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 PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.107
`
`
`
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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 Authorities .............................................................................................. iii
`
`List of Exhibits ...................................................................................................... v
`
`I.
`
`II.
`
`Introduction ................................................................................................. 1
`
`Overview of the ‘299 Patent ........................................................................ 3
`
`A.
`
`The ‘299 Patent discloses innovative systems for making
`accurate non-invasive physiological measurements ........................... 3
`
`B.
`
`Priority Date ...................................................................................... 9
`
`III. Claim Construction .....................................................................................10
`
`A.
`
`“the system configured to increase the signal-to-noise ratio by
`. . . increasing a pulse rate of at least one of the plurality of
`semiconductor sources from an initial pulse rate” .............................10
`
`IV. The Board should deny the petition because it fails to establish prima
`facie obviousness of the challenged claims .................................................14
`
`A.
`
`B.
`
`C.
`
`D.
`
`In its 916 DI, the Board correctly determined that Lisogurski
`fails to disclose increasing SNR by “increasing a pulse rate” as
`claimed .............................................................................................15
`
`The Board did not find that Carlson discloses increasing SNR
`by “increasing a pulse rate” as claimed ............................................18
`
`Taken together, Lisogurski and Carlson do not render the
`challenged claims obvious ................................................................23
`
`Because neither Lisogurski nor Carlson disclose increasing
`SNR by “increasing a pulse rate,” the Petition fails to establish
`prima facie obviousness ....................................................................24
`
`V.
`
`The Board should also deny the petition for procedural reasons ..................26
`
`A.
`
`The Board should deny the petition under § 325(d) because the
`Office considered the Lisogurski, Carlson, Mannheimer and
`Park references as well as Petitioner’s invalidity contentions
`and claim charts ................................................................................26
`
`B.
`
`By its use of the disjunctive “with or without,” Petitioner does
`not state Ground #3 with particularity ...............................................38
`
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`VI. Conclusion ..................................................................................................41
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`Atty. Dkt. No.: OMSC0117IPR1
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`Certificate of Service ............................................................................................42
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 ......................................43
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`Table of Authorities
`
`Cases
`
`Adaptics LTD. v. Perfect Co., I
`
`PR2018-01596, Paper 20 (PTAB March 6, 2019) (Informative) ..... 39, 40, 41
`
`Apple Inc. v. ContentGuard Holdings, Inc.,
`
`IPR2015-00358, Paper 9 (PTAB July 2, 2015) ...........................................40
`
`Apple Inc. v. Qualcomm Inc.,
`
`IPR2018-01315, Paper 7 (PTAB Jan. 18, 2019) ..........................................37
`
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`
`672 F.3d 1335 (Fed. Cir. 2012) ...................................................................12
`
`Becton Dickinson & Co. v. B. Braun Melsungen AG,
`
`IPR2017-01586, slip. op. 17-18 (Paper 8) (PTAB Dec. 15, 2017) ......... 35, 37
`
`Cont'l Paper Bag Co. v. E. Paper Bag Co.,
`
`210 U.S. 405 (1908) ....................................................................................11
`
`Cook Group Inc. v. Boston Scientific Scimed, Inc.,
`
`IPR2017-00132, Paper No. 71 (PTAB Nov. 14, 2018) ................................12
`
`Hulu, LLC v. Sound View Innovations, LLC,
`
`IPR2018-00582, Paper No. 34 (PTAB Aug. 5, 2019) (Informative) ............26
`
`In re Rijckaert,
`
`9 F.3d 1531 (Fed. Cir. 1993) .......................................................................25
`
`Intex Recreation Corp. v. Team Worldwide Corp.,
`
`IPR2018-00871, Paper 14 (PTAB Sept. 14, 2018) ......................................37
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`
`688 F.3d 1342 (Fed. Cir. 2012) ...................................................................25
`
`Medtronic, Inc. v. Barry,
`
`891 F.3d 1368 (Fed. Cir. 2018) ...................................................................25
`
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`Case No.: IPR2020-00175
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`Phillips v. AWH Corp.,
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`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................. 11, 13
`
`Universite Pierre Et Marie Curie v. Focarino,
`
`738 F.3d 1337 (Fed. Cir. 2013) ...................................................................25
`
`Vitronics Corp. v. Conceptronic, Inc.,
`
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................... 11, 13
`
`Statutes
`
`35 U.S.C. § 312 .......................................................................................... 2, 38, 41
`35 U.S.C. § 314 .............................................................................................. 39, 41
`35 U.S.C. § 316 ........................................................................................ 39, 40, 41
`35 U.S.C. § 325 .............................................................................................. 26, 37
`
`Consolidated Trial Practice Guide (Nov. 2019)............................................... 26, 38
`
`Other Authorities
`
`
`
`
`
`
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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 CFR 1.510 and 1.915,
`PTAB, May 2010
`
`2104
`
`2105
`
`2121
`
`2122
`2123
`2124
`
`2125
`
`2126
`
`2127
`
`2128
`
`2129
`
`2130
`
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`Case No.: IPR2020-00175
`Patent No.: 10,188,299
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`Omni MedSci, Inc. (“Patent Owner”), submits this Preliminary Response to
`
`the Petition for Inter Partes Review (“Petition,” Paper 1) that Apple Inc.
`
`(“Petitioner”) filed against claims 7 and 10-14 (“Challenged Claims”) of U.S.
`
`Patent No. 10,188,299 (“the ‘299 Patent”).
`
`I.
`
`Introduction
`
`In Ground 1, Petitioner challenges claims 7 and 11-13 as obvious under 35
`
`U.S.C. § 103 using a combination of U.S. Patent No. 9,241,676 (“Lisogurski”) (Ex.
`
`1011) and U.S. Patent Pub. 2005/0049468 (“Carlson”) (Ex. 1009).
`
`In Ground 2, Petitioner challenges claims 12 and 13 as obvious under 35
`
`U.S.C. § 103 using a combination of Lisogurski, Carlson, and U.S. 5,746,206
`
`(“Mannheimer”) (Ex. 1008).
`
`In Ground 3, Petitioner challenges claims 10 and 14 as obvious under 35
`
`U.S.C. § 103 using a combination of Lisogurski, Carlson, and U.S. Patent No.
`
`9,596,990 (“Park”) (Ex. 1010) “with or without” Mannheimer.
`
`The Board should deny institution as to all Grounds for substantive and
`
`procedural reasons.
`
`Substantively, 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 the only
`
`challenged independent claim, claim 7. Neither reference discloses the limitation,
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`alone or in combination. Petitioner, therefore, fails to establish prima facie
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`obviousness.
`
`The Petition makes the same argument—nearly word-for-word—that
`
`Petitioner made in the IPR2019-00916 Petition (“916 Petition”). (Compare 916
`
`Petition, pp. 35-39 with Petition, pp. 48-52.) Reviewing that Petition, the Board, in
`
`its Institution Decision in IPR2019-00916 (Paper 16) (“916 DI”), determined that
`
`Lisogurski fails to teach the “increasing a pulse rate” limitation and also stopped
`
`short of finding that Carlson discloses the limitation. Nevertheless, the Board
`
`incorrectly instituted review based on an obviousness argument the Petition did
`
`not make and which lacked evidentiary support. In addition, the Board instituted
`
`review based 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.
`
` Patent Owner addressed
`
`these
`
`deficiencies in its POR from IPR2019-00916 (Paper 23, January 31, 2020) (Ex.
`
`2125).
`
`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.
`
`Procedurally, the Petition presents the same prior art references, and the
`
`same invalidity arguments concerning Lisogurski, Carlson and Park, that the ‘299
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`Examiner considered before allowing the ‘299 Patent. In a separate RCE and IDS,
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`the Patent Owner submitted Petitioner’s prior art, and invalidity claim charts
`
`comparing Lisogurski, Carlson and Park to virtually identical claim limitations in
`
`closely related patents. With Petitioner’s “invalidity roadmap” in-hand, the
`
`Examiner considered and rejected Petitioner’s prior art and invalidity arguments
`
`because, as explained below, the references collectively fail to establish prima
`
`facie obviousness. In addition, the Petition uses disjunctive “with or without”
`
`obviousness combinations preventing Patent Owner, and the Board, from knowing
`
`which particular combination the Petition is advancing.
`
`For these reasons, the Board should deny institution.
`
`II. Overview of the ‘299 Patent
`
`A. The ‘299 Patent discloses innovative systems for making
`accurate non-invasive physiological measurements
`
`The ’299 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 at 9:47-52; 5:16-49.) For example, the
`
`’299 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 9:49-52.) This may
`
`entail measuring various optical characteristics of the sample as a function of the
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`wavelength of the source light by varying the wavelength of the source light or by
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`using a broadband source of light. (Id. at 9:52-64.)
`
`Figure 24 of the ’299 Patent, reproduced below (color added), illustrates an
`
`exemplary physiological measurement system 2400.
`
`
`
`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 30:16-54.) The “wearable measurement device [is] for measuring one or more
`
`physiological parameters.” (Id. at 6:48-50.)
`
`Wearable measurement device includes light source 1801 made from a
`
`plurality of light emitting diodes that generate an output optical beam at one or
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`more optical wavelengths, wherein at least one of the optical wavelengths is
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`between 700 and 2500 nanometers. (Id. at 6:50-55; 20:2-5.) The ’299 specification
`
`discloses two operating modes for the LEDs: “continuous wave or pulsed mode of
`
`operation.” (Id. at 22:42-45.)
`
`The ’299 Patent describes various techniques for improving the signal-to-
`
`noise ratio (“SNR”) of the measurement. For example, the system may improve the
`
`SNR by increasing the light intensity from the light source. (See, e.g., Ex. 1001 at
`
`5:32-34 “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 3:11-
`
`16: “The wearable device is configured to increase the signal-to-noise ratio by . . .
`
`increasing a pulse rate from an initial pulse rate of at least one of the plurality of
`
`semiconductor sources,” and 22:43-45: “the LED output may more easily be
`
`modulated” and provides the option of a “pulsed mode of operation.”)
`
`The ’299 Patent specification explains that the device determines whether to
`
`change the pulse-rate—it is not a manual adjustment. The ’299 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 3:11-16; 22:43-45.)
`
`The specification states, “The wearable device is configured to increase the signal-
`
`to-noise ratio . . . by increasing a pulse rate from an initial pulse rate of at least one
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`of the plurality of semiconductor sources.” (Id. at 3:11-16.)1 The specification
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`states that “[b]y use of an active illuminator, a number of advantages may be
`
`achieved” including “higher signal-to-noise ratios.” (Id. at 29:3-4.) PCT
`
`Application Serial No. PCT/US2013/075767 (Publication No. WO/2014/143276),
`
`which is incorporated by reference into the ’299 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 1:22-44; 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 ’299 specification, which discloses that the
`
`modulation frequency of the light source is non-zero and can range between “0.1-
`
`100kHz.” (Ex. 1001 at 1:7-21; 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 6:55-59.)
`
`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
`
`
`1 Throughout this Response, all emphasis added unless noted otherwise.
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`through the sample, and processes that signal to generate an output signal. (Id. at
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`Atty. Dkt. No.: OMSC0117IPR1
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`6:59-63.)
`
`The Challenged Claims include independent claim 7, reproduced below with
`
`emphasis added to illustrate the “system . . . increasing a pulse rate” limitation at
`
`issue in this Response:
`
`7. A system for measuring one or more physiological parameters
`
`comprising:
`
`a light source comprising a plurality of semiconductor sources that
`
`are light emitting diodes, each of the light emitting diodes
`
`configured to generate an output optical beam having 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;
`
`a lens configured to receive a portion of at least one of the output
`
`optical beams and to deliver a lens output beam to tissue;
`
`a detection system configured to receive at least a portion of the
`
`lens output beam reflected from the tissue and to generate an
`
`output signal having a signal-to-noise ratio, wherein the
`
`detection system 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
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`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 the processed output signal is
`
`configured to be transmitted over a wireless transmission link;
`
`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;
`
`wherein the output signal is indicative of one or more of the
`
`physiological parameters, and the remote device is configured
`
`to store a history of at least a portion of the one or more
`
`physiological parameters over a specified period of time;
`
`the system configured to increase the signal-to-noise ratio by
`
`increasing light intensity of at least one of the plurality of
`
`semiconductor sources from an initial light intensity and by
`
`increasing a pulse rate of at least one of the plurality of
`
`semiconductor sources from an initial pulse rate; and
`
`the detection system further configured to:
`
`generate a first signal responsive to light while the light emitting
`
`diodes are off,
`
`generate a second signal responsive to light received while at least
`
`one of the light emitting diodes is on, and
`
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`increase the signal-to-noise ratio by differencing the first signal
`
`and the second signal.
`
`(Ex. 1001 at 33:29-34:11.)
`
`Hence, it is the claimed system that is configured for “increasing the pulse
`
`rate of at least one of the plurality of semiconductor sources from an initial pulse
`
`rate”; it is not simply that there is a manual adjustment of the pulse rate.
`
`B.
`
`Priority Date
`
`Patent Owner filed the ‘299 Patent as U.S. application No. 15/594,053 (“the
`
`‘053 application”) on May 12, 2017. (Ex. 1001 at 1.) The ‘053 application is a
`
`continuation of U.S. application Ser. No. 14/875,709 filed Oct. 6, 2015, now U.S.
`
`Pat. No. 9,651,533 (the ‘533 Parent Patent, Ex. 2104), which is a continuation of
`
`U.S. application Ser. No. 14/108,986 filed Dec. 17, 2013, now U.S. Pat. No.
`
`9,164,032 issued Oct. 20, 2015, which claims the benefit of U.S. provisional
`
`application Ser. No. 61/747,487 filed Dec. 31, 2012, all of which the ‘299 patent
`
`incorporates by reference. (Id. at 1:7-12.)
`
`Petitioner asserts that the ‘299 Patent is not entitled to a priority date before
`
`“the actual filing date of the ’709 application,” i.e., October 6, 2015. (Pet. at 13, n.
`
`2.) For purposes of this Preliminary Response, Patent Owner does not dispute
`
`Petitioner’s assertion.
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`III. Claim Construction
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`Atty. Dkt. No.: OMSC0117IPR1
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`The District Court provided a claim construction order (Ex. 1057) on August
`
`14, 2019 construing several disputed claim terms, including the claim terms
`
`Petitioner identifies: “beam,” and “one or more lenses.” (Pet. at 18-19.) For this
`
`IPR, Patent Owner agrees with the Court’s constructions, and Petitioner does not
`
`dispute them. (Id.) Constructions of those terms are not needed for this IPR.
`
`Petitioner does not propose a construction of the “increasing a pulse rate”
`
`limitation, which is important for this IPR.
`
`A.
`
`“the system configured to increase the signal-to-noise ratio
`by . . . increasing a pulse rate of at least one of the plurality
`of semiconductor sources from an initial pulse rate”
`
`In the DI for the related ‘533 Patent, 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.”
`
`(Ex. 2124, 916 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 replaced the claim term “configured to” with the
`
`broader phrase “is capable of.” The Board also substituted passive voice for the
`
`active voice of the claim, eliminating the claimed “actor” that increases the pulse
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`rate, i.e., the device (system). Those substitutions are improper because they
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`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) (en banc). See 37 CFR §42.100(b);
`
`83 CFR 51340-59. Unlike the “broadest reasonable interpretation” standard used
`
`in 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. 1996) (“we look to the words of the claims
`
`themselves . . . to define the scope of the patented invention.”).
`
`In a patent claim, the phrase “is capable of” is broader than “configured to.”
`
`See, e.g., Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349
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`Case No.: IPR2020-00175
`Patent No.: 10,188,299
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`(Fed. Cir. 2012); Cook Group Inc. v. Boston Scientific Scimed, Inc., IPR2017-
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`Atty. Dkt. No.: OMSC0117IPR1
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`00132, Paper No. 71 at 24-25 (PTAB Nov. 14, 2018). In Aspex, the Federal
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`Circuit held that terms such as “configured to” and “adapted to” describe devices
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`that are “designed or configured to accomplish the specified objective, not simply
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`that they can be made to serve that purpose.” In Cook Group, the Board similarly
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`held that “the claim language ‘configured to’ requires structure designed to
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`perform the function, not merely structure capable of performing the function.” See
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`Cook Group, Paper 71 at 17.
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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
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`voice, whereas the claims state that the device increases the pulse rate. The
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`Board’s construction improperly broadens the limitation permitting, e.g., a human,
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`to increase the pulse rate. That is contrary to the express language of the claims.
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`The ’299 Patent specification makes clear that the change in pulse-rate is
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`done by the device, not a manual adjustment. (Ex. 2122, MacFarlane Decl., ¶34.)
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`Case No.: IPR2020-00175
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`Phillips, 415 F.3d at 1315 (“the specification ‘is always highly relevant to the
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`Atty. Dkt. No.: OMSC0117IPR1
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`claim construction analysis. Usually, it is dispositive; it is the single best guide to
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`the meaning of a disputed term.’”), quoting Vitronics, 90 F.3d at 1582. The ’299
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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 22:44-45,
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`2:50-55; 3:11-16, 3:37-41.) The specification states that “[b]y use of an active
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`illuminator, a number of advantages may be achieved” including “higher signal-
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`to-noise ratios.” (Id. at 29:3-4.) The specification states, “The device is
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`configured to improve the signal-to-noise ratio . . . by increasing a pulse rate of at
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`least one of the LEDs relative to 40 an initial pulse rate.” (Id. at 3:37-41.) PCT
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`Application Serial No. PCT/US2013/075767 (Publication No. WO/2014/143276),
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`which is incorporated by reference into the ’299 specification, describes the use of
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`an “active
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`illuminator”
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`to achieve “higher signal-to-noise ratios” despite
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`“variations due to sunlight” and the “effects of the weather, such as clouds and
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`rain.” (Ex. 1001 at 1:33-37; Ex 2120 at 25-26, ¶[0079].) This is consistent with
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`U.S. Patent Application Serial No. 14/109,007 (Publication No. 2014/0236021),
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`also incorporated by reference into the ’299 specification, which discloses that the
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`modulation frequency of the light source is non-zero and can range between “0.1-
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`100kHz.” (Ex. 1001 at 1:40-42; Ex 2121 at 4, ¶[0045].)
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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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`For these reasons, the Board should adopt the following construction of “the
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`system configured to increase the signal-to-noise ratio by . . . increasing a pulse
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`rate of at least one of the plurality of semiconductor sources from an initial pulse
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`rate”:
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`the system configured to increase an initial pulse rate of at least one of
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`the light emitting diodes to a higher pulse rate to increase signal-to-
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`noise ratio.
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`IV. The Board should deny the petition because it fails to establish
`prima facie obviousness of the challenged claims
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`Independent claim 7, from which all other challenged claims depend,
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`require: “the system configured to increase the 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
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`disclosed in Lisogurski, it would have been obvious to modify Lisogurski to
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`implement the “technique” disclosed in Carlson. (Pet. at 48-52.) The Petition
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`asserts no other basis 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
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`semiconductor sources” so as to “increase signal-to-noise ratio.” In the ‘916 DI,
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`the Board explained that Lisogurski does not disclose this limitation and did not
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`Case No.: IPR2020-00175
`Patent No.: 10,188,299
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`expressly identify where Carlson discloses the limitation. (Ex. 2124, 916 DI at 29-
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`Atty. Dkt. No.: OMSC0117IPR1
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`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
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`“capable of,” passive voice claim construction, and (2) advanced, without
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`supporting evidence, an obviousness argument the 916 Petition (like the current
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`Petition) did not make. Nowhere does the Petition assert, let alone support, that the
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`challenged claims are obvious if neither Lisogurski nor Carlson disclose a system
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`that is configured to increase the pulse rate to increase the 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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`A.
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`In its 916 DI, 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
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`“firing rate” to “ensure an adequate signal-to-noise ratio.” (Pet. at 48 citing
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`Lisogurski at 8:29-35, 25:49-55 and 27:44-52.) But as the Board determined in the
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`916 DI, none of the Lisogurski passages cited in the Petition disclose increasing
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`the pulse rate of the light source to improve SNR as claimed: “Petitioner has failed
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`Case No.: IPR2020-00175
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`to sufficiently demonstrate how Lisogurski teaches increasing LED firing rate to
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`Atty. Dkt. No.: OMSC0117IPR1
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`increase signal-to-noise.” (Ex. 2124, 916 DI 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
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`period cardiac modulation” or “systole period cardiac cycle modulation.” (Ex.
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`1011, 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
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`improve SNR. (Ex. 2122, MacFarlane Decl., ¶¶57-67).)
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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
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`in the detector,” and that Lisogurski “teaches that as the sample rate increases, the
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`firing rate of the LED also increases.” (Pet. at 48-49 citing Lisogurski at 11:43-46;
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`11:52-55; 33:47-49; 33:56-58; 35:7-9; 35:27-31.) Petitioner has it backwards. The
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`cited passages of Lisogurski disclose setting the sampling rate based on the
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`modulation of the light drive signal—not vice-versa as Petitioner asserts. (Ex.
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`2122, MacFarlane Decl., ¶61-62.) Regardless, Lisogurski discloses varying the
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`sampling rate of the detector to “optimize power consumption”—not to increase
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`16
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`Case No.: IPR2020-00175
`Patent No.: 10,188,299
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`SNR by increasing the pulse rate of the light source from an initial pulse rate as
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`Atty. Dkt. No.: OMSC0117IPR1
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`claimed. (Id., Ex. 1011, Lisogurski at 10:23-26.)
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`Petitioner concludes—without citation to Lisogurski—that “Lisogurski
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`teaches that the system can increase the LED firing rate (‘pulse rate’) to increase
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`signal-to-noise ratio.” (Pet. at 49, emphasis in original.) As explained above,
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`however, Lisogurski does not disclose this limitation. Petitioner cites its expert
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`declaration for support, but the expert’s declaration similarly fails to cite any
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`passage of Lisogurski supporting his bare conclusion. (Ex.