Apple Inc. v. Masimo Corporation et al

Filing 685

MARKMAN OPINION. Signed by Judge Jennifer L. Hall on 10/8/2024. Associated Cases: 1:22-cv-01377-JLH, 1:22-cv-01378-JLH(ceg)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
APPLE INC.,
Plaintiff,
v.
MASIMO CORPORATION and SOUND
UNITED, LLC,
Defendants.
MASIMO CORPORATION,
Counter-Claimant,
v.
APPLE INC.,
Counter-Defendant.
APPLE, INC.,
Plaintiff,
v.
MASIMO CORPORATION and SOUND
UNITED, LLC,
Defendants.
MASIMO CORPORATION and
CERCACOR LABORATORIES, INC.,
Counter-Claimants,
v.
APPLE INC.,
Counter-Defendant.

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C.A. No. 22-1377 (JLH)

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C.A. No. 22-1378 (JLH)

MARKMAN OPINION
David E. Moore, Bindu A. Palapura, Andrew L. Brown, POTTER ANDERSON & CORROON LLP,
Wilmington, DE; John M. Desmarais, Jordan N. Malz, Cosmin Maier, Kerri-Ann Limbeek,
Jeffrey Scott Seddon, II, DESMARAIS LLP, New York, NY; Peter C. Magic, DESMARAIS LLP,
San Francisco, CA; Jennifer Milici, Leon B. Greenfield, Dominic Vote, WILMER CUTLER
PICKERING HALE AND DORR LLP, Washington, D.C.; Mark A. Ford, WILMER CUTLER PICKERING
HALE AND DORR LLP, Boston, MA — Attorneys for Plaintiff
John C. Phillips, Jr., Megan C. Haney, PHILLIPS MCLAUGHLIN & HALL, P.A., Wilmington, DE;
Joseph R. Re, Stephen C. Jensen, Stephen W. Larson, Benjamin A. Katzenellenbogen, Jared C.
Bunker, Kendall M. Loebbaka, Douglas B. Wentzel, KNOBBE, MARTENS, OLSON & BEAR, LLP,
Irvine, CA; Brian Horne, KNOBBE, MARTENS, OLSON & BEAR, LLP, Los Angeles, CA; Adam
Powell, KNOBBE, MARTENS, OLSON & BEAR, LLP, San Diego, CA — Attorneys for Defendants

Wilmington, Delaware
October 8, 2024

2

JENNIFER L. HALL, U.S. DISTRICT JUDGE
This opinion addresses the parties’ claim construction disputes for Apple’s utility patents.
The asserted Apple utility patents are U.S. Patent Nos. 10,627,783 (the “’783 patent”), 10,942,491
(the “’491 patent”), 10,987,054 (the “’054 patent”), 11,106,352 (the “’352 patent”), and
11,474,483 (the “’483 patent”). 1 The Court held a Markman hearing on September 14, 2023.
(C.A. No. 22-1377, D.I. 358 (“Tr. __”).) The matters were reassigned to me in January 2024.
The parties agreed on the construction of five claim terms. 2 In accordance with the parties’
agreement, IT IS HEREBY ORDERED that those terms are construed as follows:
1
2
3

Term
“water-tight seal”; “water-proof seal”
(’783 patent; ’491 patent)
“power savings state” (’352 patent)
“home screen user interface” (’352
patent)

Court
plain and ordinary meaning
plain and ordinary meaning
plain and ordinary meaning

IT IS FURTHER ORDERED that the following disputed claim terms are construed as
follows:
1

2
3
4
5

Term
“biosensor module” (’783 patent, claims
1, 2, 9, 11, 13, 14, 15, and 19; ’491
patent, claims 7–9, and 14–16; ’483
patent, claims 1 and 10)
“transparent” (’054 patent, claim 1; ’491
patent, claims 3 and 14; ’483 patent,
claims 1, 10, 12, 16, and 20)
“formed from a transparent
[material/substrate]” (’054 patent, claim
1; ’491 patent, claim 3)
“carrier member” (’054 patent, claims 1,
3, 4, 6, 8–10, 12, 15–17, and 19)
“application” (’352 patent, claims 1, 9,
and 17)

Court
“module that includes one or more
components that detects and/or measures a
physiological signal”
plain and ordinary meaning
(The Court rejects Masimo’s proposal.)
plain and ordinary meaning
(The Court rejects Masimo’s proposal.)
“structure on which electrodes are
positioned”
The Court rejects Masimo’s proposal.

1

Apple is no longer asserting U.S. Patent No. 10,076,257. (C.A. No. 22-1378, D.I. 698.)

2

(C.A. No. 22-1377, D.I. 273 at 1; C.A. No. 22-1378, D.I. 295 at 5.)
2

6

I.

“side” (’483 patent, claims 1, 3, 5, 10, 16,
and 18)

The parties agreed that no construction is
necessary.

LEGAL STANDARD
The purpose of the claim construction process is to “determin[e] the meaning and scope of

the patent claims asserted to be infringed.” Markman v. Westview Instruments, Inc., 52 F.3d 967,
976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). When the parties have an actual dispute
regarding the proper scope of claim terms, their dispute must be resolved by the judge, not the
jury. Id. at 979. The Court only needs to construe a claim term if there is a dispute over its
meaning, and it only needs to be construed to the extent necessary to resolve the dispute. Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
“[T]here is no magic formula or catechism for conducting claim construction.” Phillips v.
AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005). But there are guiding principles. Id.
“The inquiry into how a person of ordinary skill in the art understands a claim term provides
an objective baseline from which to begin claim interpretation.” Id. at 1313. In some cases, the
ordinary meaning of a claim term, as understood by a person of ordinary skill in the art, is readily
apparent even to a lay person and requires “little more than the application of the widely accepted
meaning of commonly understood words.” Id. at 1314. Where the meaning is not readily apparent,
however, the court may look to “those sources available to the public that show what a person of
skill in the art would have understood disputed claim language to mean.” Innova/Pure Water, Inc.
v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). Those sources include
“the words of the claims themselves, the remainder of the specification, the prosecution history,
and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms,
and the state of the art.” Id.

3

“The claims themselves provide substantial guidance as to the meaning of particular claim
terms.” Phillips, 415 F.3d at 1314. For example, “the context in which a term is used in the
asserted claim can be highly instructive.” Id. Considering other, unasserted, claims can also be
helpful. Id. “For example, the presence of a dependent claim that adds a particular limitation
gives rise to a presumption that the limitation in question is not present in the independent claim.”
Id. at 1314–15.
In addition, the “claims must be read in view of the specification, of which they are a part.”
Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
The specification “is always highly relevant to the claim construction analysis.” Id. (quoting
Vitronics, 90 F.3d at 1582). The specification may contain a special definition given to a claim
term by the patentee, in which case, the patentee’s lexicography governs. Id. at 1316. The
specification may also reveal an intentional disclaimer or disavowal of claim scope. Id. However,
“even when the specification describes only a single embodiment, the claims of the patent will not
be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope
using words or expressions of manifest exclusion or restriction.” Hill-Rom Servs., Inc. v. Stryker
Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal marks omitted).
Courts should also consider the patent’s prosecution history. Phillips, 415 F.3d at 1317.
It may inform “the meaning of the claim language by demonstrating how the inventor understood
the invention and whether the inventor limited the invention in the course of prosecution, making
the claim scope narrower than it would otherwise be.” Id. Statements made by a patentee or patent
owner during inter partes review may also be considered. Aylus Networks, Inc. v. Apple Inc., 856
F.3d 1353, 1362 (Fed. Cir. 2017).

4

In appropriate cases, courts may also consider extrinsic evidence, which “consists of all
evidence external to the patent and prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises.” Markman, 52 F.3d at 980.

For example, dictionaries,

especially technical dictionaries, can be helpful resources during claim construction by providing
insight into commonly accepted meanings of a term to those of skill in the art. Phillips, 415 F.3d
at 1318. Expert testimony can also be useful “to ensure that the court’s understanding of the
technical aspects of the patent is consistent with that of a person of skill in the art, or to establish
that a particular term in the patent or the prior art has a particular meaning in the pertinent field.”
Id.; see also Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331–32 (2015).
II.

DISCUSSION
A.

“biosensor module”

The first Apple utility patent term to be construed is “biosensor module.” It appears in
claims 1, 2, 9, 11, 13, 14, 15, and 19 of the ’783 patent, claims 7–9 and 14–16 of the ’491 patent,
and claims 1 and 10 of the ’483 patent. 3 The ’783, ’491, and ’483 patents share substantially the
same specification.

3

For example, claim 1 of the ’783 patent recites:
1. An electronic device, comprising:
a housing defining a first opening opposite to a second opening;
a band attached to the housing and configured to secure the
electronic device to a user;
a display positioned in the first opening;
a ceramic cover disposed over the second opening and forming a
portion of an exterior surface of the electronic device;
a biosensor module disposed within the second opening below the
ceramic cover; and
a wireless charging receive coil aligned with the second opening and
below the ceramic cover;
wherein:

5

Apple proposes the term be construed as “module that includes one or more components
that detects and/or measures a physiological condition or property.” Masimo proposes “a structure
containing one or more components that sense physiological signals.”
The parties’ proposals use different words. Resolving disputes like this is challenging for
the Court, not because the science is hard, but because it is unclear what the dispute even is or how
its resolution affects the case. The parties’ dispute initially appeared to be about whether each of
the components in the biosensor module had to sense/measure signals, as Masimo’s previous
proposal appeared to suggest. (D.I. 273 at 51–55.) But Masimo later modified its construction to
make clear that the module itself (but not each of the components in the module) needs to sense
signals. (Id. at 55; Tr. 102–04.)
By the time of the Markman hearing, the parties focused on one difference between their
proposals. (I won’t call it a “dispute” because I’m not sure if there is a real dispute over claim
scope.)

Apple’s construction says that the biosensor module “detects and/or measures a

physiological condition or property,” while Masimo’s says that it “sense[s] physiological signals.”
The Court will adopt Apple’s proposal. The specification provides, among other things, that
“the biosensor module 710 may include one or more light sources, one or more photodetectors,
and one or more electrodes or conductive elements that are configured to detect and measure a
physiological condition or property of the user.” ʼ783 patent, 28:19–23 (emphasis added). I’m
not sure if Masimo’s proposal is narrower than Apple’s—at the Markman hearing, the parties
couldn’t agree on which proposal was broader, perhaps demonstrating the inchoate nature of their

the ceramic cover is configured to pass optical signals
generated by the biosensor module; and
the ceramic cover is configured to pass wireless power from
an external charging device to the wireless charging
receive coil.
6

disagreement. But Apple’s proposal is grounded in the language of the specification, so it will be
adopted.
B.

“transparent”

The second Apple utility patent term to be construed is “transparent.” It appears in claim
1 of the ’054 patent, claims 3 and 14 of the ’491 patent, and claims 1, 10, 12, 16, and 20 of the
’483 patent. 4
Apple proposes that the term be construed in accordance with its plain and ordinary
meaning but does not otherwise propose a construction. Masimo originally proposed “able to
transmit all light without diffusion.” (D.I. 273 at 55–61.) In its Sur-Reply, Masimo said it “would

4

For example, claim 1 of the ’483 patent recites:
1. A wearable electronic device comprising:
a housing defining a first opening and a second opening;
a display positioned at least partially within the first opening;
a front cover positioned over the display and defining at least a
portion of a front exterior surface of the wearable electronic
device;
a biosensor module comprising:
a rear cover positioned at least partially within the second
opening and defining an optically transparent
window and a protruding convex surface;
an optical sensor aligned with the optically transparent
window;
a first electrode positioned along a rear surface of the
wearable electronic device;
a second electrode positioned along the rear surface of the
wearable electronic device; and
a third electrode positioned along a side of the wearable electronic
device, wherein:
the wearable electronic device is configured to measure a
first physiological parameter of a wearer using the
optical sensor;
the wearable electronic device is configured to measure a
second physiological parameter using the first
electrode, the second electrode, and the third
electrode.
7

be willing to adopt” a construction that referred to “no appreciable diffusion.” (Id. at 60.) The
night before the Markman hearing, Masimo officially changed its proposal to “able to transmit
light without appreciable diffusion.” (Tr. 112–13.) Accordingly, the present dispute is whether a
“transparent” material must transmit light without “appreciable diffusion.”
Starting with the claims, they don’t shed much light on this dispute. That said, claim 3 of
the ’491 patent specifies that “the transparent substrate comprises one or more of a glass or a
sapphire material.” Apple’s expert, Dr. Arias, explained that a POSITA would understand that
those materials may exhibit diffusion in certain parts of the light spectrum. (C.A. No. 22-1377,
D.I. 271, Apple Ex. 46 ¶ 16.)
That extrinsic evidence was not rebutted by Masimo and is consistent with the
specification, which expressly uses the word “transparent” to refer to material that can pass even
just one wavelength of light. ’054 patent, 13:24–26 (“The carrier 404 may be transparent to all
wavelengths of light or just some wavelengths (and even one wavelength) of light.”).
Masimo relies heavily on a passage in the ʼ054 patent specification that states as follows:
“The surface may be any transparent, semi-transparent, translucent, or opaque surface made out of
an amorphous solid, glass, a crystal or crystalline material (such as sapphire or zirconia), plastic,
or the like.” ʼ054 patent, 5:59–63. Masimo argues that “transparent” as used in the claims
therefore cannot cover things that a POSITA would consider to be “translucent.” But I’m not
persuaded on this record that a POSITA reading that passage in the context of the rest of the patent
would understand it to constrain the scope of the meaning of “transparent,” especially since another
part of the specification refers to materials passing some but not all wavelengths of light as
“transparent.” See ’054 patent, 13:24–26.

8

I also think that Masimo’s “without appreciable diffusion” language only introduces
ambiguity as to how much diffusion is “appreciable” (especially since Masimo first proposed
“appreciable” after the Markman briefing was complete, and there is no evidence that a POSITA
would understand what that means).
Accordingly, the Court declines to adopt Masimo’s proposal, and the jury will be instructed
to give “transparent” its plain and ordinary meaning.
C.

“formed from a transparent [material/substrate]”

The third term is “formed from a transparent [material/substrate].” It appears in claim 1 of
the ’054 patent and claim 3 of the ’491 patent.
Apple proposes that the term be construed in accordance with its plain and ordinary
meaning but does not otherwise propose a construction. Masimo proposed the term be construed
as “made entirely of a transparent [material/substrate],” but it did not brief its proposal or argue it
at the hearing. Accordingly, the Court will not adopt Masimo’s construction. The jury will be
instructed to give the term its plain and ordinary meaning.
D.

“carrier member”

The fourth term is “carrier member.” It appears in claims 1, 3, 4, 6, 8–10, 12, 15–17, and
19 of the ’054 patent. 5

5

For example, claim 1 of the ’054 patent recites:
1. An electronic watch comprising:
a housing member;
a display at least partially enclosed by the housing member;
a carrier assembly coupled to the housing member and comprising:
a carrier member formed from a transparent material;
a first electrode positioned on the carrier member, operably
coupled to a processor and configured to detect a first
voltage; and

9

In the Joint Claim Construction Brief, Apple proposed that the term be construed as
“structure that can support the electrodes, or on which the electrodes can be formed or attached,”
and Masimo proposed “structure on which electrodes are positioned.” (D.I. 273 at 70.) In light of
the fact that claim 1 otherwise requires electrodes to be positioned on the carrier member as in
Masimo’s proposal, I asked Apple at the hearing whether it disagrees with Masimo’s proposal for
any reason related to an actual disputed issue in the case. Apple subsequently agreed that it didn’t
have an issue with Masimo’s proposed construction. (Tr. 120:22–121:14.)
Accordingly, the term “carrier member” will be construed as “structure on which electrodes
are positioned.”

a second electrode positioned on the carrier member,
operably coupled to the processor and configured to
detect a second voltage, the first and second
electrodes at least partially surrounding a first region
of the carrier member and a second region of the
carrier member;
a light emitter positioned below the first region of the carrier
member;
a light receiver positioned below the second region of the carrier
member and configured to receive light reflected from a
wrist;
a third electrode couped to the housing member, operably coupled
to the processor, and configured to detect a third voltage; and
the processor positioned within the electronic watch and configured
to determine an electrocardiogram using the first voltage, the
second voltage, and the third voltage.

10

E.

“application”

The fifth term is “application.” It appears in independent claims 1, 9, and 17 of the ’352
patent. 6
6

For example, claim 1 of the ʼ352 patent recites:
1. A method, comprising:
at [sic] computer system that is in communication with a display
generation component and one or more input devices:
while the computer system is in a power saving state,
detecting an input that meets display-waking criteria;
in response to detecting the input that meets the displaywaking criteria, displaying, via the display
generation component, a wake screen user interface;
while displaying the wake screen user interface, detecting a
first input that is directed to a portion of the wake
screen user interface and includes first movement;
and
in response to detecting the first input that is directed to the
portion of the wake screen user interface:
in accordance with a determination that the first input
meets first criteria, wherein the first criteria
require the first movement to be in a first
direction in order for the first criteria to be
met:
displaying of a home screen user interface
that is different from the wake screen
user interface, wherein the home
screen user interface includes a
plurality of application icons
corresponding
to
different
applications, and wherein a respective
application icon of the plurality of
application icons, when selected,
causes display of an application
corresponding to the respective
application icon; and
in accordance with a determination that the first input
meets second criteria different from the first
criteria, wherein the second criteria require
the first movement to be in a second direction
that is different from the first direction in
order for the second criteria to be met:

11

Apple proposes that the term be construed in accordance with its plain and ordinary
meaning but does not otherwise propose a construction. Masimo proposes “a program that, in
response to user commands, performs a task beyond: (a) device control, (b) device status
indication, or (c) another task related to the internal function of the device itself.” (D.I. 273 at 76.)
Apple contends that Masimo’s proposal “just invites disputes regarding what is ‘a task
beyond’ ‘device control’ or ‘device status indication’ or—particularly problematic—what
Masimo’s construction refers to as some other unspecified ‘task related to the internal function of
the device itself.’” (Id. at 76–77.) That point is well taken, particularly since Masimo doesn’t cite
to anything in the specification that might shed light on what a “task related to the internal function
of the device itself” refers to. Even more persuasive is Apple’s argument that “Masimo’s
construction improperly reads out ‘applications’ explicitly disclosed in the specification.” (Id. at
77.) In particular, the specification refers to a “settings application . . . which provides access to
settings for device 100 and its various applications.” ʼ352 patent, 30:65–67. Accordingly, the
Court will not adopt Masimo’s proposed construction.

displaying a widget screen user interface that
is different from the wake screen user
interface and the home screen user
interface, wherein the widget screen
user interface includes a plurality of
user interface objects corresponding
to different applications, wherein a
respective user interface object of the
plurality of user interface objects
contains application content from an
application corresponding to the
respective user interface object, and
when selected, causes display of an
application corresponding to the
respective user interface object.
12

Masimo points out that a POSITA would understand there to be a difference between an
“application,” as used in the claim, and an “indicator,” such as a battery status indicator or a
Bluetooth indicator. That may be true, but Masimo’s proposed construction excludes more than
just “indicators,” it also excludes things that the specification expressly refers to as “applications.”
Although the record is not entirely clear on this point, Apple does not appear to dispute
that an “application” as used in the claims has to be “a program” and that it must “perform[] a
task” “in response to user commands.” Nor does Apple appear to dispute that an “indicator” as
used in the patent is not necessarily an “application.”
Further complicating the proceedings is Masimo’s recent “Motion to Supplement the Claim
Construction Record,” which asks the Court to “supplement the claim-construction record to
include relevant portions of the prosecution history” of the “recently concluded IPR” of the ʼ352
patent. (C.A. No. 22-1378, D.I. 683 at 1.) According to Masimo, Apple told the PTAB that the
“widgets” of a prior art reference were not “applications,” which “undermines [Apple’s] position
that the Court should not construe ‘application.’” (Id. at 2.)

The deadline has not yet passed for

Apple to respond to Masimo’s “motion.”
All I will say at this time is that the Court will not adopt Masimo’s current proposal because
it is inconsistent with the specification. Should there be any remaining actual disputes as to the
proper scope of the term that the law requires the Court to resolve, the Court will resolve them
before the case goes to the jury.
F.

“side”

The sixth Apple utility patent term to be construed is “side.” It appears in claims 1, 3, 5,
10, 16, and 18 of the ’483 patent. In the Joint Claim Construction Brief, Apple proposed that the
term be construed in accordance with its plain and ordinary meaning but did not otherwise propose

13

a construction. Masimo proposed “surface different from the front surface or the back surface.”
(D.I. 273 at 82.)
It was revealed at the Markman hearing that there was no actual dispute between the parties
that would require construction of this term. (Tr. 130:2–131:12.) Accordingly, the Court declines
to construe the term “side.”

14