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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`APPLE INC.
`Petitioner,
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`v.
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`OMNI MEDSCI, INC.,
`Patent Owner.
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`Patent No. 10,188,299
`____________________
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`IPR2020-00175
`__________________________________________________________________
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`Petitioner’s Reply Regarding 35 U.S.C. § 325(d)
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`IPR2020-00175
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`Table of Contents
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`Introduction .................................................................................................... 1
`I.
`Background .................................................................................................... 1
`II.
`III. Not Considering Lisogurski and Carlson During Initial Examination
`Was a Material Error .................................................................................... 2
`IV. The Board Should Not Exercise Its § 325(d) Discretion ............................ 5
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`ii
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`IPR2020-00175
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Advanced Bionics, LLC v. Med-El Elektromedizinische Gerate Gmbh,
`IPR2019-01469, Paper 6 (Feb. 13, 2020) ......................................................... 3, 4
`Becton, Dickinson and Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (Dec. 15, 2017) ............................................................ 3
`Intex Recreation Corp. v. Team Worldwide Corp.,
`IPR2018-00871, Paper 14 (Sept. 14, 2018) .......................................................... 3
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`iii
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`IPR2020-00175
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`I.
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`Introduction
`In four earlier inter partes reviews involving family members of the ’299
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`Patent, the Board found a sufficient basis to institute trial on obviousness grounds
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`based on Lisogurski (Ex. 1011) and Carlson (Ex. 1009). In one of those, the Board
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`also found that the Office had made a material error by issuing the patent without
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`discussing Lisogurski, and thus declined to exercise their discretion under
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`§ 325(d). IPR2020-00029, Paper 7, 55. The Board should reach the same
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`conclusion here, and not exercise its §325(d) discretion.
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`II. Background
`Omni has filed three separate lawsuits asserting that Apple infringes various
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`members of the same patent family. In the first case, Omni asserted four patents,
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`including US 9,651,533 and 9,757,040. About a year later, Omni asserted three
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`new patents, including the ’299 patent, all of which are related to the first set of
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`patents. In the third case, Omni asserted another related patent that was examined
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`and newly issued while the first two lawsuits were ongoing. Apple filed IPRs
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`against each of the patents in the first and second lawsuits, and the Board instituted
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`proceedings including, inter alia, on obviousness grounds based on Lisogurski, and
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`in some, on Carlson as well. See IPR2019-00914, -00916, -00917 and IPR2020-
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`00029. Omni unilaterally dropped two patents (among others) from its first lawsuit
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`after the Board’s institution decisions, and the -00914 and -00917 IPR proceedings
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`1
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`IPR2020-00175
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`were terminated. All three district court actions are stayed pending resolution of
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`an appeal before the Federal Circuit regarding Omni’s standing to assert the
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`patents, and the first two cases are stayed pending resolution of Apple’s IPRs.
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`III. Not Considering Lisogurski and Carlson During Initial Examination
`Was a Material Error
`Lisogurski and Carlson are plainly material to patentability of the ’299
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`patent claims—together they make obvious the sole element that Omni contends
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`distinguishes the ’299 patent claims from the prior art (i.e., a light source
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`configured to increase signal-to-noise ration by increasing the LED pulse rate).
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`POPR, 14-25. The Board observed in its institution decision for the ’533 patent
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`(the ’299 patent’s parent) that a skilled person would have found it obvious to
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`modify Lisogurski’s system based on Carlson’s guidance to do precisely what this
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`claim element requires. IPR2019-00916, Paper 16, 32-36. That finding is
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`particularly probative because Omni has admitted that independent claim 7 of the
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`’299 patent contains “nearly identical limitations” as “the ‘533 Parent Patent and
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`the ‘040 Related Patent.” Prelim. Resp., 29-34. Certainly, the Board’s institution
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`decisions are not final determinations of patentability. But the Board reached its
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`conclusion that Lisogurski and Carlson suggest this element of the ’299 patent
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`claims after weighing arguments and evidence from both parties; it is thus a
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`reasoned and detailed analysis that, at a minimum, shows that the two references
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`are highly material to the patentability of the ’299 patent claims.
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`IPR2020-00175
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`The Examiner issued the ’299 claims without ever mentioning Lisogurski
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`and Carlson. Under the Becton Dickinson factors, in determining whether an
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`examiner made a material error, the Board must consider “the extent to which the
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`asserted art was evaluated during examination, including whether the prior art was
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`the basis of rejection.” Advanced Bionics, Paper 6 at 9 n.10; see Becton, Dickinson
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`and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17 (Dec. 15,
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`2017). “Cursory consideration of later-relied-upon prior art—such as in this
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`situation—weighs against exercising discretion to deny under § 325(d).” Intex
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`Recreation Corp. v. Team Worldwide Corp., IPR2018-00871, Paper 14 at 13 (Sept.
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`14, 2018); see Becton, Dickinson, IPR2017-01586, Paper 8 at 17.
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`Here, there is no evidence the Examiner considered the substance of what
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`Lisogurski and Carlson disclose, or any obviousness issue based on their teachings.
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`The Examiner issued a Notice of Allowance before Omni even submitted the
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`references and Apple’s claim charts. In that Notice, the Examiner identified four
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`other references he considered to be closest to the claims and the elements
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`allegedly not shown in that art. Ex. 1002, 252. Omni then requested continued
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`examination and submitted Lisogurski and Carlson, but the Examiner immediately
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`issued (within one month) the identical Notice of Allowance identifying the same
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`four references. Ex. 1002, 506, 633; see Pet., 16-17. The Examiner made no
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`mention of Lisogurski or Carlson in that paper or any other. See Ex. 1002, 489-
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`3
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`IPR2020-00175
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`492, 520-521, 584-585, 630-634. Omni requested continued examination again
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`and dumped in over 90 documents, and one week later, the examiner again issued
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`the same Notice of Allowance. Ex. 1002, 555-64, 585. Omni made no attempt to
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`bring either reference or its relevant passages to the Examiner’s attention.
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`Based on a closely analogous file history in Omni’s related patent, US
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`10,098,546, the Board found no basis to exercise its discretion under § 325(d).
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`IPR2020-00029, Paper 7 at 54. There, the Board noted that Omni had submitted
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`Lisogurski during examination of the ’546 patent after the Examiner had allowed
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`the claims, that the Examiner did not discuss Lisogurski, and that prior Board
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`panels had made preliminary findings that Lisogurski suggests the relevant
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`limitation. Id., 51-52. The Board should reach the same conclusion in this
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`proceeding: “that reasonable minds cannot disagree that the Office erred in a
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`manner material to patentability… by failing to reject the claims… over
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`[Lisogurski].” Id., 55.
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`Apple’s petition also presents additional facts and evidence not before the
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`Examiner. Advanced Bionics, Paper 6 at 9 n.10 (Board should consider “additional
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`evidence and facts presented in the petition” in weighing whether to institute).
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`These include an extensive description of the state of art, design trends, and other
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`factors motivating the skilled person. Pet., 4-11. Apple also included a declaration
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`from Dr. Anthony explaining the prior art and what it suggested to the skilled
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`IPR2020-00175
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`person. None of this evidence was before the examiner and it provides an
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`additional reason for the Board to not exercise its discretion.
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`IV. The Board Should Not Exercise Its § 325(d) Discretion
`Omni’s strategy of asserting patents, dropping them when they become the
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`subject of instituted proceedings, and then asserting new patents it secures with
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`virtually indistinguishable claims should not be rewarded with discretionary denial.
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`Moreover, because the litigation involving the ’299 patent is stayed for reasons
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`unrelated to IPRs (i.e., an interlocutory appeal at the Federal Circuit that may not
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`be resolved for 6 to 8 months or longer), the litigation will not resume if the Board
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`exercises its discretion under § 325(d) and denies institution. This is also not a
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`case where the Board would be revisiting work already done by an examiner—the
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`file history contains no indication that the Examiner considered the references,
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`much less was influenced by them, and the Board has made preliminarily findings
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`in IPRs involving related patents indicating these same references are material to
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`patentability of the ’299 patent claims.
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`The Board thus should not insulate Omni’s patents from IPR review, given
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`that the record does not support the Board exercising its discretion under § 325(d).
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`Apple respectfully requests that the Board decline to exercise its discretion under
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`§ 325(d), and institute trial on the basis of the petition.
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`IPR2020-00175
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`Respectfully Submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Registration No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`(202) 736-8914
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`Lead Counsel for Petitioner
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`Dated: May 21, 2020
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`6
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`IPR2020-00175
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 21st day of May, 2020, copies of this Petitioner’s
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`Reply Regarding 35 U.S.C. § 325(d), and Exhibits have been served in its entirety
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`by email on the following counsel of record for Omni MedSci:
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`John S. LeRoy
`Robert C.J. Tuttle
`John M. Halan
`Christopher C. Smith
`Andrew B. Turner
`OMSC0117IPR1@brookskushman.com
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`Respectfully submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Attorney for Petitioner
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`Dated: May 21, 2020
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