Building an Unbreakable Tech IP Portfolio After AliveCor

By Babak Akhlaghi on March 21, 2025. There is no such thing as a truly defensible patent portfolio. This hard truth became painfully evident in the recent AliveCor v. Apple case, where seemingly strong patents crumbled under scrutiny. AliveCor, Inc. v. Apple Inc., Case Nos. 2023-1512, 2023-1513, 2023-1514 (Fed. Cir. March 7, 2025) (Hughes, Linn, Stark, JJ.). This case serves as a sobering reminder that the foundations of intellectual property strategy need serious reconsideration.

Patent portfolios are either strong or weak—there is no middle ground. A strong portfolio achieves the delicate balance of broad coverage while remaining narrowly focused enough to withstand prior art challenges. Weak portfolios fail on either end: too narrow to provide market advantage or too broad to survive legal scrutiny.

The AliveCor Case: A Cautionary Tale

The AliveCor case reveals a fundamental misconception about patents. Many believe that once issued, patents stand unchallenged. This couldn't be further from reality. An issued patent can be challenged through multiple avenues with varying standards of proof.

In this high-profile dispute, AliveCor sued Apple for infringing on three heart monitoring patents related to their smartwatch technology. They initially brought the case before the International Trade Commission (ITC) to block importation of allegedly infringing Apple Watches. While the ITC initially ruled in AliveCor's favor, they suspended the import ban pending the outcome of Apple's challenge before the USPTO's Patent Trial and Appeal Board.

At the USPTO, Apple successfully convinced the Board that AliveCor's patents should never have been issued, as they were obvious combinations of existing technology. AliveCor appealed to the Federal Circuit, but the Court upheld the Board's decision.

AliveCor's critical mistake? Failing to present evidence of secondary considerations—including industry praise and commercial success—that had proven persuasive in the ITC proceedings. This oversight proved fatal to their case, as such evidence can powerfully rebut obviousness claims.

Quality Over Quantity: The Strategic Shift

Companies need to fundamentally rethink their approach to patent portfolios. The emphasis should be on quantity not quality. Having a large patent portfolio might look impressive—we all like big numbers—but it's pointless if those patents won't withstand scrutiny.

I've seen this mistake repeatedly: companies celebrate patent count milestones without considering defensibility. This approach is particularly dangerous for smaller companies with limited resources.

Patentability searches, while not required by law, should become standard practice before filing applications. These searches help identify potential landmines and allow attorneys to focus applications on stronger positions. The upfront cost pales in comparison to the expense of litigation over an invalid patent.

Technical Specificity: The AliveCor Lesson

The AliveCor case offers a specific technical lesson: describe key features with specificity and avoid broad general statements. Some of AliveCor's invalidated claims related to using machine learning to identify heart conditions. These claims were described at such a high level that demonstrating their obviousness required merely showing any machine learning application in heart monitoring—a low bar indeed.

How can companies balance specificity with breadth? One effective approach is strategic dependent claim drafting. Key features should be described through several dependent claims covering implementations from broadest to narrowest (but still commercially valuable). This layered structure creates multiple fallback positions if broader claims face challenges.

The Strategic Value of IP Litigation

Despite AliveCor's ultimate loss, their case demonstrates why companies should protect innovations through patents. When done correctly, patents can be the only asset helping smaller companies retain market exclusivity for their innovations.

Consider Masimo v. Apple, where Masimo successfully banned importation of Apple Watches that infringed on their blood oxygen measurement patents. Apple had to remove this feature to resume importation. Such victories against tech giants can create significant licensing opportunities and name recognition for smaller players.

Few people had heard of AliveCor or Masimo before these high-profile cases. Though AliveCor's win proved short-lived, both companies gained substantial visibility through their patent enforcement actions.

Defensive Publication: The Underutilized Strategy

Defensive publication deserves a place in modern IP strategy, particularly for companies with limited budgets. Publications can quickly establish prior art, preventing competitors from patenting the same ideas.

This approach works effectively alongside traditional patenting, especially for less important innovations that don't require worldwide protection. Companies can publish quickly to establish prior art, then file patent applications within the one-year grace period (in jurisdictions that allow this).

This strategy recognizes the reality that drafting and filing patent applications takes months, while establishing defensive publications can happen much faster.

Secondary Considerations: Building Them Into Strategy

AliveCor's failure to present secondary considerations at the USPTO highlights a critical strategic oversight. Companies should integrate these considerations from the beginning rather than scrambling during litigation.

Evidence like long-felt needs and failures by others can be captured directly in patent specifications by thoroughly describing technical problems and their solutions. This approach makes such considerations more persuasive to examiners and judges compared to attorney arguments raised in response to obviousness rejections.

Other secondary considerations unavailable at filing—like commercial success or industry recognition—should be meticulously documented as they emerge and incorporated into continuation applications where possible.

Beyond Patents: Complementary Protection

Trade secrets offer another effective strategy for protecting innovations, with distinct advantages over patents. They involve minimal costs and have no expiration date, unlike patents' 20-year term. Protecting innovations under trade secret law is significantly cheaper than the patent process, which requires expensive filing and prosecution.

The Coca-Cola formula remains one of the world's best-known trade secrets, protected for over a century. However, trade secrets have a significant limitation: they're ineffective for innovations that can be easily reverse-engineered. For such technologies, patent protection remains the better option.

Aligning IP with Regulatory Frameworks

Companies in heavily regulated fields like healthcare must continually monitor regulatory trends and align their IP portfolios accordingly. They should prioritize protecting healthcare innovations that impact consumer health and safety, ensuring core technologies meet regulatory requirements.

Both AliveCor and Masimo represent valuable technologies directly related to consumer health—heart monitoring and blood oxygen measurement, respectively. Innovations in digital healthcare continue to dominate consumer electronics shows like CES, with AI implementation and data personalization emerging as dominant trends.

Patenting AI in Healthcare After AliveCor

AI-related innovations face particular patent eligibility challenges under current laws, though I see promising shifts on the horizon for software innovations. Regardless, AI innovations remain patent-eligible if properly described and claimed.

When patenting AI and machine learning innovations, specifications should clearly define both technical problems and solutions. Claims should describe the technical "how" from a computer standpoint rather than using broad functional statements. This approach demonstrates technological improvement, helping applications survive eligibility challenges at the USPTO and in courts.

David vs. Goliath: Strategies for Smaller Companies

Smaller companies facing potential patent conflicts with tech giants should take several preemptive actions before embarking on expensive litigation that exposes their patents to validity challenges.

First, maintain pending continuation applications for strategic patents. This approach allows adjustment of claim language to avoid design-arounds—particularly useful for companies like Masimo as Apple likely seeks to work around their patents.

Second, consider strategic reexamination or reissue proceedings when new prior art emerges after prosecution. If the examiner determines the new art doesn't raise substantial patentability questions, the patent emerges stronger. Even if examination reopens, addressing concerns through amendment strengthens the patent's position in future disputes.

Finally, create a clear prosecution record that includes all arguments and secondary considerations. This comprehensive record helps minimize the likelihood of reopened prosecution by third parties, as judges can clearly identify key inventive features and their patentability over prior art.

Building the Future: Legislative Hope

While the current system favors larger companies with extensive resources, proposed legislation may rebalance the scales for smaller innovators. Two significant bills could reshape the patent landscape: the PREVAIL Act and the Patent Eligibility Restoration Act (PERA).

The PREVAIL Act, narrowly approved by the Senate Judiciary Committee, would make challenging issued patents before the PTAB significantly more difficult. It strengthens patent validity standards by requiring "clear and convincing evidence" for invalidation—aligning PTAB with federal court standards. It also restricts challenges to parties actually sued or threatened with infringement suits and curbs serial petitions.

Meanwhile, PERA aims to establish clearer guidelines for patentable subject matter by restricting ineligible categories to a limited set: mathematical formulas not part of useful processes, mental processes performed entirely in the human mind, and unmodified human genes as they exist in the body. This would particularly benefit software innovations by removing the current ambiguity around patent eligibility.

The AliveCor case demonstrates both the promise and peril of patent protection in today's tech landscape. By focusing on quality over quantity, embracing strategic dependent claiming, conducting thorough prior art searches, documenting secondary considerations, and staying alert to legislative changes, companies can build patent portfolios that actually deliver on their promise of protection—even against the largest competitors.

The path to truly robust IP protection doesn't lie in accumulating patents like trophies, but in strategically crafting each one to withstand the inevitable challenges that success will attract.