Sotera Wireless v. Masimo
Full2020-01019 · USRE47353E
In plain English: The Board reviewed these claims and cancelled all of them.
How to read this page: start with the Case brief above, use (the small numbered links) to open the exact source page they cite, then use Reference material further down for claim-by-claim and ground-by-ground detail.
All challenged claims cancelled
The Board cancelled every challenged claim of Masimo's alarm-suspend patent - twenty-five claims on six grounds in, twenty-five cancelled out.[2][24]
Masimo sues Sotera in the Southern District of California June 12, 2019·Sotera petitions for review of claims 1-25 on six grounds May 29, 2020·Board institutes on all claims and all grounds, crediting Sotera's district-court stipulation December 1, 2020·Oral hearing before the Board September 8, 2021·Final written decision: all 25 claims unpatentable November 19, 2021
- The RE353 patent is about silencing patient-monitor alarms - for a length of time that depends on which vital sign is alarming.[9][10]
- Sotera filed six grounds in two families - one for each side of a claim-construction fight - and the Board instituted on all of them.[39][40][38][13]
- One construction ruling split the petition: the claims require suspending alarms that have already activated - so the Saidara grounds carried the case and the Baker grounds fell away.[15][14][19]
- The written decision closed the trial phase, pointing any appeal to the Federal Circuit's notice-and-service rules.[24][25]
This is the case that made the stipulation a tool: promise the district court you will drop the same invalidity grounds there, and the overlap factor swings hard toward institution.[33][36]
- PTAB Adds 314(a) Precedent to Clarify Value of Estoppel Stipulations
Patents Post-Grant (Ropes & Gray) · December 18, 2020
- PTAB Precedential: Decisions Against Exercising Discretion to Institute
IPWatchdog · December 21, 2020
- Did Sotera Stipulations Solve the Fintiv Criticisms?
Chicago-Kent Journal of Intellectual Property
Reference material
Claim-by-claim and ground-by-ground records underlying the brief above.
| Claim | Ground 1: §103 — Baker-1 US5865736 | Ground 2: §103 — Baker-1 US5865736, Batchelder US2009/0247851 | Ground 3: §103 — Baker-1 US5865736, Batchelder US2009/0247851, Baker-2 US8792949 | Ground 4: §103 — Baker-1 US5865736, Batchelder US2009/0247851, Baker-2 US8792949, Hickle US2003/0135087 | Ground 5: §103 — Saidara US2005/0038332, Malangi NJIT thesis 2003 | Ground 6: §103 — Saidara US2005/0038332, Malangi NJIT thesis 2003, Hickle US2003/0135087 |
|---|---|---|---|---|---|---|
| 1 | Not reached[1] | Not reached[1] | Not reached[1] | — | Unpatentable[2] | — |
| 2 | — | Not reached[1] | Not reached[1] | — | Unpatentable[2] | — |
| 3 | — | — | — | Not reached[1] | — | Unpatentable[3] |
| 4 | — | — | — | Not reached[1] | — | Unpatentable[3] |
| 5 | — | — | — | Not reached[1] | — | Unpatentable[3] |
| 6 | Not reached[1] | Not reached[1] | Not reached[1] | — | Unpatentable[2] | — |
| 7 | Not reached[1] | Not reached[1] | Not reached[1] | — | Unpatentable[2] | — |
| 8 | Not reached[1] | Not reached[1] | Not reached[1] | — | Unpatentable[2] | — |
| 9 | — | Not reached[1] | Not reached[1] | — | Unpatentable[2] | — |
| 10 | — | — | — | Not reached[1] | — | Unpatentable[3] |
| 11 | — | — | — | Not reached[1] | — | Unpatentable[3] |
| 12 | — | — | — | Not reached[1] | — | Unpatentable[3] |
| 13 | Not reached[1] | Not reached[1] | Not reached[1] | — | Unpatentable[2] | — |
| 14 | Not reached[1] | Not reached[1] | Not reached[1] | — | Unpatentable[2] | Unpatentable[3] |
| 15 | — | Not reached[1] | Not reached[1] | — | Unpatentable[2] | — |
| 16 | — | — | — | Not reached[1] | — | Unpatentable[3] |
| 17 | — | — | — | Not reached[1] | — | Unpatentable[3] |
| 18 | Not reached[1] | Not reached[1] | Not reached[1] | — | Unpatentable[2] | — |
| 19 | Not reached[1] | Not reached[1] | Not reached[1] | — | Unpatentable[2] | — |
| 20 | — | Not reached[1] | Not reached[1] | — | Unpatentable[2] | — |
| 21 | — | Not reached[1] | Not reached[1] | — | Unpatentable[2] | — |
| 22 | — | Not reached[1] | Not reached[1] | — | Unpatentable[2] | — |
| 23 | Not reached[1] | Not reached[1] | Not reached[1] | — | Unpatentable[2] | — |
| 24 | Not reached[1] | Not reached[1] | Not reached[1] | — | Unpatentable[2] | Unpatentable[3] |
| 25 | Not reached[1] | Not reached[1] | Not reached[1] | — | Unpatentable[2] | Not reached[4] |
- [1] Paper 41 at 60; not reached - Board's claim construction resolved the dispute and claims found unpatentable over the Saidara grounds (supra sec. II.F)
- [2] Paper 41 at 33-58 (Section II.D)
- [3] Paper 41 at 58-59 (Section II.E). FWD finds claim 24 (not 25) under this ground; institution table (Paper 12 at 11) listed claim 25 - discrepancy disclosed
- [4] Paper 41 at 58-59; instituted per Paper 12 table but FWD sec. II.E addressed claim 24 instead of 25; claim 25 shown unpatentable under Ground 5 (Saidara+Malangi)
No institution-stage grounds recorded yet.
- Paper 1Paper 1 · Petition
- USRE47353Other
- Paper 12Paper 12 · Institution Decision
- Paper 41 (precedential as to Sec. II.A)Paper 41 · Final Written Decision