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
`
`Case No.: IPR2019-00916
`
`______________
`
`
`
`
`
`PATENT OWNER’S RESPONSE TO PETITION
`FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.220
`
`
`
`
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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
`
`Table of Authorities ................................................................................................. iii
`
`List of Exhibits ........................................................................................................... v
`
`I.
`
`Introduction ...................................................................................................... 1
`
`A.
`
`B.
`C.
`D.
`
`The ‘533 Patent discloses innovative systems for making
`accurate non-invasive physiological measurements ............................. 2
`Effective filing date and AIA status ...................................................... 7
`Level of ordinary skill in the art ............................................................ 8
`Claim construction ................................................................................ 8
`1.
`“pulse rate” .................................................................................. 8
`2.
`“a light source comprising a plurality of semiconductor
`sources that are light emitting diodes. . . configured to
`increase signal-to-noise ratio by . . . increasing a pulse
`rate of at least one of the plurality of semiconductor
`sources” ....................................................................................... 9
`
`II.
`
`Summary of Patent Owner Response ............................................................13
`
`III. Argument .......................................................................................................14
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Board correctly determined that Lisogurski fails to disclose
`increasing SNR by “increasing a pulse rate” as claimed ....................14
`The Board correctly stopped short of finding that Carlson
`discloses increasing SNR by “increasing a pulse rate” as
`claimed—it does not ............................................................................17
`Taken together, Lisogurski and Carlson do not render the
`challenged claims obvious ..................................................................21
`Because neither Lisogurski nor Carlson disclose increasing
`SNR by “increasing a pulse rate,” the Petition fails to establish
`prima facie obviousness ......................................................................23
`1.
`Petitioner presents no argument or evidence that
`“increasing a pulse rate” is obvious if that limitation is
`not disclosed in Lisogurski or Carlson .....................................23
`The Petition lacks a prima facie case of obviousness,
`which cannot be cured in the Reply ..........................................23
`The Board instituted based on an unsupported argument
`that neither the Petition nor the Petitioner’s expert made.........27
`
`3.
`
`2.
`
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`IV. Conclusion .....................................................................................................32
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`Atty. Dkt. No.: OMSC0110IPR2
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`Certificate of Service ...............................................................................................33
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 .......................................34
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`Table of Authorities
`
`Cases
`
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`
`672 F.3d 1335 (Fed. Cir. 2012) .....................................................................10
`
`Cont'l Paper Bag Co. v. E. Paper Bag Co.,
`
`210 U.S. 405 (1908).......................................................................................10
`
`Cook Group Inc. v. Boston Scientific Scimed, Inc.,
`
`IPR2017-00132, Paper No. 71 (PTAB Nov. 14, 2018) .......................... 10, 11
`
`Hulu, LLC v. Sound View Innovations, LLC,
`
`IPR2018-00582, Paper No. 34 (PTAB Aug. 5, 2019) ...................................27
`
`In re Keller,
`
`642 F.2d 413 (Fed. Cir. 1981) .......................................................................28
`
`In re Magnum Oil Tools Int’l, Ltd.,
`
`829 F.3d 1364 (Fed. Cir. 2016) .....................................................................31
`
`In re Merck & Co., Inc.,
`
`800 F.2d 1091 (Fed. Cir. 1986) .....................................................................28
`
`In re Rijckaert,
`
`9 F.3d 1531 (Fed. Cir. 1993) .........................................................................26
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`
`688 F.3d 1342 (Fed. Cir. 2012) .............................................................. 26, 28
`
`Medtronic, Inc. v. Barry,
`
`891 F.3d 1368 (Fed. Cir. 2018) .............................................................. 26, 28
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) .................................................................9, 12
`
`Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG,
`
`856 F.3d 1019 (Fed. Cir. 2017) .....................................................................32
`
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`Case No.: IPR2019-00916
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`Universite Pierre Et Marie Curie v. Focarino,
`
`738 F.3d 1337 (Fed. Cir. 2013) .............................................................. 26, 28
`
`Vitronics Corp. v. Conceptronic, Inc.,
`
`90 F.3d 1576 (Fed. Cir. 1996) ................................................................ 10, 12
`
`Statutes
`
`35 U.S.C. § 312 ............................................................................................. 2, 27, 31
`
`Consolidated Trial Practice Guide (Nov. 2019) ......................................................27
`
`Other Authorities
`
`37 CFR §42.100 ......................................................................................................... 9
`83 CFR 51340-59 .....................................................................................................10
`
`Rules
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`List of Exhibits
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`Atty. Dkt. No.: OMSC0110IPR2
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`No.
`2101
`
`2102
`
`2103
`2104
`2105
`2106
`2107
`
`2108
`2109
`2110
`
`2111
`
`2112
`2113
`
`2114
`
`2115
`
`2116
`
`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
`Reserved
`District Court Docket Sheet, Omni MedSci, Inc. v. Apple
`Inc., Case No. 2:18-cv-134-RWS (E.D. Tex), October 3,
`2019
`Amend Docket Control, filed in Omni MedSci, Inc. v. Apple
`Inc., Case No. 2:18-cv-134-RWS, Dkt. 142 (E.D. Tex),
`March 29, 2019
`Petition challenging U.S. 8,888,701 to LeBoeuf et al., Apple
`Inc. v. Valencell, Inc., IPR2017-01704, Paper 2 (PTAB) June
`30, 2017
`Order, Apple Inc. and ZTE (USA) Inc., v. INVT SPE LLC,
`IPR2018-01478, Paper 8 (PTAB) January 30, 2019
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`No.
`2117
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`2118
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`2119
`
`2120
`
`2121
`
`2122
`2123
`
`Description
`Civil Minutes, issued in Windy City Innovations, LLC v.
`Facebook, Inc., Case No. 16-cv-01730-YGR, Dkt. 148 (N.D.
`Cal) January 28, 2019
`Case Management and Pretrial Order, issued in Intri-Plex
`Technologies, Inc., v. NHK Intl. Corp., Case No. 17-cv-
`01097-EMC, Dkt. 114 (N.D. Cal) May 23, 2019
`Email Correspondence regarding Motion to Dismiss, Omni
`MedSci, Inc. v. Apple Inc., No. 19-cv-05924 (N.D. Cal.) and
`No. 19-cv-05673 (N.D. Cal.) (Nov. 1, 2019)
`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.
`
`
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`I.
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`Introduction
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`Atty. Dkt. No.: OMSC0110IPR2
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`Petitioner challenges claims 5, 7-10, 13, and 15-17 of U.S. Patent No.
`
`9,651,533 (“the ’533 Patent”) as obvious on two grounds. In Ground 1, Petitioner
`
`asserts that a combination of U.S. Patent No. 9,241,676 (“Lisogurski”) (Ex. 1011)
`
`and U.S. Patent Pub. 2005/0049468 (“Carlson”) (Ex. 1009) render claims 5, 7-10,
`
`13, and 15-17 obvious under 35 U.S.C. § 103. In Ground 2, Petitioner asserts that a
`
`combination of Lisogurski, Carlson, and U.S. 5,746,206 (“Mannheimer”) (Ex. 1008)
`
`render claims 8-9 and 16-17 obvious.
`
`The Board should deny the Petition for inter partes review as to both Grounds
`
`because the Petition fails to establish prima facie obviousness for the challenged
`
`claims. The Petition relies solely on two references, Lisogurski and Carlson, to
`
`disclose the “increasing a pulse rate” limitation recited in challenged independent
`
`claims 5 and 13. Yet, neither reference discloses the limitation, alone or in
`
`combination. Petitioner, therefore, failed to establish prima facie obviousness.
`
`In its Institution Decision (“DI”) (Paper 16), the Board properly determined
`
`that Lisogurski fails to teach the “increasing a pulse rate” limitation, and properly
`
`stopped short of finding that Carlson discloses the limitation. The Board nonetheless
`
`instituted review despite “accepting as true” Patent Owner’s assertion that neither
`
`reference disclosed the missing limitation. In doing so, the Board improperly
`
`instituted review based on an obviousness argument the Petition did not make and
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`which lacked evidentiary support. In addition, the Board instituted review based
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`on an erroneous construction of the “increasing a pulse rate” limitation, which,
`
`inter alia, replaced the claim term “configured to” with “capable of” – improperly
`
`broadening the claims.
`
`Pursuant to 35 U.S.C. § 312(a)(3) and Federal Circuit law, the Board cannot
`
`find patent claims unpatentable based on an improper claim construction and an
`
`unsupported argument the Petition did not make.
`
`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, including human
`
`tissue and blood. (See, e.g., Ex. 1001, 8:30–34; 3:66-4:32.) For example, the ’533
`
`Patent discloses inspecting a sample “by comparing different features, such as
`
`wavelength (or frequency), spatial location, transmission, absorption, reflectivity,
`
`scattering, fluorescence, refractive index, or opacity.” (Id. at 8:29–34.) 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 8:34–46.)
`
`Figure 24 of the ’533 Patent, reproduced below (color added), illustrates an
`
`exemplary physiological measurement system 2400.
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`
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`The system includes a wearable measurement device 2401, 2402, and 2403
`
`(blue), a personal device 2405 (red), and a cloud-based server 2407 (yellow). (Id. at
`
`26:49–27:20.) The “wearable measurement device [is] for measuring one or more
`
`physiological parameters.” (Id. at 5:35–37.)
`
`Wearable measurement device includes light source 1801 made from a
`
`plurality of light emitting diodes that generate an output optical beam at one or more
`
`optical wavelengths, wherein at least one of the optical wavelengths is between 700
`
`and 2500 nanometers. (Id. at 5:37–43; 18:46–48.) The ’533 specification discloses
`
`two operating modes for the LEDs: “continuous wave or pulsed mode of operation.”
`
`(Id. at 19:66-20:2.)
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`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.”). And in the “pulsed mode of operation,” the light source can increase
`
`the pulse rate 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 pulse
`
`rate of at least one of the plurality of semiconductor sources,” and 19:67-20:2: “the
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`LED output may more easily be modulated” and provides the option of a “pulsed
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`mode of operation.”.)
`
`The ’533 Patent specification explains that the change in pulse-rate is done by
`
`the device, not a manual adjustment. The ’533 specification discloses that the LEDs
`
`may operate in a “pulsed mode of operation” during which a “pulse rate” is
`
`“increased” to increase SNR. (Ex. 1001 at 5:11–15; 19:67-20:2.) The specification
`
`states, “The light source is configured to increase signal-to-noise ratio by . . .
`
`increasing a pulse rate of at least one of the plurality of semiconductor sources.” (Id.
`
`at 5:11–15.)1 The specification states that “[b]y use of an active illuminator, a
`
`number of advantages may be achieved” including “higher signal-to-noise ratios.”
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`1 Throughout this Response, all emphasis added unless noted otherwise.
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`(Id. at 16:54-58.) PCT Application Serial No. PCT/US2013/075767 (Publication
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`Atty. Dkt. No.: OMSC0110IPR2
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`No. WO/2014/143276), which is incorporated by reference into the ’533
`
`specification, describes the use of an “active illuminator” to achieve “higher signal-
`
`to-noise ratios” despite “variations due to sunlight” and the “effects of the weather,
`
`such as clouds and rain.” (Ex. 1001 at 1:33-37; Ex 2120 at 25-26, ¶[0079].) This is
`
`consistent with U.S. Patent Application Serial No. 14/109,007 (Publication No.
`
`2014/0236021), also incorporated by reference into the ’533 specification, which
`
`discloses that the modulation frequency of the light source is non-zero and can range
`
`between “0.1-100kHz.” (Ex. 1001 at 1:40-42; Ex 2121 at 4, ¶[0045].)
`
`The wearable measurement device also includes a plurality of lenses that
`
`receive a portion of the output optical beam from the light source and deliver an
`
`analysis beam to a sample. (Ex. 1001 at 5:47–50.)
`
`Lastly, the wearable measurement device includes a receiver that receives at
`
`least a portion of the analysis beam that has been reflected from or transmitted
`
`through the sample, and processes that signal to generate an output signal. (Id. at
`
`5:51–54.)
`
`The Challenged Claims include independent claims 5 and 13. Independent
`
`claim 5 is representative and reproduced below with emphasis added to illustrate the
`
`“light source . . . increasing a pulse rate” limitation at issue in this Response:
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`5. A measurement system comprising:
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`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
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`configured to store and display the processed output signal, and
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`wherein at least a portion of the processed output signal is
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`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.
`
`(Ex. 1001, 29:43-30:11.)
`
`B.
`
`Effective filing date and AIA status
`
`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,
`
`2013 and issued as U.S. Patent No. 9,164,032. The ‘709 Application also claims the
`
`benefit of, and priority to, Provisional application No. 61/747,487 filed on December
`
`31, 2012. (Ex. 1001 at 1-2.)
`
`Patent Owner disagrees with the effective filing date arguments advanced by
`
`Petitioner in § IV.A. of the Petition. Nevertheless, because the disagreement over
`
`the effective filing date is not relevant to and does not impact the analysis below,
`
`Patent Owner does not contest, for purposes of this proceeding only, Petitioner’s
`
`claims that the ’533 Patent’s effective filing date is “not earlier than October 6, 2015”
`
`and that the ’533 Patent is subject to the America Invents Act.
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`C. Level of ordinary skill in the art
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`Atty. Dkt. No.: OMSC0110IPR2
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`For the purposes of this proceeding, Patent Owner does not dispute
`
`Petitioner’s description of a person of ordinary skill in the art as someone who would
`
`have had a good working knowledge of optical sensing techniques and their
`
`applications, and familiarity with optical system design and signal processing
`
`techniques. (Pet. at 16.) Such a person would have obtained such knowledge
`
`through an undergraduate education in engineering (electrical, mechanical,
`
`biomedical, or optical) or a related field of study, along with relevant experience
`
`studying or developing physiological monitoring devices in industry or academia.
`
`(Id.)
`
`D. Claim construction
`
`1.
`
`“pulse rate”
`
`Petitioner proposed construing the term “pulse rate” in claims 5 and 13 to
`
`mean a “number of pulses of light per unit of time.” (Pet. at 20.) In its Institution
`
`Decision, the Board determined that construction of the term “is not needed to
`
`resolve the fundamental controversy between the parties, i.e., whether Petitioner has
`
`demonstrated a reasonable likelihood of showing the unpatentability of claims 5, 7–
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`10, 13, and 15–17.” (DI at 9.) Patent Owner agrees that no construction is needed
`
`to decide the issues raised in the Petition.
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`2.
`
`“a light source comprising a plurality of
`semiconductor sources that are light emitting diodes
`. . . configured to increase signal-to-noise ratio by . . .
`increasing a pulse rate of at least one of the plurality
`of semiconductor sources”
`
`Petitioner did not propose a construction for the claim limitation “a light
`
`source comprising a plurality of semiconductor sources that are light emitting diodes
`
`. . . configured to increase signal-to-noise ratio by . . . increasing a pulse rate of at
`
`least one of the plurality of semiconductor sources.” In the Institution Decision, the
`
`Board determined “construction of the term is necessary, however, to resolve the
`
`parties’ dispute about whether Lisogurski alone or in combination with Carlson
`
`discloses such a light source.” (DI at 10.) The Board construed the claim limitation
`
`to mean “a light source containing two or more light emitting diodes (semiconductor
`
`sources), wherein at least one of the light emitting diodes is capable of having its
`
`pulse rate increased to increase a signal-to-noise ratio.” (Id.)
`
`The Board’s construction replaces the claim term “configured to” with the
`
`broader phrase “is capable of.” The Board also substitutes passive voice for the
`
`active voice of the claim, eliminating the claimed “actor” that increases the pulse
`
`rate, i.e., the device. Those substitutions are improper because they broaden the
`
`claim and create ambiguity.
`
`When construing claims, the Board must apply the standard of Phillips v.
`
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). See 37 CFR §42.100(b); 83 CFR
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`51340-59. Unlike the “broadest reasonable interpretation” standard used in
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`Atty. Dkt. No.: OMSC0110IPR2
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`prosecution, under the Phillips standard, the Board must discern the meaning of the
`
`claims using the claims themselves and the intrinsic record. Phillips, 415 F.3d at
`
`1313. The proper construction is the one that stays true to the claim as written.
`
`Phillips, 415 F.3d at 1316 (“The construction that stays true to the claim language
`
`and most naturally aligns with the patent’s description of the invention will be, in
`
`the end, the correct construction.”). A construction that broadens the claim is
`
`improper. See Cont'l Paper Bag Co. v. E. Paper Bag Co., 210 U.S. 405, 419 (1908)
`
`(“In making his claim the inventor is at liberty to choose his own form of expression,
`
`and while the courts may construe the same in view of the specifications and the
`
`state of the art, they may not add to or detract from the claim.”); Phillips, 415 F.3d
`
`at 1312 quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
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`1996) (“we look to the words of the claims themselves . . . to define the scope of the
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`patented invention.”).
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`In a patent claim, the phrase “is capable of” is broader than “configured to.”
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`See, e.g., Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed.
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`Cir. 2012); Cook Group Inc. v. Boston Scientific Scimed, Inc., IPR2017-00132,
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`Paper No. 71 at 24-25 (PTAB Nov. 14, 2018). In Aspex, the Federal Circuit held
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`that terms such as “configured to” and “adapted to” describe devices that are
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`“designed or configured to accomplish the specified objective, not simply that they
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`can be made to serve that purpose.” In Cook Group, the Board similarly held that
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`“the claim language ‘configured to’ requires structure designed to perform the
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`function, not merely structure capable of performing the function.” See Cook Group,
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`Paper 71 at 17.
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`In addition, as in Aspex, other limitations of the ’533 Patent claims use the
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`term “capable of.” (Ex. 1001, ’533 Patent, claim 7: “the remote device is capable
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`of transmitting information”; claims 10 and 13: “the remote device is capable of
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`storing a history”.) This gives rise to the presumption that the term “configured to”
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`recited in challenged independent claims 5 and 13 has a different, i.e., narrower,
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`meaning than “configured to.” Aspex, 672 F.3d at 1349.
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`A device can be “capable of” operations even if it is not “configured to”
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`perform those operations. By replacing the claim term “configured to” with the
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`phrase “is capable of,” the Board improperly broadened the claim. A proper
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`construction does not change the term “configured to,” which is a common, well-
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`understood term in patent claims. See Cook Group, IPR2017-00132, Paper No. 71
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`at 24-25.
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`The Board’s construction also creates ambiguity because it uses passive voice,
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`whereas the claims state that the device increases the pulse rate. The Board’s
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`construction improperly broadens the limitation permitting, e.g., a human, to
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`increase the pulse rate. That is contrary to the express language of the claims.
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`The ’533 Patent specification makes clear that the change in pulse-rate is done
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`by the device, not a manual adjustment. (Ex. 2122, MacFarlane Decl., ¶35.) Phillips,
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`415 F.3d at 1315 (“the specification ‘is always highly relevant to the claim
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`construction analysis. Usually, it is dispositive; it is the single best guide to the
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`meaning of a disputed term.’”), quoting Vitronics, 90 F.3d at 1582. The ’533
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`specification discloses that the LEDs may operate in a “pulsed mode of operation”
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`during which a “pulse rate” is “increased” to increase SNR. (Ex. 1001 at 5:11–15;
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`19:67-20:2.) The specification states, “The light source is configured to increase
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`signal-to-noise ratio by . . . increasing a pulse rate of at least one of the plurality of
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`semiconductor sources.” (Id. at 5:11–15.) The specification states that “[b]y use of
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`an active illuminator, a number of advantages may be achieved” including “higher
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`signal-to-noise ratios.”
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` (Id. at 16:54-58.)
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` PCT Application Serial No.
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`PCT/US2013/075767 (Publication No. WO/2014/143276), which is incorporated by
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`reference into the ’533 specification, describes the use of an “active illuminator” to
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`achieve “higher signal-to-noise ratios” despite “variations due to sunlight” and the
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`“effects of the weather, such as clouds and rain.” (Ex. 1001 at 1:33-37; Ex 2120 at
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`25-26, ¶[0079].) This is consistent with U.S. Patent Application Serial No.
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`14/109,007 (Publication No. 2014/0236021), also incorporated by reference into the
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`’533 specification, which discloses that the modulation frequency of the light source
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`is non-zero and can range between “0.1-100kHz.” (Ex. 1001 at 1:40-42; Ex 2121 at
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`4, ¶[0045].)
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`For these reasons, the Board should adopt the following construction of “a
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`light source comprising a plurality of semiconductor sources that are light emitting
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`diodes . . . configured to increase signal-to-noise ratio by . . . increasing a pulse rate
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`of at least one of the plurality of semiconductor sources”:
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`a light source, containing two or more light emitting diodes
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`(semiconductor sources), where the light source is configured to
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`increase the pulse rate of at least one of the light emitting diodes to
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`increase signal-to-noise ratio.
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`II.
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`Summary of Patent Owner Response
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`Independent claims 5 and 13, from which all other challenged claims depend,
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`require: “the light source configured to increase signal-to-noise ratio . . . by
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`increasing a pulse rate of at least one of the plurality of semiconductor sources . . .
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`.” Petitioner asserts that Lisogurski discloses this limitation, and if not disclosed in
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`Lisogurski, it would have been obvious to modify Lisogurski to implement the
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`“technique” disclosed in Carlson. (Pet. at 35-39.) The Petition asserts no other basis
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`for finding the “increasing a pulse rate” limitation obvious.
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`Neither Lisogurski nor Carlson disclose a system where the device itself is
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`“configured to” “increase a pulse rate of at least one of the plurality of semiconductor
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`sources” so as to “increase signal-to-noise ratio.” In the Institution Decision, the
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`Board explained that Lisogurski does not disclose this limitation and stopped short
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`of finding that Carlson discloses the limitation. (DI at 29-35.)
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`The Board nonetheless instituted review “even accepting as true” Patent
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`Owner’s assertion that Carlson fails to disclose increasing SNR “by increasing a
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`pulse rate.” (Id. at 35-36.) In doing so, the Board (1) relied on its incorrect “capable
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`of,” passive voice claim construction, and (2) improperly advanced, without
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`supporting evidence, an obviousness argument the Petition did not make. Nowhere
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`does the Petition assert, let alone support, that the challenged claims are obvious if
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`neither Lisogurski nor Carlson disclose a light source that is configured to increase
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`the pulse rate to increase signal-to-noise ratio.
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`For these reasons, the Petition fails to establish prima facie obviousness and
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`the Board should confirm the patentability of the challenged claims.
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`III. Argument
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`A. The Board correctly determined that Lisogurski fails to
`disclose increasing SNR by “increasing a pulse rate” as
`claimed
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`Petitioner asserts, incorrectly, that Lisogurski discloses adjusting LED “firing
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`rate” to “ensure an adequate signal-to-noise ratio.” (Pet. at 35 citing Lisogurski at
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`8:29-35, 25:49-55 and 27:44-52.) But as the Board determined, none of the
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`Lisogurski passages cited in the Petition disclose increasing the pulse rate of the light
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`source to improve SNR as claimed: “Petitioner has failed to sufficiently demonstrate
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`how Lisogurski teaches increasing LED firing rate to increase signal-to-noise.” (DI
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`at 29-31.)
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`Lisogurski teaches three different techniques for improving SNR: (i) by
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`increasing the “brightness” of the light source, (ii) by operating in a “high power
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`mode without cardiac cycle modulation,” and (iii) by modulating the light signal to
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`correlate with “physiological pulses” such as a “cardiac pulse,” e.g., “diastole period
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`cardiac modulation” or “systole period cardiac cycle modulation.” (Ex. 1011,
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`Lisogurski at 6:3-6; 9:4-7; 9:46-60; 25:66-26:14; 42:45-58.) Nowhere does
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`Lisogurski disclose the claimed configuration of increasing the pulse rate to improve
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`SNR. (Ex. 2122, MacFarlane Decl., ¶¶63-73).)
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`Petitioner asserts that Lisogurski “describes embodiments where the firing
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`rate of an LED is correlated to the sampling rate of an analog-to-digital converter in
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`the detector,” and that Lisogurski “teaches that as the sample rate increases, the firing
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`rate of the LED also increases.” (Pet. at 36 citing Lisogurski at 11:43-46; 11:52-55;
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`33:47-49; 33:56-58; 35:7-9; 35:27-31.) Petitioner has it backwards. The cited
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`passages of Lisogurski disclose setting the sampling rate based on the modulation of
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`the light drive signal—not vice-versa as Petitioner asserts. (Ex. 2122, MacFarlane
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`Decl., ¶¶67-68.) Regardless, Lisogurski discloses varying the sampling rate of the
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`detector to “optimize power consumption”—not to increase SNR by increasing the
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`pulse rate of the light source as claimed. (Id., ¶68; Ex. 1011, Lisogurski at 10:23-
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`26.)
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`Petitioner concludes—without citation to Lisogurski—that “Lisogursk