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. 10,188,299
`
`IPR Case No.: IPR2020-00175
`
`
`______________
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
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`

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`Case No.: IPR2020-00175
`Patent No.: 10,188,299
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`Atty. Dkt. No.: OMSC0117IPR1
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`Table of Contents
`
`Table of Contents .................................................................................................... i
`
`Table of Authorities ............................................................................................... ii
`
`List of Exhibits .................................................................................................... iiv
`
`Table of Abbreviations .......................................................................................... v
`
`A.
`
`B.
`
`Claim construction ............................................................................. 1
`
`Apple has failed to show that Lisogurski alone discloses the
`pulse rate limitation ........................................................................... 1
`
`1.
`
`2.
`
`Apple’s abstract arguments about what may happen
`“generally” do not prove that Lisogurski’s cardiac cycle
`modulation increases SNR by increasing a pulse rate............... 1
`
`Apple’s remaining Lisogurski-alone arguments fail to
`show that Lisogurski teaches or suggests the pulse rate
`limitation ................................................................................. 3
`
`C.
`
`Apple has failed to show that Lisogurski and Carlson render the
`pulse rate limitation obvious .............................................................11
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Apple does not dispute that Lisogurski already uses the
`1000Hz modulation that Apple cites from Carlson..................11
`
`Apple presents improper new, unsupported, and
`inaccurate attorney argument that Carlson discloses
`shifting LED modulation frequencies......................................12
`
`Apple does not dispute that its Petition failed to make the
`Board’s new “0Hz” pulse rate argument and Apple does
`not make that argument in Reply ............................................15
`
`Apple’s flawed reasons for combining Lisogurski and
`Carlson do not prove obviousness ...........................................17
`
`Apple makes two unfounded arguments in response to
`Omni’s point that the Lisogurski+Carlson combination
`changes Lisogurski’s “principle of operation” ........................18
`
`D.
`
`Conclusion ........................................................................................20
`
`Certificate of Service .......................................................................................... 211
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 .................................... 222
`
`i
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`Table of Authorities
`
`Cases
`
`Broadcom Corp. v. Emulex Corp.,
`
`732 F.3d 1325 (Fed. Cir. 2013) .................................................................... 8
`
`Hulu, LLC v. Sound View Innovations, LLC,
`
`IPR2018-00582, Paper No. 34 (PTAB Aug. 5, 2019)..................................14
`
`Hunting Titan, Inc., v. Dynaenergetics Europe GmbH,
`
`IPR2018-00600, Paper 67 (Precedential Opinion Panel) (PTAB 2020) ........ 5
`
`In re Magnum Oil Tools Int'l, Ltd.,
`
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................... 5, 11
`
`In re Michlin,
`
`256 F.2d 317 (C.C.P.A. 1958)...................................................................... 7
`
`In re NuVasive, Inc.,
`
`841 F.3d 966 (Fed. Cir. 2016) ................................................................. 5, 11
`
`KSR Int’l. Co. v. Teleflex Inc.,
`
`550 U.S. 398 (2007) ....................................................................................12
`
`ParkerVision v. Qualcomm Inc.,
`
`903 F.3d 1354 (Fed. Cir. 2018) ................................................................. 7-8
`
`Rovalma, SA v. Bohler-Edelstahl GmbH & Co. KG,
`
`856 F.3d 1019 (Fed. Cir. 2017) ...................................................................16
`
`SAS Inst. Inc. v. Iancu,
`
`138 S. Ct. 1348 (2018) ........................................................................ 5-6, 16
`
`Sirona Dental Sys. GmbH v. Institut Straumann AG,
`
`892 F.3d 1349 (Fed. Cir. 2018) ......................................................... 5, 11, 16
`
`
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`ii
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`Statutes
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`Atty. Dkt. No.: OMSC0117IPR1
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`35 U.S.C. §312 ................................................................................................... 5, 6
`
`Other Authorities
`
`Consolidated Trial Practice Guide (Nov. 2019).....................................................14
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`
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`iii
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`List of Exhibits
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`Atty. Dkt. No.: OMSC0117IPR1
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`Description
`
`No.
`2101-2103 Reserved
`U.S. Patent No. 9,651,533 to Islam, issued May 16, 2017,
`(“the ‘533 Parent Patent”)
`U.S. Patent No. 9,757,040 to Islam, issued September 12,
`2017, (“the ‘040 Related Patent”)
`2106-2119 Reserved
`2120
`PCT Application Serial No. PCT/US2013/075767
`(Publication No. WO/2014/143276)
`U.S. Patent Application Serial No. 14/109,007 (Publication
`No. 2014/0236021)
`Declaration of Duncan L. MacFarlane, Ph.D., P.E.
`Curriculum Vitae of Duncan L. MacFarlane, Ph.D., P.E.
`Board’s Institution Decision, IPR2019-000916, Paper 16,
`October 18, 2019 (“916 DI”)
`Omni MedSci Patent Owner Preliminary Response,
`IPR2019-00916, Paper 23, January 31, 2020
`Apple Exhibit P, Omni MedSci, Inc. v. Apple Inc., EDTX
`Case No. 2:18cv134 (“Lisogurski Claim Charts”)
`Apple Exhibit N, Omni MedSci, Inc. v. Apple Inc., EDTX
`Case No. 2:18cv134 (“Carlson Claim Charts”)
`Apple Amended Answer, Affirmative Defenses, and
`Counterclaims, Omni MedSci, Inc. v. Apple Inc., EDTX Case
`No. 2:18cv134 (Dkt. 38, July 19, 2018)
`Apple Exhibit Y, Omni MedSci, Inc. v. Apple Inc., EDTX
`Case No. 2:18cv134 (“Park Claim Charts”)
`Best Practices and FAQs for Filing Requests for
`Reexamination Compliant with 37 C.F.R. §§1.510 and 1.915,
`PTAB, May 2010
`Declaration of Duncan L. MacFarlane, Ph.D., P.E. in Support
`of Patent Owner’s Response to Petition
`
`2104
`
`2105
`
`2121
`
`2122
`2123
`2124
`
`2125
`
`2126
`
`2127
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`2128
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`2129
`
`2130
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`2131
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`
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`Table of Abbreviations
`
`
`-916FWD
`CCM
`DCM
`DI
`
`POPR
`POR
`SNR
`
`IPR2019-00916 Final Written Decision
`cardiac cycle modulation
`drive cycle modulation
`Decision on Institution (Paper 11)
`Patent Owner’s Preliminary Response (Paper 6)
`Patent Owner’s Response (Paper 13)
`signal-to-noise ratio
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`v
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`A. Claim construction
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`Neither party asked the Board to construe the pulse rate limitation. In the
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`Institution Decision (“DI,” Paper 11), the Board “determine[d] that construction of
`
`[the pulse rate limitation] is not required” in part because “the claim limitation at
`
`issue in IPR2019-00916 is not the same limitation.” (DI, p.19.) Apple’s Reply does
`
`not dispute that determination and does not dispute that the limitation is “sufficiently
`
`clear as written and needs no construction.” (POR, p.10.) So, it is undisputed that
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`the pulse rate limitation requires a system “configured to” increase SNR (not merely
`
`“capable of” doing so) by increasing the pulse rate of the semiconductor source from
`
`an initial pulse rate.
`
`B. Apple has failed to show that Lisogurski alone discloses the pulse
`rate limitation
`
`1.
`
`Apple’s abstract arguments about what may happen
`“generally” do not prove that Lisogurski’s cardiac cycle
`modulation increases SNR by increasing a pulse rate
`
`Apple argues, in the abstract, that increasing an LED pulse rate “will generally
`
`increase the SNR.” (Reply, pp.3-6.) Apple supports its argument by selective
`
`quotation from Dr. MacFarlane’s testimony and ignores the following response to a
`
`question from Apple’s attorney:
`
`Q. Would you agree that when you increase the pulse rate of an
`
`LED, one of three things could happen: signal-to-noise ratio
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`would increase, signal-to-noise ratio would decrease, or signal-
`
`to-noise ratio would stay the same?
`
`A.
`
`I believe that to be true.
`
`(Ex.1065(39:19-40:4).)
`
`That “one of three things could happen,” in the abstract and untethered to any
`
`prior art reference, is not evidence that Lisogurski’s device is configured to increase
`
`SNR by increasing firing rate during cardiac cycle modulation (“CCM”), as Apple
`
`asserts. On the contrary, as Omni’s expert explained (undisputed by Apple in Reply)
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`Lisogurski’s “slight change[s]” in CCM firing rate “would have no measurable
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`effect on SNR” because they are always in “the frequency range of the noise.”
`
`(Ex.2131(¶81).) Omni challenged Apple to supply evidence that Lisogurski’s “tiny
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`adjustments increase SNR.” (POR, p.15.) Apple’s did not meet that challenge and
`
`the Reply includes no such evidence. Apple has no evidence that CCM’s tiny
`
`increases in LED firing rate (to match changing cardiac signals) increases SNR. On
`
`the contrary, Lisogurski teaches (1) to deactivate CCM and instead output
`
`“continuous light” in the presence of “high noise levels,” and (2) modulate the light
`
`at a fixed high-frequency drive cycle modulation (e.g., 1000Hz) independent of
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`CCM. (Ex.1011, 9:4-6; 9:57-60; 6:26-30.) Nowhere does Lisogurski disclose a
`
`system configured to increase an initial pulse rate to increase SNR as claimed.
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`Apple also cites the Board’s comment from the Final Written Decision in
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`IPR2019-00916 (“-916FWD”): “a light source is ‘configured’ to increase signal-to-
`
`noise by increasing LED pulse rate when it is ‘capable’ of doing so, i.e., when the
`
`increased pulse rate allows the device to operate in a frequency range having less
`
`environmental noise.” (Reply, pp.10-11.)1 But Apple ignores that the Board’s
`
`statement does not apply universally. As the Board said, it applies only “when the
`
`increased pulse rate allows the device to operate in a frequency range having less
`
`environmental noise.” (-916FWD, p.30.) As explained at POR14-15 (and
`
`undisputed by Apple), in CCM, the pulse rate never “operate[s] in a frequency range
`
`having less environmental noise”—it operates only between 0.5 to 3 Hz, where the
`
`noise exists. (Ex.2131(¶81).) Apple fails to show that CCM is even “capable of”
`
`increasing SNR by increasing LED pulse rate, let alone “configured to” do so as the
`
`claims require.
`
`2.
`
`Apple’s remaining Lisogurski-alone arguments fail to show
`that Lisogurski teaches or suggests the pulse rate limitation
`
`Apple asserts that Lisogurski discloses “a device configured to increase the
`
`firing rate (‘pulse rate’) of at least one of its LEDs.” (Reply, p.6, italics in original.)
`
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`1 All emphasis added unless otherwise noted.
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`3
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`That broad statement, however, does not prove Lisogurski is configured to increase
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`SNR by increasing a pulse rate.
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`Apple further asserts, incorrectly, that “Omni has admitted” Lisogurski
`
`discloses “increasing the LED firing rate for the purpose of increasing SNR.”
`
`(Reply, p.7.) Omni made no such admission. Omni merely acknowledged
`
`Lisogurski’s teaching that CCM—in comparison to a system lacking CCM
`
`altogether—may improve SNR. (POPR, p.16.) Omni has never admitted, and has
`
`consistently disputed, that Lisogurski discloses a system configured to increase an
`
`initial pulse rate to increase SNR as claimed. Apple also cites “-916FWD, 29-30.”
`
`(Reply, p. 7.) But that analysis was based on the ‘533 patent’s “pulse rate”
`
`limitation, which, as the Board confirmed “is not the same limitation” as the one
`
`here. (DI, p. 19.) Apple has not met its burden of showing that the -916FWD
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`analysis applies to the different pulse rate limitation here.
`
`Apple’s reliance on the -916FWD29-30 analysis is wrong procedurally and
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`substantively. Procedurally, Apple’s arguments are improper because Apple did not
`
`make them in its Petition. In -916FWD, the Board quoted Lisogurski 42:50–54 to
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`conclude “increasing the LED firing rate to become synchronous with the systole
`
`period of an increased cardiac cycle rate can result in a physiological measurement
`
`having less noise (1.9%), and, therefore, an increased signal-to-noise ratio.”
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`(-916FWD29.) Apple’s Petition did not cite (let alone make an argument based on)
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`42:50–54. And Apple did not mention the Figure 26 discussed in 42:50–54. Apple’s
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`expert likewise does not cite or discuss 42:50–54 or Figure 26.
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`Arguments made for the first time in a reply are improper. In re NuVasive,
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`Inc., 841 F.3d 966, 972-73 (Fed. Cir. 2016) (improper for Board to rely on
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`petitioner’s new reply arguments). And the Board may not find claims unpatentable
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`based on arguments not made in the Petition. Sirona Dental Sys. GmbH v. Institut
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`Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (“It would thus not be proper
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`for the Board to deviate from the grounds in the petition and raise its own
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`obviousness theory.”); In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1380-81
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`(Fed. Cir. 2016) (“we find no support for the PTO's position that the Board is free to
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`adopt arguments on behalf of petitioners that could have been, but were not, raised
`
`by the petitioner during an IPR”); Hunting Titan, Inc., v. Dynaenergetics Europe
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`GmbH, IPR2018-00600, Paper 67 at 20 (Precedential Opinion Panel) (PTAB 2020)
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`(“The public interest is not well-served by the Office filling in gaps intentionally left
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`void by IPR petitioners. To the contrary, doing so would reduce incentives for
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`petitioners to bring out the best arguments and would in the long run reduce the
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`integrity of the patent system.”) These requirements arise from the statutory
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`requirement that an IPR petition must identify “with particularity, [for] each claim
`
`challenged, the grounds on which the challenge to each claim is based[.]” 35 U.S.C.
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`§312(a)(3) (2011); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (“[T]he
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`statute envisions that a petitioner will seek an inter partes review of a particular
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`kind—one guided by a petition describing … ‘the grounds on which the challenge
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`to each claim is based.’ §312(a)(3).”). The Board may not find the claims
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`unpatentable based on its -916FWD grounds—grounds Apple did not assert here.
`
`Substantively, Apple’s reliance on Lisogurski’s disclosure at 42:50–54 is
`
`wrong. That section of Lisogurski does not disclose increasing SNR by increasing
`
`LED firing rate. It merely reports the results of test measurements performed on
`
`segments of the cardiac cycle (PPG, systole and diastole) to determine contributions
`
`of noise. Lisogurski does not discuss or even mention “increasing the LED firing
`
`rate to become synchronous with the systole period of an increased cardiac cycle
`
`rate,” contrary to the Board’s -916FWD conclusion.
`
`Apple also asserts that Lisogurski teaches the pulse rate limitation by citing
`
`its expert’s improper conflation of the terms “sampling rate” and “firing rate.”
`
`(Reply, p.9.) The Challenged Claims do not recite increasing a “sampling rate.”
`
`And Lisogurski never says its system is configured to increase the firing rate by
`
`increasing the sampling rate. As the DI explained, “when Lisogurski teaches
`
`‘varying light output may also apply to sampling rate,’ Lisogurski is teaching
`
`varying the sampling rate to be synchronous with the cardiac cycle, not to improve
`
`signal-to-noise.” (DI, p. 48.)
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`6
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`Apple asserts, “the skilled person considering Lisogurski’s cardiac cycle
`
`modulation would have understood that when Lisogurki’s [sic] device increases the
`
`LED firing rate in this manner, it would increase the signal relative to the noise (e.g.,
`
`ambient light) in the measurement, and thus would increase SNR.” (Reply, p.9.)
`
`Apple’s only support for that claim is a citation to Omni’s expert’s testimony where
`
`he opined—in the abstract—that SNR may increase, decrease, or stay the same if
`
`pulse rate increases. (Ex.1065(39:19-40:4).) But, as explained in §I.B.1 above,
`
`Apple cites no evidence that Lisogurski’s CCM firing rate changes to increase SNR,
`
`as the claims require. Dr. MacFarlane’s testimony stands unrefuted: “Such a slight
`
`change in [Lisogurski’s CCM] firing rate would have no measurable effect on SNR.”
`
`(Ex.2131(¶81).)
`
`Apple next contends that Omni’s acknowledgment that Lisogurski uses CCM
`
`to increase SNR is an admission that Lisogurski increases pulse rate to increase SNR.
`
`(Reply, p.9.) On the contrary, Lisogurski teaches the firing rate increase only to
`
`maintain SNR by matching the changes in the PPG cardiac cycle. (Ex.2131(¶80).)
`
`Apple quotes ParkerVision (pp.9-10), but that case supports Omni, not Apple.2 As
`
`
`2 Apple also cites In re Michlin, 256 F.2d 317, 320 (C.C.P.A. 1958), but it is not
`
`clear why. Michlin did not involve the claim term “configured to” at issue here (or
`
`even “capable of”).
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`7
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`ParkerVision explains, the language of the claims is key to deciding if a claim recites
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`a mere “capability” or a necessary “configuration”:
`
`ParkerVision correctly recognizes that our cases distinguish between
`
`claims with language that recites capability, and those that recite
`
`configuration … . The language used in the claims is critical to
`
`deciding on which side of this line the claims fall.
`
`ParkerVision v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018).
`
`ParkerVision is inapposite because “the claims [in ParkerVision] fall squarely
`
`on the ‘capable of’ side of the line,” 903 F.3d at 1361. Here, the pulse rate limitation
`
`unequivocally recites “configured to.” And Apple’s decision not to seek a “capable
`
`of” construction means Apple cannot rely on the -916FWD rationale (which
`
`construed the different limitation there as “capable of”).
`
`Apple also cites Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1333 (Fed.
`
`Cir. 2013) for the proposition, “It is well settled that an [apparatus] that sometimes,
`
`but not always, embodies a claim[] nonetheless satisfies the claim.” (Reply, p.11,
`
`brackets in original; internal quotation marks omitted.) That case does not apply
`
`here because (1) Apple lacks evidence that the tiny firing rate increase during CCM
`
`ever “embodies” the Challenged Claims and (2) Apple presented no evidence
`
`contradicting Dr. MacFarlane’s affirmative testimony that no measurable SNR
`
`increase occurs (Ex. 2131(¶81)).
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`Apple next quotes the Board’s “external factor” discussion in the -916FWD
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`to argue (for the first time) that “the claim is directed to the device itself, regardless
`
`of the environment in which it operates.” (Reply, p.11.) That argument fails for
`
`four reasons.
`
`First, the -916FWD “external factor” analysis does not apply here because the
`
`Board based that discussion on a “capable of” analysis of the ‘533 patent’s (different)
`
`“pulse rate” limitation. Here, there is no “capable of” pulse rate construction
`
`requested by Apple or made by the Board.
`
`Second, the argument is wrong. The Petition grounded its arguments on the
`
`presence of environmental noise and its relevance to the claimed invention:
`
`Lisogurski teaches alteration of the light drive parameters of the LEDs
`
`in response to “the level of noise, ambient light, [or] other suitable
`
`reasons,” and that “increas[ing] the brightness of the light sources in
`
`response to [increased level of background] noise to improve the
`
`signal-to-noise ratio.” Ex.1011, 9:46-52; id., 5:55-6:6 (discussing
`
`modulation techniques and “conventional servo algorithms” for
`
`adjusting the signals emitted by the LEDs), 1:67-2:3; Ex.1003, ¶135. It
`
`also explains that changes to the light drive parameters can be used to
`
`mitigate the effects of noise, motion, or ambient light, for example, to
`
`thereby increase the signal-to-noise ratio. Ex.1011, 5:57-61; 9:46-52,
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`9:57-60, 14:49-55, 35:5-9 (“It will also be understood that the earlier
`
`described embodiments relating to varying light output may also apply
`
`to sampling rate.”); Ex.1003, ¶136.
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`(Pet., pp.43-44.)3
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`
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`Apple has never asserted—and has no evidence—that Lisogurski teaches
`
`altering CCM without “noise, ambient light, [or] other suitable reasons,” as it now
`
`argues.
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`Third, Apple has no record support for its argument that SNR increases absent
`
`environmental noise. The sole cite for Apple’s new argument is “Ex.1011, 41:46-
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`52,” where Lisogurski discusses CCM in “Gaussian noise of 0-5 Hz.” That Gaussian
`
`noise surrounds any firing rates used for CCM (“about 0.5 Hz to 3 Hz”)
`
`(Ex.2131(¶81)), so Apple has no support for its claim that Lisogurski changes LED
`
`
`3 See also Reply, pp.9,12-13: “[T]he skilled person considering Lisogurski’s cardiac
`
`cycle modulation would have understood that when Lisogurki’s [sic] device
`
`increases the LED firing rate in this manner, it would increase the signal relative to
`
`the noise (e.g., ambient light) in the measurement, and thus would increase SNR”;
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`“Lisogurski teaches that its device can detect changes in background noise and
`
`ambient light, and that in response, the device can alter the light drive parameters or
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`modulation techniques used”; and “Lisogurski explains that ‘the system may alter
`
`the cardiac cycle modulation technique based on the level of noise, ambient light,
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`or other suitable reasons.’”
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`firing rates absent noise. How could a device be configured to the “increase signal-
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`Atty. Dkt. No.: OMSC0117IPR1
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`to-noise ratio” in the absence of “noise”?
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`Fourth, this is yet another improper argument Apple did not make in its
`
`Petition. The Petition does not mention Lisogurski column 41 and Apple made no
`
`argument regarding Figure 26 (the focus of the paragraph Apple cites). Neither the
`
`Petition nor Apple’s expert asserted that an increase of SNR resulting from an
`
`increase in LED pulse rate “depends on an external factor—the noise spectrum in
`
`the environment within which the device operates.” (Reply, p.11.) This is a new
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`argument in violation of the Administrative Procedures Act and Federal Circuit
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`precedent of Sirona, NuVasive, and Magnum Oil.
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`Apple has failed to show Lisogurski alone discloses using CCM to increase
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`SNR by increasing a pulse rate. This comports with the Board’s finding that “the
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`LED firing rate is varied to become or remain synchronous with a cardiac cycle, not
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`to increase signal-to-noise” (DI, p.47) and Lisogurski’s teaching to deactivate CCM
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`in the presence of noise (Ex.1011, 9:4-6; 9:57-60).
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`C. Apple has failed to show that Lisogurski and Carlson render the
`pulse rate limitation obvious
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`1.
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`Apple does not dispute that Lisogurski already uses the
`1000Hz modulation that Apple cites from Carlson
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`As its reason to combine Carlson with Lisogurski, Apple asserts Carlson adds
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`something missing in Lisogurski: “The salient point is that Carlson teaches that when
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`ambient light is present, SNR can be increased by increasing a pulse rate of an LED
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`to a frequency range that mitigates ambient noise. … Thus, the combined teachings
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`of Lisogurski and Carlson suggest a device that meets the claims.” (Reply, p.21.)
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`This claim is the basis for all arguments Apple makes for the Lisogurski+Carlson
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`combination. (Reply pp.21-23.) But Apple ignores that Lisogurski already discloses
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`and uses this “salient point,” so Carlson adds nothing.
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`As Omni’s POR explained, Apple’s purported reason for combining
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`Lisogurski with Carlson was meritless because Lisogurski already does what Apple
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`relies upon in Carlson—modulating the LED at 1000Hz to eliminate ambient noise.
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`(POR17-18, 23-25.) In Reply, Apple does not dispute these facts. Thus, it is
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`undisputed that Carlson adds nothing to what Lisogurski already teaches, defeating
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`Apple’s obviousness argument. Because Carlson’s “salient point” was disclosed and
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`used by Lisogurski, there is no reason to modify Lisogurski with Carlson’s 1000Hz
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`modulation. Apple lacks an “articulated reasoning with some rational underpinning
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`to support the legal conclusion of obviousness.” KSR Int’l. Co. v. Teleflex Inc., 550
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`U.S. 398, 418 (2007).
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`2.
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`Apple presents improper new, unsupported, and inaccurate
`attorney argument that Carlson discloses shifting LED
`modulation frequencies
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`Apple quotes Carlson’s discussion of temporary modulation to “shift the
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`power spectrum” to wrongly assert: “Carlson describes shifting the frequency of an
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`LED’s emission … i.e., that Carlson is switching between at least two different
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`frequencies.” (Reply, p.15-16.) Apple confuses shifting the power spectrum (which
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`Carlson discloses) and increasing a modulation frequency or pulse rate from an
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`initial pulse rate (which Carlson does not disclose).
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`Shifting the “power spectrum” of an otherwise continuous signal differs from
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`increasing the “pulse rate” of the light source from an initial pulse rate to increase
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`SNR. (Ex.2131(¶93).) Carlson illustrates in Figure 7b that the power spectrum of
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`ambient light (e.g., sunlight) is around zero Hertz because the ambient light and
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`Carlson’s LED are not pulsing. (Id.) In Figure 8, Carlson temporarily modulates
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`the LED at “chosen” frequency f0, which shifts the power spectrum. As Dr.
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`MacFarlane explained, “This does not disclose increasing a preexisting pulse rate as
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`claimed because, without a starting pulse rate, there cannot be a pulse rate increase.
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`For these reasons, shifting the power spectrum does not increate a pulse rate.” (Id.)
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`Apple recognizes that Carlson only modulates the LED “temporarily … to
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`shift the power spectrum.” (Reply, p.15, emphasis in original.) As Omni’s expert
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`explained, ordinarily Carlson’s LED is on continuously. (Ex.2131(¶¶88-89, 97-98).)
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`Apple’s attorneys argue Omni’s reading of Carlson is wrong because continuous
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`LED light would “consume excessive battery power” (p.16), but no expert evidence
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`supports that argument. Carlson’s disclosures and the only expert evidence in the
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`record both confirm that, when not “temporarily” modulated, Carlson’s LED light is
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`continuous, not pulsed, light.
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`Apple’s attorneys also argue (for the first time in reply) that Carlson’s
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`claims 10-13 support Apple. (Reply, pp.16-17.) Not only is that an improper reply
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`argument,4 it is unsupported: The only expert support Apple cites is “Ex.1003,
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`¶161,” which does not mention or analyze claims 10-13. The new attorney argument
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`is also wrong because claims 10-13 are means+function claims, as Apple admits.
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`(Reply, p.17.) Apple’s attorneys fail to identify the claimed “means for shifting” in
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`Carlson’s disclosure because doing so would defeat their argument. Carlson’s only
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`disclosed “means for shifting” is “synchronous detection,” which he uses to “shift
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`the power spectrum,” not vary LED modulation frequency. (Ex.1009(¶¶[0020],
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`[0027], [0065], [0069]).) Each paragraph teaches “temporarily modulat[ing]” the
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`LED at a fixed, predetermined “carrier frequency,” either “fc” or “f0.” (Id.; see also
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`4 A “Petitioner may not submit new evidence or argument in reply that it could have
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`presented earlier, e.g. to make out a prima facie case of unpatentability.”
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`Consolidated Trial Practice Guide (Nov. 2019) at 73; see also Hulu, LLC v. Sound
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`View Innovations, LLC, IPR2018-00582, Paper No. 34 at 30-31 (PTAB Aug. 5,
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`2019) (Informative) (rejecting Petitioner’s new argument and evidence asserting
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`obviousness in its reply that was not presented in the petition).
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`Ex.2131(¶92).) Carlson makes clear that the carrier frequency is fixed when he says,
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`“The frequency is chosen in such a way that it is outside the frequency spectrum of
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`sunlight and of ambient light which, according to FIG. 7b, is in the range of above
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`approximately 1000 Hz.” (Ex.1009(¶[0069]).) Carlson never teaches or suggests
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`shifting the chosen LED modulation frequency.
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`Citing “common sense,” Apple asserts Carlson discloses “switching among
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`different pulse frequencies.” (Reply, p.17.) There are two problems with Apple’s
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`assertion. First, this is again improper attorney argument, lacking expert support,
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`made for the first time in the Reply. Second, Apple ignores Carlson’s express
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`teaching that the chosen 1000 Hz modulation frequency is “far outside” the noise
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`spectrum such that “[a]ny noise or sunlight … will not influence the measurement
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`of the pulsoximetric sensor.” (Ex.1009(¶[0069]).) Apple’s attorneys do not explain
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`what motivation an ordinary artisan reading Carlson would have to “shift” the
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`chosen carrier frequency, which has eliminated “[a]ny noise” without changing
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`frequency.
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`3.
`
`Apple does not dispute that its Petition failed to make the
`Board’s new “0Hz” pulse rate argument and Apple does not
`make that argument in Reply
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`In the DI, the Board said, “at minimum, Carlson teaches or suggests shifting
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`the power spectrum to a higher frequency range by increasing the light source’s pulse
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`rate from 0 Hz (no modulation) to f0 Hz (modulation).” (DI51.) Omni noted this
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`was an improper new (and incorrect) argument not found in the Petition. (POR19-
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`23.) In Reply, Apple does not dispute that the Petition never made the Board’s
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`“0Hz” argument. Instead, Apple asserts the Board is free “to consider and rely upon
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`the portions of the references cited in the papers.” (Reply, p.18.) While the Board
`
`may rely on the evidence of record, the Board is not free to introduce new
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`obviousness arguments not advanced in the petition. SAS, 138 S. Ct. at 1357 (“[T]he
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`statute tells us that the petitioner’s contentions, not the Director’s discretion, define
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`the scope of the litigation all the way from institution through to conclusion.”);
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`Rovalma, SA v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1029 (Fed. Cir.
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`2017) (“The Board's procedural obligations are not satisfied merely because a
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`particular fact might be found somewhere amidst the evidence submitted by the
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`parties, without attention being called to it so as to provide adequate notice and an
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`adequate opportunity to be heard.”); Sirona, 892 F.3d at 1356 (“It would thus not be
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`proper for the Board to deviate from the grounds in the petition and raise its own
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`obviousness theory.”) Apple does not dispute or distinguish these cases.
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`Equally important, Apple does not rely on the Board’s new “0Hz” argument
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`or refute Omni’s evidence that “the ‘299 specification draws a clear distinction
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`between continuous light and pulsed modulated light.” (Ex.2131(¶94).)
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`4.
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`Apple’s flawed reasons for combining Lisogurski and
`Carlson do not prove obviousness
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`In Reply §B.3, Apple (1) misstates Omni’s reasons for arguing that combining
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`Lisogurski and Carlson does not make the pulse rate limitation obvious, and (2)
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`ignores the critical flaw in its own a