UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 9,651,533
`
`IPR Case No.: IPR2019-00913
`
`______________
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.107
`
`
`
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`

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`Case No.: IPR2019-00913
`Patent No.: 9,651,533
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`Atty. Dkt. No.: OMSC0110IPR1
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`TABLE OF CONTENTS
`
`Table of Authorities ................................................................................................. iv
`
`List of Exhibits ......................................................................................................... vi
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The Board should deny the Petition on procedural grounds under 35
`U.S.C. § 314 and § 325(d) ............................................................................... 3
`
`A.
`
`B.
`
`C.
`
`The District Court will resolve the validity arguments before
`any IPR trial concludes ......................................................................... 5
`Petitioner does not identify any material differences between
`the Petition and the Parallel ‘916 Petition ............................................. 6
`The Petition presents arguments that are “substantially similar”
`to those already considered and overcome during prosecution ..........10
`
`III. Claim Construction ........................................................................................14
`
`A.
`B.
`C.
`
`“Beam” and “optical beam” ................................................................15
`“Plurality of lenses”.............................................................................16
`“Pulse rate” ..........................................................................................17
`
`IV. The ‘533 Patent ..............................................................................................18
`
`A.
`
`B.
`
`The ‘533 Patent discloses innovative systems for making
`accurate non-invasive physiological measurements ...........................18
`Priority Date ........................................................................................21
`
`V.
`
`The Board should deny the Petition because Apple has failed to
`establish a reasonable likelihood of prevailing as to any claim ....................22
`
`A. Ground 1: Claims 5, 7-10, 13, 15-17 are not obvious over
`LeBoeuf/Valencell-093 and LeBoeuf/Valencell-099 .........................22
`1.
`The combination of LeBoeuf/Valencell-093 and
`LeBoeuf/Valencell-099 does not teach the Increasing
`Limitation: a “light source configured to increase signal-
`to-noise ratio [A] by increasing a light intensity from at
`least one of the plurality of semiconductor sources and
`[B] by increasing a pulse rate of at least one of the
`plurality of semiconductor sources” .........................................22
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`i
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`Atty. Dkt. No.: OMSC0110IPR1
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`a.
`
`b.
`
`2.
`
`3.
`
`2.
`
`The combination of LeBoeuf/Valencell-093 and
`LeBoeuf/Valencell-099 does not teach a “light
`source configured to increase signal-to-noise ratio
`by increasing a light intensity from at least one of
`the plurality of semiconductor sources” .........................23
`The combination of LeBoeuf/Valencell-093 and
`LeBoeuf/Valencell-099 does not teach a “light
`source configured to increase signal-to-noise ratio
`. . . by increasing a pulse rate of at least one of the
`plurality of semiconductor sources” ...............................25
`The combination of LeBoeuf/Valencell-093 and
`LeBoeuf/Valencell-099 does not teach the
`Synchronization Limitation: the “receiver is configured
`to be synchronized to pulses of the light source” .....................27
`The combination of LeBoeuf/Valencell-093 and
`LeBoeuf/Valencell-099 does not teach the Arrangement
`Limitation: a “receiver” arranged “such that the receiver
`receives a first signal from the first light emitting diode
`and a second signal from the second light emitting diode” ......31
`Ground 2: Claims 5, 7-10, 13, 15-17 are not obvious over
`LeBoeuf/Valencell-093, LeBoeuf/Valencell-099, and Carlson ..........34
`1.
`The combination of LeBoeuf/Valencell-093,
`LeBoeuf/Valencell-099, and Carlson does not teach: the
`“increasing a light intensity” portion of the Increasing
`Limitation, the Synchronization Limitation, nor the
`Arrangement Limitation ............................................................34
`The combination of LeBoeuf/Valencell-093,
`LeBoeuf/Valencell-099, and Carlson does not teach the
`“increasing a pulse rate” portion of the Increasing
`Limitation ..................................................................................35
`Ground 3: Claims 8-9 and 16-17 are not obvious over
`LeBoeuf/Valencell-093, LeBoeuf/Valencell-099, and
`Mannheimer .........................................................................................37
`1.
`The combination of LeBoeuf/Valencell-093,
`LeBoeuf/Valencell-099, and Mannheimer does not teach
`the Increasing Limitation nor the Synchronization
`Limitation ..................................................................................37
`
`B.
`
`C.
`
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`2.
`
`A POSA would not have been motivated to combine
`LeBoeuf/Valencell-093, LeBoeuf/Valencell-099, and
`Mannheimer ..............................................................................38
`
`VI. Conclusion .....................................................................................................42
`
`Certificate of Service ...............................................................................................43
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 .......................................44
`
`
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`iii
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`Case No.: IPR2019-00913
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`
`
`Table of Authorities
`
`Cases
`
`Adidas AG v. Nike, Inc.,
`
`IPR2016-00922, Paper 21, 36 (PTAB Oct. 19, 2017) ...................................41
`
`Becton Dickenson & Co. v. B. Braun Melsungen AG,
`
`IPR2017-01586, slip op. 17-18 (Paper 8) (PTAB Dec. 15, 2017) ................11
`
`Comcast Cable Comms. v. Rovi Guides, Inc.,
`
`IPR2019-00232, Paper 14 at 12-13 (PTAB May 20, 2019) ............................ 7
`
`Cuozzo Speed Techs., LLC v. Lee,
`
`136 S.Ct. 2131 (2016) ...................................................................................... 3
`
`General Plastic Co., Ltd. v. Canon Kabushiki Kaisha,
`
`IPR2016-01357, slip. op. 16-17 (Paper 19) (PTAB Sept. 6, 2017) ..............10
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`
`688 F.3d 1342 (Fed. Cir. 2012) ............................................ 25, 27, 30, 34, 37
`
`KSR Int'l Co. v. Teleflex Inc.,
`
`550 U.S. 398 (2006).......................................................................................41
`
`NHK Spring Co., LTD v. Intri-Plex Technologies, Inc.,
`
`IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) ..............................5, 6
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) .................................................................6, 15
`
`Ruiz v. A.B. Chance Co.,
`
`357 F.3d 1270 (Fed. Cir. 2004) .....................................................................41
`
`
`
`
`
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`Statutes
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`Atty. Dkt. No.: OMSC0110IPR1
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`35 U.S.C. § 112 ........................................................................................................21
`35 U.S.C. § 311 ........................................................................................................21
`35 U.S.C. § 314 ................................................................................... 1, 3, 4, 5, 6, 10
`35 U.S.C. § 315 ......................................................................................................4, 6
`35 U.S.C. § 316 ......................................................................................... 3, 4, 5, 6, 7
`35 U.S.C. § 324 .......................................................................................................... 4
`35 U.S.C. § 325 ..................................................................................... 1, 3, 4, 10, 14
`
`
`
`Other Authorities
`
`Office Patent Trial Practice Guide Update,
`
`84 Fed. Reg. 33925-33926 (July 15, 2019) ..................................................... 7
`
`Office Patent Trial Practice Guide Update,
`
`83 Fed. Reg. 39989 (Aug. 13, 2018) ...................................................... 3, 4, 5
`
`H.R. Rep. No. 112–98, pt. 1, at 40 (2011) ................................................................. 4
`
`2011 U.S.C.C.A.N. 67, 69 ......................................................................................... 4
`
`S. Rep. No. 110–259, at 20 (2008) ............................................................................ 4
`
`
`
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`v
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`List of Exhibits
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`Atty. Dkt. No.: OMSC0110IPR1
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`Description
`Apple Inc.’s Final Election of Asserted Prior Art, filed in
`Omni MedSci, Inc. v. Apple Inc., Case No. 2:18-cv-134-RWS
`(E.D. Tex), May 24, 2019
`Scheduling Order, filed in Omni MedSci, Inc. v. Apple Inc.,
`Case No. 2:18-cv-134-RWS (E.D. Tex), June 19, 2018
`Reserved
`Reserved
`Reserved
`US Patent App. Pub. No. 2013/0327966 A1 to Fidler et al.
`Claim Construction Memorandum Opinion and Order, filed
`in Omni MedSci, Inc. v. Apple Inc., Case No. 2:18-cv-134-
`RWS (E.D. Tex), June 24, 2019
`Reserved
`Reserved
`District Court Scheduling Notice, issued in Omni MedSci,
`Inc. v. Apple Inc., Case No. 2:18-cv-134-RWS (E.D. Tex),
`July 12, 2019
`
`
`
`No.
`2001
`
`2002
`
`2003
`2004
`2005
`2006
`2007
`
`2008
`2009
`2010
`
`
`
`
`
`
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`vi
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`Omni MedSci, Inc. (“Patent Owner”), submits this Preliminary Response to
`
`the Petition for Inter Partes Review (“Petition,” Paper 1) filed by Apple Inc.
`
`(“Petitioner”) against claims 5, 7-10, 13, and 15-17 (“Challenged Claims”) of U.S.
`
`Patent No. 9,651,533 (“the ‘533 Patent”).
`
`I.
`
`Introduction
`
`The Petitioner fails to meet its burden on both procedural and substantive
`
`grounds.
`
`Procedurally, Apple waited until the last possible date to file parallel IPR
`
`petitions (this Petition and a petition in IPR2019-00916) against the ‘533 Patent.
`
`As a result, the parallel petitions will conclude long after the district court
`
`adjudicates validity of the ‘533 Patent in the underlying litigation. Inter Partes
`
`Review (IPR) was designed as an efficient alternative to challenging the validity
`
`of a patent in litigation. But because of Apple’s delay, its parallel petitions act as
`
`an improper supplement to litigation – unnecessarily increasing cost and
`
`duplicating (triplicating) effort. The Board should deny the Petition under 35
`
`U.S.C. § 314(a) because: A) the district court will resolve the invalidity arguments
`
`before any trial on the Petition concludes; and B) Petitioner does not identify any
`
`material differences between the redundant grounds raised in the parallel petitions,
`
`which requires an inefficient use of the Board’s resources. The Board should also
`
`exercise its discretion to decline review under 35 U.S.C. § 325(d) because C) the
`
`1
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`Petition presents arguments that are substantially similar to those already
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`Atty. Dkt. No.: OMSC0110IPR1
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`considered and overcome during prosecution and the Petition offers no reason to
`
`revisit those arguments.
`
`The Petition also fails to meet its threshold burdens on the substantive
`
`merits.
`
`First, none of the cited references, alone or in combination, teaches: a “light
`
`source configured to increase signal-to-noise ratio [SNR] by increasing a light
`
`intensity from at least one of the plurality of semiconductor sources and by
`
`increasing a pulse rate of at least one of the plurality of semiconductor sources1”
`
`(“The Increasing Limitation”) as required by every Challenged Claim.
`
`Second, none of the cited references, alone or in combination, teach a
`
`“[wearable measurement device] receiver is configured to be synchronized to
`
`[pulses of] the light source,”2 (“The Synchronization Limitation”) –as required by
`
`every Challenged Claim.
`
`
`1 Claim language is italicized for ease of reference.
`
`2 The phrases “wearable measurement device” and “pulses of” appear only in claim
`
`13, not claim 5.
`
` Those differences do not affect the analysis of the
`
`Synchronization Limitation.
`
`2
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`Third, Petitioner fails to show that a person of ordinary skill in the art
`
`(“POSA”) would have been motivated to combine the references in Ground 3.
`
`These references teach different arrangements that a POSA would not have
`
`combined absent impermissible use of hindsight.
`
`Because the Petitioner fails to meet its burden on both procedural and
`
`substantive grounds, the Board should deny institution under 35 U.S.C. § 314(a).
`
`II. The Board should deny the Petition on procedural grounds under
`35 U.S.C. § 314 and § 325(d)
`
`The Board has discretion to deny institution. 35 U.S.C. § 314(a); see Cuozzo
`
`Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2140 (2016). The Board’s discretion is
`
`informed by 35 U.S.C. § 316(b), which requires the Board to consider “the
`
`efficient administration of the Office, and the ability of the Office to timely
`
`complete proceedings.” The Board will also take into account whether “the same
`
`or substantially the same prior art or arguments previously were presented to the
`
`Office.” 35 U.S.C. § 325(d). The Board’s discretionary determination of whether
`
`or not to institute a review also considers “events in other proceedings related to
`
`the same patent, either at the Office, in district courts, or the ITC.” See Office
`
`Patent Trial Practice Guide Update, 83 Fed. Reg. 39989 (Aug. 13, 2018), 10
`
`[“2018 TPG Update”] (emphasis added).
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`Post Grant Review, including Inter Partes Review (IPR), was designed to be
`
`an efficient alternative to challenging patent validity in district court. See 2018
`
`TPG Update, 83 Fed. Reg. 39989 (Aug. 13, 2018), 9. (The AIA was “designed to
`
`establish a more efficient and streamlined patent system that will improve patent
`
`quality and limit unnecessary and counterproductive litigation costs.”). H.R. Rep.
`
`No. 112–98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 67, 69 (Post grant reviews
`
`were meant to be “quick and cost effective alternatives to litigation”); see also S.
`
`Rep. No. 110–259, at 20 (2008). To this end, the America Invents Act included
`
`specific provisions addressing IPR timeliness (e.g., § 315, § 316(a)(11)) and IPR
`
`scope (e.g., § 314, § 316, § 325). Although Apple’s petition is technically timely
`
`under § 315, the Board can exercise its discretion to decline to institute review
`
`based on scope considerations. See, e.g., 35 U.S.C. § 314(a), § 324(a), § 325(d).
`
`In this case, the Board should exercise its discretion, and deny institution
`
`because as explained below: A) the district court will resolve the validity
`
`arguments before any IPR trial concludes; B) the Petition contains significant
`
`overlap with Petitioner’s parallel petition in IPR2019-00916; and C) the Petition
`
`presents arguments that are substantially similar to those already considered and
`
`overcome during prosecution. Maintaining three proceedings challenging the
`
`validity of the ‘533 Patent, two before the Board and one in district court, would
`
`weigh against the “efficient administration of the Office;” therefore the Board
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`should exercise its § 314 discretion and deny institution. 35 U.S.C. § 316(b); 2018
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`Atty. Dkt. No.: OMSC0110IPR1
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`TPG Update at 10.
`
`A. The District Court will resolve the validity arguments
`before any IPR trial concludes
`
`The PTAB has found “that the advanced state of the district court
`
`proceeding is an additional factor that weighs in favor of denying the Petition
`
`under § 314(a).” NHK Spring Co., LTD v. Intri-Plex Technologies, Inc., IPR2018-
`
`00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (Precedential). The Board should
`
`exercise its discretion to deny the Petition under § 314(a) because the facts here are
`
`similar to those in NHK.
`
`Patent Owner has asserted the ‘533 Patent3 against Petitioner in district
`
`court, and Petitioner was served with the complaint on April 10, 2018. (Ex. 1004.)
`
`In district court, Petitioner is challenging the validity of the ‘533 Patent as obvious
`
`over at least eight different combinations of references, including “Valencell4 +
`
`Carlson + Mannheimer,” which are the same references asserted in this
`
`
`3 By district court rule, Patent Owner was required to reduce the number of
`
`asserted claims in the lawsuit and is currently asserting claims 5, 9, 13, 15, 16, and
`
`17 of the ‘533 Patent.
`
`4 In district court, Apple refers to US 2012/0197093 and US 2010/0217099
`
`collectively as “Valencell.” (Ex. 2001, p. 3.)
`
`5
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`proceeding. (Ex. 2001, p. 2; Petition at 4.) The district court set a trial date of
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`Atty. Dkt. No.: OMSC0110IPR1
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`February 18, 2020 (Ex. 2002, p. 2) and, on July 12, 2019, the district court
`
`confirmed that the trial will proceed as scheduled in February (Ex. 2010).
`
`Apple waited until April 10, 2019, i.e., the last day possible under the 1-year
`
`time bar of 35 U.S.C. § 315(b), to file the Petition in this proceeding. The
`
`institution decision in this proceeding is due within three months of this
`
`preliminary response, i.e., by October 17, 2019, and if instituted, a final decision is
`
`due within a year of institution, i.e., by October 17, 2020 (35 U.S.C. §§ 314, 316),
`
`eight months after trial in the district court. Additionally, the PTAB now analyzes
`
`claim construction using the same Phillips standard used by the Courts. Phillips v.
`
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Since the district court will determine
`
`the validity of the ‘533 Patent, using the same claim construction standard, and
`
`over the same art in February 2020, the Board should exercise its § 314 discretion
`
`and deny institution. See NHK Spring Co., LTD, IPR2018-00752, Paper 8 at 20
`
`(Precedential).
`
`B.
`
`Petitioner does not identify any material differences
`between the Petition and the Parallel ‘916 Petition
`
`Petitioner filed parallel and substantially overlapping IPR petitions against
`
`the ‘533 patent but has not identified any material differences between them. The
`
`Board has denied institution of parallel proceedings filed by the same petitioner,
`
`6
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`challenging the same claims of the same patent, that fail to identify material
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`Atty. Dkt. No.: OMSC0110IPR1
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`differences between the art and arguments. See Comcast Cable Comms. v. Rovi
`
`Guides, Inc., IPR2019-00232, Paper 14 at 12-13. (“We find that Petitioner does not
`
`identify sufficient differences between [the references in parallel petitions] to
`
`support the inefficiencies and costs associated with instituting on an additional
`
`petition here.”) Citing 35 U.S.C. § 316(b), the Board has stated that “[t]wo or more
`
`petitions filed against the same patent at or about the same time . . . may place a
`
`substantial and unnecessary burden on the Board and the patent owner and could
`
`raise fairness, timing, and efficiency concerns.” Office Patent Trial Practice Guide
`
`Update,
`
`(July
`
`15,
`
`2019),
`
`26
`
`[“2019
`
`TPG
`
`Update”].
`
`https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-
`
`update3.pdf. See 84 Fed. Reg. 33925-33926.
`
`In this proceeding, Petitioner is challenging claims 5, 7-10, 13, 15-17 of the
`
`‘533 Patent as obvious over three different grounds including combinations of the
`
`following references: 1) U.S. Patent Application Publication No. 2012/0197093 to
`
`LeBoeuf et al. (Ex. 1005, “LeBoeuf/Valencell-0935”); 2) U.S. Patent Application
`
`
`5 Petitioner refers to Ex. 1005 as “Valencell-093” and Ex. 1006 as “Valencell-099”
`
`which adds unnecessary confusion because “Valencell” is not the name of any
`
`inventor of either reference. LeBoeuf is the first named inventor listed on both
`
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`Publication No. US 2010/0217099
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`Atty. Dkt. No.: OMSC0110IPR1
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`to LeBoeuf
`
`et
`
`al.
`
`(Ex. 1006,
`
`“LeBoeuf/Valencell-099); 3) U.S. Patent Application Publication No.
`
`2005/0049468 to Carlson et al. (Ex. 1009); and 4) U.S. Patent No. 5,746,206 to
`
`Mannheimer (Ex. 1008).
`
`Apple filed a parallel petition on April 10, 2019 in IPR2019-00916 (“the
`
`‘916 Petition”) challenging the same claims of the ‘533 Patent over combinations
`
`of the following references: 1) U.S. Patent No. 9,241,676 to Lisogurski (Ex. 1011);
`
`2) Carlson (Ex. 1009); and 3) Mannheimer (Ex. 1008). IPR2019-00916, Paper 1 at
`
`3. As illustrated by the table below, Apple’s grounds in the IPR2019-00916
`
`Petition challenge the same claims as in this Petition, but merely replace the
`
`combination of LeBoeuf/Valencell-093 (Ex. 1005) and LeBoeuf/Valencell-099
`
`(Ex. 1006), with Lisogurski (Ex. 1011).
`
`Claims Challenged
`
`IPR2019-00913
`
`IPR2019-00916
`
`5, 7-10, 13, 15-17
`
`(1) LeBoeuf/Valencell-093 and
`
`Lisogurski and Carlson
`
`LeBoeuf/Valencell-099,
`
`(2) LeBoeuf/Valencell-093,
`
`LeBoeuf/Valencell-099, and
`
`Carlson
`
`
`references, so Patent Owner refers to these references as “LeBoeuf/Valencell-093”
`
`and “LeBoeuf/Valencell-099.”
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`8
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`8-9 and 16-17
`
`(1) LeBoeuf/Valencell-093,
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`Atty. Dkt. No.: OMSC0110IPR1
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`Lisogurski and
`
`LeBoeuf/Valencell-099, and
`
`Mannheimer
`
`Mannheimer
`
`(2) LeBoeuf/Valencell-093,
`
`LeBoeuf/Valencell-099, Carlson,6
`
`and Mannheimer
`
`
`
`Petitioner does not explain any material differences between Lisogurski and
`
`the LeBoeuf/Valencell-093 + LeBoeuf/Valencell-099 combination. Further, both
`
`IPR Petitions are the same in the following ways:
`
`First, Petitioner asserts that the same claim terms – “beam,” “plurality of
`
`lenses,” and “pulse rate” – require construction. (Compare Petition at 20-22, with
`
`the ‘916 Petition at 18-20.)
`
`Second, Petitioner relies on the same expert, Brian W. Anthony, in both
`
`Petitions.
`
`Third, both Petitions rely on Carlson for satisfying the “increasing a pulse
`
`rate” portion of the Increasing Limitation of claims 5 and 13, i.e., increasing the
`
`signal-to-noise ratio by “increasing a pulse rate of at least one of the plurality of
`
`
`6 Petitioner describes Ground 3 of the 913 Petition as two grounds: “with and
`
`without Carlson.” (Petition, p. 4.)
`
`9
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`semiconductor sources.” (Compare Petition at 64, 67-68 with the ‘916 Petition at
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`Atty. Dkt. No.: OMSC0110IPR1
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`27, 37-38.)
`
`Fourth, both Petitions rely on Mannheimer for satisfying the Arrangement
`
`Limitation of claims 8-9 and 16-17, i.e., “wherein the receiver is located a first
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`distance from a first one of the plurality of light emitting diodes and a different,
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`second distance from a second one of the plurality of light emitting diodes such
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`that the receiver receives a first signal from the first light emitting diode and a
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`second signal from the second light emitting diode.” (Compare Petition at 69-72
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`with the ‘916 Petition at 66-68.)
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`By choosing to present six different grounds challenging the same claims
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`without identifying any material differences in the references, Petitioner seeks
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`review of redundant arguments, contrary to the purpose of IPR and the directive to
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`ensure efficient use of the Board’s finite resources. 35 U.S.C. § 314(a).
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`C. The Petition presents arguments that are “substantially
`similar” to those already considered and overcome during
`prosecution
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`The Board may also exercise its discretion and decline institution where the
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`same or substantially the same prior art or arguments were previously presented to
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`the Office. 35 U.S.C. §325(d). In General Plastic Co., Ltd. v. Canon Kabushiki
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`Kaisha, the Board listed a number of non-exclusive factors that the Board will
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`consider when reviewing a petition that presents similar art or arguments as a prior
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`10
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`

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`Case No.: IPR2019-00913
`Patent No.: 9,651,533
`
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`petition. IPR2016-01357, slip. op. 16-17 (Paper 19) (PTAB Sept. 6, 2017)
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`Atty. Dkt. No.: OMSC0110IPR1
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`(Precedential). In Becton Dickenson & Co. v. B. Braun Melsungen AG, the Board
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`listed additional factors that it will consider when reviewing a petition that presents
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`similar art or arguments as those presented during the examination of the patent
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`application by the USPTO. IPR2017-01586, slip. op. 17-18 (Paper 8) (PTAB Dec.
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`15, 2017) (informative). The Becton Dickinson factors include:
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`1. the similarities and material differences between the asserted art
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`and the prior art involved during examination;
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`2. the cumulative nature of the asserted art and the prior art evaluated
`
`during examination;
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`3. the extent to which the asserted art was evaluated during
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`examination;
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`4. the extent of the overlap between the arguments made during
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`examination and the manner in which a petitioner relies on the prior
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`art or a patent owner distinguishes the prior art;
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`5. whether a petitioner has pointed out sufficiently how the Office
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`erred in evaluating the asserted prior art; and
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`6. the extent to which additional evidence and facts presented in the
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`petition warrant reconsideration of the prior art or arguments.
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`Id.
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`During prosecution, the Examiner rejected pending claims 6-7, 9, 15-16, and
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`18 as obvious over a combination of five references: 1) U.S. Pub. No.
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`11
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`

`

`Case No.: IPR2019-00913
`Patent No.: 9,651,533
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`US2006/0283931 to Polli et al.; 2) U.S. Pub. No. US2010/0160798 to Banet et al.;
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`Atty. Dkt. No.: OMSC0110IPR1
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`3) U.S. Pub. No. US2014/0078510 to Rubio Guivernau et al.; 4) U.S. Pub. No.
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`US2011/0267688 to Kleppe; and further in view of 5) US 2013/0327966 to Fidler
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`(Ex. 2006.) (Ex. 1002, pp. 723-724.) The Examiner relied on Fidler’s disclosure
`
`with reference to Figure 5 for teaching the Synchronization Limitation of pending
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`dependent claims 6 and 15, i.e., “wherein the receiver is configured to be
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`synchronized to the light source.” (Ex. 1002, p. 723, “Fidler teaches the receiver is
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`configured to be synchronized to the light source (Fig. 5).”)
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`Fidler discloses “an illumination device for the illumination of illumination
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`zones with different light intensity and/or color temperature by at least one light
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`source,” and that such illumination devices are “known in the field of stage
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`illumination” (Ex. 2006, [0001]-[0002].) With reference to Figure 5, Fidler
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`discloses a “schematic illustration of a light source L with, e.g. three LEDs of the
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`primary colors red, green and blue and picture element modification means VM for
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`an autostereoscopic 3D representation of a picture element of the image
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`information” as viewed by an individual having a left eye (LA) and a right eye
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`(RA) (Ex. 2006, [0064].)
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`12
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`Case No.: IPR2019-00913
`Patent No.: 9,651,533
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`
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`Atty. Dkt. No.: OMSC0110IPR1
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`
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`Ex. 2006, Figs. 5 and 8
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`Fidler discloses a single light source (L) in Figure 5. Fidler discloses another
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`embodiment, with reference to Figure 8, that includes multiple light sources that
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`are synchronized relative to each other, i.e., “FIG. 8 shows the multi-view display
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`of FIG. 7 with in total NLED 3D light sources 3DL, which illustrate in intervals of
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`Δt image information in the NBZ viewing zones BZ synchronized in regard to
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`space as well as time.” (Ex. 2006, Fidler, [0070], emphasis added; Fig. 8.) Fidler
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`teaches synchronizing multiple light sources with each other as they are turned on
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`and off as viewed by a person. Fidler does not teach or suggest synchronizing a
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`receiver with the light sources.
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`Applicant initiated an interview with the Examiner, and the Examiner
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`“agreed that Fidler does not sufficiently teach the receiver is configured to be
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`13
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`

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`Case No.: IPR2019-00913
`Patent No.: 9,651,533
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`synchronized to the light source.” (Ex. 1002, p. 756.) Applicant then amended
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`Atty. Dkt. No.: OMSC0110IPR1
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`independent claims 5 and 14 to include the Synchronization Limitation (id. at 758-
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`772) and the Examiner allowed the application (id. at 925).
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`Here, Petitioner presents arguments
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`regarding
`
`the Synchronization
`
`Limitation that are “substantially similar” to those already considered and
`
`overcome during prosecution. As explained below in Section V.A.2, Petitioner
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`relies on disclosure in LeBoeuf/Valencell-093 of monitoring a light source when it
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`is turned on and when it is turned off for satisfying the Synchronization Limitation.
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`Petitioner’s argument is similar to the Examiner’s argument with respect to
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`Fidler’s disclosure in Figure 5. (Compare Petition, pp. 42-43 with Ex. 1002, pp.
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`723-724.) Although Petitioner noted that Applicant added the Synchronization
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`Limitation to all claims during prosecution (Petition at 17); Petitioner did not point
`
`out how the Examiner erred in evaluating Fidler. Accordingly, the Board should
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`exercise its discretion and decline institution because the same or substantially the
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`same prior art and arguments with respect to the prior art teaching the
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`Synchronization Limitation were previously presented to the Office. 35 U.S.C.
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`§ 325(d).
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`III. Claim Construction
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`Petitioner proposes construing the terms: “beam,” “plurality of lenses,” and
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`“pulse rate.” (Petition at 20-22.) Patent Owner agrees with Petitioner’s proposed
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`14
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`Case No.: IPR2019-00913
`Patent No.: 9,651,533
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`construction for “pulse rate” but disputes its proposed construction for “[optical]
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`Atty. Dkt. No.: OMSC0110IPR1
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`beam” and “plurality of lenses.” Petitioner proposed the same constructions for
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`these terms in litigation, and the district court rejected Petitioner’s proposed
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`constructions in a Claim Construction Memorandum Opinion and Order issued on
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`June 24, 2019. (Ex. 2007.) Patent Owner agrees with the district court’s
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`construction of the terms “[optical] beam” and “plurality of lenses,” and the Board
`
`should use the same constructions for the reasons articulated in the district court’s
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`Claim Construction Order.
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`A.
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`“Beam” and “optical beam”
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`The ‘533 Patent expressly defines the term “optical beam” as “photons or
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`light transmitted to a particular location in space.” (Ex. 1001, 9:28-31.) While
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`Petitioner quotes this definition, it immediately tries to change the definition by
`
`adding further limitations not part of the express definition in the patent. The
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`district court rejected the Petitioner’s attempt to limit the express definition and
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`adopted the definition in the patent. (Ex. 2007, pp. 7-9.) (“Accordingly, the Court
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`construes ‘beam’ as ‘photons or light transmitted to a particular location in
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`space.’”) Although the district court construed the term “beam” alone, Patent
`
`Owner and Petitioner both agree that this construction also applies to “optical
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`beam” because the terms are synonymous and defined in the patent. Under
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`Phillips, the only proper construction of “optical beam” is the definition in the
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`15
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`Case No.: IPR2019-00913
`Patent No.: 9,651,533
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`‘533 Patent. Phillips, 415 F.3d at 1316 (“[O]ur cases recognize that the
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`Atty. Dkt. No.: OMSC0110IPR1
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`specification may reveal a special definition given to a claim term by the patentee
`
`that differs from the meaning it would otherwise possess. In such cases, the
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`inventor's lexicography governs.”)
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`B.
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`“Plurality of lenses”
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`Petitioner proposed construing the term “plurality of lenses” as used in
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`claims 5 and 13 to mean “two or more transparent surfaces used to collimate (make
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`parallel) or focus