UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`
`______________
`
`U.S. Patent No. 10,517,484
`
`Case No.: IPR2021-00453
`
`______________
`
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`
`
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................. ii
`
`UPDATED LIST OF EXHIBITS .......................................................................... iv
`
`I.
`
`II.
`
`Introduction ................................................................................................. 1
`
`Ground 1: Lisogurski alone does not discloses a device configured to
`increase SNR by increasing an LED pulse rate ............................................ 1
`
`A.
`
`B.
`
`Lisogurski does not “use[] the term ‘sampling rate’ to refer to
`the emitter (LED) firing rate”............................................................. 1
`
`Apple has no evidence refuting Omni’s expert that CCM firing
`rate changes do not increase SNR ...................................................... 5
`
`III. Ground 1: Adding Carlson’s teaching of modulating at 1000 Hz to
`Lisogurski’s CCM changes CCM’s principle of operation ..........................12
`
`A. Apple’s attorneys try to rewrite Carlson’s express teaching of
`“temporarily” using “pulsed light” ....................................................12
`
`B.
`
`Apple mischaracterizes Omni’s arguments and Lisogurski and
`Carlson’s teachings ...........................................................................17
`
`C. Modulating CCM at 1000 Hz is not “consistent with
`Lisogurski’s teaching”—it improperly changes CCM’s
`principle of operation ........................................................................19
`
`IV. Grounds 2–4: Apple does not show a motivation to combine three,
`four, and five references..............................................................................24
`
`V. Apple improperly conflates “to detect an object” and “to identify an
`object” ........................................................................................................25
`
`VI. Conclusion ..................................................................................................28
`
`Certificate of Service ............................................................................................29
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 ......................................30
`
`
`
`
`
`
`
`i
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`
`805 F.3d 1359 (Fed. Cir. 2015) .................................................... 4, 20, 27-28
`
`Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc.,
`
`555 F.3d 984 (Fed. Cir. 2009) ........................................................... 8, 11, 12
`
`Biotec Biologische Naturverpackungen GmbH v. Biocorp, Inc.,
`
`249 F.3d 1341 (Fed. Cir. 2001) ........................................................... 6, 9, 16
`
`Creative Compounds, LLC v. Starmark Labs.,
`
`651 F.3d 1303 (Fed. Cir. 2011) ........................................................... 6, 9, 16
`
`Hewlett-Packard Co. v. Mustek Sys., Inc.,
`
`340 F.3d 1314 (Fed. Cir. 2003) ...................................................................10
`
`Hulu, LLC v. Sound View Innovations, LLC,
`
`IPR2018-00582, Paper No. 34 (PTAB Aug. 5, 2019) (Informative) .. 5, 20, 28
`
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`
` IPR2018-00827 Paper 9 at 10 (PTAB Oct. 16, 2018) (Informative) ...........24
`
`Nature Simulation Sys. v. Autodesk, Inc.,
`
`23 F.4th 1334 (Fed. Cir. 2022) ....................................................................26
`
`ParkerVision, Inc. v. Qualcomm Inc.,
`
`903 F.3d 1354 (Fed. Cir. 2018) .................................................... 8, 10-11, 12
`
`Phil-Insul Corp. v. Airlite Plastics Co.,
`
`854 F.3d 1344 (Fed. Cir. 2017) ............................................................. 26-27
`
`Plantronics, Inc. v. Aliph, Inc.,
`
`724 F.3d 1343 (Fed. Cir. 2013) ...................................................................25
`
`Rexnord Corp. v. Laitram Corp.,
`
`274 F.3d 1336 (Fed. Cir. 2001) ...................................................................27
`
`
`ii
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`SRI International v. Matsushita Electric Corp. of Am.,
`
`775 F.2d 1107 (Fed. Cir. 1985) ...................................................................26
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`
`
`Statutes
`
`35 U.S.C. § 312 .......................................................................................... 4, 20, 28
`
`
`
`Other Authorities
`
`Consolidated Trial Practice Guide (Nov. 2019)........................................... 4, 20, 28
`
`
`
`Rules
`
`37 C.F.R. §42.104 ................................................................................. 4, 20, 26, 28
`
`
`
`
`
`
`
`iii
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`UPDATED LIST OF EXHIBITS
`
`
`
`No.
`
`2101-2119 Reserved
`
`Description
`
`2120
`
`2121
`
`2122
`
`2123
`
`2124
`
`2125
`
`PCT Application Serial No. PCT/US2013/075767
`(Publication No. WO/2014/143276)
`
`U.S. Patent Application Serial No. 14/109,007 (Publication
`No. 2014/0236021)
`
`Reserved
`
`Curriculum Vitae of Duncan L. MacFarlane, Ph.D., P.E.
`
`Board’s Institution Decision, IPR2019-000916, Paper 16,
`October 18, 2019 (“DI”)
`
`Board’s Final Written Decision, IPR2019-00916, Paper 39,
`October 14, 2020
`
`2126-2130 Reserved
`
`Declaration of Duncan L. MacFarlane, Ph.D., P.E. in Support
`of Patent Owner’s Response to Petition in IPR2020-00175,
`September 10, 2020
`
`Excerpt of Record of Oral Hearing held March 25, 2021,
`IPR2020-00175, Paper 25, April 14, 2021
`
`Board’s Institution Decision, IPR2020-00175, Paper 11, June
`17, 2020
`
`Definitions of IDENTIFY in The Free Dictionary
`
`Definitions of DETECT in The Free Dictionary
`
`Declaration of Duncan L. MacFarlane, Ph.D., P.E. in Support
`of Patent Owner’s Response, November 12, 2021
`
`Copy of Lisogurski highlighted to show text cited for the
`first time in the Reply
`
`2136
`
`2132
`
`2133
`
`2134
`
`2135
`
`2136
`
`2137
`
`
`
`iv
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`I.
`
`Introduction
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`Lisogurski alone, or combined with Carlson, does not teach or suggest a
`
`device “configured to” increase SNR by increasing an LED pulse rate from an initial
`
`pulse rate. Apple misstates the teachings of Lisogurski and does not dispute it failed
`
`to show why an ordinary artisan would be motivated to combine four, five or six
`
`references to makes the inventions claimed in the ‘484 patent. Apple’s Reply raises
`
`new arguments endorsed by mere attorney say-so—not evidence. Apple also
`
`improperly conflates the meanings of “to detect an object” and “to identify an
`
`object.” The Board should confirm the patentability of the Challenged Claims.
`
`II. Ground 1: Lisogurski alone does not discloses a device configured
`to increase SNR by increasing an LED pulse rate
`
`Apple says Lisogurski discloses “two features” that meet the pulse rate
`
`limitation: “(i) Lisogurski’s description of changing parameters such as sampling
`
`rate, and (ii) Lisogurski’s CCM.” Reply, 3.
`
`A. Lisogurski does not “use[] the term ‘sampling rate’ to refer
`to the emitter (LED) firing rate”
`
`For “feature (i),” Apple bases its argument on the erroneous claim that
`
`“Lisogurski uses the term ‘sampling rate’ to refer to the emitter (LED) firing rate”
`
`using a cropped snippet of text. Reply, 3.1 But Lisogurski is clear that the “sampling
`
`
`1 All emphasis added unless otherwise noted.
`
`1
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`rate” is not the LED firing rate. Ex.2136, ¶¶75-76. For example, Figure 18 shows
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`the “light drive signal” (the signal that controls the emitter firing rate2) is not the
`
`“sampling rate”:
`
`Ex.1011, Fig. 18 (annotated)
`
`
`
`
`2 The “light drive signal” is “provided to light source 130 … to drive red and IR light
`
`emitters, respectively, within light source 130.” Ex.1011(12:3-7).
`
`2
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`And Lisogurski confirms that “sampling rate” refers to the rate a detector (not
`
`the emitter) receives (not emits) light: “the system may sample the received signal
`
`at a low rate during a period of low light output and at a high rate during a period of
`
`high light output.” Ex.1011(10:34-36). Even Apple knows this: it refers (in the
`
`Petition) to “the sampling rate of an analog-to-digital converter in the detector.”
`
`Pet.49. Correcting Apple’s mis-definition of “sampling rate” defeats Apple’s entire
`
`first argument in Reply §II.A. but for the last paragraph.3
`
`In the last paragraph of §II.A., Apple makes two unfounded assertions:
`
`1. “Lisogurski discloses increasing LED firing rate of other types of
`
`modulation, including during DCM.” Reply, 5.
`
`As its support for this assertion, Apple cites “Ex.1011, 34:10-134 (‘sampling
`
`rate may represent the number of samples taken during … drive cycle
`
`
`3 Contrary to Apple’s assertion that Omni’s expert could not identify a scenario
`
`where an increasing pulse rate would not increase SNR, Reply, 5, n.1, Dr.
`
`MacFarlane gave an example. Ex.1060(83:19-84:4). Apple’s attorney then
`
`abandoned his inquiry.
`
`4 “34:10-13” is one of many new sections in Lisogurski Apple cites for the first time
`
`in Reply. Ex.2137 highlights all newly cited sections.
`
`3
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`modulation’).”5 Id. So, Apple’s assertion rests on the same false premise, i.e., that
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`“Lisogurski uses the term ‘sampling rate’ to refer to the emitter (LED) firing rate.”
`
`Id., 3. It is irrelevant (and unsurprising) that Lisogurski takes samples during DCM.
`
`The citation and quote do not support Apple’s assertion. Instead, Lisogurski
`
`discloses firing the LED at a set rate during DCM, e.g., 1kHz. Ex.2136, ¶86.
`
`Moreover, this is a new argument by Apple. As Omni explained in the
`
`Response (pp. 16-19)—undisputed by Apple—the Petition relies solely on CCM and
`
`does not discuss, or mention, Lisogurski’s DCM embodiment. Making new
`
`arguments and relying on new embodiments for the first time in Reply is improper.
`
`Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367-68 (Fed. Cir.
`
`2015)(“We see no error in the Board's rejection of [Petitioner’s] reliance, in its Reply
`
`submissions, on previously unidentified portions of a prior-art reference to make a
`
`meaningfully distinct contention.”); see also 35 U.S.C. § 312(a)(3)(the petition must
`
`identify “with particularity … the grounds on which the challenge to each claim is
`
`based”); 37 C.F.R. §42.104(b)(5)(The petition must identify “the relevance of the
`
`evidence to the challenge raised”); Consolidated Trial Practice Guide (Nov. 2019)
`
`at 73 (“Petitioner may not submit new evidence or argument in reply that it could
`
`
`5 As a “see also,” Apple cites “Ex.1011, 27:44-55, 33:47-49, 1:20-22, 2:1.” These
`
`passages do not discuss DCM or increasing SNR.
`
`4
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`have presented earlier, e.g. to make out a prima facie case of unpatentability.”);
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`Hulu, LLC v. Sound View Innovations, LLC, IPR2018-00582, Paper No. 34 at 30-31
`
`(PTAB Aug. 5, 2019) (Informative).
`
`2. “Lisogurski discloses that CCM can be combined with DCM, which
`
`operates at around 1 kHz. … Notably, this explicit disclosure
`
`fundamentally contradicts Omni’s assertions that LED pulse rates at
`
`1 kHz or higher are incompatible with CCM.” Reply, 6 (citations
`
`omitted).
`
`Apple misrepresents “Omni’s assertions.” Omni never asserted the “LED
`
`pulse rates at 1 kHz or higher are incompatible with CCM.” On the contrary, Omni
`
`said: “[Lisogurski] explains that DCM and CCM can occur simultaneously.” Resp.,
`
`19. And CCM’s pulse rate is 1 Hz, not 1 kHz, when the two are combined.
`
`Ex.1011(6:26-30). Apple does not dispute that CCM’s firing rate is not 1 kHz.
`
`In summary, Apple’s arguments in Reply §II.A. are based on a false premise
`
`and fail to show that Lisogurski teaches a wearable device configured to increase
`
`SNR by increasing the LED pulse rate from an initial pulse rate.
`
`B. Apple has no evidence refuting Omni’s expert that CCM
`firing rate changes do not increase SNR
`
`Omni’s expert testified that CCM’s trivial firing rate changes do not affect
`
`SNR. Ex.2136, ¶83. In the Response (pp. 21-23), Omni noted that Apple knew about
`
`5
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`this evidence before it filed the Petition. Apple, not Omni, has the burden of proof,
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`but now in Reply, Apple makes a conclusory attorney argument—unsupported by
`
`evidence—that the trivial changes in CCM firing rates increase SNR. Attorney
`
`argument is not evidence. Creative Compounds, LLC v. Starmark Labs., 651 F.3d
`
`1303, 1312 (Fed. Cir. 2011)(“[The patent challenger’s] evidentiary shortcomings are
`
`not overcome by its reliance on attorney argument”); Biotec Biologische
`
`Naturverpackungen GmbH v. Biocorp, Inc., 249 F.3d 1341, 1353 (Fed. Cir.
`
`2001)(“It is well established that conclusory statements of counsel or a witness that
`
`a patent is invalid do not raise a genuine issue of fact.”).
`
`Apple first argues, wrongly, that in prior IPRs, Omni admitted that CCM
`
`increases SNR by increasing the LED firing rate. Reply, 6-7. Omni has never made
`
`such an admission—Omni has continuously and vigorously denied that CCM does
`
`so, including in this IPR. The firing rate “increase[s] or decrease[s] without
`
`reference to SNR[.]” Ex.2136, ¶81.
`
`Although, when compared to measurements made without CCM, CCM may
`
`increase SNR by synchronizing with the heart rate, Apple’s transitive (A=B, B=C,
`
`A=C) argument does not apply. Apple has identified no evidence that Lisogurski
`
`teaches firing rate changes in CCM increases SNR. Lisogurski only teaches that
`
`CCM
`
`increases SNR when compared
`
`to measurements without CCM.
`
`6
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`Ex.1011(42:45-58)(comparing simulated “coefficients of variation” for PPG signals
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`to signals modulated with the systole period).6
`
`On the other hand, Omni presented detailed, unrefuted proof that the changes
`
`do not affect SNR. Ex.2136,¶83. Apple’s attorneys claim Omni’s arguments are
`
`“confused and internally inconsistent” based on a non sequitur: that “SNR benefits
`
`occur because the LED fires synchronously with the heartbeat.” Reply, 7. That
`
`statement merely acknowledges Lisogurski’s simulations. The pulse rate limitation
`
`
`6 In the Response, Omni noted that Apple made the unsupported claim that an
`
`“increase in the firing rate can increase SNR because noise is reduced 1%-4%.”
`
`Resp., 21, n.4. Without explanation, Apple repeats that error at Reply, 6. Apple’s
`
`claim has no evidentiary support. Apple cites two passages from Lisogurski,
`
`“Ex.1011, 42:50-54” and “25:66-26:14,” neither of which supports its claim. At
`
`42:50-54, Lisogurski says, based on “simulated waveforms,” “noise contributes
`
`coefficients of variation of 2.6%, 1.9%, and 3.8% to the computed pulse amplitudes
`
`of PPG signal 2602, systole period modulated PPG signal 2604, and diastole period
`
`modulated PPG signal 2606, respectively.” Lisogurski does not say an “noise is
`
`reduced 1%-4%.” At 25:66-26:14, Lisogurski says his embodiments are not limited
`
`to “cardiac pulses” but he does not say and “noise is reduced 1%-4%.”
`
`7
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`is not about synchronization—that is a different claim limitation. Apple has no
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`evidence that SNR increases by maintaining synchronization with the heartbeat.
`
`Apple’s attorneys also wrongly assert, “[t]he claims do not … limit why the
`
`LED pulse rate can be increased.” Reply, 7. But the claims expressly say why: to
`
`increase SNR. Apple falsely asserts, “Omni has admitted … that increasing the LED
`
`pulse rate will increase SNR.” Id. Omni has never made such an admission and has
`
`repeatedly refuted it. Ex.2136, ¶83.
`
`Apple next argues, “why Lisogurski increases the LED firing rate is
`
`irrelevant.” Reply, 8, citing ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354,
`
`1361 (Fed. Cir. 2018). Apple ignores the need to distinguish between claims that
`
`recite mere “capability” and claims, like those here, that recite “configuration”: “our
`
`cases distinguish between claims with language that recites capability, and those that
`
`recite configuration …. The language used in the claims is critical to deciding on
`
`which side of this line the claims fall.” ParkerVision, 903 F.3d at 1361. The claims
`
`in ParkerVision were “capability” claims, id. at 1362, so the foundation of Apple’s
`
`argument crumbles. Instead, the “configuration” cases control: “That [Lisogurski]
`
`was reasonably capable of being put into the claimed configuration is insufficient[.]”
`
`Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 995
`
`(Fed. Cir. 2009); ParkerVision, 903 F.3d at 1361.
`
`8
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`Apple’s attorneys—but not its expert—then discuss Dr. MacFarlane’s
`
`testimony that firing rate increases during CCM do not affect SNR. Relying on mere
`
`attorney argument, not evidence, Apple asserts CCM may increase SNR “in the
`
`presence of Gaussian noise” (but only when compared to no CCM). Reply, 8. It is
`
`irrelevant that Lisogurski ran simulations with “Gaussian noise” to compare
`
`waveforms with and without CCM. Ex.1011(41:46-49,42:46-54). The only issue is
`
`whether LED firing rate increases increase SNR. Omni presented unrefuted
`
`evidence that the trivial7 increases in CCM’s firing rate (to match heart rate
`
`increases) do not increase SNR—and Apple has no contrary evidence despite its
`
`burden of proof. Apple did not depose Dr. MacFarlane about this or supply a rebuttal
`
`from Apple’s expert because it knows Dr. MacFarlane is correct. Instead, Apple
`
`relies solely on attorney argument, which is insufficient. Creative Compounds, 651
`
`F.3d at 1312; Biotec, 249 F.3d at 1353.
`
`
`7 In footnote 3, Apple’s attorneys claim, without evidence, that the changes in firing
`
`rate during CCM are “non-trivial.” They cite nothing to support that claim, which is
`
`contrary to (1) unrefuted expert testimony, Ex.2136, ¶83, and (2) the teachings of
`
`Lisogurski and Carlson both of whom teach the modulation rate must be 1000 Hz or
`
`more to avoid ambient noise (as Omni pointed out in the Response (pp. 23-24) and
`
`Apple does not dispute).
`
`9
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`Apple then misinterprets and criticizes Dr. MacFarlane’s illustration. Apple
`
`claims, wrongly, that the illustration shows “a flat noise distribution from 0 [sic –
`
`0.5] to 10 Hz.” Reply, 9. That is not the purpose of the red box. As Dr. MacFarlane
`
`explained, it shows “the noise range identified in Carlson and Lisogurski” that
`
`envelopes the CCM frequencies. Ex.2136, ¶83.8
`
`Apple next cites prior Board decisions in which Apple claims, “[t]he Board
`
`recognized that even small increases in LED firing rate during CCM can increase
`
`SNR in some noise environments, which is enough to satisfy the claims.” Reply, 9.
`
`There are two flaws with this argument. First, in the decisions, the Board did not
`
`address Dr. MacFarlane’s evidence, unrefuted in this IPR, that a CCM firing rate
`
`increase does not increase SNR. Ex.2136, ¶83. Second, the Board based its “enough
`
`to satisfy the claims” conclusion on Hewlett-Packard Co. v. Mustek Sys., Inc., 340
`
`F.3d 1314, 1326 (Fed. Cir. 2003), which the Federal Circuit held in ParkerVision
`
`does not apply to “configuration” limitations like the pulse rate limitation.
`
`
`8 Apple’s attorneys, but not its expert, also claim that Carlson shows ambient light
`
`noise “trails off” (citing Carlson Figure 7b). Carlson refutes Apple’s attorney
`
`argument: “The [pulsed light] frequency is chosen in such a way that it is outside
`
`the frequency spectrum of sunlight and of ambient light which, according to FIG.
`
`7b, is in the range of above approximately 1000 Hz.” (Carlson, ¶[0069].)
`
`10
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`ParkerVision, 903 F.3d at 1361-62 (explaining that Hewlett-Packard’s statements
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`were made in the context of a case involving “an apparatus that is ‘capable of’
`
`performing certain functions” and distinguishing it from cases like Ball Aerosol that
`
`“recited a configuration”). Here, it is not enough that CCM might (contrary to the
`
`evidence) randomly increase SNR because such randomness proves CCM is not
`
`configured to increase SNR by increasing the pulse rate. Id.
`
`Finally, without citing to any record that analyzes or refutes Dr. MacFarlane’s
`
`detailed discussion of why firing rate increases during CCM do not increase SNR,
`
`Apple indirectly references Dr. MacFarlane’s deposition testimony (from a different
`
`IPR) where he made a “general statement” that increasing pulse rates may sometimes
`
`increase SNR. Reply, 9. But Apple admits that that testimony was only in response
`
`to “an abstract question” and “not about Lisogurski.” See Resp., 16-17 (emphasis in
`
`original). And, contrary to Apple’s assertion, Dr. MacFarlane’s testimony is neither
`
`“conclusory” nor “unsupported”: In ¶83 of his declaration, quoted in full at Resp.,
`
`22-23, Dr. MacFarlane details the basis for his opinion, citing specific evidentiary
`
`support.
`
`In contrast, Apple’s only alleged support, Reply, 9, is a conclusory sentence
`
`in its expert’s declaration, “Ex.1003, ¶182”: “Lisogurki’s [sic] device will increase
`
`its pulse rate to remain synchronous with a subject’s heart rate resulting in an
`
`increased signal-to-noise ratio being detected.” That statement is not just conclusory,
`
`11
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`the expert cites no support. He then finishes by saying, “Lisogurki’s [sic] device is
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`capable of increasing its SNR by increasing its pulse rate, which satisfies PTAB’s
`
`construction.” Id. As a matter of law, that opinion is irrelevant because it relies on
`
`mere “capability” and does not address recited pulse rate “configuration.”
`
`ParkerVision, 903 F.3d at 1361-62; Ball Aerosol, 555 F.3d at 995.
`
`In summary, Omni has unrefuted evidence that CCM is not configured to
`
`increase SNR by increasing the pulse rate while Apple, the proof-burdened party,
`
`has no contrary evidence.
`
`III. Ground 1: Adding Carlson’s teaching of modulating at 1000 Hz to
`Lisogurski’s CCM changes CCM’s principle of operation
`
`A. Apple’s attorneys try to rewrite Carlson’s express teaching
`of “temporarily” using “pulsed light”
`
`Apple asserts Omni “mischaracteriz[es] Carlson.” Reply, 10. In the first
`
`paragraph under heading III.A., Apple paraphrases Omni as saying Carlson’s
`
`pulsoximeter “cannot actively increase the LED’s pulse rate during operation.” Id.
`
`Apple then asserts that statement “is factually incorrect.” Id. But the three sentences
`
`that follow do not refute Omni. For example, Apple asserts, “Carlson’s device is
`
`designed to address changing environmental … conditions.” Id. (emphasis in
`
`original). But Apple does not say how Carlson addresses changing conditions.
`
`Carlson expressly says his device does so by “temporarily” switching from
`
`12
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`“continuous” to “pulsed light,” Ex.1009[0064], [0069], not by increasing the LED
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`pulse rate during operation.
`
`In the next paragraph, Apple confuses “power spectrum” with modulation
`
`frequency. Reply, 10-11. Omni explained the difference in its Response (pp. 25-28):
`
`Carlson shifts the “power spectrum” by changing from continuous to pulsed light,
`
`not by increasing the pulse rate of a pulsing LED. Ex.2136, ¶¶102-107. Carlson
`
`explains this by using Figures 7c and 8 to illustrate the shift:
`
`
`
`
`
`Ex.1009, Figure 7c
`
`13
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`Ex.1009, Figure 8
`
`
`
`Carlson says, “FIG. 7c [is] a diagram showing power spectrum of
`
`physiological signals and ambient light without phase shifting or modulation of the
`
`light source of a sensor.” Ex.1009[0044]. “In other words, Figure 7c discloses the
`
`power spectrum for continuous light, not pulsed light.” Ex.2136, ¶103 (emphasis in
`
`original). In contrast, “FIG. 8 a diagram showing power spectrum of physiological
`
`signals and ambient light with phase shifting or modulation of the light source of
`
`a sensor.” Ex.1009[0045].
`
`Carlson first discusses “shift[ing] the power spectrum” in ¶[0065], where he
`
`explains “[t]he basic idea” of “temporarily modulat[ing] the optical radiation of the
`
`LED at the carrier frequency fc in order to shift the power spectrum of the
`
`pulsoximeter signals into a higher frequency range where environmental optical
`
`radiation is unlikely[.]”
`
`14
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`After describing concerns with “ambient light” in ¶[0068], Carlson details
`
`how his power spectrum shift works in ¶[0069]:
`
`[I]t is therefore proposed to emit light by the LEDs not as current or
`
`continuous light but as pulsed light. The frequency is chosen in such a
`
`way that it is outside the frequency spectrum of sunlight and of ambient
`
`light which, according to FIG. 7b, is in the range of above
`
`approximately 1000 Hz. … FIG. 8 shows the shift spectrum of signal
`
`to a region where there is little influence, e.g. of ambient light.
`
`Ex.1009[0069].
`
`Apple is wrong when it argues that the shift in power spectrum (shown in
`
`Figures 7c and 8) “indicates the LED previously pulsed at a lower frequency.”
`
`Reply, 11.9 Figure 7c shows the power spectrum without modulation of the light
`
`source, a fact Apple does not dispute.
`
`Apple also briefly mentions Carlson’s claims 10-13, which it admits are
`
`“means” claims. Reply, 11. Omni’s Response (pp.27-28) details why claims 10-13
`
`do not disclose increasing a pulse rate: Because the claims are in means plus function
`
`format, one must look to the specification and, there, the only “means for shifting”
`
`
`9 Apple’s assertion is mere attorney argument—Apple does not cite its expert for
`
`support. Omni’s expert refutes Apple’s attorney argument. Ex.2136, ¶¶102-107.
`
`15
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`shifts just the power spectrum (only) by temporarily switching continuous light to
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`pulsed light. Apple’s Reply does not address or dispute these facts.
`
`Apple next asserts the Board should ignore Carlson’s express, unequivocal
`
`statements that his device switches temporarily from continuous to pulsed light
`
`because, according to Apple’s attorneys (with no evidentiary support), “Carlson’s
`
`device would consume excessive battery power.” Reply, 11. That argument is
`
`contrary to Carlson, lacks support, and ignores that Carlson can use other measures
`
`to reduce battery consumption. For example, Lisogurski teaches varying the
`
`sampling rate to conserve power. Ex.1011(36:38-40)(“the system may alter
`
`sampling rate … to optimize power consumption.”) Carlson never suggests that
`
`battery power is a factor in using continuous light or in the need to temporarily
`
`modulate the light. Apple’s attorney arguments are not evidence. Creative
`
`Compounds, 651 F.3d at 1312; Biotec, 249 F.3d at 1353.
`
`Apple also claims that “continuous light” has “a pulse rate.” Reply, 11.
`
`Ridiculous: pulses that do not exist have no “rate.” See Ex.2136, ¶¶108-113. And,
`
`as detailed in Dr. MacFarlane’s declaration, “the ‘484 specification draws a clear
`
`distinction between continuous light and pulsed modulated light”; “the specification
`
`provides examples of pulse rates, which are consistently non-zero.” Ex.2136,
`
`¶109(quoting examples)(emphasis in original).
`
`16
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`Apple concludes §III.A. with more attorney argument. Reply, 11-12. It is
`
`irrelevant that Apple’s attorneys believe their arguments “align with Carlson’s
`
`broader context” and that ignoring Carlson’s express teachings “would be natural.”
`
`The absence of evidentiary support for these opinions speaks volumes.
`
`B. Apple mischaracterizes Omni’s arguments and Lisogurski
`and Carlson’s teachings
`
`Omni does not, as Apple asserts, “attack[] the teachings of Lisogurski nor [sic]
`
`Carlson in isolation.” Reply, 12. The combined references cannot teach increasing
`
`a pulse rate to 1000 Hz because neither reference contains that teaching. In
`
`Lisogurski, CCM’s pulse rate never increases to 1000 Hz and DCM’s pulse rate
`
`(which the Petition does not rely on) is either active or inactive without increasing.
`
`In Carlson, the light source is either unmodulated or (temporarily) modulated, but
`
`when modulated the pulse rate does not increase.
`
`Apple says Omni’s arguments “boil down to two assertions”: (1) “Lisogurski
`
`does not teach increasing the LED firing rate for the purpose of increasing SNR”
`
`and (2) “Carlson alone allegedly does not disclose increasing an LED’s pulse rate
`
`during its operation.” Id. at 12-13 (emphasis and footnote omitted).
`
`On the first point, Omni disputes that Apple’s summary of Lisogurski’s
`
`teaching “is undisputed.” Reply, 13. Apple claims Lisogurski’s device can “vary
`
`LED modulation … in response to noise level changes.” Id. Not true. The light drive
`
`17
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`“varies substantially synchronously with physiological pulses of the subject.”
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`Ex.1011(25:46-55). This means the firing rate increases or decreases “without
`
`reference to SNR.” Ex.2136, ¶81. None of the passages Apple cites from Lisogurski
`
`supports Apple’s claim:
`
`• “1:67-2:3” only mentions responses to “external trigger[s].”
`
`• “5:55-61” only discusses adjusting brightness, not modulation, using
`
`“servo algorithms.”
`
`• “9:46-60” again refers to “brightness” and to changing “from a
`
`modulated light output to a constant output,” the opposite of increasing
`
`to a higher pulse rate as claimed.
`
`• “27:44-49” does not address “noise level changes.”
`
`• “33:53-57” is about “sampling rate,” not firing rate.
`
`• “37:6-18” mentions CCM’s “second mode,” where
`
`the only
`
`“modulation change” Lisogurski discloses is “stop[ping] cardiac cycle
`
`modulation and emit[ting]
`
`light at a constant brightness,”
`
`Ex.1011(37:6-17), i.e., changing to no pulses.
`
`See Ex.2136, ¶¶71, 74, 79.
`
`18
`
`

`

`Case No.: IPR2021-00453
`Patent No.: 10,517,484
`
`
`
`Atty. Dkt. No.: OMSC0119IPR1
`
`Apple also claims it is “undisputed” that Lisogurski “var[ies] LED modulation
`
`for the purpose of increasing SNR.” Reply, 13. It is unfathomable that Apple can
`
`make that claim—this is a core dispute in this IPR. See §II, above.
`
`Regarding Carlson, Apple rehashes its unsupported claim from §III that
`
`“Carlson does disclose a device that changes an LED’s pulse rate in operation.”
`
`Reply, 13 (italics in original). That claim is wrong as explained in the preceding
`
`section. Apple also misstates that Carlson can overcome ambient light by
`
`“switching” the LED pulse rate to a higher frequency. Id. Apple misuses the
`
`comparative “higher” because, as explained in the preceding section, Carlson’s
`
`continuously-on LED has no pulse rate.
`
`Finally, Apple identifies its proposed Lisogurski/Carlson combination:
`
`switching Lisogurski into CCM’s “second mode” and increasing CCM’s firing rate
`
`to 1000 Hz (Carlson’s modulation rate). Reply, 14. As discussed in the next section,
`
`that proposed combination is improper because it changes CCM’s principle of
`
`operation.
`
`C. Modulating CCM at 1000 Hz is not “consistent with
`Lisogurski’s teaching”—it improperly changes CCM’s
`principle of operation
`
`Apple summarizes Omni’s “principle of operation” argument incorrectly.
`
`Reply, 14. In the Response, Omni noted that the Pet