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 RESPONSE TO PETITION
`FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`

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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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`TABLE OF CONTENTS
`
`Table of Authorities ................................................................................................. iii
`
`List of Exhibits ......................................................................................................... iv
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Overview of the ’299 Patent ............................................................................ 4
`
`A.
`
`The ’299 Patent discloses innovative systems for making
`accurate non-invasive physiological measurements ............................. 4
`
`B.
`
`Priority Date .......................................................................................... 9
`
`III. Claim Construction ........................................................................................ 10
`
`IV. The Board should deny the Petition because it fails to establish prima
`facie obviousness of the Challenged Claims ................................................. 10
`
`A.
`
`Lisogurski does not disclose a system configured to increase
`SNR by increasing a pulse rate as claimed ......................................... 11
`
`B.
`
`Carlson’s teaching does not fill Lisogurski’s gap ............................... 19
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Changing from continuous light to pulsed light is not
`“increasing a pulse rate . . . from an initial pulse rate” ............. 19
`
`Combining Carlson and Lisogurski does not disclose the
`“pulse rate” limitation—Carlson adds nothing to what
`Lisogurski teaches, so the combination cannot render the
`Challenged Claims obvious ...................................................... 23
`
`Carlson teaches the solution to SNR issues is temporary
`modulation of an unmodulated light source at a
`predetermined rate..................................................................... 26
`
`Changing a “power spectrum” is not the same as
`“increasing a pulse rate . . . from an initial pulse rate” ............. 27
`
`Apple’s expert does not fill Lisogurski’s gaps even
`combining the teachings of Carlson and Lisogurski ................. 32
`
`6. Modifying Lisogurski to increase the “firing rate” to
`increase SNR would change the principle of operation of
`Lisogurski’s cardiac cycle modulation ..................................... 36
`
`i
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`Case No.: IPR2020-00175
`Patent No.: 10,188,299
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`V.
`
`Conclusion ..................................................................................................... 37
`
`Atty. Dkt. No.: OMSC0117IPR1
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`Certificate of Service ............................................................................................... 38
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 ....................................... 39
`
`
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`
`ii
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`Table of Authorities
`
`Cases
`
`In re Gordon,
`
`733 F.2d 900 (Fed. Cir. 1984) ....................................................................... 25
`
`In re Ratti,
`
`270 F.2d 810 (CCPA 1959) ........................................................................... 36
`
`Plas-Pak Indus. v. Sulzer Mixpac AG,
`
`600 F. App'x 755 (Fed. Cir. 2015) ................................................................. 36
`
`Ruiz v. A.B. Chance Co.,
`
`357 F.3d 1270 (Fed. Cir. 2004) ..................................................................... 25
`
`SAS Inst., Inc. v. Iancu,
`
`__ U.S. __, 138 S. Ct. 1348 (2018) ............................................................... 22
`
`Sirona Dental Sys. GmbH v. Institut Straumann AG,
`
`892 F.3d 1349 (Fed. Cir. 2018) ..................................................................... 23
`
`TQ Delta, LLC v. Cisco Sys., Inc.,
`
`942 F.3d 1352 (Fed. Cir. 2019) ..................................................................... 25
`
`
`
`Rules
`
`MPEP 2143.03 ......................................................................................................... 36
`
`
`
`
`
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`
`
`iii
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`Case No.: IPR2020-00175
`Patent No.: 10,188,299
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`List of Exhibits
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`Atty. Dkt. No.: OMSC0117IPR1
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`Description
`
`2104
`
`2105
`
`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
`Declaration of Duncan L. MacFarlane, Ph.D., P.E. in Support
`of Patent Owner’s Response to Petition
`
`2121
`
`2122
`2123
`2124
`
`2125
`
`2126
`
`2127
`
`2128
`
`2129
`
`2130
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`2131
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`
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`iv
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`Case No.: IPR2020-00175
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`Omni MedSci, Inc. (“Patent Owner”), submits this 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 the Petition on all Grounds.
`
`The Petition does not establish prima facie obviousness for the Challenged
`
`Claims. The Petition relies solely on two references, Lisogurski and Carlson, to
`
`show the “increasing a pulse rate” limitation recited in the only challenged
`
`independent claim, claim 7. Separately and combined, Lisogurski and Carlson fail
`
`to disclose or render obvious “the system configured to increase signal-to-noise
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`1
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`ratio [“SNR”] . . . by increasing a pulse rate of at least one of the plurality of
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`semiconductor sources from an initial pulse rate.” (Ex. 1001 at 33:65-34:3.)1, 2
`
`In its Institution Decision (“DI”), the Board correctly explained that
`
`Lisogurski’s system varies an LED’s pulse rate but not to increase SNR. (Paper
`
`No. 11 at 47-48.) Lisogurski discloses two forms of light source modulation,
`
`neither of which is configured to increase SNR by increasing a pulse rate as
`
`claimed. First, Lisogurski discloses “cardiac cycle modulation” which is “aligned
`
`with pulses of the heart” or “other suitable physiological cyclical cycle.” (Ex.
`
`1011 at 5:25-47.) This cardiac cycle modulation is “on the order of 1 Hz”
`
`correlating with an average heart rate of 60 beats per minute. (Id. at 6:28-29.)
`
`This is shown, for example, by blocks 532 and 534 in Fig. 5, which illustrate a red
`
`LED turning on and off in synchronization with the cardiac cycle (“PPG”). (Id.
`
`at 21:45-53.) Lisogurski explains that the “firing rate” of this cardiac cycle
`
`modulation can be adjusted (faster or slower) to track the cardiac cycle. (Id. at
`
`25:45-58; 28:30-39; 29:25-34.) Lisogurski’s “cardiac cycle modulation,” which is
`
`“on the order of 1 Hz,” is always inside the range of ambient noise, i.e., 0.5 to
`
`
`1 Throughout this Response, all emphasis added unless otherwise noted.
`
`2 Omni MedSci’s focus on the “pulse rate” limitation is not an admission that the
`
`references disclose the other limitations of the Challenged Claims.
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`10 Hz. Increasing or decreasing the LED “firing rate” to stay locked into the ~1Hz
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`cardiac cycle as Lisogurski teaches does nothing to avoid the 0.5-10Hz noise.
`
`Thus, as the Board explained, Lisogurski’s cardiac cycle modulation is not
`
`configured to increase SNR by increasing the pulse rate from an initial pulse rate as
`
`claimed. (Paper No. 11 at 47-48; Ex. 2124 at 31.)
`
`Second, Lisogurski describes “drive cycle modulation,” “a technique to
`
`remove ambient and background signals” by measuring ambient light while the
`
`LED is off and subtracting that measurement from the signals received with the
`
`light on. (Ex. 1011 at 6:7-30.) Lisogurski says this can be done at an exemplary
`
`modulation rate of “1 kHz.” (Ex. 1011 at 5:48-54; 6:30.) Apple does not rely on
`
`this section of Lisogurski to show obviousness of the “pulse rate” limitation
`
`because Lisogurski does not disclose or suggest increasing the frequency of the
`
`drive cycle modulation to increase SNR as claimed.
`
`Apple adds Carlson purportedly to provide what is missing from Lisogurski.
`
`But Carlson adds nothing relevant to Lisogurski because the two references contain
`
`identically the same teaching—right down to the same exemplary 1000 Hz
`
`modulation rate. (Compare Ex. 1011, Lisogurski, at 6:30 with Ex. 1009, Carlson,
`
`at [0069].) In fact, Carlson adds less than nothing because it merely modulates,
`
`temporarily, an unmodulated light source—i.e., lacking “an initial pulse rate” as
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`claim 7 requires—and without changing the predetermined modulation frequency.
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`An ordinary artisan reading Carlson would learn nothing new beyond what
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`Lisogurski already discloses, which the Board correctly explained is not the
`
`claimed configuration. (Paper 11 at 47; Ex. 2124 at 30.)
`
`Alone or combined, the references fail to disclose or render obvious “the
`
`system configured to increase signal-to-noise ratio . . . by increasing a pulse rate of
`
`at least one of the plurality of semiconductor sources from an initial pulse rate.”
`
`The Board should confirm the patentability of the Challenged Claims.
`
`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
`
`wavelength of the source light by varying the wavelength of the source light or by
`
`using a broadband source of light. (Id. at 9:52-64.)
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`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
`
`more optical wavelengths, wherein at least one of the optical wavelengths is
`
`between 700 and 2500 nanometers. (Id. at 6:50-55; 20:2-5.) The ’299 specification
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`5
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`discloses two distinct operating modes for the LEDs: “continuous wave or pulsed
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`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 system 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
`
`of the plurality of semiconductor sources.” (Id. at 3:11-16.) The specification states
`
`that “[b]y use of an active illuminator, a number of advantages may be achieved”
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`6
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`including “higher signal-to-noise ratios.” (Id. at 29:3-4.) PCT Application Serial
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`Atty. Dkt. No.: OMSC0117IPR1
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`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 1:32-36; Ex. 2120 at 26-27, ¶[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 1:39-41; Ex 2121 at 29, ¶[0045].)
`
`The wearable measurement device also includes a lens that receive a portion
`
`of the output optical beams and deliver them to a sample. (Ex. 1001 at 6:55-59.)
`
`Lastly, the wearable measurement device includes a detection system that
`
`processes that signal to increase the SNR. (Id. at 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:
`
`7
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`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
`
`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
`
`8
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`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
`
`increase the signal-to-noise ratio by differencing the first signal
`
`and the second signal.
`
`(Ex. 1001 at 33:29-34:11.)
`
`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.
`
`9
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`Case No.: IPR2020-00175
`Patent No.: 10,188,299
`
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`Pat. No. 9,651,533 (the ‘533 Parent Patent, Ex. 2104), which is a continuation of
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`Atty. Dkt. No.: OMSC0117IPR1
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`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 Response, Patent Owner does not dispute Petitioner’s
`
`assertion.
`
`III. Claim Construction
`
`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, constructions of those terms are not needed. (See, e.g., Paper 11 at 18.)
`
`Petitioner does not propose a construction of the “pulse rate” limitation. It is
`
`sufficiently clear as written and needs no construction. (See, e.g., Paper 11 at 19.)
`
`IV. The Board should deny the Petition because it fails to establish
`prima facie obviousness of the Challenged Claims
`
`Independent claim 7, from which all other Challenged Claims depend,
`
`requires: “the system configured to increase the signal-to-noise ratio . . . by
`
`10
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`increasing a pulse rate of at least one of the plurality of semiconductor sources
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`Atty. Dkt. No.: OMSC0117IPR1
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`from an initial pulse rate.” Petitioner asserts that Lisogurski discloses this
`
`limitation, and if not disclosed in Lisogurski, it would have been obvious to modify
`
`Lisogurski to implement the “technique” disclosed in Carlson. (Pet. at 48-52.)
`
`The Petition asserts no other basis for finding the “increasing a pulse rate”
`
`limitation obvious. Neither Lisogurski nor Carlson disclose or suggest a system
`
`where the device is configured to “increase a pulse rate of at least one of the
`
`plurality of semiconductor sources from an initial pulse rate” so as to “increase the
`
`signal-to-noise ratio.” (Ex. 2131, MacFarlane Decl., ¶¶68-100.)
`
`A. Lisogurski does not disclose a system configured to increase
`SNR by increasing a pulse rate as claimed
`
`Regarding Lisogurski alone, the Board concluded, “when Lisogurski teaches
`
`‘varying light output may also apply to sampling rate,’ Lisogurski is teaching
`
`varying the sampling rate to be synchronous with the cardiac cycle, not to improve
`
`signal-to-noise.” (Paper 11 at 48.) That conclusion is correct.
`
`Relying on Lisogurski’s disclosure of a “cardiac cycle modulation” process,
`
`Petitioner asserts, incorrectly, that Lisogurski discloses adjusting LED “firing rate”
`
`to “ensure an adequate signal-to-noise ratio.” (Pet. at 48 citing Lisogurski at 8:29-
`
`35, 25:49-55 and 27:44-52.) But the system described in Lisogurski is configured
`
`11
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`to vary a pulse rate to track a particular point on a person’s cardiac cycle, not to
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`Atty. Dkt. No.: OMSC0117IPR1
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`increase SNR by increasing a pulse rate as claimed. (Paper No. 11 at 47.)
`
`Lisogurski is clear that the “cardiac cycle modulation” adjusts the LED
`
`firing rate to ensure that the light drive remains “synchronous” with a person’s
`
`physiological cycle:
`
`• “[T]he system may vary parameters in a way substantially synchronous
`
`with physiological pulses” (Ex. 1011 at Abstract.)
`
`• “the system may vary a light drive signal in a way substantially
`
`synchronous with physiological pulses, for example, cardiac pulses.” (Id. at
`
`1:41-43.)
`
`• “The system may generate a light drive signal for activating a light source to
`
`emit a photonic signal, wherein at least one parameter of the light drive
`
`signal is configured to vary substantially synchronously with physiological
`
`pulses of the subject.” (Id. at 1:44-47.)
`
`• “the external signal may be received from an external ECG sensor
`
`configured to provide a trigger signal synchronous with an element of the
`
`cardiac cycle such as an R wave.” (Id. at 10:9-12.)
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`• “the cardiac cycle modulation applied to red light drive signal 556 may be
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`substantially synchronous with the systole periods of the cardiac cycle.”
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`(Id. at 21:51-53.)
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`• “the cardiac cycle modulation applied to red light drive signal 614 may be
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`substantially synchronous with the diastole periods of the cardiac cycle.”
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`(Id. at 22:45-47.)
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`• “the cardiac cycle modulation applied to red light drive signal 716 is
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`substantially synchronous with the dicrotic notch of the cardiac cycle.”
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`(Id. at 23:24-27.)
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`• “the cardiac cycle modulation applied to red light drive signal 804 is
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`substantially synchronous with the peak of the PPG signal.” (Id. at 24:10-
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`13.)
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`Varying the LED firing rate to remain synchronous with the selected point
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`of a person’s cardiac cycle to track the heart rate will both decrease and increase
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`the firing rate. (Ex. 2131, MacFarlane Decl., ¶¶79-80.) So, Lisogurski does not
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`teach or suggest that increasing firing rate improves SNR; it merely teaches that
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`heart rate tracking may improve SNR (whether the firing rate increases, decreases
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`or stays the same). (Id.)
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`Any increase (or decrease) in Lisogurski’s “firing rate” is in a range of about
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`0.5 Hz to 3 Hz—the range of a person’s heart rate. (Ex. 1009 at [0066]; see also
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`Ex. 1011 at 6:28-29.) But, as both Carlson and Lisogurski explain, this frequency
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`range is the same as the frequency range of the noise. Carlson explains, “optical
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`contributions, e.g. temporally structured day-light, and electronic noise . . . are
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`stronger in the low frequency range 0.5 Hz to 10 Hz than in higher frequency
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`ranges.” (Ex. 1009 at [0009].) Lisogurski discloses “Gaussian noise from
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`approximately 0-5 Hz.” (Ex. 1011 at 41:48; 43:15-16; 44:42-43.) When
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`Lisogurski’s device increases the LED firing rate to match an increase in the
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`cardiac cycle, however, the firing rate remains within the envelope of that noise
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`and does not increase SNR. (Ex. 2131, MacFarlane Decl., ¶81-82.) Apple’s expert
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`ignores these facts and he does not dispute that a firing rate increase in the range of
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`0.5 Hz to 3 Hz is within the envelope of noise and would not increase SNR.
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`As shown in the illustration below, increasing Lisogurski’s firing rate from,
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`e.g., 0.5 Hz to 3 Hz to track a cardiac cycle when a person begins to exercise
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`(shown in green), will leave the pulse rate well within the region of significant
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`noise (shown in red) disclosed in Carlson and Lisogurski. (Ex. 2131, MacFarlane
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`Decl., ¶¶81-82.)
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`Lisogurski gives no indication that such a small adjustment in pulse rate will
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`increase SNR, nor does Apple present evidence that such tiny adjustments increase
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`SNR. Instead, Lisogurski discloses several other techniques to increase SNR—
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`techniques recited in other limitations of challenged claim 7. First, Lisogurski’s
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`“system may increase the brightness of the light sources in response to [any] noise
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`to improve the signal-to-noise ratio.” (Ex. 1011 at 9:50-52.) That approach is
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`recited in the “increasing light intensity” limitation of claim 7. Second, Lisogurski
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`discloses “drive cycle modulation” as “a technique to remove ambient and
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`background signals” by measuring ambient light while the LED is off and
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`subtracting that measurement from the signals received with the light on. (Id.
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`at 6:7-30.) That approach is recited in the “first signal,” “second signal” and
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`“differencing” limitations of claim 7. Third, Lisogurski teaches to “change from a
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`modulated light output to a constant light output in response to noise, patient
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`motion, or ambient light.” (Id. at 9:57-60.) These techniques all address noise in
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`the context of cardiac cycle modulation, but not in the manner recited in the
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`“increasing a pulse rate” limitation at issue.
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`An ordinary artisan reading Lisogurski’s disclosure of “cardiac cycle
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`modulation,” which varies the pulse rate in response to an “external trigger” solely
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`to remain synchronous with points of interest in a physiological cycle, would not
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`consider Lisogurski to be a system configured to increase SNR by increasing a
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`pulse rate as recited in claim 7. (Ex. 2131, MacFarlane Decl., ¶¶68-76.)
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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 (i.e., the detection
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`rate) based on the modulation of the light drive signal—not vice-versa as Petitioner
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`asserts. (Ex. 2131, MacFarlane Decl., ¶¶72-75.) Regardless, Lisogurski discloses
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`varying the sampling rate of the detector to “optimize power consumption”—not
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`to increase SNR by increasing the pulse rate of the light source from an initial
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`pulse rate as claimed. (Id., Ex. 1011, Lisogurski at 10:23-26; Ex. 2131,
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`MacFarlane Decl., ¶¶72-75.) As the Board explained, “when Lisogurski teaches
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`‘varying light output may also apply to sampling rate,’ Lisogurski is teaching
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`varying the sampling rate to be synchronous with the cardiac cycle, not to improve
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`signal-to-noise.” (Paper No. 11 at 48 citing Ex. 1011 at 35:5–9.)
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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 does not cite any
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`passage of Lisogurski supporting his bare conclusion. (Ex. 1003, ¶156.)
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`Lisogurski also discloses another process, “drive cycle modulation”—
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`modulation at a relatively high, fixed frequency combined with off/on
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`subtraction—that can be used to increase SNR. (Ex. 1011 at 6:7-30.) Again, this
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`technique does not involve increasing the LED firing rate. (Ex. 2131, MacFarlane
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`Decl., ¶83-84.) Specifically, Lisogurski discloses:
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`In some embodiments, a technique to remove ambient and
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`background signals may be used in addition to or in place of a power
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`saving light modulation scheme. In a drive cycle modulation
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`technique, the system may cycle light output at a rate significantly
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`greater than the cardiac cycle. For example, a drive cycle modulation
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`cycle may include the system turning on a first light source, followed
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`by a “dark” period, followed by a second light source, followed by a
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`“dark” period. The system may measure the ambient light detected by
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`the detector during the “dark” period and then subtract this ambient
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`contribution from the signals received during the first and second “on”
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`periods. . . . The cardiac cycle modulation may represent a lower
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`frequency envelope function on the higher frequency drive cycle. For
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`example, cardiac cycle modulation may be an envelope on the order
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`of 1 Hz superimposed on a 1 kHz sine wave drive cycle modulation.
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`(Id.)
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`As the ‘299 patent discloses (29:12-18) and claims (34:4-11), using off/on
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`subtraction may increase SNR. But the “pulse rate” limitation at issue here does
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`not use this process. So, Lisogurski’s disclosure of off/on subtraction adds nothing
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`to the obviousness analysis of the “pulse rate” limitation. Moreover, Lisogurski
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`does not teach or suggest varying the “drive cycle modulation” pulse rate, which
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`probably why Apple does not rely on “drive cycle modulation” to show
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`obviousness of the “pulse rate” limitation.
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`In summary, Lisogurski teaches three different techniques for increasing
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`SNR—including locking onto an external trigger and off/on subtraction—none of
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`which is the “pulse rate increase” technique of the Challenged Claims. (Ex. 2131,
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`MacFarlane Decl., ¶85.) Thus, Lisogurski alone does not render claim 7 obvious.
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`B. Carlson’s teaching does not fill Lisogurski’s gap
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`1.
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`Changing from continuous light to pulsed light is not
`“increasing a pulse rate . . . from an initial pulse rate”
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`The Board instituted review—despite concluding that Lisogurski fails to
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`disclose the limitation—because it believed Carlson teaches “switchi