Earlier this month the Federal Circuit issued its opinion in AliveCor, Inc. v. Apple, Inc., a patent case that we have been following because it attracted an amicus brief. In this case, the Federal Circuit reviewed three written decisions of the Patent Trial and Appeal Board in related inter partes review proceedings. The PTAB found all claims of three patents unpatentable over certain asserted prior art. AliveCor challenged the PTAB’s findings, including by arguing that the IPR petitioner, Apple, violated its discovery obligations. The Federal Circuit, in an opinion authored by Judge Stark and joined by Judges Hughes and Linn, affirmed the PTAB’s obviousness determination and declined to address AliveCor’s discovery challenge because it failed to raise the issue at the PTAB. This is our opinion summary.
Judge Stark began by outlining the procedural and factual background of the case:
The Challenged Patents belong to a family of patents related to systems and methods for measuring and analyzing physiological data to detect cardiac arrhythmias. . . . The . . . patents share a common specification and describe ‘a method for monitoring a subject to determine when to record an electrocardiogram (ECG). . . .’ An embodiment of the Challenged Patents involves the use of a smart watch configured with a heart rate monitor . . ., a photoplethysmography (‘PPG’) sensor . . . . [T]he PPG sensor continuously transmits heart rate information to a smartphone, which then “analyze[s] the heart rate information” for irregularities. . . . ‘[W]hen an irregularity is determined,’ the user is notified that an electrocardiogram (‘ECG’) ‘should be recorded. . . .’
The appeal . . . focuses on two features of the claims of the Challenged Patents: the use of machine learning to detect arrhythmias, and the step of confirming the presence of arrhythmias. . . . Apple . . . contend[s] . . . that the machine learning and confirmation limitations . . . were rendered obvious by the teachings of certain combinations of prior art references. . . . In its Final Written Decisions, the [PTAB] agreed with Apple that [prior art] rendered obvious the machine learning claims of the . . . patent[s]. . . . As for the ‘confirming’ limitation, . . . requiring the confirmation of arrhythmias using ECG measurements, the [PTAB] credited the [expert] testimony . . . and found that [prior art’s] teachings would have led ‘one of ordinary skill in the art [to] have understood that determining whether “[t]he irregular heart condition has stopped,” and notifying the user,’ both of which [prior art] does, ‘requires, as a predicate, that the software program confirm the presence of arrhythmia using the ECG data. . . .’ Thus, the Board held that all claims of the Challenged Patents were unpatentable as obvious.
During the IPR proceedings, the validity of the Challenged Patents was also being litigated in parallel proceedings before the International Trade Commission . . . . AliveCor’s counsel . . . requested Apple’s consent to introduce . . . evidence . . . that had been produced by Apple in the ITC investigation. . . . AliveCor made no effort to inform the [PTAB] of the ALJ’s findings with respect to the evidence of copying that had been presented in the ITC, and it did not ask the [PTAB] to order Apple to produce that same evidence as discovery in the IPRs.
Before beginning his analysis, Judge Stark explained that a patent is “invalid for obviousness ‘if the differences between the claimed invention and the prior art . . . would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.'” Judge Stark further explained that obviousness is reviewed “de novo with underlying factual findings” reviewed “for substantial evidence.” Finally, Judge Stark highlighted that, under the Administrative Procedures Act, the panel would “hold unlawful and set aside agency action, findings, and conclusions found to be . . . arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.”
Next, Judge Stark outlined AliveCor’s “three main issues on appeal.” According to AliveCor, (1) the PTAB “erred in finding the machine learning claims were obvious based” on a combination of prior art references, (2) the PTAB erred in finding that prior art “rendered the ‘confirming’ step obvious,” and (3) Apple “violated its discovery obligations by failing to produce secondary consideration evidence from parallel ITC proceeding.”
Beginning his analysis, Judge Stark determined that the PTAB’s findings that prior art references “render obvious the machine learning steps recited in dependent claims” were “supported by substantial evidence.” Judge Stark, rejecting AliveCor’s argument that “restrict each reference’s teachings to the particular way it implements machine learning,” explained that such a construction “would improperly fail to read these references for all that they disclose.” There was, he continued, “nothing improper with the [PTAB’s] determination that such an artisan would have found it obvious to use machine learning in connection with PPG data, even if this precise use is not expressly disclosed” in the prior art references.
Turning to AliveCor’s second contention, Judge Stark explained that “[s]ubstantial evidence also supports the [PTAB’s] determination” that the prior art teaches “the step of confirming arrhythmias using ECG measurements after a potential arrhythmia is detected using PPG.” Judge Stark described what the prior art teaches. He explained it collects “a patient’s ECG data” and searched for correlations within that data between PPG and ECG signals, constantly “modifying existing detection parameters, so as to enhance detection algorithms of the irregular heart conditions.” After highlighting that the correlation search “can be performed in real-time” by measuring PPG, Judge Stark reasoned that the PTAB “reasonably read these portions” of the prior art as “teaching a feedback loop in which collected ECG data is used to update the detection parameters used to identify irregularities from incoming PPG data in real time.” Moreover, he concluded, the PTAB “reasonably read” prior art as teaching that blood oxygen saturation “measurement and ECG measurement ‘are continued and performed in parallel’ until the system determines that the irregular heart condition has stopped.”
Finally, turning to AliveCor’s request “to vacate the [PTAB’s] decisions due to Apple’s failure to comply with what AliveCor characterizes as the self-executing discovery obligations of an IPR petitioner,” Judge Stark declined to do so. According to Judge Stark, “AliveCor forfeited its argument by failing to raise it with the [PTAB].” While AliveCor contended that “Apple produced evidence . . . in the parallel proceedings that supported a finding of nonobviousness,” Judge Stark declined to address “AliveCor’s contention because it failed to preserve the issue for appellate review.” Although it is not “AliveCor’s responsibility to ensure that APple meets its own discovery obligations,” he noted, it is “AliveCor’s responsibility to present issues to the [PTAB] . . . and preserve them, if it wants an opportunity to argue them on appeal.”
As a result of Judge Stark’s analysis, the Federal Circuit affirmed the PTAB’s judgment that AliveCor’s claims of its three patents were unpatentable based on the asserted art.