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N OTE: This disposition is nonprecedential.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
______________________
2022-1891
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
01524.
______________________
Decided: January 12, 2024
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BRITTANY BLUEITT A MADI, Wilmer Cutler Pickering
Hale and Dorr LLP, Washington, DC, argued for appellant.
Also represented by MICHAEL J OHN BALLANCO, L AUREN
ANN D EGNAN, CHRISTOPHER D RYER , WALTER K ARL RENNER
Fish & Richardson P.C., Washington, DC.
J OSHUA STOWELL , Knobbe, Martens, Olson & Bear,
LLP, Irvine, CA, argued for appellee. Also represented by
STEPHEN C. J ENSEN, J AROM D. K ESLER, J OSEPH R. RE.
______________________
Case: 22-1891 Document: 37 Page: 1 Filed: 01/12/2024

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APPLE INC. v. MASIMO CORPORATION 2
Before L OURIE, P ROST , and REYNA, Circuit Judges.
L OURIE, Circuit Judge.
Apple Inc. (“Apple”) appeals from a decision of the U.S.
Patent and Trademark Office Patent Trial and Appeal
Board (“the Board”) holding that claims 1−16 of Masimo’s
U.S. Patent 10,433,776 (the “’776 patent”) were not un-
patentable as obvious in view of the asserted prior art. Ap-
ple Inc. v. Masimo Corp., No. IPR2020-01524 (P.T.A.B.
Apr. 29, 2022), J.A. 1−52 (“Decision”). For the following
reasons, we affirm.
BACKGROUND
Masimo’s ’776 patent is directed to a pulse oximeter
that operates by reducing or increasing power consumption
after comparing various processing characteristics, like
pulse rate or signal-to-noise ratios, to predetermined
thresholds. See ’776 patent, col. 2 ll. 25−33, col. 3 ll. 14−25.
Alterations to power consumption levels are achieved using
sampling mechanisms that process incoming signal sam-
ples to determine whether subsequent sampling processing
should be reduced during high-signal-quality periods or in-
creased during low-signal-quality periods or when critical
physiological measurements are necessary. Id. at col. 2 ll.
25−44. Sampling thus modifies the oximeter’s power con-
sumption by modifying the number of input samples re-
ceived and processed.
One exemplary sampling mechanism involves “an emit-
ter duty cycle control” that “determines the duty cycle of
the current supplied by the emitter drive outputs . . . to
both red and IR sensor emitters.” ’776 patent, col. 5 l.
64−col. 6 l. 2; see col. 2 ll. 34−44 (noting that the associated
duty cycle “may be in the range of about 3.125% to about
25%”). A duty cycle is, essentially, the fraction of time dur-
ing which a signal is active. Thus, a 25% duty cycle means
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APPLE INC. v. MASIMO CORPORATION 3
that the signal is on 25% of the time and off for the other
75% of the time.
The ’776 patent specification also notes that, “[i]n con-
junction with an intermittently reduced duty cycle or as an
independent sampling mechanism, there may be a ‘data off’
time period longer than one drive current cycle where the
emitter drivers . . . are turned off.” Id. at col. 7 ll. 11−15.
Independent claim 1 of the ’776 patent recites:
1. A method of operating a patient monitor config-
ured to monitor at least a pulse rate of a patient by
processing signals responsive to light attenuated
by body tissue, the method comprising:
operating the patient monitor according to a first
control protocol, wherein said operating includes
activating a first control protocol light source in ac-
cordance with the first control protocol, the first
control protocol light source including one or more
of a plurality of light sources;
when operating according to the first control proto-
col, calculating, by the patient monitor, measure-
ment values of the pulse rate, the measurement
values responsive to light from the first control pro-
tocol light source, detected by a detector of an opti-
cal sensor after attenuation by body tissue of the
patient using the patient monitor;
generating a trigger signal, wherein generating
said trigger signal is responsive to at least one of: a
comparison of processing characteristics to a pre-
determined threshold, a physiological event, or sig-
nal quality characteristics of signals received from
the detector;
in response to receiving the trigger signal, operat-
ing the patient monitor according to a second con-
trol protocol different from the first control
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APPLE INC. v. MASIMO CORPORATION 4
protocol, wherein said operating includes activat-
ing a second control protocol light source in accord-
ance with the second control protocol, the second
control protocol light source including one or more
of the plurality of light sources; and
when operating the patient monitor according to
the second control protocol, calculating the meas-
urement values of the pulse rate, the measurement
values responsive to light from the second control
protocol light source, detected by the detector after
attenuation by the body tissue of the patient using
the patient monitor,
wherein said operating of the patient monitor ac-
cording to the first control protocol operates the
first control protocol light source according to a
first duty cycle and said operating of the patient
monitor according to the second control protocol op-
erates the second control protocol light source ac-
cording to a second duty cycle, wherein power
consumption of the first control protocol light
source according to the first duty cycle is different
than power consumption of the second control pro-
tocol light source according to the second duty cy-
cle.
’776 patent, col. 11 l. 41−col. 12 l. 21 (emphases added). In-
dependent claim 11 recites similar limitations for the pur-
poses of this appeal. See id. at col. 12 l. 60−col. 14 l. 9.
In its final written decision, the Board held that nei-
ther the first nor the second duty cycle recited in the claims
could be 0%. Decision at 11−21. In particular, the Board
construed “duty cycle” to mean “the ratio of operating time
(or on time) of a light source to the total time period during
which the light source is intermittently operated, ex-
pressed as a percentage” in view of a similar disclosure in
the specification. Id. at 16−17 (citing the ’776 patent, col.
2 ll. 43−44). The Board then held that neither the first nor
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APPLE INC. v. MASIMO CORPORATION 5
the second duty cycle can be 0%, given that both of the as-
sociated first and second control protocol light sources must
generate light. Decision at 17−18. The Board subsequently
held that, based on its construction of “duty cycle,” Apple
had not established that any of the challenged claims
would have been unpatentable as obvious, as Apple only
asserted prior art that taught devices operating with a 0%
duty cycle. Id. at 28−33, 41−50.
Apple timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141(c).
D ISCUSSION
We review the Board’s legal determinations de novo, In
re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
Board’s factual findings for substantial evidence, In re
Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding
is supported by substantial evidence if a reasonable mind
might accept the evidence as adequate to support the find-
ing. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
Apple contends that the Board erred in holding that the
claims prohibit a 0% duty cycle. Although Apple does not
challenge the Board’s construction of “duty cycle,” it asserts
that the claims provide no restriction on specific ratios nec-
essary for each duty cycle. Appellant’s Br. at 13−17. We
disagree.
As the Board held, a 0% duty cycle would mean that the
associated light source in the device is turned off. However,
the claims require a light source to remain on during both
the first and second duty cycles because the claims also re-
quire calculating pulse rate in each cycle based upon light
from a light source. See Decision at 17−18. If the light
source were turned off, the device could not calculate the
heart rate as required. Id.
Apple further contends that intrinsic evidence supports
a conclusion that a duty cycle may be 0%. For example,
claim 6, which depends from claim 1, recites that the first
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APPLE INC. v. MASIMO CORPORATION 6
control protocol, which is associated with the first duty cy-
cle, comprises “operating the first control protocol light
source in a data off state.” ’776 patent, col. 12 ll. 43−46; see
also id. at col. 14 ll. 27−30 (reciting the same limitation in
claim 15, which depends from independent claim 11). Ap-
ple further points to a disclosure in the specification dis-
cussing a “data off” state. See, e.g., id. at col. 8 l. 14−col. 9
l. 18. According to Apple, that “data off” state constitutes
a duty cycle of 0%. Appellant’s Br. at 20−24, 28−30. We
disagree.
As the Board held, the specification sets forth that the
first and second duty cycles are independent of the “data
off” state. Decision at 19−21. Claims 6 and 15 require that
the first control protocol includes a period of “data off” time
as well as a period associated with the first duty cycle dur-
ing which a light must be on. Id. They do not require or
imply that a duty cycle as recited in the independent claims
of the ’776 patent may be 0%.
For the above reasons, we see no error in the Board’s
determination that the claims prohibit a 0% duty cycle, De-
cision at 11–21, and thus conclude that it was supported by
substantial evidence. Hence, it correctly concluded that
the claims were not shown to have been obvious over the
cited prior art.
CONCLUSION
We have considered Apple’s remaining arguments and
do not find them persuasive. For the foregoing reasons, we
affirm the Board’s final written decision.
AFFIRMED
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