UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
`
`APPLE INC.,
`Petitioner,
`
`v.
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`OMNI MEDSCI, INC.,
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 9,651,533
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`Case No.: IPR2019-00916
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`______________
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`
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITION
`FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.220
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`
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 9,651,533
`
`Case No.: IPR2019-00916
`
`______________
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITION
`FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.220
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`
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`
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`Case No.: IPR2019-00916
`Patent No.: 9,651,533
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`Atty. Dkt. No.: OMSC0110IPR2
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`TABLE OF CONTENTS
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`Table of Authorities ............................................................................................... ii
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`A.
`B.
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`C.
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`D.
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`E.
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`F.
`G.
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`Introduction ....................................................................................... 1
`Apple rewrites the “pulse rate” limitation to remove the
`“configured to increase SNR” requirement ........................................ 3
`Apple mischaracterizes the deposition testimony of Omni
`MedSci’s expert ................................................................................. 7
`Lisogurski does not disclose a light source configured to
`increase SNR by increasing a pulse rate as claimed ..........................10
`Carlson’s teaching does not fill Lisogurski’s gap ..............................11
`1.
`Carlson teaches the solution to SNR issues is temporary
`modulation of an unmodulated light source at a
`predetermined rate ..................................................................11
`Carlson adds nothing to what Lisogurski teaches, so the
`combination cannot render the challenged claims obvious ......16
`Omni MedSci’s so-called “procedural arguments” are valid .............18
`Conclusion ...................................................................................... 211
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`2.
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`Certificate of Service ............................................................................................22
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`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 ......................................23
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`i
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`Case No.: IPR2019-00916
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`Table of Authorities
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`Cases
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`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
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`672 F.3d 1335 (Fed. Cir. 2012) ................................................................. 5, 6
`
`Centripetal Networks, Inc. v. Cisco Sys., Inc.,
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`No. 2:18-CV-94, 2020 WL 863976 (E.D. Va. Feb. 20, 2020) ...................... 6
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`Cook Grp. Inc. v. Boston Sci. Scimed, Inc.,
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`IPR2017-00132, Paper No. 71 (PTAB Nov. 14, 2018) ................................. 5
`
`Hulu, LLC v. Sound View Innovations, LLC, IPR2018-00582,
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`Paper No. 34 (PTAB Aug. 5, 2019) (Informative) .......................... 14, 15, 19
`
`In re Gordon,
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`733 F.2d 900 (Fed. Cir. 1984) .....................................................................17
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
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`821 F.3d 1359 (Fed. Cir. 2016) ...................................................................19
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`Perdiem Co, LLC v. IndusTrack LLC, No. 2:15-CV-727-JRG-RSP,
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`2016 WL 3633627 (E.D. Tex. July 7, 2016) ................................................ 6
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`Phillips v. AWH Corp.,
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`415 F.3d 1303 (Fed. Cir. 2005) .................................................................... 5
`
`Ruiz v. A.B. Chance Co.,
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`357 F.3d 1270 (Fed. Cir. 2004) ...................................................................18
`
`SAS Institute Inc. v. Iancu,
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`138 S.Ct. 1348 (2018) .................................................................................19
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`SIPCO, LLC v. Amazon.com, Inc., No. 2:08-CV-359-JRG,
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`2012 WL 5195942 (E.D. Tex. Oct. 19, 2012) .............................................. 6
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`SwimWays Corp. v. Zuru, LLC, No. 2:13CV334,
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`2014 WL 934447 (E.D. Va. Mar. 10, 2014) ................................................. 6
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`TQ Delta, LLC v. Cisco Sys., Inc.,
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`942 F.3d 1352 (Fed. Cir. 2019) ...................................................................17
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`Typhoon Touch Techs., Inc. v. Dell, Inc.,
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`659 F.3d 1376 (Fed. Cir. 2011) .................................................................... 5
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`
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`Statutes
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`35 U.S.C. § 112 ....................................................................................................14
`35 U.S.C. § 312 .............................................................................................. 14, 19
`35 U.S.C. § 316 ....................................................................................................15
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`
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`Other Authorities
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`Consolidated Trial Practice Guide (Nov. 2019).....................................................14
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`iii
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`A.
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`Introduction
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`Apple’s Reply rewrites the challenged claims, mischaracterizes the testimony
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`of Omni MedSci’s expert, misconstrues the teachings of Lisogurski and Carlson, and
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`improperly relies on obviousness arguments Apple did not make in its Petition.
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`Separately and combined, Lisogurski and Carlson fail to disclose or render obvious
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`“a light source configured to increase signal-to-noise ratio [“SNR”] . . . by
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`increasing a pulse rate of at least one of the plurality of semiconductor sources.”
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`(Ex. 1001 29:51-11.)1, 2
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`In its Institution Decision (“ID”), the Board correctly determined that
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`Lisogurski’s system varies an LED’s pulse rate but not to increase SNR. (Paper
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`No. 16, ID at 31.) Apple’s response is, if a pulse rate increases, SNR may (or may
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`not) increase and that hit-or-miss result is “configured to increase signal-to-noise
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`ratio.” It is not.
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`Lisogurski discloses two forms of light source modulation, neither of which
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`is configured to increase SNR by increasing a pulse rate as claimed. First,
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`Lisogurski discloses “cardiac cycle modulation” which is “aligned with pulses of the
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`1 Throughout this Sur-reply, all emphasis added unless otherwise noted.
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`2 Omni MedSci’s focus on the “pulse rate” limitation is not an admission that the
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`references disclose the other limitations of the challenged claims.
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`1
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`heart” or “other suitable physiological cyclical cycle.” (Ex. 1011 at 5:25-47.) This
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`cardiac cycle modulation is “on the order of 1 Hz” correlating with an average heart
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`rate of 60 beats per minute. (Id. at 6:28-29.) This is shown, for example, by blocks
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`532 and 534 in Fig. 5, which illustrate a red LED turning on and off in
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`synchronization with the cardiac cycle (“PPG”). (Id. at 21:45-53.) Lisogurski
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`explains that the “firing rate” of this cardiac cycle modulation can be adjusted to
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`track the cardiac cycle. (Id. at 25:45-58; 28:30-39; 29:25-34.) But as the Board
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`already determined, Lisogurski’s light source is not configured to increase SNR by
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`increasing the pulse rate as claimed. (Paper No. 16, ID at 31.)
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`Second, Lisogurski also describes “a technique to remove ambient and
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`background signals” by measuring ambient light while the LED is off and
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`subtracting that measurement from the signals received with the light on. (Id. at 6:7-
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`30.) Lisogurski says this can be done at an exemplary modulation rate of “1 kHz”
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`using separate “drive cycle modulation.” (Ex. 1011 at 5:48-54; 6:30.) Apple ignores
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`this section of Lisogurski and does not rely on it to show obviousness of the “pulse
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`rate” limitation. Lisogurski does not disclose varying the frequency of the drive
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`cycle modulation and does not disclose or render obvious increasing the pulse rate
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`to increase SNR as claimed.
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`Apple adds Carlson purportedly to provide what is missing from Lisogurski.
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`But Carlson adds nothing relevant to Lisogurski because the two references contain
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`2
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`identically the same teaching—right down to the same exemplary 1000 Hz
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`modulation rate. (Compare Ex. 1011, Lisogurski, at 6:30 with Ex. 1009, Carlson, at
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`[0069].) In fact, Carlson adds less than nothing because it merely modulates an
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`unmodulated
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`light source
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`temporarily without varying
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`the predetermined
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`modulation frequency. An ordinary artisan reading Carlson would learn nothing
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`new beyond what Lisogurski already discloses, which the Board correctly
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`determined is not the claimed configuration. (Paper No. 16, ID at 30.)
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`Alone or combined, the references fail to disclose or render obvious “a light
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`source configured to increase signal-to-noise ratio . . . by increasing a pulse rate of
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`at least one of the plurality of semiconductor sources.” The Board should confirm
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`the patentability of the challenged claims.
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`B. Apple rewrites the “pulse rate” limitation to remove the
`“configured to increase SNR” requirement
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`Apple argues that its references satisfy the claims merely because, if the pulse
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`rate of the light source increases, the SNR may increase, too. (Reply at 1, 3-4.) To
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`make that argument, Apple rewrites the “pulse rate” limitation. Apple wrongly
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`asserts:
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`there is: (i) an action that the device must take (increasing the pulse rate
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`of an LED) and (ii) a result of that action (an increased SNR).
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`(Reply at 6-7.)
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`3
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`Apple’s summary of the “pulse rate” limitation is wrong because it is
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`backward. The claim requires a light source “configured to increase SNR,” not a
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`light source “configured to increase a pulse rate.” So, when Apple says, “Lisogurski
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`teaches a device that is ‘configured to’ take the action specified by the claim:
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`increasing the pulse rate of an LED” (Reply at 7), Apple distorts the claim. Apple
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`has set up a strawman. It is irrelevant that Lisogurski discloses a device that varies
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`a pulse rate because that is not the claimed configuration. As Apple aptly
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`summarized, “[t]he Board preliminarily found that Lisogurski alone does not
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`disclose increasing pulse rate for the purpose of increasing SNR.” (Reply at 7, n.
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`2, citing ID at 30.)3 Apple has not shown Lisogurski and Carlson—separately or
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`together—are “configured to increase SNR” by “increasing a pulse rate.”
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`3 The Board found, and Apple does not dispute, that Lisogurski’s “LED firing rate
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`is varied to become or remain synchronous with a cardiac cycle, not to increase
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`signal-to-noise.” (Paper No. 16, ID at 30.) The Board also found, and Apple does
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`not dispute, that “Lisogurski is teaching varying the sampling rate to be synchronous
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`with the cardiac cycle, not to improve signal-to-noise.” (Id. at 31.)
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`4
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`Apple also asserts that Omni MedSci’s “configured to” construction injects
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`an improper “intent” requirement. (Reply at 6-8.)4 But Omni MedSci’s construction
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`is not based on “intent,” it is based on the express claim language: a “light source
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`configured to increase signal-to-noise ratio . . . .” (Ex. 1001 29:51-11.) This express
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`claim language is always relevant to the proper construction. Phillips v. AWH Corp.,
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`415 F.3d 1303, 1313 (Fed. Cir. 2005).
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`Apple does not rebut Omni MedSci’s arguments or defend the Board’s
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`substitution of “capable of” for the claims’ “configured to.” In its Response (pp. 10-
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`11), Omni MedSci cited and discussed Aspex Eyewear, Inc. v. Marchon Eyewear,
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`Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (“configured to” has a narrower meaning
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`than “capable of”) and Cook Grp. Inc. v. Boston Sci. Scimed, Inc., IPR2017-00132,
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`Paper No. 71 at 17 (PTAB Nov. 14, 2018) (“the claim language ‘configured to’
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`requires structure designed to perform the function, not merely structure capable of
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`4 Apple also addresses, briefly, Omni MedSci’s criticism that the Board’s
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`construction improperly broadens the “pulse rate” limitation to permit, e.g., a human,
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`and not the “light source,” to increase the pulse rate. (Reply at 6.) Apple asserts the
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`Board’s construction is “irrelevant,” but does not defend it or rebut Omni MedSci’s
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`arguments. (Id.)
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`performing the function.”).5 Aspex Eyeware is controlling Federal Circuit law.
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`Apple does not address either decision in its Reply.
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`5 See also Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir.
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`2011) (distinguishing between a device configured to perform a certain function and
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`a device that is simply capable of being configured to perform that function);
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`Centripetal Networks, Inc. v. Cisco Sys., Inc., No. 2:18-CV-94, 2020 WL 863976, at
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`*7 (E.D. Va. Feb. 20, 2020) (“plain and ordinary meaning” of “configured to”
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`“requires that the device be actually configured to do the function”); Perdiem Co,
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`LLC v. IndusTrack LLC, No. 2:15-CV-727-JRG-RSP, 2016 WL 3633627, at *41
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`(E.D. Tex. July 7, 2016) (“[N]one of the general-usage dictionaries consulted by the
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`Court defines ‘configure’ as to render merely ‘capable of.’”); SwimWays Corp. v.
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`Zuru, LLC, No. 2:13CV334, 2014 WL 934447, at *11 (E.D. Va. Mar. 10, 2014) (“a
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`construction that an appendage is merely ‘capable’ of propelling a figure through a
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`liquid fails to adequately convey that the appendage is actually ‘configured to’
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`propel the figure through the liquid.”); SIPCO, LLC v. Amazon.com, Inc., No. 2:08-
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`CV-359-JRG, 2012 WL 5195942, at *55 (E.D. Tex. Oct. 19, 2012) (citing the
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`“Internet version of The American Heritage Dictionary defining ‘configured’ as
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`‘designed, arranged, set up, or shaped with a view to specific applications’”).
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`Omni MedSci also pointed out that other limitations of the ’533 Patent claims
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`use the term “capable of,” triggering the presumption that the term “configured to”
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`recited in independent claims 5 and 13 has a different, i.e., narrower, meaning than
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`“capable of.” Aspex, 672 F.3d at 1349. Again, Apple ignores this argument and
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`does not dispute it.
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`Substituting “capable of” for “configured to” would render the “pulse rate”
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`limitation meaningless and irrelevant. But the ‘533 Patent does not claim mere
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`happenstance. The device must be “configured to”—i.e., designed to—increase
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`SNR in the manner claimed.
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`C. Apple mischaracterizes the deposition testimony of Omni
`MedSci’s expert
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`On page 1, Apple’s attorneys assert, “increase the pulse rate of an LED and
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`that increase will necessarily increase SNR as well.” Apple cites no evidence to
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`support that assertion and no evidence exists. But Apple’s obviousness argument
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`hinges on Apple proving that increasing a pulse rate necessarily increases SNR
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`because the claims require a light source “configured to” increase SNR.
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`Apple selectively quotes Omni MedSci’s expert, Dr. MacFarlane, but he
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`repeatedly disagreed when Apple suggested increasing a pulse rate would
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`necessarily increase SNR. (Ex. 1060 at 37:17-22; 38:4-7; 38:19-39:1; 39:12-17;
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`82:8-83:4.) Dr. MacFarlane acknowledged, in general, that increasing a pulse rate
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`may increase SNR, but he consistently refuted Apple’s suggestion that it necessarily
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`does so. Apple emphasizes Dr. MacFarlane’s answer to a contradictory question but
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`omits his explanation about why the question was contradictory. (Reply at 4-5.)
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`Omni MedSci reproduces the original question and answer together with Dr.
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`MacFarlane’s explanation of why the question was contradictory:
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`Q. [by Apple] Will you agree that in general, when you increase the
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`pulse rate of an LED, you will increase the signal-to-noise ratio, though
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`that won’t always happen?
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`THE WITNESS: Yes.
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`* * *
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`THE WITNESS: [on redirect] . . . The -- the question was -- was -- was
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`poorly phrased, in my opinion. I mis- -- I misunderstood it. The
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`beginning of it was "in general"; the end of it was "not always," making
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`the question contradictory -- those two pieces are contradictory, and so
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`I answered erroneously. I'd like to change my answer from a yes to a
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`no.
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`(Ex. 1060, 37:12-17; 81:4-18).
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`On re-cross, Dr. MacFarlane elaborated further in response to Apple’s
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`questions:
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`Q. [by Apple] . . . Dr. MacFarlane, when you increase a pulse rate of an
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`LED, in some circumstances, you'll increase the signal-to-noise ratio;
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`is that correct?
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`THE WITNESS: Increasing the -- increasing the frequency can
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`sometimes increase the signal-to-noise ratio.
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`Q. In general, does increasing the pulse rate of an LED increase the
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`signal-to-noise ratio?
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`THE WITNESS: I can't -- I can't say that in general.
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`Q. Why not?
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`A. There may be instances where that doesn't happen.
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`* * *
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`Q. Do you agree that if you increase the pulse rate of an LED, typically,
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`the signal-to-noise ratio will increase?
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`THE WITNESS: I neither agree nor disagree with that.
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`Q. Do you agree that if you increase the pulse rate of an LED,
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`sometimes the signal-to-noise ratio will increase?
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`THE WITNESS: Sometimes increasing the modulation or the pulse rate
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`of a -- of a -- of an LED can increase the signal-to-noise ratio of -- of
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`the measurement.
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`(Id. at 82:8-85:7, objections to form omitted.) None of this testimony supports
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`Apple’s claim that “increase the pulse rate of an LED and that increase will
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`necessarily increase SNR as well.” (Reply at 1.)
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`Apple also asserts that Dr. MacFarlane could not name a scenario in which
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`SNR would not increase with an increase in pulse rate. (Reply at 5.) Not true. In
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`response to Apple’s request for “an example of when increasing the pulse rate of an
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`LED does not increase the [SNR],” Dr. MacFarlane gave Apple a specific example.
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`(Id. at 83:19-84:13.) Apple’s Reply ignores, and does not rebut, the example Dr.
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`MacFarlane provided, and Apple did not ask Dr. MacFarlane to give other examples,
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`which he could have done.
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`Dr. MacFarlane’s testimony—that increasing pulse rate may or may not
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`increase SNR—highlights the fallacy of Apple’s argument. The claims do not say
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`“perhaps increase SNR”—the light source must be “configured to increase [SNR].”
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`Lisogurski, alone or combined with Carlson, does not meet that requirement
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`because, at best, they teach a varying pulse rate that is not “configured to” increase
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`SNR.
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`D. Lisogurski does not disclose a light source configured to increase
`SNR by increasing a pulse rate as claimed
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`The Board correctly determined that the system described in Lisogurski is
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`configured to vary a pulse rate to track a person’s cardiac cycle, not to increase SNR
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`by increasing a pulse rate as claimed. (Paper No. 16, ID at 30-31.) Apple confirms
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`that Lisogurski ties the LED pulse rate to the person’s cardiac cycle:
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`Lisogurski describes applying cardiac cycle modulation to the pulsing
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`of its LEDs, which means that its device will increase the sampling rate
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`and emitter firing rate to become or remain synchronous with a cardiac
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`cycle. Ex.1011, 25:49-55; 31:11-24, 31:39-55; see Inst. Dec., 30. When
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`Lisogurski’s device applies that modulation technique, depending on
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`the individual’s cardiac cycle, the device will increase its LED pulse
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`rate. Ex.1003, ¶ 96 (“Cardiac cycle modulation schemes would adjust
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`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.”).
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`(Reply at 10.) And, while this may all be true, merely increasing a pulse rate is not
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`what the ‘533 Patent claims require.
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`Apple also asserts Lisogurski discloses “increasing the sampling rate” to
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`increase accuracy. (Reply at 11.) But the challenged claims do not recite increasing
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`a “sampling rate” (i.e., the detection rate), they recite increasing a “pulse rate” of the
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`light source. As the Board explained, “when Lisogurski teaches ‘varying light
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`output may also apply to sampling rate,’ Lisogurski is teaching varying the sampling
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`rate to be synchronous with the cardiac cycle, not to improve signal-to-noise.”
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`(Paper No. 16, ID at 31 citing Ex. 1011 at 35:5–9.) Thus, Lisogurski, alone, does
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`not disclose the “pulse rate” limitation.
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`E. Carlson’s teaching does not fill Lisogurski’s gap
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`1.
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`Carlson teaches the solution to SNR issues is temporary
`modulation of an unmodulated light source at a
`predetermined rate
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`Carlson teaches a pulsoximeter sensor whose “basic idea” is to “use a beam-
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`shaping element . . . to direct the emitted optical radiation” of a “light source” to
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`“increase the optical signal power . . . and thus increasing the Signal/Noise-and
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`signal/Background ratio.” (Ex. 1009 at [0014].) This “basic idea” does not have a
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`modulated light source, which Carlson introduces later in the specification. (Id. at
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`[0018].)
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`In later embodiments, Carlson proposes “temporarily” modulating the
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`otherwise unmodulated light source:
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`• “temporarily modulate the amplitude of the optical radiation”;
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`• “it is further proposed to temporarily modulate the amplitude of the
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`optical radiation of the light source”;
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`• “[t]he basic idea of using AC-Coupling or Lock-In Amplification
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`detection means is to temporarily modulate the optical radiation”;
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`• “it is furthermore possible to use a light source modulation to
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`temporarily modulate the optical radiation of the LED”;
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`• “temporarily modulate the optical radiation of the LED at the carrier
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`frequency fc in order to shift the power spectrum.”
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`(Ex. 1009 at [0020], [0027], [0064], [0065].)
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`An ordinary artisan would understand that Carlson’s solution to an SNR
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`problem is to temporarily modulate the otherwise unmodulated light source at a
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`predetermined frequency. Apple agrees this is Carlson’s teaching:
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`To handle interference from ambient light when present, Carlson
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`explains that its device “temporarily modulate[s] the amplitude of the
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`optical radiation of, e.g., the LED at a carrier frequency fc in order to
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`shift the power spectrum of the pulsoximeter signals into a higher
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`frequency range where environmental optical radiation is unlikely.”
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`(Reply at 14.)6
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`Apple’s attorneys assert, without evidence, this disclosure in Carlson
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`“indicat[es] that the LED previously emitted pulses at a lower frequency—i.e., that
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`Carlson is switching between at least two different frequencies.” (Reply at 14, citing
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`Carlson at [0020].) But Carlson only discloses temporary modulation, not, as
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`Apple’s attorneys assert, modulation at different (or increasing) rates as claimed.
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`Carlson’s “temporarily modulate” disclosures confirm that the change described in
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`Carlson is from an unmodulated light source to a temporarily modulated light source
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`at a chosen, unvarying pulse rate—not a pulsing light source configured to increase
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`SNR by increasing its pulse rate as claimed.7
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`6 As explained by Dr. MacFarlane, shifting a “power spectrum” is different from
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`increasing a pulse rate. (Ex. 2122, MacFarlane Decl., ¶ 83.)
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`7 Apple’s attorneys also assert Omni’s reading of Carlson “would consume excessive
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`battery power.” (Reply at 15.) They never explain their new assertion and it is
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`incorrect. Carlson’s first two embodiments disclose “at least one light source which
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`can emit light at least at two wavelengths.” (Ex. 1009 at [0012] and [0016].) And
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`Fig. 7c is “a diagram showing power spectrum of physiological signals and ambient
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`13
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`Patent No.: 9,651,533
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`Atty. Dkt. No.: OMSC0110IPR2
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`Apple points to dependent claims 10-13 of Carlson reciting a “means” that
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`can “shift the frequency of the emitted light.” (Reply at 15.) Apple never made this
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`argument in its Petition,8 and it is incorrect. The claimed “means” must be construed
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`to cover the specific structures and materials disclosed in the specification for
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`performing the claimed function and equivalents. See 35 U.S.C. § 112(f). The only
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`frequency shifting Carlson teaches is the introduction of a carrier frequency to shift
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`the frequency of the “power spectrum” of the unmodulated light—not increasing the
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`light without . . . modulation of the light source of a sensor.” (Id. at [0044].)
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`Carlson follows these two embodiments with several “alternative” configurations in
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`which the light source is “temporarily modulate[d].” (Ex. 1009 at [0018-20] and
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`[0027].) Carlson thus discloses unmodulated light (i.e., not the “temporarily
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`modulated” light) in the first two embodiments. This refutes Apple’s new—and
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`unsupported—“battery power” argument.
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`8 It is improper for Apple to introduce new arguments in its Reply that it did not
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`make in its Petition. See 35 U.S.C. § 312(a)(3); Consolidated Trial Practice Guide
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`(Nov. 2019) at 73 (“Petitioner may not submit new evidence or argument in reply
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`that it could have presented earlier, e.g. to make out a prima facie case of
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`unpatentability.”); Hulu, LLC v. Sound View Innovations, LLC, IPR2018-00582,
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`Paper No. 34 at 30-31 (PTAB Aug. 5, 2019) (Informative).
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`14
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`Patent No.: 9,651,533
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`“pulse rate” as claimed. (Ex. 1009 at [0020] and [0027].) As explained by Dr.
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`Atty. Dkt. No.: OMSC0110IPR2
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`MacFarlane, the claimed pulse rate and Carlson’s power spectrum are different
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`concepts. (Ex. 2122, MacFarlane Decl., ¶ 83.)
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`Finally, Apple argues that switching among different frequencies is “common
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`sense.” (Reply at 15-16.) Because Apple presented no “common sense” argument
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`in its Petition, and because Apple’s expert does not support the new “common sense”
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`theory, the Board should not give any weight to Apple’s new “common sense”
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`argument. Hulu, IPR2018-00582, Paper No. 34 at 30-31. In addition, Carlson
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`proceeds contrary to Apple’s purported “common sense.” Carlson uses an approach
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`in which a modulation frequency “is chosen in such a way that it is outside the
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`frequency spectrum of sunlight and of ambient light which, according to FIG. 7b, is
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`in the range of above approximately 1000 Hz.” (Ex. 1009, Carlson at [0069].)
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`Carlson thus solves the varying interference problem by choosing a single frequency
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`above all expected interference, i.e., above approximately 1000 Hz. (Id.) Relying
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`on mere attorney argument, Apple supplies no evidence an ordinary skilled artisan
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`would have rejected these teachings of Carlson. Apple’s lack of evidence means
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`that Apple has not met its burden of proof. 35 U.S.C. § 316(e).
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`15
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`Atty. Dkt. No.: OMSC0110IPR2
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`2.
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`Carlson adds nothing to what Lisogurski teaches, so the
`combination cannot render the challenged claims obvious
`
`Apple relies on its misinterpretation of Carlson to assert, incorrectly, “The
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`salient point is that Carlson teaches that when ambient light is present, SNR can be
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`increased by increasing a pulse rate of an LED to a frequency range that mitigates
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`ambient noise,” i.e., “in the range of above approximately 1000 Hz.” (Reply at 19-
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`20.) Apple is wrong for two reasons.
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`First, Carlson has no teaching of “increasing a pulse rate” for the reasons
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`discussed in the preceding subsection. Second, using “a frequency range [such as
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`1000 Hz] that mitigates ambient noise” is not new information.
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`Lisogurski teaches a way “to remove ambient and background signals” by
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`measuring ambient light while the LED is off and subtracting it from the signals
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`received with the light on. (Id. at 6:7-19.) Lisogurski says off/on measurement can
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`be done at an exemplary modulation rate of 1000 Hz (“1 kHz.”) (Id. at 6:30.)
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`Specifically, Lisogurski discloses:
`
`
`
`In some embodiments, a technique to remove ambient and
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`background signals may be used in addition to or in place of a power
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`saving light modulation scheme. In a drive cycle modulation technique,
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`the system may cycle light output at a rate significantly greater than the
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`cardiac cycle. For example, a drive cycle modulation cycle may include
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`the system turning on a first light source, followed by a “dark” period,
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`followed by a second light source, followed by a “dark” period. The
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`16
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`Patent No.: 9,651,533
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`Atty. Dkt. No.: OMSC0110IPR2
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`system may measure the ambient light detected by the detector during
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`the “dark” period and then subtract this ambient contribution from the
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`signals received during the first and second “on” periods. . . . The
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`cardiac cycle modulation may represent a lower frequency envelope
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`function on the higher frequency drive cycle. For example, cardiac
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`cycle modulation may be an envelope on the order of 1 Hz
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`superimposed on a 1 kHz sine wave drive cycle modulation.
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`(Id., 6:7-30.)9
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`Thus, as relevant here, Carlson teaches nothing that Lisogurski does not
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`already know, namely ambient/background signals can be a problem and 1000 Hz is
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`a useful frequency. Lisogurski solved his noise problem using off/on subtraction
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`at 1000 Hz. Carlson solved his noise problem by temporarily modulating the LED
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`above 1000 Hz. But the references do not teach or even suggest increasing the
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`exemplary the 1000 Hz rate for any reason, let alone for the purpose of increasing
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`SNR as the claims require. The record is devoid of any evidence that would render
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`the claimed “pulse rate” limitation obvious.
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`Moreover, no motivation exists to configure a light source to increase SNR
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`by increasing a pulse rate. “The mere fact that the prior art could be so modified
`
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`9 Apple ignores this portion of Lisogurski and does not rely on it to show obviousness
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`of the “pulse rate” limitation.
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`17
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`Patent No.: 9,651,533
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`would not have made the modification obvious unless the prior art suggested the
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`Atty. Dkt. No.: OMSC0110IPR2
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`desirability of the modification.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
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`Apple identifies no proper motivation. Instead, using the ‘533 Patent as a roadmap,
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`Apple improperly conjures motivation using hindsight reasoning. See TQ Delta,
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`LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1361 (Fed. Cir. 2019) (discussing the “risks
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`[of] allowing the challenger to use the challenged patent as a roadmap to reconstruct
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`the claimed invention using disparate elements from the prior art—i.e., the
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`impermissible ex post reasoning and hindsight bias that KSR warned against.”); Ruiz
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`v. A.B. Chance Co., 357 F.3d 1270, 1275 (Fed. Cir. 2004) (“This form of hindsight
`
`reasoning, using the invention as a roadmap to find its prior art components, would
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`discount the value of combining various existing features or principles in a new way
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`to achieve a new result—often the very definition of invention.”) Apple has failed
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`to make a prima facie case of obviousness.
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`F. Omni MedSci’s so-called “procedural arguments” are valid
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`Apple attacks what it calls Omni MedSci’s “unfounded procedural
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`arguments.” (Reply at 22.) Apple first asserts that Omni MedSci argued that Apple
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`was trying to “bodily incorporat[e]” a “feature of Carlson into Lisogurski’s device.”
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`(Id.) On the contrary, Omni MedSci did not assert Apple was trying to bodily
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`incorporate one reference into another. Neither reference teaches nor renders
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`18
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`Case No.: IPR2019-00916
`Patent No.: 9,651,533
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`obvious the claimed “pulse rate” limitation because they are not configured to
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`Atty. Dkt. No.: OMSC0110IPR2
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`increase SNR by increasing a pulse rate.
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`Next, Apple contends Omni MedSci was wrong about Apple’s prima facie
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`obviousness case, focusing on Omni MedSci’s purported argument that “neither
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`Carlson nor Lisogurski alone” render the claims obvious. (Reply at 23.) Omni
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`MedSci did not merely assert that the references “alone” fail to disclose the “pulse
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`rate” limitation. Omni MedSci’s Response went beyond that statement, as does this
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`Sur-reply, detailing why the references in comb
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