IP Law Daily, PATENT—Fed. Cir.: Dependent claims were necessarily non-obvious when their independent claim was non-obvious, (Sep 12, 2023)

By Kevin M. Finson, J.D.

Obviousness determinations made by the PTAB were generally affirmed with the exception of certain dependent claims because the Board had held that the independent claim from which those claims depended was non-obvious, which was inconsistent.

The owner of several patents relating to optical sensors that could be used in smart watches was correct that the Patent Trial and Appeal Board erred by holding that dependent claims were invalid as obvious when the claim upon which they depended was non-obvious, the U.S. Court of Appeals for the Federal Circuit has held. However, the Board’s obviousness determinations as to all the other challenged claims were properly supported by the evidence (Masimo Corp. v. Apple Inc., September 12, 2023, Lourie, A.).

Masimo Corp. was the owner of U.S. Patents Nos. 10,258,265 (the ’265 patent), 10,292,628 (the ’628 patent), 10,577,553 (the ’553 patent), 10,588,554 (the ’554 patent), and 10,631,765 (the ’765 patent), all which related to an optical sensor for noninvasively measuring blood constituents containing a protruding, convex cover over multiple light emitters and detectors. Apple, Inc. filed eight petitions for inter partes review of most of the claims of the listed patents on the ground of obviousness over combinations of several prior art references. The Patent Trial and Appeal Board determined that all the challenged claims, except for independent claim 13 of the ’554 patent, were invalid as obvious. Masimo appealed.

Theories not raised. Masimo argued that the Board based its decisions on its own argument rather than arguments raised by the parties, thus denying Masimo the notice and opportunity to respond demanded by the Administrative Procedures Act. The Federal Circuit determined that any error was harmless because the Board did not rely solely on its own arguments, and even if those arguments were excluded the result would have been the same.

Consideration of evidence. Masimo argued that the Board failed to consider several admissions, teachings, and theories which it had put forward. The court reviewed the record and found that the Board had in fact considered each challenged item, but had simply reached different conclusions than those Masimo sought.

Late raised theory. Masimo argued that the Board erred by relying upon a theory put forth by Apple only in its reply brief; namely, that light would be gathered most at the point of greatest curvature of the protruding convex cover. The court found that this argument was not raised for the first time in Apple’s reply but was rather mentioned in Apple’s initial brief and then properly expanded upon in its reply.

Substantial evidence. Masimo challenged the motivations to combine all the prior art combinations found by the Board. In each case the Federal Circuit determined that the Board had weighed evidence in the form of expert testimony and documentation and Masimo was improperly asking it to reweigh evidence.

Dependent claims. Finally, Masimo argued that the Board erred in finding that dependent claims 14-18 of the ’554 patent were obvious when the Board had found that claim 13, from which those claimed depended, was non-obvious. Apple did not dispute that if claim 13 was non-obvious then its dependent claims were necessarily non-obvious as well.

The Federal Circuit reversed the Board’s obviousness determinations as to the claims which were dependent upon claim 13 of the ’554 patent and otherwise affirmed.

The case is Nos. 2022-1631, 2022-1632, 2022-1633, 2022-1634, 2022-1635,2022-1636, 2022-1637, 2022-1638.

Attorneys: Joseph R. Re (Knobbe, Martens, Olson & Bear, LLP) for Masimo Corp. Lauren Ann Degnan (Fish & Richardson P.C.) for Apple Inc.

Companies: Masimo Corp.; Apple Inc.

Cases: Patent FedCirNews USPTO