`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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`Case IPR2020-00175
`__________________________________________________________________
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`Petitioner’s Reply
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`IPR2020-00175
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`Petitioner’s Reply
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`Table of Contents
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`I.
`II.
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`B.
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`Introduction ................................................................................................ 1
`The Term “Increas[ing] Signal-to-Noise Ratio… by Increasing a Pulse
`Rate of at Least One [LED]” Reflects the Common Scientific Knowledge
`that Increasing Pulse Rate Typically Increases SNR ................................ 3
`III. Argument .................................................................................................... 6
`A.
`Lisogurski Alone Discloses a Device Configured to Increase SNR
`by Increasing the Pulse Rate of an LED .......................................... 6
`Lisogurski and Carlson Teach a System “Configured to Increase
`Signal-to-Noise Ratio by... Increasing a Pulse Rate” of an LED .... 12
`1.
`Lisogurski Teaches Increasing LED Firing Rate and that Light
`Drive Parameters Can Be Changed In Response to Increased
`Noise ...................................................................................... 12
`Carlson Teaches that Increasing LED Pulse Rate Can Increase
`SNR ........................................................................................ 14
`The Combined Teachings of Lisogurski and Carlson Teach a
`Device that Increases Pulse Rate for the Purpose of Increasing
`SNR ........................................................................................ 19
`C. Dependent Claims ........................................................................... 25
`IV. Conclusion ................................................................................................. 25
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`2.
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`3.
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Apple Inc. v. Omni MedSci, Inc.,
`IPR2019-00916, Paper 23 (Oct. 31, 2020) ................................................ passim
`Apple Inc. v. Omni MedSci, Inc.,
`IPR2019-00916, Paper 39 (Oct. 14, 2020) ................................................ passim
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`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) ........................................................................ 11
`In re Keller
`642 F.2d 413 (Fed. Cir. 1981) .......................................................................... 19
`MCM Portfolio LLC v. Hewlett-Packard Co.,
`812 F.3d 1284 (Fed. Cir. 2015) .................................................................. 19, 24
`In re Merck & Co., Inc.,
`800 F.2d 1091 (Fed. Cir. 1986) .................................................................. 19, 21
`In re NuVasive, Inc.,
`841 F.3d 966 (Fed. Cir. 2016) .......................................................................... 18
`ParkerVision, Inc. v. Qualcomm Inc.,
`903 F.3d 1354 (Fed. Cir. 2018) .................................................................. 10, 11
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`Petitioner’s Reply
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`I.
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`Introduction
`The Board should find, as it did in IPR2019-00916 involving a parent of the
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`’299 patent, that Lisogurski and Carlson make obvious devices that “increase the
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`signal-to-noise ratio… by increasing the pulse rate” of a light emitting diode
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`(LED). That is only aspect of the claimed devices that Omni MedSci (“Omni”)
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`contends makes them nonobvious, but the reasoning it advances was thoroughly
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`rejected by Board in the -916 proceeding based on a nearly identical record of
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`evidence. The Board should reach the same conclusion in this proceeding.
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`First, Omni contends the claim language “configured to increase signal-to-
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`noise ratio” imposes special requirements for how the claimed devices increase
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`signal-to-noise ratio (“SNR”) by increasing the LED pulse rate. But as the Board
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`held in the -916 proceeding, it does not—all that claims require is that the LEDs be
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`“capable of” having their pulse rate increased to increase SNR. See IPR2019-
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`00916, Paper 39 (“-916 FWD”), 11-12 (Oct. 14, 2020).
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`Next, Omni contends that Lisogurski’s “cardiac cycle modulation” technique
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`does not increase SNR by increasing the pulse rate of an LED in its device. But
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`the Board also rejected that assertion. It initially observed that Omni had admitted
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`that Lisogurski’s cardiac cycle modulation increases SNR by modulating the pulse
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`frequency to correlate with the cardiac cycle. -916 FWD, 28-29; IPR2019-00916,
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`Paper 23 (“-916 Resp.”), 13, 15); see Prelim. Resp., 16 (admitting the same here).
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`The Board also found that cardiac cycle modulation will at least some of the time
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`increase SNR by increasing the LED pulse frequency. -916 FWD, 29-30. That
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`aligns with the largely undisputed disclosure of Lisogurski: a device that (i) can
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`change an LED’s light drive cycle parameters, including the LED firing rate,
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`(Ex.1011, 25:53-55, 27:44-49, 35:24-31; Ex.1065, 59:1-5), (ii) can change those
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`parameters in response to noise, (Resp., 15; Ex.1011, 1:67-2:3, 5:55-61, 9:46-60,
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`27:44-49, 37:6-18; Ex.2131, ¶¶74-77), and (iii) it can change those parameters for
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`the purpose of increasing SNR, (Prelim. Resp., 16; -916 Resp., 15; Ex.1011, 25:53-
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`55, 27:44-49, 35:24-31). Thus, as the Board correctly found, Lisogurski’s device
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`is capable of increasing the SNR by increasing its LED firing rate. -916 FWD, 30.
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`That establishes that Lisogurski teaches this sole disputed element of the ’299
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`claims as well.
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`The Board also credited Petitioner’s explanation that Carlson makes it
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`obvious to increase an LED pulse rate in Lisogurski’s device to increase SNR. -
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`916 FWD, 32-34. As the Board observed, a skilled person would have considered
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`Lisogurski and Carlson together because both describe analogous optical sensor
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`devices and their use in performing physiological measurements. Id., 24-25. The
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`Board also credited Petitioner’s explanation that Carlson specifically teaches the
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`technique Omni contends is not expressly taught by Lisogurski—increasing the
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`LED pulse rate to dynamically offset noise from ambient light, which, as Omni’s
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`expert Dr. MacFarlane admitted, generally increases SNR. Ex.1065, 37:17-22; -
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`916 FWD, 32-33. The record of evidence here and the Board’s findings in the -
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`916 proceeding based on that same evidence establish that a skilled person would
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`have found it obvious to configure Lisogurski to increase SNR by increasing its
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`pulse rate based on Lisogurski and Carlson. And because Omni has identified no
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`credible basis for the Board to deviate from its prior conclusion, the Board should
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`find the challenged ’299 claims unpatentable.
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`II. The Term “Increas[ing] Signal-to-Noise Ratio… by Increasing a Pulse
`Rate of at Least One [LED]” Reflects the Common Scientific Knowledge
`that Increasing Pulse Rate Typically Increases SNR
`Omni anchors its arguments on the requirement in independent claim 7 for a
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`“system configured to increase signal-to-noise ratio… by increasing a pulse rate
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`of at least one of the plurality of [LEDs].” But the specification provides scant
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`support for this limitation. For example, the specification provides no explanation
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`how a skilled person should or could increase the LED pulse rate to increase SNR,
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`nor does it suggest the optical sensor must be specially configured to cause a
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`particular type of increase in pulse rate in order to increase SNR. Instead, the
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`specification relies entirely on the knowledge already possessed by a skilled person
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`for this supposedly critical limitation. It is thus informative to look at the science
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`behind variables affecting SNR.
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`Petitioner’s Reply
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`Pulsing a signal is a standard technique used to enhance a signal’s
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`detectability in the presence of noise, such as ambient light. Ex.1003, ¶47. In an
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`optical sensor, an LED is pulsed, and each time it is, a detector measures the
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`amount of light reflected back from the sample and determines how the sample is
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`changing (e.g., how the volume of blood in tissue is changing over time). Ex.1003,
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`¶¶41, 43-44. It was well-known that, in the presence of noise, increasing the rate at
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`which an LED pulses (and the sampling rate, which is the rate at which the signal
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`is measured) will generally increase the SNR. At his deposition, Omni’s expert
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`Dr. MacFarlane admitted this was a well-known scientific fact:
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`Q… Why is it that changing the pulse rate of an LED would
`change the signal-to-noise ratio?
`A. There are a number of reasons… why that might happen.
`Generally speaking, the faster the modulation, the faster the pulse
`rate, the lower the background noise.
`That's a general statement that describes something that -- that's
`a general statement of -- of truth. There are… counterexamples, but
`generally speaking…, as you have a faster or an increased pulse
`rate, you see a lower noise environment.
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`Ex.1065, 37:13-38:3.1 Dr. MacFarlane also testified the increasing the pulse rate
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`of an LED would typically increase SNR:
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`1 All emphases added, unless otherwise noted.
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`Q. Will you agree that in general, when you increase the pulse
`rate of an LED, you will increase the signal-to-noise ratio, though that
`won't always happen?
`* * *
`THE WITNESS: Yes.
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`Id., 39:12-17.
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`In its sur-reply, Omni may try to deny this scientific truth. For example,
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`after his cross-examination was complete, Omni’s counsel spoke to Dr.
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`MacFarlane about his answers. Ex.1065, 85:9-21. On redirect, Dr. MacFarlane
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`then tried to change his answer to the second question (the question at 39:12-17,
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`quoted in the previous paragraph), testifying that “I'd like to change my answer
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`from a yes to a no.” Id., 81:17-18. That change in answer, made after discussions
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`with counsel, lacks credibility. Moreover, Dr. MacFarlane’s original answer was
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`consistent with his prior testimony, where he stated “[g]enerally speaking, the
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`faster the modulation, the faster the pulse rate, the lower the background noise…
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`[T]hat’s a general statement… of truth.” Id., 37:17-22. Dr. MacFarlane made no
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`attempt square his changed answer with his prior testimony. And when asked on
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`re-cross to identify scenarios when increasing pulse rate did not increase SNR, he
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`could only postulate there might be hypothetical scenarios he could imagine, but
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`did not identify any actual ones that would. Ex.1065, 83:5-10. Dr. MacFarlane’s
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`testimony thus shows that a skilled person would generally expect that increasing
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`the pulse rate of an LED will increase SNR, and that only in unusual circumstances
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`would it not. Thus, as the Board observed in the -916 proceeding, the critical point
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`is that increasing an LED’s pulse rate will increase SNR at least some of the time.
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`-916 FWD, 29-30.
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`III. Argument
`A. Lisogurski Alone Discloses a Device Configured to Increase SNR
`by Increasing the Pulse Rate of an LED
`Lisogurski alone discloses a device that increases the firing (pulse) rate of at
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`least one of its LEDs and thereby meets the limitation of a “system configured to
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`increase signal-to-noise ratio… by increasing a pulse rate of at least one [LED].”
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`Based on the same record of evidence, the Board previously found that
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`Lisogurski’s cardiac cycle modulation meets this element, (-916 FWD, 29-30), and
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`Omni has presented no reason why the Board should reach a different conclusion
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`here.
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`Initially, it is undisputed that Lisogurksi alone discloses a device configured
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`to increase the firing rate (“pulse rate”) of at least one of its LEDs. See Ex.1011,
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`25:52-55. As Lisogurksi states:
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`[T]he sampling rate may represent the amount of time between “on”
`periods. For example…, decreasing the duration of the “off” periods
`(i.e., increasing the emitter firing rate) relates to an increased
`sampling rate.
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`Ex.1011, 35:24-31. Omni admits this, stating that “Lisogurski discloses a pulse
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`oximeter having an adjustable ‘firing rate.’” Resp., 22; see id., 2. Even Dr.
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`MacFarlane admitted that Lisogurski discloses this:
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`Q… Do you agree that Lisogurski describes a device that is
`configured to increase the emitter firing rate in some circumstances?
`* * *
`THE WITNESS: I believe so.
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`Ex.1065, 59:1-5. When Lisogurski increases the LED firing rate, this typically
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`will increase the SNR. Omni’s expert Dr. MacFarlane admitted that “[g]enerally
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`speaking, the faster the modulation, the faster the pulse rate, the lower the
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`background noise.” Ex.1065, 37:17-22. Thus, Lisogurski discloses that its device
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`will increase SNR by increasing the pulse rate of an LED, other than in unusual
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`circumstances.
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`As Omni has admitted and as the Board previously found, Lisogurski also
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`discloses increasing the LED firing rate for the purpose of increasing SNR. -916
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`FWD, 29-30. Lisogurski describes using cardiac cycle modulation to vary how the
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`LEDs are illuminated, and cardiac cycle modulation is a technique that is intended
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`to increase SNR. Ex.1011, 25:49-55. And Omni admitted that “Lisogurski teaches
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`[] different techniques for improving SNR…, [including] by modulating the light
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`signal to correlate with ‘physiological pulses’ such as a ‘cardiac pulse,’ e.g.,… ‘[]
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`cardiac cycle modulation.’” Prelim Resp., 16; -916 Resp., 15.
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`Petitioner’s Reply
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`Lisogurski also explains that cardiac cycle modulation can increase the LED
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`firing rate (and the sampling rate) to become or remain synchronous with a cardiac
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`cycle. Ex.1011, 25:49-55; 31:11-24, 31:39-55. When Lisogurski’s device applies
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`that modulation technique, depending on the individual’s cardiac cycle, the device
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`will increase its LED pulse rate. Ex.1003, ¶136 (“Cardiac cycle modulation
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`schemes would adjust the brightness of a light in a way that is synchronized to the
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`cardiac cycle and similar to or faster than the cardiac pulse rate.”). Consistent with
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`Dr. Anthony’s explanation, and as the Board found in the -916 proceeding, this
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`could occur when a person’s heart rate increases, which would result in
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`Lisogurski’s device increasing its LED’s firing rate to remain synchronous with the
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`faster cardiac cycle. -916 FWD, 28-29. Omni has also admitted this, stating
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`“[v]arying the LED firing rate to remain synchronous with… the heart rate will
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`both decrease and increase the firing rate.” Resp., 13; see id., 16. This increase in
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`the firing rate can increase SNR by reducing noise, and such noise can represent
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`1%-4% of the computed PPG signal. Ex.1011, 42:50-54; see id., 25:66-26:14
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`(modulating LED drive signal to correlate to respiratory cycle can increase SNR).
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`Lisogurski explains that “increasing the sampling rate for a portion of the
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`cardiac cycle may result in more accurate and reliable physiological
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`information.” Ex.1011, 33:46-52. Although Lisogurski does not use the term
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`“SNR” in this passage, a skilled person would have understood that the
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`Petitioner’s Reply
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`physiological information is “more accurate and reliable” because its SNR is
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`higher. As Dr. Anthony explains:
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`Lisogurski states that increasing the sampling rate ‘may result in more
`accurate and reliable physiological information.’ Ex.1011
`(Lisogurski), 33:56-58. Therefore, Lisogurski explains that the LED
`firing rate can be increased to increase signal-to-noise ratio.
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`Ex.1003, ¶156.
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`Thus, the skilled person considering Lisogurski’s cardiac cycle modulation
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`would have understood that when Lisogurki’s device increases the LED firing rate
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`in this manner, it would increase the signal relative to the noise (e.g., ambient
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`light) in the measurement, and thus would increase SNR. See Ex.1065, 37:17-22,
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`39:12-17.
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`In its Response, Omni argues that Lisogurski does not meet this limitation
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`because cardiac cycle modulation varies the firing rate for the purpose of
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`remaining synchronous with cardiac cycle and not with the intent to increase SNR.
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`Resp., 11-13. But Omni has already admitted that one of the purposes of cardiac
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`cycle modulation is to increase SNR. Prelim. Resp., 13; -916 Resp., 15.
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`Moreover, Omni’s assertions about why Lisogurski increases LED firing rate are
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`irrelevant. The claims cover a device that increases SNR by increasing the pulse
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`rate of an LED, even if the device does not intend to increase SNR by doing so.
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`The Federal Circuit “explained long ago that ‘apparatus claims cover what a device
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`Petitioner’s Reply
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`is, not what a device does.’” ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354,
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`1361 (Fed. Cir. 2018); see Application of Michlin, 256 F.2d 317, 320 (C.C.P.A.
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`1958). A device that performs a specified action and causes the result specified by
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`the claim satisfies the claim requirements, irrespective of whether the device
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`intended to do so or not. See ParkerVision, 903 F.3d at 1361 (“[A] prior art
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`reference may anticipate or render obvious an apparatus claim... if the reference
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`discloses an apparatus that is reasonably capable of operating so as to meet the
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`claim limitations, even if it does not meet the claim limitations in all modes of
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`operation.”).
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`Omni also argues that Lisogurski does not meet this limitation because even
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`though cardiac cycle modulation sometimes increases SNR by increasing the LED
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`firing rate, it sometimes increases SNR by decreasing the firing rate. Resp., 11-13.
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`But all that matters is that Lisogurski sometimes increases SNR by increasing LED
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`firing rate, which Omni admits that it does. See Resp., 13 (“[Lisogurksi] merely
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`teaches that heart rate tracking may improve SNR (whether the firing rate
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`increases, decreases, or stays the same).”). That Lisogurski also sometimes
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`increases SNR by decreasing LED firing rate (e.g., when heart rate decreases) is
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`irrelevant. See -916 FWD at 30 (“Thus, a light source is ‘configured’ to increase
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`signal-to-noise by increasing LED pulse rate when it is ‘capable’ of doing so, i.e.,
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`when the increased pulse rate allows the device to operate in a frequency range
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`Petitioner’s Reply
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`having less environmental noise. This is true, even if the device does not always
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`do so.”). “It is well settled that an [apparatus] that ‘that sometimes, but not always,
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`embodies a claim[] nonetheless’” satisfies the claim. Broadcom Corp. v. Emulex
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`Corp., 732 F.3d 1325, 1333 (Fed. Cir. 2013); see ParkerVision, 903 F.3d at 1361.
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`Omni also argues that increasing LED firing rate to remain synchronous
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`with an increased heart rate (a human’s heart rate can vary from 0.5 to 3 Hz) would
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`not necessarily reduce interference from ambient light or environmental noise
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`(which typically is from 0.5 to 10 Hz). Resp., 13-15. Again, that is irrelevant to
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`the claims, which do not require increasing SNR every time pulse rate is increased.
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`As the Board recognized in the -916 proceeding, “whether [SNR] increases with
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`increasing pulse rate depends on an external factor—the noise spectrum in the
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`environment within which the device operates. But the claim is directed to the
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`device itself, regardless of the environment in which it operates.” -916 FWD, 30.
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`Omni’s argument also is inconsistent with Lisogurski’s teachings, which provide
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`that cardiac cycle modulation increases SNR in the presence of Gaussian noise of
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`0-5 Hz. Ex.1011, 41:46-52.
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`Omni also points out that Lisogurski discloses other techniques for
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`increasing SNR, but Lisogurski’s disclosure of multiple techniques for increasing
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`SNR is irrelevant, given that it is undisputed that cardiac cycle modulation
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`Petitioner’s Reply
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`increases SNR too. Resp., 17-18. Therefore, Lisogurski alone meets this claim
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`limitation.
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`B.
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`Lisogurski and Carlson Teach a System “Configured to Increase
`Signal-to-Noise Ratio by... Increasing a Pulse Rate” of an LED
`Even if the Board were to find that Lisogurski alone does not disclose this
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`claim element, the combination of Lisogurski and Carlson would render a device
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`including that element obvious. Omni’s primary argument for why Lisogurski and
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`Carlson do not do so together is that neither Lisogurski alone nor Carlson alone
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`teaches a device that, while in operation, actively increases the pulse rate of an
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`LED for the purpose of increasing SNR. Omni’s arguments rely on
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`mischaracterizations of what Lisogurski and Carlson each teach and a legally
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`erroneous formulation of obviousness.
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`The Board considered this same question, the same body of evidence, and
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`essentially the same arguments in the -916 proceeding, and found that Lisogurski
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`and Carlson together taught this claim element. -916 FWD, 32-35. The Board
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`should do the same here.
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`1.
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`Lisogurski Teaches Increasing LED Firing Rate and that
`Light Drive Parameters Can Be Changed In Response to
`Increased Noise
`Lisogurski teaches that its device can detect changes in background noise
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`and ambient light, and that in response, the device can alter the light drive
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`parameters or modulation techniques used.
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`Lisogurski explains that “the system may alter the cardiac cycle modulation
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`technique based on the level of noise, ambient light, or other suitable reasons.”
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`Ex.1011, 9:46-48. One way the system can alter the cardiac cycle modulation
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`technique is by switching between a first and a second mode of operation.
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`Ex.1011, 36:48-53, 37:6-8. For example, Lisogurski describes switching between
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`modes in response to background noise: “the system may detect a condition where
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`a second mode is required… [f]or example, the system may detect a change in
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`background noise, a change in ambient light, a change in the available power, other
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`suitable changes.” Ex.1011, 37:8-11. Lisogurski explains that when it changes the
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`cardiac cycle modulation technique in response to noise, that change can be done
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`“to improve the signal-to-noise ratio.” Ex.1011, 9:50-52; see Prelim. Resp., 16
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`(admitting cardiac cycle modulation increases SNR); -916 Resp., 15.
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`When altering cardiac cycle modulation, Lisogurski can change various light
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`drive parameters, including: “light brightness, duty cycle, firing rate,” and other
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`modulation parameters. Ex.1011, 25:52-55; see id., 1:67-2:3, 27:46-49. Thus, one
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`of the parameters than can be adjusted is the firing rate (“pulse rate”) of an LED.
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`Lisogurski describes examples where the LED firing rate (along with the detector
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`sampling rate) can be increased. Ex.1011, 35:29-31. Lisogurski explains that
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`while “cardiac cycle modulation techniques [are] generally related to the cardiac
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`cycle, [they] may not necessarily be precisely correlated to the cardiac cycle and
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`Petitioner’s Reply
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`may be related to external triggers (e.g., respiration), user input, [or] other suitable
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`techniques.” Ex.1011, 5:41-47.
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`Thus, Lisogurski teaches a device that is configured to (i) detect changes in
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`the noise level, (ii) vary cardiac cycle modulation (e.g., by changing the light drive
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`parameters) in response to changes in the noise, (iii) vary cardiac cycle modulation
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`for the purpose of increasing SNR, and (iv) increase LED firing rate (which is one
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`of the light drive parameters) in some circumstances. Based on the evidence, the
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`Board found Lisogurski taught these same elements in the -916 proceeding. -916
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`FWD, 28, 33.
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`As in the -916 proceeding, Omni has argued that Lisogurski does not
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`explicitly disclose increasing LED firing rate for the purpose of increasing SNR.
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`Even if this distinction were accepted, configuring Lisogurski to do so would have
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`been obvious based on Carlson.
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`2.
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`Carlson Teaches that Increasing LED Pulse Rate Can
`Increase SNR
`Omni devotes a substantial portion of its brief to mischaracterizing Carlson’s
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`teachings. Resp., 19-23, 26-31. According to Omni, Carlson shows a pulse
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`oximeter where a person makes design choice as to the pulse rate of an LED when
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`creating the oximeter, and that Carlson does not describe a device that can actively
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`increase the LED’s pulse rate during operation. Resp., 26-31. Omni’s
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`interpretation of Carlson is factually incorrect.
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`Petitioner’s Reply
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`As explained in the Petition, Carlson teaches techniques for increasing the
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`SNR of a pulsoximeter to improve its performance in the presence of noise, such as
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`ambient light from sunlight or fluorescent lights. Pet., 21-22; see Ex.1009, [0002]
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`(Carlson’s goal is increasing pulsoximetry performance “in terms of quality and
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`robustness of the measurement signal versus environmental disturbances and
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`energy consumption”), [0067]-[0068] (describing indoor and outdoor lighting).
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`Carlson also explains that, whether used indoors or outdoors, the amount of
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`ambient light varies over time. Ex.1009, [0007] (“environmental optical radiation
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`strongly varies as a function o[f] time and place where the pulsoximeter is used,
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`e.g. day versus night, indoor versus outdoor”), [0067]-[0068]. Carlson, thus,
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`makes clear that its device is designed to address changing environmental
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`conditions (e.g., where the amount of ambient light is continually varying).
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`To handle interference from ambient light when it is present, Carlson
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`explains that its device “temporarily modulate[s] the amplitude of the optical
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`radiation of, e.g., the LED at a carrier frequency fc in order to shift the power
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`spectrum of the pulsoximeter signals into a higher frequency range where
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`environmental optical radiation is unlikely.” Ex.1009, [0020]; see id., [0065]. In
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`this passage, Carlson describes shifting the frequency of an LED’s emission “to a
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`higher frequency range,” thus indicating that the LED previously emitted pulses at
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`a lower frequency—i.e., that Carlson is switching between at least two different
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`15
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`Petitioner’s Reply
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`frequencies. Ex.1009, [0020]. Carlson also states that its device temporarily
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`makes this adjustment, id., [0020], which means the device will change how its
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`LEDs pulse based on the presence and characteristics of ambient light at any
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`particular moment in time, id., [0068]. Based on his reading of Carlson, Dr.
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`Anthony explains that “Carlson teaches that increasing the modulation frequency
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`of the pulsed LEDs improves the signal-to-noise ratio.” Ex.1003, ¶161; see
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`Ex.1009, [0069].
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`Omni incorrectly portrays Carlson as disclosing a device that only emits
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`light continuously or constantly (i.e., not pulsed) but in the presence of ambient
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`light can switch to pulsing an LED at a single, fixed pulse rate. Resp., 19, 27-28;
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`id., 21. That interpretation makes no sense in the context of Carlson’s invention.
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`For example, under Omni’s reading, Carlson’s device would consume excessive
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`battery power, something that is entirely at odds with the stated purpose of its
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`mobile, battery-powered device: to balance signal quality with energy
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`consumption. Ex.1009, [0002] (describing “increasing the technical
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`performance… versus environmental disturbances and energy consumption”),
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`[0048]; see Ex.1011, 10:23-24, 36:38-47 (teaching use of modulation when
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`battery-powered to optimize power consumption).
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`Omni also asserts that Carlson shows only shifting from unmodulated light
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`to light modulated at a fixed frequency, and that Carlson does not teach shifting the
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`Petitioner’s Reply
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`frequency (pulse rate) of the light pulses. Resp., 27-28. Omni’s argument is
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`inconsistent with Carlson’s claims, which specify a device that includes “a light
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`source amplitude modulating means to modulate the frequency of the emitted
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`light” and that the means further can “shift the frequency of the emitted light.”
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`Ex.1009, claims 10-13. Thus, contrary to Omni’s arguments, Carlson discloses
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`shifting the frequency of the pulses between two different pulse frequencies. Read
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`correctly, Carlson describes switching from a lower frequency pulse rate to a
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`higher one to avoid interference caused by ambient light. Ex.1003, ¶161.
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`Reading Carlson as teaching switching among different pulse frequencies
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`rather than from continuous light emission to pulsed light emission also is
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`consistent with common sense. Carlson describes interference from ambient light
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`and teaches that such light varies over time depending on where a user is.
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`Ex.1009, [0007] (“environmental optical radiation strongly varies as a function o[f]
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`time and place where the pulsoximeter is used, e.g. day versus night, indoor versus
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`outdoor”). For example, Carlson recognizes that interference may occur at one
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`frequency when indoors and at others when outdoors. Ex.1009, [0067] (“artificial
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`light…is going up to approximately 120 Hz”), [0068] (“sunlight can have a
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`dramatic influence, e.g. if a person is walking through streets with relatively quick
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`changing conditions between sunlight and shadow. Another serious possibility is
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`caused by a tree avenue when driving along the trees.”). Because the nature of
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`Petitioner’s Reply
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`ambient light changes over time, it would be natural to interpret Carlson as
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`describing multiple pulse frequencies. See Ex.1065, 34:5-35:7 (Dr. MacFarlane
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`agreeing that “Because sunlight variations and the weather are constantly changing
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`environmental conditions, it would be impractical, as a matter of common sense, to
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`have the user manually reconfigure the LED pulse rate as conditions change”).
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`Omni’s interpretation is at odds with that understanding.
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`Omni also incorrectly argues that, in the Institution Decision, the Board
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`relied on an argument that Petitioner did not make when the Board found that
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`Carlson’s disclosure of switching from unmodulated to modulated light taught
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`increasing the pulse rate. Resp., 21-23. The Board relied on the same evidence
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`and examples from Carlson that were discussed in the Petition and in Omni’s
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`Preliminary Response. Compare Inst. Dec., 50-52 (discussing Carlson at Figs 7c
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`& 8, [0064]-[0065], [0067]-[0069]) with Pet., 50-51 (discussing Carlson at Figs 7c
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`& 8, [0067]-[0069]) and Prelim. Resp., 18-21 (discussing Carlson at Figs 7c & 8,
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`[0064]-[0065], [0067], [0069]). It is of course permissible for the Board to
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`consider and rely upon the portions of the references cited in the papers. It also is
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`proper for the Board to rely on portions of the references cited in the reply and sur-
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`reply briefs. In re NuVasive, Inc., 841 F.3d 966, 972 (Fed. Cir. 2016).
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`Petitioner’s Reply
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`3.
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`The Combined Teachings of Lisogurski and Carlson Teach
`a Device that Increases Pulse Rate for the Purpose of
`Increasing SNR
`Omni’s primary argument for why Lisogurski and Carlson do not render this
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`limitation obvious rests on a legally erroneous foundation. Omni asserts that the
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`art does not teach “increas[ing] signal-to-noise ratio by… increasing a pulse rate
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`of” an LED because neither Lisogurski alone nor Carlson alone teaches a device
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`that actively increases an LED’s pulse rate for the purpose of increasing SNR
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`while the device is in operation. Omni ignores that “[n]on-obviousness cannot be
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`established by attacking references individually where the rejection is based upon
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`the teachings of a combination of references.” In re Merck & Co., Inc., 800 F.2d
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`1091, 1097 (Fed. Cir. 1986); see In re Keller, 642 F.2d 413, 425 (Fed. Cir. 1981)
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`(the test for obviousness is “what the combined teachings of the references would
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`have suggested to those of ordinary skill in the art”); MCM Portfolio LLC v.
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`Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (“Moreover, [t]he test
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`for obviousness is not whether the features of a secondary reference may be bodily
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`incorporated into the structure of the primary reference….”); see -916 FWD, 35
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