UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 10,188,299
`
`IPR Case No.: IPR2020-00175
`
`
`______________
`
`
`
`
`PATENT OWNER’S SUR-REPLY REGARDING 35 U.S.C. § 325(d)
`
`
`
`
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 10,188,299
`
`IPR Case No.: IPR2020-00175
`
`
`______________
`
`
`
`
`PATENT OWNER’S SUR-REPLY REGARDING 35 U.S.C. § 325(d)
`
`
`
`
`
`
`
`
`
`Case No.: IPR2020-00175
`Patent No.: 10,188,299
`
`
`I.
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`Introduction
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`Atty. Dkt. No.: OMSC0117IPR1
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`The examiner who allowed the ‘299 patent (four times) specifically considered
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`the Lisogurski/Carlson references (twice) and Apple’s Invalidity Contentions and
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`Claim Charts (“Charts”), which detail the arguments Apple now advances. The ‘299
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`claims differ materially from the “family members” (other than the ‘533) that Apple
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`mentions in its Introduction, the most germane difference being the “pulse rate”
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`limitation. The ‘299 “pulse rate” limitation reads, in pertinent part:
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`the light source configured to increase the [SNR] ... by increasing a
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`pulse rate of at least one of the plurality of semiconductor sources....
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`Lisogurski and Carlson do not disclose or suggest the “pulse rate” limitation. At
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`a minimum, “reasonable minds can disagree regarding the purported treatment of the
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`art or arguments,” so “it cannot be said that the Office erred in a manner material to
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`patentability.” Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH,
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`IPR2019-01469, Paper 6 at 9 (PTAB 2/13/20) (designated precedential 3/24/20).
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`II. Apple has failed in its burden to show the Examiner erred
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`The “pulse rate” limitation is the same limitation in claim 5 of the ‘533 patent,
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`which Apple challenged in its district court Invalidity Contentions and Charts. Apple
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`cited Lisogurski (Ex. 2126, pp. 7-9) and Carlson (Ex. 2127, pp. 4-5), “the same prior
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`art” relied on in the Petition. 35 U.S.C. § 325(d).
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`The Examiner expressly considered (1) Lisogurski and Carlson, twice, (Ex.
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`1
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`Case No.: IPR2020-00175
`Patent No.: 10,188,299
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`1002, p. 522, item 7 and p. 523, item 1; p. 588, item 27 and p. 589, item 1), and (2)
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`Atty. Dkt. No.: OMSC0117IPR1
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`Apple’s Carlson and Lisogurski Charts (Ex. 1002, p. 591, item 14 and p. 592, item 16).
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`Apple’s Charts “identify[] specifically where and how in each alleged item of prior art
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`each limitation of each asserted claim is found.” (N. Dist. Cal. Patent L.R. 3-1(c),
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`available at www.cand.uscourts.gov/rules/patent-local-rules.) In the Petition, Apple
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`cites Lisogurski/Carlson passages identical to those cited in the Charts, i.e., the
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`examiner had Apple’s “pulse rate” assertions. (Compare Pet. at 48-50 with Ex. 2126,
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`pp. 7-9 and Pet. 50-51 with Ex. 2127, pp. 4-5.)
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`Because Patent Owner used the QPIDS program,1 the examiner’s only task was
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`1 The QPIDS program allows an “IDS to be considered by the examiner” after a notice
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`of allowance. www.uspto.gov/patent/initiatives/quick-path-information-disclosure-
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`statement-qpids. “Where the examiner determines that no item of information in the
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`IDS necessitates reopening prosecution, the USPTO will issue a corrected notice of
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`allowability.” Id.
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`
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`Apple calls Patent Owner’s QPIDS submission of Apple’s contentions and
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`Charts a “dump[] [of] over 90 documents.” (Reply at 4.) If it was a “dump,” it was only
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`because Apple “dumped” those same documents on Patent Owner in the lawsuit,
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`obliging Patent Owner to disclose Apple’s “dump” to the examiner.
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`2
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`Case No.: IPR2020-00175
`Patent No.: 10,188,299
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`to review the Charts and references and determine if Apple’s arguments made the claims
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`Atty. Dkt. No.: OMSC0117IPR1
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`unpatentable. These facts satisfy the Becton, Dickinson factors: (a) & (b) the asserted
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`art and prior art involved during examination are identical; (c) Apple’s Invalidity
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`Contentions and Charts were the only things the examiner considered before issuing his
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`third notice of allowance; (d) substantial overlap exists between the arguments made
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`during examination and the manner in which the Petition relies on the prior art; (e)
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`Apple fails to show how the examiner erred in its evaluation of the asserted prior art;
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`and (f) the substantially similar evidence and facts in the Petition do not warrant
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`reconsideration of the prior art or arguments. Advanced Bionics, p. 9, n. 10.
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`Apple’s Reply does not properly evaluate the Becton, Dickinson factors as
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`required by Advanced Bionics. When the same art is presented to the Office—which
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`occurred here—that satisfies factors (a), (b), and (d). Advanced Bionics, pp. 10, 20. For
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`factor (c), Apple asserts that the examiner’s review was “cursory,” but offers no
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`evidence to support that claim. (Reply at 3.)
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`For factors (e) and (f), Apple offers conclusions, without supporting evidence.
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`Apple relies on the Board’s institution for the ‘546 patent—which lacks the “pulse rate”
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`limitation—and asserts, without analysis, the Board should do the same here. (Reply at
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`4.) Then Apple lists several types of evidence (id., pp. 4-5) without analyzing how they
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`“show the Office erred by overlooking something persuasive under factors (e) and (f).”
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`Advanced Bionics, p. 10. Apple fails to “demonstrate that the Examiner erred in the
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`3
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`Case No.: IPR2020-00175
`Patent No.: 10,188,299
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`evaluation of the prior art, for example, by showing that the Examiner misapprehended
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`Atty. Dkt. No.: OMSC0117IPR1
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`or overlooked specific teachings in the relevant prior art. . . .” Id., p. 21.
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`III. At best for Apple, reasonable minds can disagree
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`In its IPR2019-00916 institution decision (“‘533 ID”), the Board stated,
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`“Petitioner has failed to sufficiently demonstrate how Lisogurski teaches increasing
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`LED firing rate to increase signal-to-noise.” (Ex. 2124, p. 30.) So, at best for Apple,
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`reasonable minds can disagree about whether Lisogurski discloses the “pulse rate”
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`limitation.
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`As for Carlson, the Petition and the Charts cite the same paragraphs of Carlson
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`for the “pulse rate” limitation ([0067]-[0069]). (Compare Pet., pp. 50-51 with Ex. 2127,
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`pp. 4-5.) Thus, the examiner had the same contentions Apple presents to the Board.
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`Carlson teaches that modulated light at a “chosen” frequency F0 (Fig. 8) is an
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`alternative to continuous light (Fig. 7c). (Ex. 1009, [0069], emphasis added.) Carlson
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`never discloses a device that increases the modulation frequency or pulse rate from an
`
`initial rate. (Ex. 2122, MacFarlane Decl., ¶ 79.)
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`Apple’s expert, Dr. Anthony, does not advance an obviousness analysis other
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`than modifying Lisogurski using the “Carlson technique.” If a person of ordinary skill
`
`in the art were to apply the “Carlson technique” to Lisogurski, the result would simply
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`be a pulse oximeter having a “chosen” firing rate above 1000Hz. (Ex. 2122, MacFarlane
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`Decl., ¶ 81.) Because neither reference teaches improving SNR by increasing an initial
`
`4
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`Case No.: IPR2020-00175
`Patent No.: 10,188,299
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`pulse rate, the references, alone or combined, do not make the ‘299 claims prima facie
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`Atty. Dkt. No.: OMSC0117IPR1
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`obvious.
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`On page 2, Apple relies on the Board’s preliminary views in the ‘533 ID but those
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`preliminary views are not evidence. And the Board there did not have Dr. MacFarlane’s
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`declaration,2 of record here, which shows that reasonable minds can disagree.
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`IV. Conclusion
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`Because reasonable minds can disagree, and because Apple has not met its
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`burden to show that the examiner erred, the Board should deny institution so the district
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`court case may proceed.3
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`Dated: May 28, 2020
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`
`
`
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`Respectfully submitted,
`/Thomas A. Lewry/
`
`
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`
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`2 Apple wrongly states the Board weighed “evidence from both parties,” Reply at 2, but
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`the Board did not have Dr. MacFarlane’s declaration when it issued the ‘533 ID.
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`3 Apple wrongly claims, “the litigation involving the ‘299 patent is stayed for reasons
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`unrelated to IPRs.” (Paper 8 at 5.) The district court only stayed the case “until final
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`resolution, including appeals, of all inter partes review Proceedings in which the
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`asserted patents are at issue.” Omni MedSci, Inc. v. Apple Inc., Case No. 4:19cv5673,
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`Dkt. #219, p. 2. Once this IPR is concluded, the lawsuit can proceed because all other
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`IPRs involving the asserted patents have been resolved.
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`5
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`
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`Case No.: IPR2020-00175
`Patent No.: 10,188,299
`
`
`
`Atty. Dkt. No.: OMSC0117IPR1
`
`Thomas A. Lewry (Reg. No. 30,770)
`John S. LeRoy (Reg. No. 48,158)
`Robert C. J. Tuttle (Reg. No. 27,962)
`John M. Halan (Reg. No. 35,534)
`Christopher C. Smith (Reg. No. 59,669)
`Andrew B. Turner (Reg. No. 63,121)
`BROOKS KUSHMAN P.C.
`1000 Town Center, Twenty-Second Floor
`Southfield, Michigan 48075
`Telephone: (248) 358-4400
`
`Attorneys for Omni MedSci, Inc.
`
`6
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`
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`Case No.: IPR2020-00175
`Patent No.: 10,188,299
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`
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`Atty. Dkt. No.: OMSC0117IPR1
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`Certificate of Service
`
`The undersigned certifies that on May 28, 2020, a complete and entire copy of
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`PATENT OWNER’S SUR-REPLY REGARDING 35 U.S.C. § 325(d), was served
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`via electronic mail by
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`serving
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`the correspondence email address of
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`IPRnotices@sidley.com, which delivers to the following lead and back-up counsel:
`
`LEAD COUNSEL
`Jeffrey P. Kushan
`(Reg. No. 43,401)
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, DC 20005
`(202) 736-8914
`
`BACK-UP COUNSEL
`Ching-Lee Fukuda (Reg. No. 44,334)
`Sidley Austin LLP
`787 Seventh Avenue
`New York, NY 10019
`
`Thomas A. Broughan III (Reg. No. 66,001)
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`
`Sharon Lee (pro hac vice)
`
`Respectfully submitted,
`
` /Thomas A. Lewry/
`
`
`Thomas A. Lewry (Reg. No. 30,770)
`John S. LeRoy (Reg. No. 48,158)
`Robert C. J. Tuttle (Reg. No. 27,962)
`John M. Halan (Reg. No. 35,534)
`Christopher C. Smith (Reg. No. 59,669)
`Andrew B. Turner (Reg. No. 63,121)
`BROOKS KUSHMAN P.C.
`1000 Town Center, Twenty-Second Floor
`Southfield, Michigan 48075
`Telephone: (248) 358-4400
`
`Attorneys for Omni MedSci, Inc.
`
`7
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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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`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24
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`
`
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`This paper complies with the type-volume limitation of 37 C.F.R. § 42.24.
`
`The paper contains 1,141 words, excluding the parts of the paper exempted by
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`§42.24(a).
`
`This paper also complies with the typeface requirements of 37 C.F.R.
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`§ 42.6(a)(ii) and the type style requirements of § 42.6(a)(iii)&(iv).
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`Dated: May 28, 2020
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`
`
`
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`
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`Respectfully submitted,
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` /Thomas A. Lewry/
`
`
`Thomas A. Lewry (Reg. No. 30,770)
`John S. LeRoy (Reg. No. 48,158)
`Robert C. J. Tuttle (Reg. No. 27,962)
`John M. Halan (Reg. No. 35,534)
`Christopher C. Smith (Reg. No. 59,669)
`Andrew B. Turner (Reg. No. 63,121)
`BROOKS KUSHMAN P.C.
`1000 Town Center, Twenty-Second Floor
`Southfield, Michigan 48075
`Telephone: (248) 358-4400
`
`Attorneys for Omni MedSci, Inc.
`
`8
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`
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