Paper No. 27
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`APPLE INC.
`Petitioner,
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`v.
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`OMNI MEDSCI, INC.,
`Patent Owner.
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`Patent No. 9,651,533
`____________________
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`Case IPR2019-00916
`__________________________________________________________________
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`Petitioner’s Reply
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`
`APPLE INC.
`Petitioner,
`
`v.
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`OMNI MEDSCI, INC.,
`Patent Owner.
`
`Patent No. 9,651,533
`____________________
`
`Case IPR2019-00916
`__________________________________________________________________
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`Petitioner’s Reply
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`IPR2019-00916
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`Petitioner’s Reply
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`Table of Contents
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`I.
`II.
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`Introduction .................................................................................................... 1
`The Term “Increas[ing] Signal-to-Noise Ratio by… Increasing a Pulse
`Rate of at Least One [LED]” Reflects Common Scientific Knowledge ..... 2
`A.
`Scientifically, Increasing LED Pulse Rate Will Increase SNR ....... 3
`B.
`The Construction of “Increas[ing] Signal-to-Noise Ratio by…
`Increasing a Pulse Rate of at Least One [LED]” ............................... 5
`III. Argument ........................................................................................................ 9
`A.
`Lisogurski Alone Discloses a Device Configured to Increase the
`Pulse Rate of an LED and Thereby Increase SNR .......................... 9
`Lisogurski and Carlson Teach a Light Source “Configured to
`Increase Signal-to-Noise Ratio by... Increasing a Pulse Rate” of an
`LED ..................................................................................................... 12
`1.
`Carlson’s Device Changes Pulse Rate During Operation......... 13
`2.
`The Combined Teachings of Lisogurski and Carlson Teach a
`Device that Increases Pulse Rate for the Purpose of Increasing
`SNR ........................................................................................... 16
`C. Omni’s Procedural Arguments Are Incorrect ............................... 22
`D. Dependent Claims.............................................................................. 25
`IV. Conclusion .................................................................................................... 25
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`B.
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`IPR2019-00916
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`Petitioner’s Reply
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) ............................................................................ 7
`In re Keller
`642 F.2d 413 (Fed. Cir. 1981) ............................................................................ 17
`MCM Portfolio LLC v. Hewlett-Packard Co.,
`812 F.3d 1284 (Fed. Cir. 2015) .................................................................... 17, 23
`In re Merck & Co., Inc.,
`800 F.2d 1091 (Fed. Cir. 1986) .................................................................... 17, 20
`ParkerVision, Inc. v. Qualcomm Inc.,
`903 F.3d 1354 (Fed. Cir. 2018) ............................................................................ 7
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`Petitioner’s Reply
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`I.
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`Introduction
`Omni MedSci (“Omni”) admits that Lisogurski and Carlson describe devices
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`that meet every limitation of the challenged claims except “increasing a signal-to-
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`noise ratio by increasing the pulse rate” of a light emitting diode (LED). But the
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`evidence in this record also clearly establishes that Lisogurski, both alone and in
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`combination with Carlson, teaches and makes obvious that limitation as well.
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`Initially, Omni admits that Lisogurski describes a device configured to
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`increase the pulse rate of its LED (Resp., 22), and its expert Dr. MacFarlane admits
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`that increasing the pulse rate of an LED generally increases the signal-to-noise
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`ratio (“SNR”) (Ex.1060, 37:17-22). Those admissions are fatal to Omni’s
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`assertions in its Response. That is because the Lisogurski device will, in certain
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`physiological situations, increase the pulse rate of an LED and that increase will
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`necessarily increase SNR as well.
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`Omni tries to distinguish Lisogurski by asserting its device does not intend
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`to increase SNR by increasing the pulse rate. But “intent” is irrelevant for a device
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`claim—the question is whether the prior art device can perform the recited
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`function or not. And just as a device may infringe a claim without intending to do
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`so, a device can satisfy a claim element regardless of intent.
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`Even if not explicitly taught by Lisogurski alone, the combination of
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`Lisogurski and Carlson makes obvious a device that “increase[es] a signal-to-
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`Petitioner’s Reply
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`noise ratio by increasing the pulse rate” of its LED. As the Board found,
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`Lisogurski discloses a device that increases the pulse rate of its LED, but does not
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`explicitly describe doing that for the purpose of increasing SNR. Inst. Dec., 30-31.
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`Apple explained, however, that Lisogurski teaches the skilled person that the firing
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`of its LED can be varied (e.g., by altering its intensity) for the purpose of
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`improving SNR, and this would have motivated the skilled person to look for
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`additional way to achieve that goal. Pet., 24-26. Carlson specifically identifies
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`increasing an LED’s pulse rate as a way to increase SNR and provides a reason for
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`doing that—to dynamically offset noise from ambient light when performing
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`physiological measurements.
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`Omni tries to draw a narrow distinction between the art and the claims,
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`asserting that neither Lisogurski nor Carlson alone teaches a device that increases
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`its pulse rate with the intent of increasing SNR. Resp., 26. Not only is Omni
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`wrong about what the art teaches, but Omni ignores that the combined teachings
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`together suggest configuring Lisogurski to increase the pulse rate of its LEDs for
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`the purpose of increasing SNR as taught by Carlson. The Board should find the
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`challenged claims obvious.
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`II. The Term “Increas[ing] Signal-to-Noise Ratio by… Increasing a Pulse
`Rate of at Least One [LED]” Reflects Common Scientific Knowledge
`Independent claims 5 and 13 are apparatus claims that require “a light
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`source comprising a plurality of… light emitting diodes…configured to increase
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`2
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`Petitioner’s Reply
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`signal-to-noise ratio by…increasing a pulse rate of at least one of the plurality of
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`semiconductor sources.” As the Board noted in its Institution Decision, the
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`specification provides scant support for this limitation, and it provides no
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`explanation of why increasing a pulse rate would increase SNR. Inst. Dec., 10.
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`The specification does not, for example, state that its optical sensor must be
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`specially configured to cause a particular type of increase in pulse rate in order to
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`result in an increased SNR. Omni thus necessarily is drawing upon what would be
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`known to a skilled person for this limitation. It is thus informative to look at the
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`science behind variables affecting SNR.
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`Scientifically, Increasing LED Pulse Rate Will Increase SNR
`A.
`Modulating or pulsing a signal is a standard technique to enhance the
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`signal’s detectability in the presence of noise, such as ambient light. Ex.1003, ¶45.
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`In an optical sensor, an LED is pulsed, and each time it is, a detector measures the
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`amount of light reflected back from the sample and determines how the sample is
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`changing (e.g., how the volume of blood in tissue is changing over time). Ex.1003,
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`¶¶39, 41-42. It was well-known that, in the presence of noise, increasing the rate at
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`which an LED pulses (and the sampling rate, which is the rate at which the signal
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`is measured) will generally increase the SNR. At his deposition, Omni’s expert
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`Dr. MacFarlane admitted this was a well-known scientific fact:
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`Q… Why is it that changing the pulse rate of an LED would
`change the signal-to-noise ratio?
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`Petitioner’s Reply
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`A. There are a number of reasons… why that might happen.
`Generally speaking, the faster the modulation, the faster the pulse
`rate, the lower the background noise.
`That's a general statement that describes something that -- that's
`a general statement of -- of truth. There are -- there are
`counterexamples, but generally speaking, as – as you have a faster or
`an increased pulse rate, you see a lower noise environment.
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`Ex.1060, 37:13-38:3.1 Dr. MacFarlane also testified that increasing the pulse rate
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`of an LED would typically increase SNR:
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`Q. Will you agree that in general, when you increase the pulse
`rate of an LED, you will increase the signal-to-noise ratio, though that
`won't always happen?
`* * *
`THE WITNESS: Yes.
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`Id., 39:12-17.
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`In its sur-reply, Omni may try to deny this scientific truth. For example,
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`after his cross-examination was complete, Omni’s counsel spoke to Dr.
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`MacFarlane about his answers. Ex.1060, 85:9-21. On redirect, Dr. MacFarlane
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`then tried to change his answer to the second question (the question at 39:12-17,
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`quoted in the previous paragraph), testifying that “I'd like to change my answer
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`1 All emphases added, unless otherwise noted.
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`from a yes to a no.” Id., 81:17-18. That change in answer, made after discussions
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`with counsel, lacks any credibility. Moreover, Dr. MacFarlane’s original answer
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`was consistent with his prior testimony, where he stated “[g]enerally speaking, the
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`faster the modulation, the faster the pulse rate, the lower the background noise…
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`[T]hat’s a general statement… of truth.” Id., 37:17-22. Dr. MacFarlane made no
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`attempt square his changed answer with his prior testimony. And when asked on
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`re-cross to identify scenarios when increasing pulse rate did not increase SNR, he
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`could only postulate there might be hypothetical scenarios he could imagine, but
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`did not identify any actual ones that would. Ex.1060, 83:5-10 (“Q. Do you know
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`of any instances of when increasing the pulse rate of an LED does not increase the
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`signal-to-noise ratio?... [A]: Hypothetically, I can imagine that being the case.”).
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`Dr. MacFarlane’s testimony thus shows that a skilled person would expect that
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`increasing the pulse rate of an LED would increase SNR, and it would be only in
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`unusual circumstances that it would not.
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`B.
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`The Construction of “Increas[ing] Signal-to-Noise Ratio by…
`Increasing a Pulse Rate of at Least One [LED]”
`Ultimately, the precise construction of this term is irrelevant to the petition’s
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`obviousness grounds because the combination of Lisogurski and Carlson suggest
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`this claim element under the Board’s construction, Omni’s construction, and the
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`claim’s plain and ordinary meaning. However, the Board’s interpretation of this
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`term could affect its determination as to whether Lisogurski alone teaches this
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`claim element, and thus, its meaning is analyzed below.
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`The Board preliminarily construed this term to mean “a light source
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`containing two or more light emitting diodes (semiconductor sources), wherein at
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`least one of the light emitting diodes is capable of having its pulse rate increased to
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`increase a signal-to-noise ratio.” Inst. Dec., 10. Omni raises two issues with the
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`Board’s construction.
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`First, Omni asserts the claim requires the light source to increase the pulse
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`rate while the Board’s construction allows another entity to do so. Resp., 11 (“The
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`Board’s construction improperly broadens the limitation permitting, e.g., a human,
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`to increase the pulse rate.”). But Omni’s criticism is irrelevant—it does not dispute
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`that Lisogurski’s device can increase the pulse rate of an LED, and thus meets even
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`Omni’s narrower reading.
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`Second, Omni contends the Board’s use of the phrase “capable of” was
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`incorrect, and that the claim instead requires a device that is “configured to”
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`increase a pulse rate of an LED to increase SNR. Resp. 11. Omni does this based
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`on its erroneous belief that the “intent” of a device must be considered, rather than
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`what the device actually does.
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`Importantly, under both the Board’s and Omni’s constructions, there is no
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`dispute that there is: (i) an action that the device must take (increasing the pulse
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`rate of an LED) and (ii) a result of that action (an increased SNR). There also is no
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`dispute that Lisogurski teaches a device that is “configured to” take the action
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`specified by the claim: increasing the pulse rate of an LED. Ex.1060, 59:1-5
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`(“Q… Do you agree that Lisogurski describes a device that is configured to
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`increase the emitter firing rate in some circumstances?... A. I believe so.”); Resp.,
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`22 (“Lisogurski discloses a pulse oximeter having an adjustable ‘firing rate’”);
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`Ex.1011, 35:29-31 (“decreasing the duration of the ‘off’ periods (i.e., increasing
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`the emitter firing rate) relates to an increased sampling rate.”).
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`Thus, the issue in dispute is narrow—whether the claims only encompass a
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`device that intends to increase SNR when it increases the pulse rate of an LED?2
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`The answer to that question under well-established Federal Circuit precedent is no.
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`The Federal Circuit “explained long ago that ‘apparatus claims cover what a device
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`is, not what a device does.’” ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354,
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`1361 (Fed. Cir. 2018); see Application of Michlin, 256 F.2d 317, 320 (C.C.P.A.
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`1958) (“It is well settled that patentability of apparatus claims must depend upon
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`structural limitations and not upon statements of function.”). Moreover, “[i]t is
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`well settled that an [apparatus] that ‘that sometimes, but not always, embodies a
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`2 The Board preliminarily found that Lisogurski alone does not disclose increasing
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`pulse rate for the purpose of increasing SNR. Inst. Dec., 30.
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`claim[] nonetheless’” satisfies the claim. Broadcom Corp. v. Emulex Corp., 732
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`F.3d 1325, 1333 (Fed. Cir. 2013). A device that performs a specified action and
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`causes the result specified by the claim satisfies the claim requirements,
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`irrespective of whether the device intended to do so or not.3
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`Here, the claim language specifies what the device is: it is a device that can
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`increase the pulse rate of an LED and can thereby increase SNR. Moreover, the
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`device need not increase SNR every time it increases the pulse rate of an LED.
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`Consequently, the claim term is satisfied by a device that increases a pulse rate of
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`an LED, and where doing so at least sometimes results in an increased SNR.
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`Lisogurski’s device does that,4 and thus, meets the Board’s construction (as well as
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`Omni’s literal construction) as well as the claim’s plain and ordinary meaning.
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`Construing the claims to include an “intent” requirement pursuant to Omni’s
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`“configured to” construction would be clear legal error.
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`3 Omni’s expert had no opinion on whether the claim included an intent element.
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`Ex.1060, 44:5-13 (Dr. MacFarlane testifying “I don’t have an opinion on” whether
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`the claim require[s] the device to intend to increase SNR).
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`4 Even if this term had an intent element, it would have been obvious based on the
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`combination of Lisogurski and Carlson, as explained in §III.B, below.
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`Petitioner’s Reply
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`III. Argument
`A. Lisogurski Alone Discloses a Device Configured to Increase the
`Pulse Rate of an LED and Thereby Increase SNR
`Lisogurski alone discloses a device that increases the firing (pulse) rate of at
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`least one of its LEDs and thereby meets the limitation of a “a light source
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`comprising a plurality of… [LEDs]…configured to increase signal-to-noise ratio
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`by… increasing a pulse rate of at least one of the [LEDs].”
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`Initially, it is undisputed that Lisogurksi alone discloses a device
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`“configured to” increase the firing (pulse) rate of at least one of its LEDs. See
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`Ex.1011, 25:52-55. As Lisogurksi states:
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`[T]he sampling rate may represent the amount of time between “on”
`periods. For example, the time between “on” periods may be the
`length of time of “off” period 220 of FIG. 2A…. [D]ecreasing the
`duration of the “off” periods (i.e., increasing the emitter firing rate)
`relates to an increased sampling rate.
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`Ex.1011, 35:24-31. Omni admits this, stating that “Lisogurski discloses a pulse
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`oximeter having an adjustable ‘firing rate.’” Resp., 22. Even Dr. MacFarlane
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`admitted that Lisogurski discloses this:
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`Q… Do you agree that Lisogurski describes a device that is
`configured to increase the emitter firing rate in some circumstances?
`* * *
`THE WITNESS: I believe so.
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`Ex.1060, 59:1-5.
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`Petitioner’s Reply
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`In its Response, Omni argues that Lisogurski does not meet this limitation
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`because, even though Lisogurski varies the LED firing rate, Lisogurski discloses
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`only that the firing rate is varied for the purpose of remaining synchronous with
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`cardiac cycle and not with the intent to increase SNR. Resp., 14-16. Omni is
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`wrong about what Lisogurski discloses and about what the claim requires.
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`Lisogurski describes applying cardiac cycle modulation to the pulsing of its
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`LEDs, which means that its device will increase the sampling rate and emitter
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`firing rate to become or remain synchronous with a cardiac cycle. Ex.1011, 25:49-
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`55; 31:11-24, 31:39-55; see Inst. Dec., 30. When Lisogurski’s device applies that
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`modulation technique, depending on the individual’s cardiac cycle, the device will
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`increase its LED pulse rate. Ex.1003, ¶96 (“Cardiac cycle modulation schemes
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`would adjust the brightness of a light in a way that is synchronized to the cardiac
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`cycle and similar to or faster than the cardiac pulse rate.”). Consistent with Dr.
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`Anthony’s explanation, this could occur when a person’s heart rate increases,
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`which would result in Lisogurski’s device increasing its LED’s firing rate to
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`remain synchronous with the faster cardiac cycle. The skilled person reading
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`Lisogurski’s description of cardiac cycle modulation would have understood that
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`when Lisogurki’s device increases the LED firing rate in this manner, it would
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`increase the signal relative to the noise (e.g., ambient light) present in the
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`measurement, and thus would increase SNR. See Ex.1060, 37:17-22, 39:12-17.
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`Petitioner’s Reply
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`Lisogurski’s description of what happens when its device increases the LED
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`firing rate is consistent with the general knowledge that it would increase SNR.
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`Lisogurski explains that “increasing the sampling rate for a portion of the cardiac
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`cycle may result in more accurate and reliable physiological information.”
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`Ex.1011, 33:46-52. Although Lisogurski does not use the term “SNR” in this
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`passage, a skilled person would have understood that the physiological information
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`is “more accurate and reliable” because its SNR is higher. Thus, as Dr. Anthony
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`explains:
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`Lisogurski states that increasing the sampling rate ‘may result in more
`accurate and reliable physiological information.’ Ex.1011
`(Lisogurski), 33:56-58. Therefore, Lisogurski explains that the LED
`firing rate can be increased to increase signal-to-noise ratio.
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`Ex.1003, ¶116.
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`Omni cannot reasonably dispute this understanding of Lisogurski. First,
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`Omni admitted that cardiac cycle modulation is a technique for increasing SNR,
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`stating that “Lisogurski teaches [] different techniques for improving SNR…,
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`[including] by modulating the light signal to correlate with ‘physiological pulses’
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`such as a ‘cardiac pulse.’” Resp., 15. Second, Dr. MacFarlane has admitted that
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`“[g]enerally speaking, the faster the modulation, the faster the pulse rate, the
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`lower the background noise… [T]hat’s a general statement… of truth.” Ex.1060,
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`37:17-22.
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`Petitioner’s Reply
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`As explained in the claim construction section above, the claim is satisfied
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`by any device that increases a pulse rate and that results in increased SNR,
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`irrespective of whether its intent to do so. It is also irrelevant under the claims why
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`the device is increasing the pulse rate of its LEDs, such as for synchronizing with
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`the cardiac cycle. Thus, as even Omni’s expert acknowledged, a skilled person
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`reading Lisogurski would have understood that when its device increases its LED
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`firing rate, it will increase SNR as well. Therefore, Lisogurski meets this claim
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`limitation.
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`B.
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`Lisogurski and Carlson Teach a Light Source “Configured to
`Increase Signal-to-Noise Ratio by... Increasing a Pulse Rate” of an
`LED
`Even if the Board were to find that Lisogurski alone does not disclose this
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`claim element, the combination of Lisogurski and Carlson would render a device
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`including that element obvious. Omni’s primary argument for why Lisogurski and
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`Carlson do not do so together is that neither Lisogurski alone nor Carlson alone
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`teaches a device that, while in operation, actively increases the pulse rate of an
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`LED for the purpose of increasing SNR. Omni’s arguments rely on a
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`mischaracterization of what Carlson teaches, a legally erroneous formulation of
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`obviousness, and an illusory distinction between Lisogurski and the claims that is
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`both extremely narrow and wrong.
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`Petitioner’s Reply
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`Carlson’s Device Changes Pulse Rate During Operation
`1.
`Omni devotes a substantial portion of its brief to mischaracterizing Carlson’s
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`teachings. Resp., 17-22, 24-26. Omni asserts that Carlson shows a pulse oximeter
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`where a person makes design choice as to the pulse rate of an LED when creating
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`the oximeter, and that Carlson does not describe a device that actively increases the
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`LED’s pulse rate during operation. Resp., 17. Omni’s interpretation of Carlson is
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`factually incorrect.
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`As explained in the Petition, Carlson teaches techniques for increasing the
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`SNR of a pulsoximeter to improve its performance in the presence of noise, such as
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`ambient light from sunlight or fluorescent lights. Pet., 23-24; see Ex.1009, [0002]
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`(Carlson’s goal is “increasing the technical performance of pulsoximetry in terms
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`of quality and robustness of the measurement signal versus environmental
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`disturbances and energy consumption”), [0067]-[0068] (describing indoor and
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`outdoor lighting). Carlson also explains that, whether used indoors or outdoors,
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`the amount of ambient light varies over time. Ex.1009, [0007] (“environmental
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`optical radiation strongly varies as a function o[f] time and place where the
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`pulsoximeter is used, e.g. day versus night, indoor versus outdoor”), [0067]-[0068]
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`(describing indoor and outdoor lighting). Carlson, thus, makes crystal clear that its
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`device is designed to address changing environmental conditions that translate into
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`a continually varying amount of ambient light that has to be addressed.
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`Petitioner’s Reply
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`To handle interference from ambient light when it is present, Carlson
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`explains that its device “temporarily modulate[s] the amplitude of the optical
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`radiation of, e.g., the LED at a carrier frequency fc in order to shift the power
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`spectrum of the pulsoximeter signals into a higher frequency range where
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`environmental optical radiation is unlikely.” Ex.1009, [0020]; see id., [0065]. In
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`this passage, Carlson describes shifting the frequency of an LED’s emission “to a
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`higher frequency range,” thus indicating that the LED previously emitted pulses at
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`a lower frequency—i.e., that Carlson is switching between at least two different
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`frequencies. Ex.1009, [0020]. Carlson also states that its device temporarily
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`makes this adjustment, id., [0020], which means the device will change how its
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`LEDs pulse based on the presence and characteristics of ambient light at any
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`particular moment in time, id., [0068]. Based on his reading of Carlson, Dr.
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`Anthony explains that “Carlson teaches that increasing the modulation frequency
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`of the pulsed LEDs improves the signal-to-noise ratio.” Ex.1003, ¶121; see
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`Ex.1009, [0069].
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`Omni incorrectly portrays Carlson as disclosing a device that emits light
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`continuously or constantly (i.e., not pulsed) but in the presence of ambient light
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`can switch to a pulsed mode of operation that pulses at a single, fixed pulse rate.
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`Resp., 17-21; id., 21 (“Carlson teaches only that, as an alternative to continuous
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`light [], modulated light at a ‘chosen’ frequency” can be used). That interpretation
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`Petitioner’s Reply
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`makes no sense in the context of Carlson’s invention. For example, under Omni’s
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`reading, Carlson’s device would consume excessive battery power, something that
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`is entirely at odds with the stated purpose of its mobile, battery-powered device: to
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`balance signal quality with energy consumption. Ex.1009, [0002] (describing
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`“increasing the technical performance… versus environmental disturbances and
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`energy consumption”), [0048].
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`Omni also asserts that Carlson’s statements about temporarily modulating
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`the signal refer to shifting the light’s power spectrum, not to shifting the frequency
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`(pulse rate) of the light pulses. Resp., 20. Omni’s argument is inconsistent with
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`Carlson’s claims, which specify a device that includes “a light source amplitude
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`modulating means to modulate the frequency of the emitted light” and that the
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`means further can “shift the frequency of the emitted light.” Ex.1009, claims 10-
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`13. Thus, contrary to Omni’s arguments, Carlson discloses shifting the frequency
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`of the pulses between two different pulse frequencies. Read correctly, Carlson
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`describes switching from a lower frequency pulse rate to a higher one to avoid
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`interference caused by ambient light. Ex.1003, ¶121.
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`Reading Carlson to teach switching among different pulse frequencies rather
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`than from continuous light emission to pulsed light emission also is consistent with
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`common sense. Carlson describes interference from ambient light and teaches that
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`such light varies over time depending on where a user is. Ex.1009, [0007]
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`15
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`Petitioner’s Reply
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`(“environmental optical radiation strongly varies as a function o[f] time and place
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`where the pulsoximeter is used, e.g. day versus night, indoor versus outdoor”). For
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`example, Carlson recognizes that interference may occur at one frequency when
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`indoors and at others when outdoors. Ex.1009, [0067] (“artificial light, such as e.g.
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`electrical in-house light, is going up to approximately 120 Hz (USA)”), [0068]
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`(“sunlight can have a dramatic influence, e.g. if a person is walking through streets
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`with relatively quick changing conditions between sunlight and shadow. Another
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`serious possibility is caused by a tree avenue when driving along the trees.”).
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`Because the nature of ambient light changes over time, it would be natural to
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`interpret Carlson as describing multiple pulse frequencies. See Ex.1060, 34:5-35:7
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`(Dr. MacFarlane agreeing that “Because sunlight variations and the weather are
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`constantly changing environmental conditions, it would be impractical, as a matter
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`of common sense, to have the user manually reconfigure the LED pulse rate as
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`conditions change”). Omni’s interpretation is at odds with that understanding.
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`2.
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`The Combined Teachings of Lisogurski and Carlson Teach
`a Device that Increases Pulse Rate for the Purpose of
`Increasing SNR
`Omni’s primary argument for why Lisogurski and Carlson do not render this
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`limitation obvious rests on a legally erroneous foundation. Omni asserts that the
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`art does not teach “increase[ing] signal-to-noise ratio by… increasing a pulse rate
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`of” an LED because neither Lisogurski alone nor Carlson alone teaches a device
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`16
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`Petitioner’s Reply
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`that actively increases the pulse rate of an LED for the purpose of increasing SNR
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`while the device is in operation. Omni ignores that “[n]on-obviousness cannot be
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`established by attacking references individually where the rejection is based upon
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`the teachings of a combination of references.” In re Merck & Co., Inc., 800 F.2d
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`1091, 1097 (Fed. Cir. 1986); see also In re Keller 642 F.2d 413, 425 (Fed. Cir.
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`1981) (the test for obviousness is “what the combined teachings of the references
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`would have suggested to those of ordinary skill in the art”); MCM Portfolio LLC v.
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`Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (“Moreover, [t]he test
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`for obviousness is not whether the features of a secondary reference may be bodily
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`incorporated into the structure of the primary reference….”). As explained in the
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`Petition, the combined teachings of Lisogurski and Carlson suggest a device that
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`meets the claims.
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`Initially, the distinction Omni is trying to draw between Lisogurski and
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`Carlson and the challenged claims is very narrow. This is shown by several
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`undisputed facts about what Lisogurski teaches:
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`• As explained in §III.A above, Lisogurski teaches a device that
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`increases the pulse rate of its LED in some scenarios.5 Omni admits
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`
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`5 Ex.1011, 27:44-49, 35:29-31 (“Similarly, decreasing the duration of the “off”
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`periods (i.e., increasing the emitter firing rate) relates to an increased sampling
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`17
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`Petitioner’s Reply
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`this, stating “Lisogurski discloses a pulse oximeter having an
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`adjustable ‘firing rate.’” Resp., 22; Ex.1060, 59:1-5; Ex. 2122, ¶87
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`(same).
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`• Lisogurski teaches a device that attempts to increase SNR by altering
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`characteristics of how the LEDs fire.6 Omni admits this, stating that
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`“Lisogurski teaches [] different techniques for improving SNR,
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`[including] by increasing the ‘brightness’ of the light source… and []
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`by modulating the light signal to correlate with ‘physiological pulses’
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`such as a ‘cardiac pulse.’” Resp., 15.
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`• Lisogurski teaches a device that detects increases in background noise
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`and in response attempts to increase SNR.7 Omni admits this, stating
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`
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`rate.”); see Ex.1011, 35:24-28, Ex.1003, ¶¶112-115, Inst. Dec., 30 (“That is, the
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`LED firing rate is varied to become or remain synchronous with a cardiac cycle,
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`not to increase the signal-to-noise ratio.”).
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`6 Ex.1011, 9:46-52 (“In some embodiments, the system may alter the cardiac cycle
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`modulation technique based on the level of noise, ambient light…”), 27:44-49,
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`Ex.1003, ¶¶118, 120; Ex.2122, ¶87.
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`7 Ex.1011, 9:50-52 (“The system may increase the brightness of the light sources in
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`response to the noise to improve the signal-to-noise ratio.”); 5:56-61
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`18
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`Petitioner’s Reply
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`that “Lisogurski discloses… increasing signal brightness to address
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`interference caused by ambient light.” Resp., 22; Ex.2122, ¶87.
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`Omni nonetheless argues that the challenged claims are patentable because
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`(i) Lisogurski is missing an explicit teaching that, in response to increased
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`background noise, the firing rate of the LED can be increased for the purpose of
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`increasing SNR and (ii) Carlson alone does not disclose increasing the pulse rate of
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`an LED during operation, and therefore in Omni’s view, the combination of
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`Lisogurski and Carlson cannot do so either. Resp., 14-22. Omni’s purported
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`distinction is based on a mischaracterization of Carlson, and it is at odds with both
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`common sense and the law.
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`As explained in §III.B.1, above, and contrary to Omni’s assertions, Carlson
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`does disclose a device that changes the pulse rate of an LED in operation.
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`However, even if Omni were correct that Carlson discloses only selecting a pulse
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`rate at design time, that would be irrelevant. The salient point is that Carlson
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`(“Conventional servo algorithms may adjust the light drive signals due to, for
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`example, ambient light changes,…”); Ex.1003, ¶¶118 (“Lisogurski explains that
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`increasing the signal-to-noise ratio in its system is important…”), 120 (“Lisogruski
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`explains that the firing rate of the LEDs can be adjusted in response [to] changes in
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`environmental conditions, such as changes in background or ambient light.”).
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`Petitioner’s Reply
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`teaches that when ambient light is present, SNR can be increased by increasing a
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`pulse rate of an LED to a frequency range that mitigates ambient noise. Ex.1009,
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`[0069] (“The frequency
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