In a significant victory, Apple has successfully challenged patents at the center of a high-profile dispute with medical device company AliveCor.
The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, or PTAB, on Tuesday ruled that three AliveCor patents covering heart monitoring technologies for wearable devices were unpatentable. AliveCor alleged in federal court and before the International Trade Commission that Apple had copied the technologies with its Apple Watch, and over the summer an ITC judge found that Apple had infringed on two of three patents AliveCor asserted in its complaint.
The decision could disrupt the proceedings at the ITC, which is set to decide by December 12 whether there ought to be an exclusion order, or import ban, on infringing Apple Watches. It’s likely that Apple will swiftly submit the PTAB rulings to the ITC for consideration in its decision. According to Christine Lehman, a partner at Reichman Jorgensen Lehman & Feldberg, the ITC may still agree that there is a violation, but may suspend a ban pending appeals. “Both the ITC case and the PTAB cases will go to the Federal Circuit – and that court will have to sort it all out,” she said.
An Apple spokesperson said the company appreciated PTAB’s “careful consideration” of the patents found to be invalid, and added that “Apple’s teams work tirelessly to create products and services that empower users, including the industry-leading health, wellness and safety features we independently developed and incorporated into Apple Watch.”
Through a spokesperson, AliveCor said it is “deeply disappointed and strongly disagrees” with the PTAB decision and that it will appeal. The company said it looks forward to the ITC’s final determination. “We will continue to vigorously defend and fight to protect our patents for the sake of our customers,” the spokesperson said.
The cases concern technologies that AliveCor originally released as part of the KardiaBand in 2017. The KardiaBand was a high-tech watchband that allowed the Apple Watch to monitor a user’s heart rhythm for abnormalities that might indicate a heart condition. The band also came with built-in electrocardiogram capabilities that allowed the device to take a snapshot of the heart rhythm that could be used to confirm a diagnosis. During development, AliveCor founder and chief medical officer Dave Albert demonstrated the technologies to Apple executives, and Apple released very similar technologies in 2018.
Though Apple challenged the patents before the ITC, a judge nevertheless found some of AliveCor’s claims valid.
In December 2021, Apple challenged the validity of the asserted patents before the PTAB, which ruled all three were unpatentable because they were obvious in light of previous advances. One commonly cited patent across the PTAB decisions is for “Pulse oximetry measurement triggering ECG measurement.”
While the PTAB’s decision may put a damper on AliveCor’s patent infringement complaints, the company has also filed a pending federal antitrust case against Apple. Apple, for its part, in early December filed a patent complaint against AliveCor. Apple has also challenged several other AliveCor patents at the PTAB.