar-
gument is untimely and improper.2 See Intelligent Bio-
Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369
(Fed. Cir. 2016).
We hold that Apple failed to properly present to the
Board the partial-suspension argument it now raises on
appeal. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1377–
78 (Fed. Cir. 2023). Absent exceptional circumstances, ar-
guments not properly presented before the Board are gen-
erally not considered on appeal. In re Google Tech.
Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020). We find
no exceptional circumstances here justifying exercising our
discretion to hear Apple’s forfeited argument. See id.
C. Motivation to Combine
Apple also contends that the Board improperly applied
an inherency standard when evaluating Apple’s motiva-
tion-to-combine theory. Apple argues that the Board re-
quired it to show that suspending Diab’s motion artifact
suppression module based on Amano would “necessarily”
or “inherently” reduce power consumption. Appellant
2 A review of Apple’s citations to its reply shows that
it continued to argue suspending “all the operations of the
motion artifact suppression module 580” and that “a
POSITA would have found it obvious not to execute opera-
tions of [that module].” J.A. 1689–90. The reply did not
raise an alternative argument based on suspending a sub-
set of the operations. Apple’s reliance on counsel state-
ments at the oral hearing fails for similar reasons.
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APPLE INC. v. MASIMO CORPORATION 10
Br. 56–57. We disagree. Rather than applying an “inher-
ency” standard, the Board addressed Apple’s reasoning for
combining Diab and Amano and explained why it found Ap-
ple’s arguments unpersuasive.
During the IPR, the Board addressed and found unper-
suasive Apple’s proposed reasoning to combine Diab with
Amano. J.A. 28–32. The Board explained that although
both relate to physiological monitoring, the two references
“disclose different processing algorithms that result in dif-
ferent outputs that are not directly applicable to each
other.” J.A. 29. Given these differences, the Board found
Apple failed to adequately explain why one skilled in the
art would have applied Amano’s teaching of suspending
certain processing to Diab’s motion artifact suppression
module. J.A. 30.
The Board further addressed Apple’s contention that
applying Amano’s teaching to Diab’s motion artifact sup-
pression module “would” reduce power consumption in
Diab. Id. This “supposed power reduction is the founda-
tional reason” Apple advanced for combining the two refer-
ences. J.A. 31–32. But the Board found that Masimo
persuasively showed that Amano’s “power reduction may
not occur in Diab’s differently structured and configured
system.” J.A. 31. To the Board, even assuming one were
to apply Amano’s teachings to suspend Diab’s motion arti-
fact suppression module, it may not reduce power con-
sumption in Diab’s system. Id. The Board also considered
the parties’ expert testimony and found Masimo’s expert
testimony more credible. Id. The Board therefore rejected
Apple’s proffered premise for finding a motivation to com-
bine. We conclude that the Board’s finding of a lack of mo-
tivation to combine Diab and Amano is supported by
substantial evidence.
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APPLE INC. v. MASIMO CORPORATION 11
CONCLUSION
We have considered Apple’s remaining arguments and
find them unpersuasive. Accordingly, the decision of the
Board is affirmed.
AFFIRMED
COSTS
Costs against Appellant.
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