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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`
`APPLE INC.
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`
`
`Case IPR2021-00453
`__________________________________________________________________
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`Petitioner’s Reply
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`IPR2021-00453
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`Petitioner’s Reply
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`Table of Contents
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`I.
`II.
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`Introduction .................................................................................................... 1
`Lisogurski Alone Discloses a Device Configured to Increase SNR by
`Increasing an LED Pulse Rate ...................................................................... 3
`A.
`Lisogurski Can Increase LED Firing Rate which Increases SNR .. 3
`B.
`Cardiac Cycle Modulation Increases SNR by Increasing the LED
`Pulse Rate ............................................................................................. 6
`III. Lisogurski and Carlson Teach a System “Configured to Increase the
`Signal-to-Noise Ratio by... Increasing a [LED] Pulse Rate” ..................... 9
`A. Carlson Teaches Increasing LED Pulse Rate Can Increase SNR 10
`B.
`Lisogurski and Carlson Together Teach a Device that Increases
`an LED Pulse Rate for the Purpose of Increasing SNR ................ 12
`C. Configuring Lisogurski to Change LED Firing Rate in Response
`to Noise Is Consistent with Lisogurski’s Teachings ....................... 14
`IV. Ground 2: Claims 1-4, 7-12, and 15-22 Are Obvious from Lisogurski,
`Carlson, and Tran ........................................................................................ 17
`A. A Skilled Person Would Have Been Motivated to Combine
`Lisogurski, Carlson, and Tran ......................................................... 18
`Construction of the “Detect” and “Identify” Terms in Claims 3, 8,
`and 16 .................................................................................................. 19
`Lisogurski, Carlson, and Tran Teach the “detect” and “identify”
`Elements in Claims 3, 8, and 16 ....................................................... 22
`V. Ground 3: Lisogurski, Carlson, Tran, and Isaacson Render Claims 5
`and 13 Obvious ............................................................................................. 25
`VI. Ground 4: Lisogurski, Carlson, Tran, Isaacson, and Valencell-093
`Render Claims 6, 14, and 23 Obvious ........................................................ 25
`VII. Conclusion .................................................................................................... 26
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`B.
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`C.
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`ii
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`IPR2021-00453
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`Petitioner’s Reply
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`In re Keller
`642 F.2d 413 (Fed. Cir. 1981) ............................................................................ 13
`MCM Portfolio LLC v. Hewlett-Packard Co.,
`812 F.3d 1284 (Fed. Cir. 2015) .......................................................................... 16
`In re Merck & Co., Inc.,
`800 F.2d 1091 (Fed. Cir. 1986) .......................................................................... 12
`ParkerVision, Inc. v. Qualcomm Inc.,
`903 F.3d 1354 (Fed. Cir. 2018) ............................................................................ 8
`Thorner v. Sony Comp. Ent. Am.,
`669 F.3d 1362 (Fed. Cir. 2012) .......................................................................... 22
`
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`iii
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`IPR2021-00453
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`Petitioner’s Reply
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`I.
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`Introduction
`The Board should again find that Lisogurski and Carlson make obvious a
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`device configured to “increase the signal-to-noise ratio… by increasing a pulse
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`rate” of a light emitting diode (LED) as it did in IPR2019-00916 and IPR2020-
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`00175 (the “prior proceedings”) involving parent patents. That is the principle
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`limitation that Omni MedSci (“Omni”) contends renders the claims nonobvious.
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`In its Response, Omni largely rehashes its arguments from the prior proceedings,
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`but nothing in this record warrants changing the Board’s prior obviousness
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`conclusions.
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`In its Response, Omni again embraces the central assertion of its prior
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`arguments—that Lisogurski’s cardiac cycle modulation (“CCM”) does not increase
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`an LED pulse rate to increase signal-to-noise ratio (“SNR”), and therefore, cannot
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`meet the claim. Not only does the evidence show otherwise, but Omni previously
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`admitted and the Board found that CCM increases the LED pulse rate and that by
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`doing so CCM does increase SNR. E.g., -916 FWD, 28-30; -175 FWD, 35-36.
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`Omni now argues that configuring Lisogurski to increase the LED pulse rate
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`to avoid noise would change its principle of operation because doing so
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`purportedly would break CCM which tracks the subject’s heart rate (0.5-3 Hz).
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`But Lisogurski explicitly teaches changing the LED pulse rate when using other
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`modulation types, including drive cycle modulation (“DCM”), which would not
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`1
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`IPR2021-00453
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`Petitioner’s Reply
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`affect CCM’s “principle of operation.” Ex.1011, 35:10-30. Likewise, Lisogurski
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`teaches simultaneously using both CCM and DCM, which will cause the LED
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`firing rate to be raised to 1,000 Hz during CCM. Ex.1011, 25:58-65, 37:18-22,
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`6:31. Consequently, increasing the LED pulse rate (e.g., by turning on DCM at
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`1,000 Hz) is consistent with Lisogurski, and does not change its principle of
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`operation. Ex.1003, ¶166. And given that the claims do not require any minimum
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`increase in LED pulse rate or SNR, Omni’s arguments are, at bottom, irrelevant.
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`Disregarding the Board’s findings in the prior proceedings, Omni also
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`argues that Carlson does not suggest configuring Lisogurski’s system to increase
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`an LED pulse rate to increase SNR. -916 FWD, 32-34; -175 FWD, 41-42. But
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`Carlson specifically teaches that SNR can be improved by increasing the LED
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`pulse rate to dynamically offset noise from ambient light, which as Omni’s expert
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`Dr. MacFarlane admitted, generally increases SNR. Ex.1060, 37:17-22.
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`Next, Omni argues that there is no rationale to combine the references in
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`Grounds 2 to 4. But even a cursory review of the Petition shows that Apple set
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`forth robust rationales for combining them. E.g., Pet., 10-14, 59-63.
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`Finally, Omni advances erroneous constructions for two terms in dependent
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`claims that are ultimately irrelevant because the art meets Omni’s constructions.
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`The record of evidence establishes that the challenged claims are obvious,
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`and the Board should find the challenged ’484 claims unpatentable.
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`2
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`IPR2021-00453
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`Petitioner’s Reply
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`II. Lisogurski Alone Discloses a Device Configured to Increase SNR by
`Increasing an LED Pulse Rate
`Lisogurski alone discloses a device that is “configured to increase the
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`signal-to-noise ratio… by increasing a pulse rate of at least one [LED].” Two
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`features meet this limitation: (i) Lisogurski’s description of changing parameters
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`such as sampling rate, and (ii) Lisogurski’s CCM. Pet., 48-51. The Board
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`previously found that Lisogurski discloses this element (-916 FWD, 29-30; -175
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`FWD, 35-37), and Omni has presented no reason why the Board should reach a
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`different conclusion here.
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`A. Lisogurski Can Increase LED Firing Rate which Increases SNR
`It is undisputed that Lisogurksi discloses a device configured to increase its
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`LED firing rate (“pulse rate”) in some circumstances. See Ex.1011, 1:67-2:2,
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`25:52-55; Resp., 20. For example, Omni’s expert, Dr. MacFarlane, previously
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`agreed that “Lisogurski describes a device that is configured to increase the emitter
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`firing rate in some circumstances.” Ex.1060, 59:1-5. As Lisogurksi, explains:
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`[T]he sampling rate may represent the amount of time between “on”
`periods [of the LEDs in Fig. 2A]. [D]ecreasing 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.
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`The above passage also shows that Lisogurski uses the term “sampling rate”
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`to refer to the emitter (LED) firing rate, so an “increased sampling rate” means the
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`3
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`IPR2021-00453
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`Petitioner’s Reply
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`LED firing rate is increased. Ex.1003, ¶178; see Ex.1011, 34:12-13 (“the sampling
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`rate may represent the amount of time between [LED] ‘on’ periods”). Lisogurski
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`explains that the system may receive a signal “sampled at a first rate” and then a
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`signal at “a second sampling rate,” where “[f]or example, the period between the
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`samples may be… reduced.” Ex.1011, 33:65-34:16. A reduced “off” period
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`between the samples has the effect of increasing the LED firing rate. See Ex.1011,
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`35:24-31.
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`Importantly, Lisogurski explains that “increasing the sampling rate for a
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`portion of the cardiac cycle may result in more accurate and reliable
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`physiological information.” Ex.1011, 33:56-58. Although Lisogurski does not
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`use the term “SNR” in this passage, a skilled person would have understood that
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`the physiological information is “more accurate and reliable” because its SNR is
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`higher. Ex.1003, ¶183. Thus, that person would have understood that when
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`Lisogurski’s device increases the sampling rate, which necessarily increases the
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`LED firing rate, it increases the signal relative to the noise (e.g., ambient light),
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`i.e., it increases SNR. Ex.1003, ¶180; Ex.1011, 35:24-31. This is consistent with
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`Omni’s expert’s testimony that “[g]enerally speaking… the faster the pulse rate,
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`the lower the background noise.” Ex.1060, 37:17-22, 39:12-17; see id., 37:13-
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`Petitioner’s Reply
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`38:3.1 Thus, as the Board correctly found before, Lisogurski teaches the skilled
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`person that SNR will generally increase when the LED pulse rate increases. See -
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`916 FWD, 29-30; -175 FWD, 36.
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`Omni challenges this evidence by arguing that Lisogurski’s disclosures of
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`increasing the sampling rate “do not meet the claims’ requirement of increasing
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`the LED pulse rate. Resp., 16. That assertion simply misstates what Lisogurski
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`describes. Specifically, Lisogurski expressly correlates sampling rate and LED
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`firing (pulse) rate, stating that “decreasing the duration of the ‘off’ periods (i.e.,
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`increasing the emitter firing rate) relates to an increased sampling rate.”
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`Ex.1011, 35:24-31; see Ex.1011, Fig. 2A (showing off period 220 as the time
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`between LED pulses).
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`Next, Omni incorrectly argues that Lisogurski discloses varying the LED
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`pulse rate only during CCM. Resp., 16, 19. But Lisogurski discloses increasing
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`LED firing rate of other types of modulation, including during DCM. Ex.1011,
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`34:10-13 (“sampling rate may represent the number of samples taken during…
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`drive cycle modulation”), 35:10-12; see also Ex.1011, 27:44-55, 33:47-49, 1:20-
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`
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`1 When asked if he could identify scenarios when increasing pulse rate did not
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`increase SNR, he could only postulate there might be hypothetical scenarios he
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`could imagine, but did not identify any actual ones that would. Ex.1060, 83:5-10.
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`IPR2021-00453
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`Petitioner’s Reply
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`22, 2:1. And Lisogurski discloses that CCM can be combined with DCM, which
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`operates at around 1 kHz. Ex.1011, 25:58-65, 37:18-22, 6:31. Notably, this
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`explicit disclosure fundamentally contradicts Omni’s assertions that LED pulse
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`rates at 1 kHz or higher are incompatible with CCM. Resp., 22-24.
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`B. Cardiac Cycle Modulation Increases SNR by Increasing the LED
`Pulse Rate
`Lisogurski’s CCM technique alone also discloses increasing the LED firing
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`rate to increase SNR, as the Board found in both prior proceedings. -916 FWD,
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`29-30; -175 FWD, 35-36.
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`Lisogurski’s CCM can vary the LED firing rate (increasing or decreasing) so
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`as to be synchronous with the subject’s heart rate. Ex.1011, 25:49-55; 31:11-24,
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`31:39-55. As Dr. Anthony explained, “the device will increase it[s] firing rate
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`whenever a patient subject’s heart rate increases. Thus, Lisogurski’s device will
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`increase its pulse rate to remain synchronous with a subject’s heart rate resulting in
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`an increased signal-to-noise ratio being detected.” Ex.1003, ¶182. As the Board
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`observed in both prior proceedings, Lisogurski explains that this increased firing
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`rate can increase SNR in the presence of noise, and such noise can represent 1%-
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`4% of the computed PPG signal. -916 FWD, 28-29; -175 FWD, 35; Ex.1011,
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`42:50-54; see id., 25:66-26:14.
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`In the prior proceedings, Omni admitted that CCM increases SNR and that it
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`can do so by increasing the LED firing rate. For example, Omni admitted that
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`6
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`IPR2021-00453
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`Petitioner’s Reply
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`“Lisogurski teaches [] different techniques for improving SNR…, [including] by
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`modulating the light signal to correlate with ‘physiological pulses’ such as…
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`‘cardiac cycle modulation.’” -175 Prelim Resp., 16;2 -916 Resp., 15. It also
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`admitted that “Lisogurski increases (or decreases) the LED firing rate… during
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`CCM.” -916 Resp., 26.
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`Omni now argues the precise opposite of what it previously conceded—that
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`the “firing rate increases” during CCM “do not affect SNR.” Resp., 19-20. But
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`Omni even here acknowledges that “Lisogurski’s claimed SNR benefits occur
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`because the LED fires synchronously with the heartbeat.” Resp. 20. The Board
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`should ignore Omni’s confused and internally inconsistent arguments. The claims
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`do not require any minimum level of SNR increase, nor do they limit why the LED
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`pulse rate can be increased. Omni has admitted that CCM can increase the LED
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`pulse rate in response to increases in the subject’s heart rate and that increasing the
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`LED pulse rate will increase SNR. Resp., 26; -175 Resp., 36; Ex.1060, 37:8-
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`39:17. Those concessions demonstrate that Lisogurski’s devices meet this
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`element.
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`Omni also argues that Lisogurski varies the LED firing rate to remain
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`synchronous with cardiac cycle, and that any SNR improvement comes from
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`2 In this brief, all emphases are added unless otherwise noted.
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`IPR2021-00453
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`Petitioner’s Reply
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`maintaining synchronization, not increasing the firing rate. Resp., 20-21. The
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`Board rejected this exact argument in the -175 proceeding, because why Lisogurski
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`increases the LED firing rate is irrelevant. -175 FWD, 35-36. The challenged
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`claims cover a device that increases SNR by increasing an LED pulse rate, even if
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`the device does not intend to increase SNR by doing so or does not do so in all
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`operation modes. ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed.
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`Cir. 2018) (explaining that an “apparatus claims cover what a device is, not what a
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`device does.”); see Application of Michlin, 256 F.2d 317, 320 (C.C.P.A. 1958).
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`Omni also unconvincingly attempts to walk back its prior admissions about
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`how CCM operates. Omni relies on Dr. MacFarlane’s testimony that “a slight
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`change in firing rate [during CCM] would have no measurable effect on SNR
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`because… this frequency range is the same as the frequency range of the noise.”
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`Ex.2136, ¶ 83; contra Ex.1060, 83:5-10. But Lisogurski provides that CCM does
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`increase SNR and that it does so in the presence of Gaussian noise of 0-5 Hz.3
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`Ex.1011, 41:46-52. The Board has already addressed and rejected Omni’s
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`
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`3 In the presence of Gaussian noise from 0-5 Hz, a shifting from 1 Hz to 2 or 3 Hz
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`(e.g., from 60 beats per minute to 120 or to 180) is non-trivial. Moreover, as
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`Carlson shows, ambient light noise is not uniform; it has a peak close to 0 Hz, and
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`then trails off. See Ex.1009, Fig. 7b.
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`8
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`IPR2021-00453
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`Petitioner’s Reply
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`arguments, including Dr. MacFarlane’s erroneous figure showing a flat noise
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`distribution from 0 to 10 Hz. -175 FWD, 34-36. The Board recognized that even
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`small increases in LED firing rate during CCM can increase SNR in some noise
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`environments, which is enough to satisfy the claims. See -916 FWD, 29-30; -175
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`FWD, 36; Ex.1060, 37:17-22; Ex.1003, ¶182. That finding is consistent with ’484
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`patent as the challenged claims require no minimum increase in SNR or pulse rate,
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`and the specification contains nothing that could require minimum SNR
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`improvements.
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`Omni also incorrectly argues that Apple has never disputed Dr.
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`MacFarlane’s testimony that LED firing rate increases during CCM would have no
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`measurable effect on SNR. Resp., 21-22. Apple has consistently maintained that
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`LED firing rate increases during CCM increases SNR, relying on Lisogurski, Dr.
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`Anthony, and Omni’s and Dr. MacFarlane’s previous admissions. Pet., 50-51;
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`Ex.1003, ¶182. Apple need not depose Dr. MacFarlane or submit a reply
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`declaration to dispute his conclusory and unsupported testimony.
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`III. Lisogurski and Carlson Teach a System “Configured to Increase the
`Signal-to-Noise Ratio by... Increasing a [LED] Pulse Rate”
`Lisogurski and Carlson also make it obvious to configure Lisogurski’s
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`device to increase SNR by increasing its LED pulse rate. Omni advances two sets
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`of arguments in opposition, arguing that: (i) neither Lisogurski nor Carlson alone
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`IPR2021-00453
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`Petitioner’s Reply
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`teaches this element, and (ii) configuring Lisogurksi to increase the LED firing rate
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`would change its principle of operation. Both sets of arguments are wrong.
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`A. Carlson Teaches Increasing LED Pulse Rate Can Increase SNR
`Omni devotes a substantial portion of its brief to mischaracterizing Carlson.
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`Resp., 24-28, 30-32. Omni asserts Carlson shows a pulsoximeter that cannot
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`actively increase the LED’s pulse rate during operation. Resp., 26-31. Omni’s
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`interpretation of Carlson is factually incorrect. Carlson teaches techniques for
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`increasing a pulsoximeter’s SNR to improve its performance in the presence of
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`noise. Pet., 23-24; see Ex.1009, [0002] (goal is increasing the “quality and
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`robustness of the measurement signal versus environmental disturbances”), [0067]-
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`[0068]. Carlson also explains that the amount of ambient light “strongly varies as
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`a function o[f] time and place where the pulsoximeter is used, e.g. day versus
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`night, indoor versus outdoor.” Ex.1009, [0007]; see id., [0067]-[0068]. Thus,
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`Carlson’s device is designed to address changing environmental (e.g., ambient
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`light) conditions.
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`To handle interference from ambient light when present, Carlson explains
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`that its device “temporarily modulate[s] the amplitude of… the LED… in order to
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`shift the power spectrum of the pulsoximeter signals into a higher frequency
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`range where environmental optical radiation is unlikely.” Ex.1009, [0020]; see id.,
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`[0065]. This passage teaches several things. First, it teaches that higher pulse
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`10
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`IPR2021-00453
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`Petitioner’s Reply
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`frequencies can overcome noise. Id., [0020]. Second, because it refers to a
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`temporary shift in the frequency range, id., [0020], it teaches changing the LED
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`pulse rate based on current ambient light conditions, id., [0068]-[0069]; Ex.1003,
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`¶84. Third, it teaches shifting the LED’s pulses “to a higher frequency range,”
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`which indicates the LED previously pulsed at a lower frequency but was increased.
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`Ex.1009, [0020]. These readings are consistent with Carlson’s claims, which
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`specify a device that includes “a light source amplitude modulating means to
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`modulate the frequency of the emitted light” and that the means further can “shift
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`the frequency of the emitted light.” Ex.1009, claims 10-13.
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`Omni incorrectly portrays Carlson as disclosing a device that only emits
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`light continuously (i.e., not pulsed) but in the presence of noise switches to pulsing
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`an LED at a single, fixed pulse rate. Resp., 24-25, 27-28. That interpretation
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`makes no sense in the context of Carlson’s disclosure. Under Omni’s reading,
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`Carlson’s device would consume excessive battery power, which undermines its
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`purpose: balancing signal quality with energy consumption. Ex.1009, [0002],
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`[0048]; see Ex.1011, 10:23-24, 36:38-47. Omni’s contention also is irrelevant
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`because a skilled person would have considered continuous light to have a pulse
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`rate of 0 Hz, and thus, Carlson teaches increasing the pulse rate. Ex.1003, ¶189.
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`Reading Carlson as switching among pulse frequencies aligns with Carlson’s
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`broader context. Carlson teaches that ambient light interference “strongly varies as
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`IPR2021-00453
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`Petitioner’s Reply
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`a function o[f] time and place,” e.g., indoors versus outdoors. Ex.1009, [0007],
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`[0067], [0068] (“sunlight can have a dramatic influence”). Because ambient light
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`levels change over time, it would be natural to interpret Carlson as describing
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`multiple pulse frequencies. See Ex.1060, 34:5-35:7 (Dr. MacFarlane agreeing that
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`“Because sunlight variations and the weather are constantly changing…, it would
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`be impractical, as a matter of common sense, to have the user manually reconfigure
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`the LED pulse rate as conditions change”).
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`B.
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`Lisogurski and Carlson Together Teach a Device that Increases
`an LED Pulse Rate for the Purpose of Increasing SNR
`Omni again challenges Apple’s obviousness rationale by attacking the
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`teachings of Lisogurski nor Carlson in isolation. Resp., 24-32. That, of course,
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`violates the principal that “[n]on-obviousness cannot be established by attacking
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`references individually where the rejection is based upon the teachings of a
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`combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
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`Cir. 1986); see In re Keller 642 F.2d 413, 425 (Fed. Cir. 1981) (the test is “what
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`the combined teachings of the references would have suggested”).
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`Omni’s arguments boil down to two assertions, neither of which are correct.
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`First, it contends that Lisogurski does not teach increasing the LED firing rate for
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`IPR2021-00453
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`Petitioner’s Reply
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`the purpose of increasing SNR.4 Then, it claims that Carlson alone allegedly does
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`not disclose increasing an LED’s pulse rate during its operation.
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`Omni’s assertions do not withstand scrutiny. First, it is undisputed that
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`Lisogurski teaches a device that is configured to (i) detect changes in the noise
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`level, (Ex.1011, 9:50-52, 5:56-61), (ii) vary LED modulation (e.g., by changing the
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`light drive parameters) in response to noise level changes, (Ex.1011, 1:67-2:3,
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`5:55-61, 9:46-60, 27:44-49, 33:53-57, 37:6-18), (iii) vary LED modulation for the
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`purpose of increasing SNR, (-916 Resp., 16; -175 Prelim. Resp., 16), and (iv)
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`increase LED firing rate (a light drive parameter) in some circumstances, (Resp.,
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`17; Ex.1060, 59:1-5; Ex.1011, 25:53-55, 27:44-49, 35:24-31).
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`Second, as explained in §III.A, Carlson does disclose a device that changes
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`an LED’s pulse rate in operation. Moreover, Omni ignores what Carlson
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`teaches—that SNR can be increased to overcome ambient light noise by switching
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`an LED’s pulse rate to a “a higher frequency range where environmental optical
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`[noise] is unlikely,” such as 1,000 Hz, 2,000 Hz, or higher. Ex.1009, [0020],
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`[0069]; Ex.1003, ¶¶186-88. That teaching is consistent with the skilled person’s
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`background knowledge, as admitted by Dr. MacFarlane: “[g]enerally speaking, the
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`4 Though the device’s intent is irrelevant, even if it were relevant, Lisogurski
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`teaches it.
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`IPR2021-00453
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`Petitioner’s Reply
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`faster the modulation, the faster the pulse rate, the lower the background noise.”
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`Ex.1060, 37:17-22. Thus, the references’ combined teachings suggest configuring
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`Lisogurski to increase LED pulse rate to increase SNR, as the Board previously
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`found. See -916 FWD, 34 n.7 (finding that “Lisogurski teaches switching the LED
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`pulse rate from a cardiac cycle mode (1 Hz pulse rate) to a second mode that
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`reduces ambient light noise,” and determining that “the combination teaches
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`increasing signal-to-noise by increasing the LED pulse rate from 1 Hz to 1000
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`Hz”).
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`C. Configuring Lisogurski to Change LED Firing Rate in Response
`to Noise Is Consistent with Lisogurski’s Teachings
`Omni asserts that a skilled person would not have configured Lisogurski to
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`increase the LED firing rate to increase SNR because doing so allegedly would
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`change Lisogurski’s “principle of operation,” and in particular the principle of how
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`CCM operates. Resp., 26. Omni’s argument is based on its assertions that (i)
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`Lisogurski discloses changing LED firing rate during CCM but never during any
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`other type of modulation, and (ii) CCM must always fire the LEDs at the same rate
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`as the subject’s heart rate (0.5-3 Hz). Resp., 28-32.
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`Omni is wrong that Lisogurski discloses changing LED firing rate only
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`during CCM. Resp., 16-21. Lisogurski discloses that the system “may vary
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`parameters related to the light drive signal including… light brightness… [and]
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`firing rate.” Ex.1011, 25:52-55, 1:20-22; see Ex.1003, ¶162. While Lisogurski
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`includes many examples of varying these parameters during CCM, Lisogurski also
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`discloses that DCM and servo algorithms can vary the light drive parameters.
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`Ex.1003, ¶¶166-68; Ex.1011, 1:12-15, 5:2-4, 5:57-61, 6:7-12, 10:23-34, 35:5-32.
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`As explained in §II.A above, Lisogurski specifically discloses an example where
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`the sampling rate during DCM may be increased which will also “increas[e] the
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`emitter firing rate.” Ex.1011, 35:10-12, 35:24-25, 35:29-31. Thus, Lisogurski
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`teaches that DCM can increase the LED firing rate.
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`Omni also incorrectly argues that Apple relied solely on CCM. Resp., 15.
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`But Apple relied on Lisogurski’s general description of using modulation to
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`change light drive parameters, including Lisogurski’s discussion of varying
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`sampling rate and LED firing rate during DCM. Pet., 45 (citing Ex.1011, 1:19-21),
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`53 (citing Ex.1011, 1:67-2:1, 5:55-61), 49 (citing Ex.1011, 33:47-49, 35:27-31);
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`see Ex.1011, 35:10-12; see also Pet., 22. Dr. Anthony also explained that
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`Lisogurski discloses varying the light drive parameters (including LED firing rate)
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`for “all the modulation processes, including drive cycle modulation and the servo
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`algorithms.” Ex.1003, ¶166.
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`Next, Omni incorrectly argues that modifying Lisogurski to increase its LED
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`pulse rate to avoid environmental noise based on Carlson would “change the
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`principle of operation” of Lisogurski’s CCM because the pulsing would not remain
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`synchronous with the cardiac cycle. Resp., 28-32. Omni’s argument fails for
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`multiple reasons.
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`First, Omni ignores the significance of Lisogurski’s teaching that it can
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`simultaneously use multiple modulation techniques. Ex.1011, 7:38-40, 7:4-12.
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`Lisogurski provides, for example, that DCM has an envelope of approximately 1
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`kHz and CCM of approximately 1 Hz, yet it teaches using them together. Ex.1011,
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`6:26-31, 8:23-26, 25:58-65. Thus, firing the LED at 1,000 Hz or higher during
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`CCM does not change its principle of operation.
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`Next, Omni’s analysis is improperly rigid. The question is not whether
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`Carlson’s teaching of increasing an LED firing rate can be “bodily incorporated
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`into the structure of” Lisogurski’s CCM technique, but what the references
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`considered together fairly suggest to a skilled person. MCM Portfolio LLC v.
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`Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015).
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`Omni also ignores that Lisogurski includes an example where CCM is
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`turned off. Pet., 53. Lisogurski describes two modulation modes where in
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`response to “detect[ing] a change in background noise” the device will switch from
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`a “first” to a “second” mode of operation. Ex.1011, 37:6-11, 36:48-53. “The first
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`mode may be, for example, a first cardiac cycle modulation technique.” Ex.1011,
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`36:52-53. For the second mode, Lisogurski provides several exemplary ways of
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`changing modulation, including by “stop[ping] cardiac cycle modulation” or
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`changing CCM parameters. Ex.1011, 37:15-22; see -916 FWD, 32-33; -175 FWD,
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`39-41. A skilled person would have found it obvious to configure Lisogurski to
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`respond to increased noise (e.g., by switching to a second mode) by increasing the
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`LED firing rate to 1,000 Hz or even higher based on Carlson. Pet., 49, 53.
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`Increasing the LED pulse rate in this second mode cannot possibly change CCM’s
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`principle of operation.
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`Finally, Lisogurski teaches that while “cardiac cycle modulation techniques
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`[are] generally related to the cardiac cycle, [they] may not necessarily be precisely
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`correlated to the cardiac cycle and may be related to external triggers (e.g.,
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`respiration), user input, [or] other suitable techniques.” Ex.1011, 5:41-47. When
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`an external trigger, such as increased noise or ambient light, is present, CCM can
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`deviate from the cardiac cycle. Ex.1011, 5:57-64, 9:46-60, 37:6-61. Again, this
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`aligns with Lisogurski; it does not change Lisogurski’s “principle of operation.”
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`As the Board previously found, the evidence shows that Lisogurski and
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`Carlson together teach a device that increases SNR by increasing an LED pulse
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`rate. The Board should reach that conclusion again here.
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`IV. Ground 2: Claims 1-4, 7-12, and 15-22 Are Obvious from Lisogurski,
`Carlson, and Tran
`Omni advances two arguments with respect to this ground. First, it
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`incorrectly asserts Apple has not shown a skilled person would have combined
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`these three references. Next, it argues Apple has not shown the combination meets
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`the “identify” and “detect” limitations of claims 3, 8, and 16. Omni’s arguments
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`should be rejected.
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`A. A Skilled Person Would Have Been Motivated to Combine
`Lisogurski, Carlson, and Tran
`Omni incorrectly argues that Apple did not set forth a rationale to combine
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`these references. Resp., 33. But Apple explained that a skilled person reading
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`Lisogurski would have looked to other references that disclosed techniques for
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`improving the operation of optical sensing devices because (i) that was part of the
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`ordinary design process, and (ii) market trends were pushing artisans to design and
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`develop miniaturized, wearable, mobile sensor devices for health tracking and
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`fitness. Pet., 10-11, 26, 59. This would have caused the skilled person considering
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`Lisogurski to look to analogous references such as Carlson and Tran.
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`Apple explained that a skilled person considering Lisogurski would have
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`been motivated to find additional ways to analyze and use the data Lisogurski’s
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`device collected. Pet., 59; Ex.1003, ¶211. This would have caused that person to
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`consider Tran’s “in-depth, cost-effective” techniques for evaluating a patient’s
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`cardiac condition. Pet., 59-60. Tran teaches a wearable device that uses a neural
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`network to evaluate the subject’s cardiac condition, flag potentially dangerous
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`conditions, and notify the patient. Ex.1064, 8:44-53; 74:45-46; 75:18-20, 94:57-
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`65; Ex.1003, ¶211. Apple explained a skilled person would have been motivated
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`to incorporate that feature into Lisogurski to achieve the same benefits described in
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`Tran. Pet., 60-62.
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`Omni argues this rationale is insufficient because Apple did not show a
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`motivation to combine Carlson with Tran. Resp., 34. But Apple explained why a
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`skilled person considering Lisogurski would been motivated to incorporate features
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`from Carlson and features from Tran into Lisogurski’s device.
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`Omni argues that Apple failed to identify with particularity which of the ten
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`background references provide a motivation to combine, Resp., 33-34, but Omni
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`ignores that Apple relied on specific teachings in Lisogurski and in Tran to provide
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`the motivation. Pet., 59-60. Omni also ignores that the ten background references
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`illustrate how market forces were pushing the industry in 2012 to create wearable
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`mobile monitoring devices in sports and fitness, and to incorporate known features
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`into such devices. Pet., 10-14. Moreover, Omni does not dispute that these market
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`trends were present.
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`B. Construction of the “Detect” and “Identify” Terms in Claims 3, 8,
`and 16
`In its Response, Omni presents new constructions of the terms “identify an
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`object” (claims 3 and 8) and “detect an object” (claim 16). However, these terms
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`are commonly understood, and need no construction.
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`To the extent a construction of the term “detect an object” is needed, a
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`skilled person would understand it to mean “to discover or determine the existence,
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