UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 9,651,533
`
`IPR Case No.: IPR2019-00916
`
`______________
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`
`
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`TABLE OF CONTENTS
`
`Table of Authorities ................................................................................................. iii
`
`List of Exhibits ........................................................................................................... v
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The Board should deny the Petition on procedural grounds ........................... 2
`
`A.
`
`B.
`
`The District Court will resolve the validity arguments before
`any IPR trial concludes ......................................................................... 4
`Petitioner does not identify any material differences between
`the Petition and the parallel ‘913 Petition ............................................. 6
`
`III. Claim Construction ........................................................................................10
`
`A.
`B.
`C.
`
`“Beam” and “optical beam” ................................................................10
`“Plurality of lenses”.............................................................................11
`“Pulse rate” ..........................................................................................12
`
`IV. The ‘533 Patent ..............................................................................................13
`
`A.
`
`B.
`
`The ‘533 Patent discloses innovative systems for making
`accurate non-invasive physiological measurements ...........................13
`Priority Date ........................................................................................15
`
`V.
`
`The Board should deny the Petition because Petitioner has failed to
`establish a reasonable likelihood of prevailing as to any claim ....................16
`
`A. Ground 1: Claims 5, 7-10, 13, 15-17 are not obvious over
`Lisogurski and Carlson ........................................................................16
`1.
`The combination of Lisogurski and Carlson does not
`teach the Increasing Limitation: a “light source
`configured to increase signal-to-noise ratio . . . by
`increasing a pulse rate of at least one of the plurality of
`semiconductor sources” ............................................................16
`The combination of Lisogurski and Carlson does not
`teach a “personal device” ..........................................................22
`The combination of Lisogurski and Carlson does not
`teach a “wearable measurement device” ..................................26
`Ground 2: Claims 8-9 and 16-17 are not obvious over
`Lisogurski, Carlson, and Mannheimer ................................................30
`
`2.
`
`3.
`
`B.
`
`VI. Conclusion .....................................................................................................30
`
`i
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`Certificate of Service ...............................................................................................32
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 .......................................33
`
`
`
`
`
`
`
`ii
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`
`Table of Authorities
`
`Cases
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc.,
`
`2013 WL 3984991 (Fed. Cir. 2013) ..............................................................26
`
`Comcast Cable Comms. v. Rovi Guides, Inc.,
`
`IPR2019-00232, Paper 14 at 12-13 (PTAB May 20, 2019) ............................ 6
`
`Cuozzo Speed Techs., LLC v. Lee,
`
`136 S.Ct. 2131 (2016) ...................................................................................... 2
`
`Depuy Spine, Inc. v. Medtronic Sofamor Danek,
`
`567 F.3d 1314 (Fed. Cir. 2009) .....................................................................20
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`
`688 F.3d 1342 (Fed. Cir. 2012) .....................................................................22
`
`KSR Int'l Co. v. Teleflex Inc.,
`
`550 U.S. 398 (2007).......................................................................................26
`
`NHK Spring Co., LTD v. Intri-Plex Technologies, Inc.,
`
`IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) ..............................4, 6
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) .................................................................5, 11
`
`
`
`Statutes
`
`35 U.S.C. § 314 ................................................................................................. 1- 5, 9
`35 U.S.C. § 315 ......................................................................................................3, 5
`35 U.S.C. § 316 ......................................................................................... 2, 3, 4, 5, 6
`35 U.S.C. § 324 .......................................................................................................... 3
`35 U.S.C. § 325 .......................................................................................................... 3
`
`
`
`
`
`iii
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`Other Authorities
`
`2011 U.S.C.C.A.N. 67, 69 ......................................................................................... 3
`
`H.R. Rep. No. 112–98, pt. 1, at 40 (2011) ................................................................. 3
`
`S. Rep. No. 110–259, at 20 (2008) ............................................................................ 3
`
`United States Patent and Trademark Office, Trial Practice Guide Update,
`
`84 Fed. Reg. 33925-33926 (July 15, 2019) ..................................................... 6
`
`United States Patent and Trademark Office, Trial Practice Guide Update,
`
`83 Fed. Reg. 39989 (August 13, 2018) .......................................................3, 4
`
`
`
`
`
`
`
`iv
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`
`
`
`List of Exhibits
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`No.
`2101
`
`2102
`
`2103
`2104
`2105
`2106
`2107
`
`2108
`2109
`2110
`
`2111
`
`Description
`Apple Inc.’s Final Election of Asserted Prior Art, filed in
`Omni MedSci, Inc. v. Apple Inc., Case No. 2:18-cv-134-RWS
`(E.D. Tex), May 24, 2019
`Scheduling Order, filed in Omni MedSci, Inc. v. Apple Inc.,
`Case No. 2:18-cv-134-RWS (E.D. Tex), June 19, 2018
`Reserved
`Reserved
`Reserved
`Reserved
`Claim Construction Memorandum Opinion and Order, filed
`in Omni MedSci, Inc. v. Apple Inc., Case No. 2:18-cv-134-
`RWS (E.D. Tex), June 24, 2019
`Reserved
`Reserved
`District Court Scheduling Notice, issued in Omni MedSci,
`Inc. v. Apple Inc., Case No. 2:18-cv-134-RWS (E.D. Tex),
`July 12, 2019
`Omni MedSci’s Amended Final Election of Asserted Claims,
`served in Omni MedSci, Inc. v. Apple Inc., Case No. 2:18-
`cv-134-RWS (E.D. Tex), May 7, 2019
`
`v
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`Omni MedSci, Inc. (“Patent Owner”), submits this Preliminary Response to
`
`the Petition for Inter Partes Review (“Petition,” Paper 1) filed by Apple Inc.
`
`(“Petitioner”) against claims 5, 7-10, 13, and 15-17 (“Challenged Claims”) of U.S.
`
`Patent No. 9,651,533 (“the ‘533 Patent”).
`
`I.
`
`Introduction
`
`The Petitioner fails to meet its burden on both procedural and substantive
`
`grounds.
`
`Procedurally, Petitioner waited until the last possible date to file parallel IPR
`
`petitions (this Petition and a petition in IPR2019-00913) against the ‘533 Patent.
`
`As a result, the parallel proceedings, if instituted, will conclude long after the
`
`district court adjudicates validity of the ‘533 Patent in the underlying litigation.
`
`Inter Partes Review (IPR) was designed as an efficient alternative to challenging
`
`the validity of a patent in litigation. But because of Petitioner’s delay, its parallel
`
`petitions act as an improper supplement to litigation – unnecessarily increasing
`
`cost and duplicating (triplicating) effort. The Board should deny the Petition under
`
`35 U.S.C. § 314(a) because: A) the district court will resolve the invalidity
`
`arguments before any trial on the Petition concludes; and B) Petitioner does not
`
`identify any material differences between the redundant grounds raised in the
`
`parallel petitions, which requires an inefficient use of the Board’s resources.
`
`1
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`The Petition also fails to meet its threshold burdens on the substantive
`
`merits.
`
`First, none of the cited references, alone or in combination, teaches: a “light
`
`source configured to increase signal-to-noise ratio [SNR] by increasing a light
`
`intensity from at least one of the plurality of semiconductor sources and by
`
`increasing a pulse rate of at least one of the plurality of semiconductor sources1”
`
`(“The Increasing Limitation”) as required by every Challenged Claim.
`
`Second, none of the cited references, alone or in combination, teach a “a
`
`personal device,” – as required by every Challenged Claim.
`
`Third, none of the cited references, alone or in combination, teach a “a
`
`wearable measurement device,” – as required by claim 13.
`
`Because the Petitioner fails to meet its burden on both procedural and
`
`substantive grounds, the Board should deny institution under 35 U.S.C. § 314(a).
`
`II. The Board should deny the Petition on procedural grounds
`
`The Board has discretion to deny institution. 35 U.S.C. § 314(a); see Cuozzo
`
`Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2140 (2016). The Board’s discretion is
`
`informed by 35 U.S.C. § 316(b), which requires the Board to consider “the
`
`efficient administration of the Office, and the ability of the Office to timely
`
`
`1 Claim language is italicized for ease of reference.
`
`2
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`complete proceedings.” The Board will also consider whether “the same or
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`substantially the same prior art or arguments previously were presented to the
`
`Office.” 35 U.S.C. § 325(d). The Board’s discretionary determination of whether
`
`or not to institute a review also considers “events in other proceedings related to
`
`the same patent, either at the Office, in district courts, or the ITC.” United States
`
`Patent and Trademark Office, Trial Practice Guide Update, 83 Fed. Reg. 39989,
`
`page 10 (August 13, 2018), https://go.usa.gov/xU7GP [“2018 TPG Update”]
`
`(emphasis added). See 83 Fed. Reg. 39989 (Aug. 13, 2018).
`
`Post Grant Review, including Inter Partes Review (IPR), was designed to be
`
`an efficient alternative to challenging patent validity in district court. Id. at 9. (The
`
`AIA was “designed to establish a more efficient and streamlined patent system that
`
`will improve patent quality and limit unnecessary and counterproductive litigation
`
`costs.”). H.R. Rep. No. 112–98, pt. 1, at 45 (2011), 2011 U.S.C.C.A.N. 67, 69
`
`(Post grant reviews were meant to be quick and cost effective alternatives to
`
`litigation to resolve questions of patent validity); see also S. Rep. No. 110–259, at
`
`20 (2008). To this end, the America Invents Act included specific provisions
`
`addressing IPR timeliness (e.g., § 315, § 316(a)(11)) and IPR scope (e.g., § 314,
`
`§ 316, § 325). Although the Petition is technically timely under § 315, the Board
`
`can exercise its discretion to decline to institute review based on scope
`
`considerations. See, e.g., 35 U.S.C. § 314(a), § 324(a), § 325(d).
`
`3
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`In this case, the Board should exercise its discretion, and deny institution
`
`because as explained below: A) the district court will resolve the validity
`
`arguments before any IPR trial concludes; B) the Petition contains significant
`
`overlap with Petitioner’s parallel petition in IPR2019-00913. Maintaining three
`
`proceedings challenging the validity of the ‘533 Patent, two before the Board and
`
`one in district court, would weigh against the “efficient administration of the
`
`Office;” therefore the Board should exercise its § 314 discretion and deny
`
`institution. 35 U.S.C. § 316(b); 2018 TPG Update at 10.
`
`A. The District Court will resolve the validity arguments
`before any IPR trial concludes
`
`The PTAB has found “that the advanced state of the district court
`
`proceeding is an additional factor that weighs in favor of denying the Petition
`
`under § 314(a).” NHK Spring Co., LTD v. Intri-Plex Technologies, Inc., IPR2018-
`
`00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (Precedential). The Board should
`
`exercise its discretion to deny the Petition under § 314(a) because the facts here are
`
`similar to those in NHK.
`
`Patent Owner has asserted the ‘533 Patent2 against Petitioner in district
`
`
`2 By district court rule, Patent Owner was required to reduce the number of
`
`asserted claims in the lawsuit and is currently asserting claims 5, 9, 13, 15, 16, and
`
`17 of the ‘533 Patent. (Ex. 2111.)
`
`4
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`court, and Petitioner was served with the complaint on April 10, 2018. (Ex. 1004.)
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`In district court, Petitioner is challenging the validity of the ‘533 Patent as obvious
`
`over at least eight different combinations of references, including: U.S. Patent No.
`
`9,241,676 to Lisogurski (Ex. 1011), U.S. Patent Application Publication No.
`
`2005/0049468 to Carlson et al. (Ex. 1009), and U.S. Patent No. 5,746,206 to
`
`Mannheimer (Ex. 1008), which are the same references asserted in this
`
`proceeding. (Ex. 2101 at 2; Petition at 3.) The district court set a trial date of
`
`February 18, 2020 (Ex. 2102 at 2) and, on July 12, 2019, the district court
`
`confirmed that the trial will proceed as scheduled in February 2020 (Ex. 2110).
`
`Petitioner waited until April 10, 2019, i.e., the last day possible under the 1-
`
`year time bar of 35 U.S.C. § 315(b), to file the Petition in this proceeding. The
`
`institution decision in this proceeding is due within three months of this
`
`preliminary response, i.e., by October 22, 2019, and if instituted, a final decision is
`
`due within a year of institution, i.e., by October 22, 2020 (35 U.S.C. §§ 314, 316),
`
`eight months after trial in the district court. Additionally, the PTAB now analyzes
`
`claim construction using the same Phillips standard used by the Courts. Phillips v.
`
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Since the district court will determine
`
`the validity of the ‘533 Patent, using the same claim construction standard, and
`
`over the same art in February 2020, the Board should exercise its § 314 discretion
`
`5
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`and deny institution. See NHK Spring Co., LTD, IPR2018-00752, Paper 8 at 20
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`(PTAB Sept. 12, 2018) (Precedential).
`
`B.
`
`Petitioner does not identify any material differences
`between the Petition and the parallel ‘913 Petition
`
`Petitioner filed parallel and substantially overlapping IPR petitions against
`
`the ‘533 patent but has not identified any material differences between them. The
`
`Board has denied institution of parallel proceedings filed by the same petitioner,
`
`challenging the same claims of the same patent, that fail to identify material
`
`differences between the art and arguments. See Comcast Cable Comms. v. Rovi
`
`Guides, Inc., IPR2019-00232, Paper 14 at 12-13 (PTAB May 20, 2019) (“We find
`
`that Petitioner does not identify sufficient differences between [the references in
`
`parallel petitions] to support the inefficiencies and costs associated with instituting
`
`on an additional petition here.”). Citing 35 U.S.C. § 316(b), the Board has stated
`
`that “[t]wo or more petitions filed against the same patent at or about the same time
`
`. . . may place a substantial and unnecessary burden on the Board and the patent
`
`owner and could raise fairness, timing, and efficiency concerns.” United States
`
`Patent and Trademark Office, Office Patent Trial Practice Guide Update, (July 15,
`
`2019),
`
`26
`
`[“2019
`
`TPG
`
`Update”].
`
`https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-
`
`update3.pdf. See 84 Fed. Reg. 33925-33926.
`
`6
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`In this proceeding, Petitioner is challenging claims 5, 7-10, 13, 15-17 of the
`
`‘533 Patent as obvious over three different grounds including combinations of the
`
`following references: 1) Lisogurski (Ex. 1011); 2) Carlson (Ex. 1009); and 3)
`
`Mannheimer (Ex. 1008). (Petition at 3.)
`
`Petitioner filed a parallel petition on April 10, 2019 in IPR2019-00913 (“the
`
`‘913 Petition”) challenging the same claims of the ‘533 Patent over combinations
`
`of the following references: 1) U.S. Patent Application Publication No.
`
`2012/0197093 to LeBoeuf et al. (Ex. 1005, “LeBoeuf/Valencell-0933”); 2) U.S.
`
`Patent Application Publication No. US 2010/0217099 to LeBoeuf et al. (Ex. 1006,
`
`“LeBoeuf/Valencell-099); 3) Carlson (Ex. 1009); and 4) Mannheimer (Ex. 1008).
`
`As illustrated by the table below, Petitioner’s grounds in the IPR2019-00913
`
`Petition challenge the same claims as in this Petition, but merely replace
`
`Lisogurski (Ex. 1011) with the combination of LeBoeuf/Valencell-093 (Ex. 1005)
`
`and LeBoeuf/Valencell-099 (Ex. 1006).
`
`
`3 Petitioner refers to Ex. 1005 as “Valencell-093” and Ex. 1006 as “Valencell-099”
`
`which adds unnecessary confusion because “Valencell” is not the name of any
`
`inventor of either reference. LeBoeuf is the first named inventor listed on both
`
`references, so Patent Owner refers to these references as “LeBoeuf/Valencell-093”
`
`and “LeBoeuf/Valencell-099.”
`
`7
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`Claims Challenged
`
`IPR2019-00913
`
`IPR2019-00916
`
`5, 7-10, 13, 15-17
`
`(1) LeBoeuf/Valencell-093 and
`
`Lisogurski and Carlson
`
`LeBoeuf/Valencell-099,
`
`(2) LeBoeuf/Valencell-093,
`
`LeBoeuf/Valencell-099, and
`
`Carlson
`
`8-9 and 16-17
`
`(1) LeBoeuf/Valencell-093,
`
`Lisogurski and
`
`LeBoeuf/Valencell-099, and
`
`Mannheimer
`
`Mannheimer
`
`(2) LeBoeuf/Valencell-093,
`
`LeBoeuf/Valencell-099, Carlson,4
`
`and Mannheimer
`
`
`Petitioner does not explain any material differences between Lisogurski and
`
`the LeBoeuf/Valencell-093 and LeBoeuf/Valencell-099 combination. Further, both
`
`IPR Petitions are the same in the following ways:
`
`First, Petitioner asserts that the same claim terms – “beam,” “plurality of
`
`lenses,” and “pulse rate” – require construction. (Compare ‘916 Petition at 18-20
`
`with the ‘913 Petition at 20-22.)
`
`
`4 Petitioner describes Ground 3 of the 913 Petition as two grounds: “with and
`
`without Carlson.” (Petition at 4.)
`
`8
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`Second, Petitioner relies on the same expert, Brian W. Anthony, in both
`
`Petitions.
`
`Third, both Petitions rely on Carlson for satisfying the “increasing a pulse
`
`rate” portion of the Increasing Limitation of claims 5 and 13, i.e., increasing the
`
`signal-to-noise ratio by “increasing a pulse rate of at least one of the plurality of
`
`semiconductor sources.” (Compare ‘916 Petition at 27, 37-38 with the ‘913
`
`Petition at 64, 67-68.)
`
`Fourth, both Petitions rely on Mannheimer for satisfying the Arrangement
`
`Limitation of claims 8-9 and 16-17, i.e., “wherein the receiver is located a first
`
`distance from a first one of the plurality of light emitting diodes and a different,
`
`second distance from a second one of the plurality of light emitting diodes such
`
`that the receiver receives a first signal from the first light emitting diode and a
`
`second signal from the second light emitting diode.” (Compare ‘916 Petition at 66-
`
`68 with the ‘913 Petition at 69-72.)
`
`By choosing to present six different grounds challenging the same claims
`
`without identifying any material differences in the references, Petitioner seeks
`
`review of redundant arguments, contrary to the purpose of IPR and the directive to
`
`ensure efficient use of the Board’s finite resources. 35 U.S.C. § 314(a).
`
`
`
`
`
`9
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`III. Claim Construction
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`Petitioner proposes construing the terms: “beam,” “plurality of lenses,” and
`
`“pulse rate.” (Petition at 18-20.) Patent Owner agrees with Petitioner’s proposed
`
`construction for “pulse rate” but disputes its proposed construction for “[optical]
`
`beam” and “plurality of lenses.” Petitioner proposed the same constructions for
`
`these terms in litigation, and the district court rejected Petitioner’s proposed
`
`constructions in a Claim Construction Memorandum Opinion and Order issued on
`
`June 24, 2019. (Ex. 2107.) Patent Owner agrees with the district court’s
`
`construction of the terms “[optical] beam” and “plurality of lenses,” and the Board
`
`should use the same constructions for the reasons articulated in the district court’s
`
`Claim Construction Order.
`
`A.
`
`“Beam” and “optical beam”
`
`The ‘533 Patent expressly defines the term “optical beam” as “photons or
`
`light transmitted to a particular location in space.” (Ex. 1001, 9:28-31.) While
`
`Petitioner quotes this definition, it immediately tries to change the definition by
`
`adding further limitations not part of the express definition in the patent. The
`
`district court rejected the Petitioner’s attempt to limit the express definition and
`
`adopted the definition in the patent. (Ex. 2107 at 7-9.) (“Accordingly, the Court
`
`construes ‘beam’ as ‘photons or light transmitted to a particular location in
`
`space.’”) Although the district court construed the term “beam” alone, Patent
`
`10
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`Owner and Petitioner both agree that this construction also applies to “optical
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`beam” because the terms are synonymous and defined in the patent. Under
`
`Phillips, the only proper construction of “optical beam” is the definition in the
`
`‘533 Patent. Phillips, 415 F.3d at 1316 (“[O]ur cases recognize that the
`
`specification may reveal a special definition given to a claim term by the patentee
`
`that differs from the meaning it would otherwise possess. In such cases, the
`
`inventor's lexicography governs.”)
`
`B.
`
`“Plurality of lenses”
`
`Petitioner proposed construing the term “plurality of lenses” as used in
`
`claims 5 and 13 to mean “two or more transparent surfaces used to collimate (make
`
`parallel) or focus rays of light.” (Petition at 19-20.) Petitioner proposed a similar
`
`construction in litigation, i.e., “a plurality of transparent surfaces used to collimate
`
`(make parallel) or focus rays of light” in litigation. (Ex. 2107 at 10.)
`
`Patent Owner disagrees with this proposed construction. Petitioner’s
`
`proposed
`
`construction
`
`improperly
`
`imports
`
`limitations
`
`from
`
`exemplary
`
`embodiments of lenses.
`
`The term “lens,” as used in the ‘533 Patent and in the art, includes diverging
`
`and complex lenses as well as collimating and focusing lenses. (Ex. 1001 at 17:7–
`
`10, 20:12–26; Ex. 1041 at 481-482; Ex. 1046 at 712.)
`
`11
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`As the district court held, the term “lenses” should be broadly understood to
`
`include all types of lenses, including diverging and complex lenses. (Ex. 2107 at
`
`11-12, see also Ex. 1001, Fig. 16A, 5:11–15.) A lens may take light and focus it
`
`onto a smaller area, but it may also take light and direct it onto a larger area. Id.
`
`Nothing in the ‘533 Patent claims or descriptions limits the “lenses” term to the
`
`former. Id. Nor does the goal of increasing the signal-to-noise ratio require a
`
`focusing or collimating lens. Id. Rather, the ‘533 patent describes various
`
`exemplary ways of increasing the signal-to-noise ratio, such as increasing the light
`
`intensity at the source, differencing signals, and increasing the pulse rate of the
`
`source, but none of these examples mention, let alone require, focusing the light to
`
`increase the signal-to-noise ratio. Id.
`
`Accordingly, the term “plurality of lenses” should be given its plain and
`
`ordinary meaning. Likewise, the district court determined that the term “lenses”
`
`“has its plain and ordinary meaning without the need for further construction. (Ex.
`
`2107 at 13.)
`
`C.
`
`“Pulse rate”
`
`Petitioner proposed construing the term “pulse rate” as used in claims 5 and
`
`13 to mean a “number of pulses of light per unit of time.” (Petition at 20.)
`
`Petitioner and Patent Owner agreed to the same construction in litigation, and
`
`Patent Owner agrees with Petitioner’s proposed construction of “pulse rate” here.
`
`12
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`IV. The ‘533 Patent
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`A. The ‘533 Patent discloses innovative systems for making
`accurate non-invasive physiological measurements
`
`The ‘533 Patent is directed to measurement systems for making accurate
`
`non-invasive physiological measurements of a material or substance. (See e.g., Ex.
`
`1001, 8:30–34; 3:66-4:32.) For example, the ’533 Patent discloses using
`
`spectroscopy to inspect a sample “by comparing different features, such as
`
`wavelength (or frequency), spatial location, transmission, absorption, reflectivity,
`
`scattering, fluorescence, refractive index, or opacity.” Id. at 8:30–34. This may
`
`entail measuring various optical characteristics of the sample as a function of the
`
`wavelength of the source light by varying the wavelength of the source light or by
`
`using a broadband source of light. Id. at 8:35–46.
`
`The ‘533 Patent claims recite a “light source” that generates “an output
`
`optical beam,” “a receiver configured to receive and process at least a portion of
`
`the analysis output beam” and various techniques to address challenges that arise
`
`with
`
`taking physiological measurements. The Challenged Claims
`
`include
`
`independent claims 5 and 13. Independent claim 5 is representative and reproduced
`
`below with emphasis added to the Increasing Limitation and the personal device
`
`limitation:
`
`
`
`13
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`
`5. A measurement system comprising:
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`a light source comprising a plurality of semiconductor sources
`
`that are light emitting diodes, the light emitting diodes
`
`configured to generate an output optical beam with one or more
`
`optical wavelengths, wherein at least a portion of the one or
`
`more optical wavelengths
`
`is a near-infrared wavelength
`
`between 700 nanometers and 2500 nanometers,
`
`the light source configured to increase signal-to-noise ratio
`
`by increasing a light intensity from at least one of the plurality
`
`of semiconductor sources and by increasing a pulse rate of at
`
`least one of the plurality of semiconductor sources;
`
`an apparatus comprising a plurality of lenses configured to
`
`receive a portion of the output optical beam and to deliver an
`
`analysis output beam to a sample
`
`a receiver configured to receive and process at least a portion of
`
`the analysis output beam reflected or transmitted from the
`
`sample and to generate an output signal, wherein the receiver is
`
`configured to be synchronized to the light source;
`
`a personal device comprising a wireless receiver, a wireless
`
`transmitter, a display, a microphone, a speaker, one or
`
`more buttons or knobs, a microprocessor and a touch
`
`screen, the personal device configured to receive and
`
`process at least a portion of the output signal, wherein the
`
`personal device is configured to store and display the
`
`processed output signal, and wherein at least a portion of
`
`14
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`the processed output signal is configured to be transmitted
`
`over a wireless transmission link; and
`
`a remote device configured to receive over the wireless
`
`transmission link an output status comprising the at least a
`
`portion of the processed output signal, to process the received
`
`output status to generate processed data and to store the
`
`processed data.
`
`Increasing Limitation: The ‘533 Patent describes various techniques for
`
`improving the signal-to-noise ratio (SNR) of the measurement. For example, the
`
`SNR may be improved by increasing the light intensity from the light source. See,
`
`e.g., Ex. 1001 at 4:15–17 (“More light intensity can help to increase the signal
`
`levels, and, hence, the signal-to-noise ratio.”). The source light may be pulsed, and
`
`the pulse rate may be increased to improve the signal-to-noise ratio. See, e.g., id. at
`
`5:11–15 (“The light source is configured to increase signal-to-noise ratio by
`
`increasing a light intensity from at least one of the plurality of semiconductor
`
`sources and by increasing a pulse rate of at least one of the plurality of
`
`semiconductor sources.”).
`
`B.
`
`Priority Date
`
`The ‘533 Patent was filed as U.S. application No. 14/875,709 on October 6,
`
`2015 and issued on May 16, 2017. (Ex. 1001 at 1.) The ‘709 Application is a
`
`continuation of U.S. application No. 14/108,986 which was filed on December 17,
`
`15
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`2013 and issued as U.S. Patent No. 9,164,032. The ‘709 Application also claims
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`the benefit of, and priority to, Provisional application No. 61/747,487 that was
`
`filed on December 31, 2012. (Ex. 1001 at 1-2.)
`
`Patent Owner accepts Petitioner’s assertion that the ‘533 Patent’s priority
`
`date for all challenged claims is December 17, 2103.
`
`V. The Board should deny the Petition because Petitioner has failed
`to establish a reasonable likelihood of prevailing as to any claim
`
`A. Ground 1: Claims 5, 7-10, 13, 15-17 are not obvious over
`Lisogurski and Carlson
`
`1.
`
`The combination of Lisogurski and Carlson does not
`teach the Increasing Limitation: a “light source
`configured to increase signal-to-noise ratio . . . by
`increasing a pulse rate of at least one of the plurality of
`semiconductor sources”
`
`Independent claims 5 and 13, from which all other claims at issue depend,
`
`both require: “the light source configured to increase signal-to-noise ratio by
`
`increasing a light intensity from at least one of the plurality of semiconductor
`
`sources and by increasing a pulse rate of at least one of the plurality of
`
`semiconductor sources. . . .” (Emphasis added.)
`
`Petitioner asserts that Lisogurski teaches increasing the firing rate (the pulse
`
`rate) to increase signal to-noise ratio. (Petition at 35-36.) However, the Lisogurski
`
`quote relied upon by Petitioner discloses “[t]he system may increase the brightness
`
`of the light sources in response to the noise to improve the signal-to-noise ratio”
`
`16
`
`

`

`Case No.: IPR2019-00916
`Patent No.: 9,651,533
`
`
`(Petition at 36, quoting Ex. 1011, 9:46-52) – i.e., Lisogurski teaches increasing
`
`Atty. Dkt. No.: OMSC0110IPR2
`
`signal-to-noise ratio “by increasing the light intensity,” not “by increasing a pulse
`
`rate.”
`
`Petitioner also misleadingly asserts that: (1) Lisogurski “teaches that the
`
`sampling rate and LED firing rate can be varied for the same reasons that light
`
`brightness is varied” and quotes the following from Lisogurski: “the earlier
`
`described embodiments relating to varying light output may also apply to sampling
`
`rate;” and that (2) “Lisogurski also explains that increasing the sampling rate ‘may
`
`result in more accurate and reliable physiological information.’” (Petition at 36,
`
`quoting Ex. 1011, 35:7-9 and 33:56-58.)
`
`However, “sampling rate” has nothing to do with adjusting the firing rate of
`
`the LEDs. Instead, the sampling rate is the rate at which received signals are
`
`processed – and in particular to the rate at which the analog to digital converter
`
`samples the signals. (See Ex. 1011, 10:23-26 (“In some embodiments, the system
`
`may optimize power con