Case: 22-1890 Document: 36 Page: 1 Filed: 01/12/2024

NOTE: This disposition is nonprecedential.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 ______________________

THOMAS GREGORY SPRANKLING, Wilmer Cutler Picker- ing Hale and Dorr LLP, Palo Alto, CA, argued for appel- lant. Also represented by MICHAEL JOHN BALLANCO, LAUREN ANN DEGNAN, CHRISTOPHER DRYER, WALTER KARL RENNER, Fish & Richardson P.C., Washington, DC.

STEPHEN C. JENSEN, Knobbe, Martens, Olson & Bear, LLP, Irvine, CA, argued for appellee. Also represented by JAROM D. KESLER, JOSEPH R. RE, JOSHUA STOWELL. ______________________ Case: 22-1890 Document: 36 Page: 2 Filed: 01/12/2024

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Before LOURIE, PROST, 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; Case: 22-1890 Document: 36 Page: 3 Filed: 01/12/2024

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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). Case: 22-1890 Document: 36 Page: 4 Filed: 01/12/2024

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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). Case: 22-1890 Document: 36 Page: 5 Filed: 01/12/2024

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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. Case: 22-1890 Document: 36 Page: 6 Filed: 01/12/2024

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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). DISCUSSION 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. Case: 22-1890 Document: 36 Page: 7 Filed: 01/12/2024

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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 limitations 1 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 Case: 22-1890 Document: 36 Page: 8 Filed: 01/12/2024

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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. Case: 22-1890 Document: 36 Page: 9 Filed: 01/12/2024

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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. Case: 22-1890 Document: 36 Page: 10 Filed: 01/12/2024

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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. Case: 22-1890 Document: 36 Page: 11 Filed: 01/12/2024

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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.