AliveCor, Inc. v. Apple, Inc., No. 23-1512 (Fed. Cir. 2025) – On March 7, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review (“IPR”) decisions invalidating all claims of three AliveCor patents. Previously, the International Trade Commission (“ITC”) had found certain Apple Watch products infringe two of the three patents.
Background
AliveCor is a technology company that develops “AI-enabled, machine learning-powered ECG sensors” compatible with consumer mobile devices for remote heart rhythm monitoring. AliveCor owns the three patents at issue, U.S. Patent Nos. 9,572,499 (“the ’499 patent”), 10,595,731 (“the ’731 patent”), and 10,638,941 (“the ’941 patent,” together with the ’499 and ’731 patents, the “challenged patents”). The patents relate to machine learning in the determination of arrythmia, which is a heartbeat irregularity threatening hundreds and thousands of lives.
In April 2021, AliveCor accused Apple of selling and importing Apple watches infringing the challenged patents in the ITC. See Certain Wearable Electronic Devices, Inv. No. 337-TA-1266. Two months later, Apple filed IPR petitions challenging validity of all claims of the three patents. The Board instituted the IPRs in December 2021. As a result, AliveCor and Apple had been litigating the challenged patents’ validity in parallel before the ITC and the Board, with the ITC case leading slightly in time.
During discovery in the ITC case, Apple produced some non-public documents that AliveCor believes demonstrate secondary considerations of non-obviousness. Shortly after the Board’s institution of the IPRs, AliveCor’s counsel reached out to Apple’s counsel to negotiate discovery regarding the Apple documents for purposes of the IPR. Apple rejected AliveCor’s request as a violation of the protective order entered in the ITC case. None of the parties apprised the Board of the issue. Nor did AliveCor ask the ITC for cross use permission.
The ITC administrative law judge’s (“ALJ”) Initial Decision relied on some of the secondary considerations documents Apple produced, to reject Apple’s obviousness contentions and uphold the validity of certain asserted claims from the challenged patents. About three months after the ALJ’s Initial Decision had become publicly available, the Board held its consolidated IPR hearings. Subsequently, the Board found all claims of the challenged patents invalid as obvious. AliveCor appealed.
Issue
AliveCor raised three issues on appeal. The first two issues concern the Board’s finding of obviousness over two key claim limitations. The third concerns whether Apple violated its discovery obligations by failing to produce the non-public documents relating to secondary considerations in the IPRs.
Holdings and Reasoning
Regarding the first two issues, the Federal Circuit reviewed the Board’s obviousness analysis and concluded that substantial evidence supported the Board’s findings.
Regarding the third issue, the Federal Circuit refused to delve deeply into the discovery obligations an IPR litigant bears or to address the merits of AliveCor’s argument, because AliveCor had forfeited the argument by failing to raise it with the Board. The Federal Circuit stressed that to preserve an issue for appeal, parties must timely raise it with the tribunal. In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) (“[A] position not presented in the tribunal under review will not be considered on appeal in the absence of exceptional circumstances.”). The Federal Circuit noted that AliveCor raised its discovery violation argument for the first time on appeal. As AliveCor’s counsel admitted, AliveCor never expressed to the Board its position that Apple’s was obligated to produce the secondary consideration documents. While AliveCor sought to excuse its choice not to raise the discovery issue by pointing to Apple’s rejection of AliveCor’s discovery request, the Federal Circuit found that Apple’s posture did not relive AliveCor of its obligation to present its concerns to the Board or seek relief from the Board. The Federal Circuit also refused to find exceptional circumstances here because AliveCor never told the Board of the purported discovery violation, asked the Board to allow AliveCor to introduce the evidence form the ITC in the IPR, or directed the Board to the publicly available Initial Decision.