Omni MedSci’s Demonstrative
`Exhibits
`U.S. Patent No. 10,517,484
`IPR2021-00453
`May 5, 2022
`
`Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`Exhibits
`U.S. Patent No. 10,517,484
`IPR2021-00453
`May 5, 2022
`
`Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`
`
`Outline
`• Ground 1: The “pulse rate” limitation
`• Lisogurski alone: CCM
`• Omni’s evidence is unrefuted: CCM firing rate changes do not increase SNR
`• Not configured to increase SNR by increasing an LED pulse rate
`• “Sampling rate” ≠ “firing rate”
`• Lisogurski + Carlson
`• Apple’s combination improperly destroys CCM’s principle of operation
`
`• Ground 2: Claims 3, 8, and 16
`• Petition ignores differences between “to detect an object” and “to identify an object”
`• Lisogurski does not “detect an object”
`• Lisogurski does not “identify an object”
`
`• Grounds 2–4: No motivation to combine the references
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`IPR2021-00453 Ex. 2138
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`2
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`
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`GROUND 1: THE “PULSE RATE”
`LIMITATION
`Lisogurski CCM
`Lisogurski CCM modulating at Carlson 1000 Hz
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`IPR2021-00453 Ex. 2138
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`3
`
`
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`The “pulse rate” limitation
`
`the wearable device
`configured
`to increase the signal-to-noise ratio . . .
`by increasing a pulse rate of at least one of the plurality of
`semiconductor sources
`from an initial pulse rate
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`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Paper 11, DI, p. 19
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`4
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`
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`LISOGURSKI ALONE
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`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`5
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`
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`Facts
`
`• Apple relies solely on Lisogurski’s CCM for the “by increasing a pulse rate”
`limitation
`• Omni Response, pp. 16-19
`• Apple Reply: No dispute
`
`• Increases in CCM’s firing rate do not increase SNR
`• Omni’s evidence: MacFarlane’s testimony (Ex. 2136, ¶ 83)
`• Apple’s evidence: None
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`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`6
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`
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`CCM firing rate changes do not affect SNR
`Dr. MacFarlane
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`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`7
`
`Ex.2136, ¶83
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`
`
`Apple relies on mere attorney argument, not evidence
`• Apple offers no evidence that CCM’s firing rate changes increase SNR:
`• Apple’s expert does not say so
`• Lisogurski does not say so
`• Apple did not challenge Dr. MacFarlane via cross-examination
`
`• Attorney argument does not carry Apple’s burden of proof
`
`“Attorney argument is no substitute for evidence.”
`Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)
`
`“[The patent challenger’s] evidentiary shortcomings are not overcome by its
`reliance on attorney argument.”
`Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303, 1312 (Fed. Cir. 2011)
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`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`8
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`
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`Lisogurski does not increase SNR by increasing CCM’s firing rate
`
`• Configuring CCM to increase the firing rate in response to noise would defeat CCM
`• CCM works because the firing rate stays sync’d to the heartbeat
`• Increasing the firing rate to battle noise would defeat CCM because the firing rate would
`be out of sync with the heartbeat
`
`• Lisogurski teaches other changes when noise is a problem:
`• Constantly illuminate LEDs (37:15-17)
`• Increase LED brightness (37:17-18)
`• Increase duty cycle (37:18-20)
`• Swap functions of IR and Red LEDs (Figure 8B) (37:20-22 and 24:41-57)
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`IPR2021-00453 Ex. 2138
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`9
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`
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`No admission by Omni
`• Omni’s purported admission:
`
`• Those two statements ≠ a device configured to increase SNR by increasing the LED
`pulse rate
`
`Reply 7
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`IPR2021-00453 Ex. 2138
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`10
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`
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`Lisogurski merely says CCM may (or may not) be better than no CCM
`
`• Lisogurski does not say “during CCM, increase firing rate to improve SNR”
`
`No CCM: 2.6% noise
`•
`• Systole CCM: 1.9% noise
`• Diastole CCM: 3.8% noise
`
`• Apple has no evidence that SNR increases when maintaining synchronization with the
`heartbeat
`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`11
`
`Ex.1011(42:45-58)
`
`
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`Sampling rate ≠ firing rate
`• Apple wrongly claims: “Lisogurski uses the term ‘sampling rate’ to refer to the
`emitter (LED) firing rate” (Reply 3)
`
`Ex.1011, Fig. 18
`(highlighting added)
`
`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)
`
`“[T]he system may receive a signal.
`The signal may be sampled at a first
`rate. The signal may be sampled using
`an analog-to-digital converter”
`Ex.1011(33:65-67)
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`IPR2021-00453 Ex. 2138
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`12
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`
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`Apple improperly raises DCM for the first time in Reply
`
`• In Reply, Apple asserts:
`
`Reply 5
`
`• Two problems:
`1. Apple bases its new DCM argument on its false “sampling rate” = “firing rate” premise
`
`2. The Petition relies solely on CCM, not Lisogurski’s DCM embodiment
`
`“Petitioner may not submit new evidence or argument in reply that it could
`have presented earlier, e.g. to make out a prima facie case of unpatentability.”
`Consolidated Trial Practice Guide (Nov. 2019) at 73
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`IPR2021-00453 Ex. 2138
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`13
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`
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`Even combined with DCM, CCM remains at ~1 Hz
`
`• Apple does not dispute that, even with DCM, CCM remains at ~1 Hz
`
`Ex. 1011(6:26-30)
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`IPR2021-00453 Ex. 2138
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`14
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`
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`The Board must use the plain, ordinary meaning of “configured to”
`
`• The “pulse rate” limitation requires a “configuration”:
`• The device must be “configured to increase [SNR] … by increasing a pulse rate”
`
`• Apple does not argue for a special meaning of “configured to”
`
`• Plain, ordinary meaning applies: “designed to”
`
`“[T]he Court construes ‘configured to’ to have its plain and ordinary meaning,
`which is ‘made to’ or ‘designed to.’ ”
`Wanker v. United States, 152 Fed. Cl. 219, 254 (2021)
`
`“[D]esigned or configured to accomplish the specified objective, not simply that
`they can be made to serve that purpose”
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)
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`IPR2021-00453 Ex. 2138
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`15
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`Lisogurski did not configure CCM to increase SNR using small firing rate increases
`
`• Why Lisogurski increases firing rate is critical to the claims:
`
`“[O]ur 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 v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018)
`
`“[R]eliance on cases that found infringement by accused products that were
`reasonably capable of operating in an infringing manner is misplaced, since
`that line of cases is relevant only to claim language that specifies that the claim
`is drawn to capability.”
`Ball Aerosol & Spec. Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 995 (Fed. Cir. 2009)
`
`• If CCM irregularly increases SNR (contrary to the evidence), such irregularity
`proves CCM is not configured to increase SNR by increasing the pulse rate.
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`IPR2021-00453 Ex. 2138
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`16
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`
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`“Gaussian noise” is irrelevant
`
`• Lisogurski only ran simulations with “Gaussian noise” to compare waveforms with
`and without CCM. Ex.1011(41:46-49,42:46-54)
`• He analyzed CCM as a whole
`
`• Lisogurski ran no tests showing that small firing rate increases during CCM
`improves SNR
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`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`17
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`
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`New Reply arguments and embodiments are improper
`• A finding of unpatentability must be based on arguments made in the Petition:
`
`“Petitioner may not submit new evidence or argument in reply that it could
`have presented earlier, e.g. to make out a prima facie case of unpatentability.”
`Consolidated Trial Practice Guide (Nov. 2019) at 73
`
`“It is of the utmost importance that petitioners in the IPR proceedings adhere
`to the requirement that the initial petition identify ‘with particularity’ the
`‘evidence that supports the grounds for the challenge to each claim.’”
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir.
`2016)
`
`“The statute [35 U.S.C. §312(a)(3)] hinges inter partes review on the filing of a
`petition challenging specific patent claims; it makes the petition the
`centerpiece of the proceeding . . . .”
`SAS Institute Inc. v. Iancu, 138 S.Ct. 1348, 1358 (2018)
`
`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`18
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`
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`Apple revamps its arguments in Reply
`
`The Petition argument barely spans two pages
`
`The Reply more than doubles the argument
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`Paper 1, pp. 48-51
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`Paper 11, pp. 3-9
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`IPR2021-00453 Ex. 2138
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`19
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`
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`Apple relies on new Lisogurski cites in its Reply
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`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Ex.2137
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`20
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`
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`LISOGURSKI + CARLSON
`
`Adding Carlson’s teaching of modulating at 1000 Hz to
`Lisogurski’s CCM changes CCM’s principle of operation
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`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`21
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`Apple’s combination
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`Reply 17
`
`• Key points:
`• Apple proposes increasing CCM’s firing rate to 1000 Hz
`• The increase is in “respon[se] to increased noise”
`• not a random firing rate increase
`• Apple relies on Lisogurski’s “second mode”
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`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`22
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`
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`Remaining synchronous with physiological pulses is the “core principle of operation of cardiac cycle
`modulation.” Ex. 2136, ¶¶ 56, 130
`• Lisogurski consistently teaches that CCM should remain synchronous with the
`physiological cycle (at ~1 Hz):
`
`• “[T]he system may vary parameters in a way substantially synchronous with physiological pulses” (Ex. 1011 at Abstract.)
`• “the system may vary a light drive signal in a way substantially synchronous with physiological pulses, for example, cardiac
`pulses.” (Id. at 1:41-43.)
`• “The system may generate a light drive signal for activating a light source to emit a photonic signal, wherein at least one
`parameter of the light drive signal is configured to vary substantially synchronously with physiological pulses of the subject.”
`(Id. at 1:44-47.)
`• “the external signal may be received from an external ECG sensor configured to provide a trigger signal synchronous with an
`element of the cardiac cycle such as an R wave.” (Id. at 10:9-12.)
`• “the cardiac cycle modulation applied to red light drive signal 556 may be substantially synchronous with the systole periods
`of the cardiac cycle.” (Id. at 21:51-53.)
`• “the cardiac cycle modulation applied to red light drive signal 614 may be substantially synchronous with the diastole
`periods of the cardiac cycle.” (Id. at 22:45-47.)
`• “the cardiac cycle modulation applied to red light drive signal 716 is substantially synchronous with the dicrotic notch of the
`cardiac cycle.” (Id. at 23:24-27.)
`• “the cardiac cycle modulation applied to red light drive signal 804 is substantially synchronous with the peak of the PPG
`signal.” (Id. at 24:10-13.)
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`IPR2021-00453 Ex. 2138
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`23
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`Change in principle of operation defeats obviousness
`
`If a “proposed modification or combination of the prior art would change the
`principle of operation of the prior art invention being modified, then the
`teachings of the references are not sufficient to render the claims prima facie
`obvious.”
`MPEP 2143.01, citing In re Ratti, 270 F.2d 810, 813 (C.C.P.A. 1959)
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`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`24
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`
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`Apple’s problem
`
`Either
`• DCM is added to CCM (DCM begins firing at 1000 Hz and CCM’s rate stays the same) –
`no increase in pulse rate
`
`or
`
`• CCM’s firing rate increases to 1000 Hz – This destroys CCM’s synchronous operation
`
`Reply 16
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`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`25
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`
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`CCM’s “second mode” does not increase LED firing rate
`
`Ex. 1011(37:14-22)
`
`• Four “second mode” options:
`• Stop CCM – LED at constant brightness (no modulation)
`• Increase LED brightness
`• Increase duty cycle
`• “Fig. 8B” technique: swap red and IR LED functions
`
`• None increases LED firing rate
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`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`26
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`
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`CCM’s Fig. 8B “second mode” merely swaps IR and red LEDs
`
`First mode
`
`Second mode
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`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`27
`
`Ex. 1011, 24:44-57
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`Fig. 8B
`
`
`
`Apple failed to address the principle-of-operation problem in the Petition
`
`“Petitioner may not submit new evidence or argument in reply that it could
`have presented earlier, e.g. to make out a prima facie case of unpatentability.”
`Consolidated Trial Practice Guide (Nov. 2019) at 73
`
`“It is of the utmost importance that petitioners in the IPR proceedings adhere
`to the requirement that the initial petition identify ‘with particularity’ the
`‘evidence that supports the grounds for the challenge to each claim.’”
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir.
`2016)
`
`“The statute [35 U.S.C. §312(a)(3)] hinges inter partes review on the filing of a
`petition challenging specific patent claims; it makes the petition the
`centerpiece of the proceeding . . . .”
`SAS Institute Inc. v. Iancu, 138 S.Ct. 1348, 1358 (2018)
`
`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`28
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`
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`Apple’s Reply-only “operating principle” arguments are wrong
`
`• Reply 16 cites two Lisogurski passages that do not support operating CCM at 1000
`times the cardiac rate:
`
`• Apple cites “7:38-40”:
`• It merely says CCM may modulate “multiple light sources using a plurality of modulation
`techniques”
`• Does not say, “increase CCM far above heart rate”
`
`• Apple cites “7:4-12”:
`• It merely says, “the system may combine cardiac cycle modulation techniques.”
`• A firing rate 1000 times the heart rate is not a “cardiac cycle modulation technique” (it is DCM)
`
`IPR2021-00453 Ex. 2138
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`29
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`
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`Apple’s “external trigger” argument is improper and wrong
`
`• Apple’s attorneys assert the “external trigger” influencing Lisogurski’s CCM may
`be “increased noise or ambient light. Ex.1011, 5:41-47.” (Reply p. 17)
`
`• Improper because:
`• Unsupported – Apple has no evidence to support its attorney argument
`• Untimely – not an argument Apple raised in the Petition
`• Apple did not cite Ex.1011, 5:41-47 in the Petition
`
`• Wrong because:
`• The purpose of the “external trigger” is “to provide a trigger signal synchronous with an
`element of the cardiac cycle” to fire the emitter “substantially synchronously with
`physiological pulses of the subject.” Ex.1011(10:9-12, 25:46-55); Ex.2136, ¶81.
`
`• This confirms that CCM’s principle of operation is to maintain synchronization with the
`heart rate, even with “external triggers”
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`IPR2021-00453 Ex. 2138
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`30
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`
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`The ‘484 patent distinguishes continuous wave light from pulsed light
`
`• The ‘484 patent makes clear that continuous light is distinct from pulsed light. (Ex.
`2136, ¶¶26-28.)
`• “[T]he LED provides the option of continuous wave or pulsed mode of operation.” (Ex. 1001
`at 26:29-32.)
`
`• “[A] pulse repetition rate between one kilohertz to about 100 MHz or more.” (Ex. 1001 at
`16:19-20.)
`
`• “In one embodiment, continuous-wave systems emit light at approximately constant
`intensity or modulated at low frequencies, such as 0.1-100 kHz.” (Ex. 2121, ¶[0045] inc’d. by
`ref. at Ex. 1001 at 1:40-42.)
`
`• Apple does not dispute this
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`IPR2021-00453 Ex. 2138
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`31
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`
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`Changing from continuous light to pulsed light is not “increasing a pulse rate”
`
`• Choosing unmodulated light or pulsed light is not “increasing” a pulse rate from
`“an initial pulse rate” because no “pulse rate” exists for unmodulated light. (Ex.
`2136, ¶¶27-29, 110)
`
`• Until an LED begins pulsing, no pulse rate exists. (Id.)
`
`• It is not possible to change the frequency of a non-existent pulse. (Id.)
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`IPR2021-00453 Ex. 2138
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`32
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`
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`Apple’s reliance on Carlson’s claims is wrong
`
`• Apple’s attorneys argue that Carlson’s claims 10-13 support Apple. (Reply p. 11)
`• No support from Apple’s expert
`
`• Claims 10-13 are means + function claims (as Apple admits, Reply, p. 11)
`
`• Carlson’s only disclosed “means for shifting” is:
`
`• Carlson never discloses shifting f0 from an initial pulse rate
`
`Ex. 1009
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`IPR2021-00453 Ex. 2138
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`33
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`
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`Changing a “power spectrum” is not “increasing a pulse rate . . . from an initial pulse rate”
`
`• Carlson’s Figure 7c shows the spectrum using
`continuously-on LEDs – there are no pulses, so no
`“initial pulse rate”:
`
`• Carlson’s Figure 8 shows a temporarily modulated
`LED at a “chosen” frequency f0:
`
`Fig. 7c
`
`Ex. 1009
`
`• No “increasing a pulse rate . . . from an initial
`pulse rate” because “without a starting pulse rate,
`there cannot be a pulse rate increase.”
`Ex.2136(¶108)
`
`Ex. 1009
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`Fig. 8
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`IPR2021-00453 Ex. 2138
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`34
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`
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`Adding a feature already present in a prior art reference cannot make a claim obvious
`
`• Carlson’s modulation at 1000 Hz is superfluous to Lisogurski’s DCM
`
`“The Board’s position is further weakened by the fact that the AAPA already
`discloses an RF network that connects portable computers to the system. …
`Thus, adding an RF network to element # 2 in the figure would render the
`RF network connecting the portable PCs in figure 1 superfluous.”
`In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011)
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`IPR2021-00453 Ex. 2138
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`35
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`
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`GROUND 2: CLAIMS 3, 6, 18
`
`The Petition ignored differences between “to detect an object”
`and “to identify an object”
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`IPR2021-00453 Ex. 2138
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`36
`
`
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`The Petition (wrongly) says all three claims use “identify”
`
`• In Reply, Apple says “identify” means “detect an object”
`• “[A] skilled person considering the ’484 patent would understand [“identify an object”] to mean the same thing
`“detect an object” does.” Reply 20
`
`Pet. 62
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`IPR2021-00453 Ex. 2138
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`37
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`
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`Claims 3, 8, 16
`
`• 3. The system of claim 2, wherein the wearable device is at least in part configured to identify an
`object, and to compare a property of at least some of the output signal to a threshold.
`
`• 8. The system of claim 7, wherein the wearable device is at least in part configured to identify an
`object, and a property of at least some of the output signal is compared by at least one of the wearable
`device, the smart phone or tablet to a threshold.
`
`• 16. The system of claim 15, wherein the wearable device is at least in part configured to detect an
`object, and a property of at least some of the output signal is compared to a threshold.
`
`IPR2021-00453 Ex. 2138
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`38
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`
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`Claim construction
`
`• Apple did not propose any construction of “identify” or “detect”
`
`• identify ≠ detect
`
`• Plain, ordinary meaning:
`
`Ex. 2134, p. 2
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`Ex. 2135, p. 1
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`IPR2021-00453 Ex. 2138
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`39
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`
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`A “system error” does not “identify an object”
`• Apple’s two-sentence argument:
`
`• Apple:
`
`• Lisogurski:
`
`Pet. 62
`
`Ex.1011(36:66-37:2)
`
`• A “system error” does not “detect an object” or “identify an object”
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`IPR2021-00453 Ex. 2138
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`40
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`
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`Claim 16: “to detect an object”
`
`• Apple failed to address the detection requirement of Claim 16
`
`• Detection requires the wearable device “to discover or notice the existence or
`presence of something.”
`
`• No reason given why an ordinary artisan would reconfigure Lisogurski’s “system
`error” signal to discover or notice the presence of the probe
`
`• Lisogurski has no need to discover the probe’s presence
`• When the probe is functioning, the system simply works
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`IPR2021-00453 Ex. 2138
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`41
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`
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`Claims 3 and 8: “to identify an object”
`
`• “to identify an object” means “to recognize or establish an object as being a
`particular thing”
`
`• The Petition does not identify any such teaching in Lisogurski
`
`• Recognizing or establishing an object as a particular thing is fundamentally
`different from Lisogurski’s “system error”
`• Lisogurski's passing reference to a “probe-off signal” does not disclose identifying an
`unknown object as a particular thing
`
`IPR2021-00453 Ex. 2138
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`42
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`
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`Identification of objects in the ‘484 patent
`
`•
`
`•
`
`•
`
`•
`
`“Hyper-spectral images may provide spectral information to identify and distinguish between spectrally similar
`materials, providing the ability to make proper distinctions among materials with only subtle signature
`differences;” Ex. 1001(7:21-24)
`
`“the active remote sensing or hyper-spectral imaging information could also be combined with two-dimensional
`or three-dimensional images to provide a physical picture as well as a chemical composition identification of the
`materials;” Ex. 1001(8:18-22)
`
`“it may be advantageous to use pattern matching algorithms and other software and mathematical methods to
`identify the blood constituents of interest;” Ex. 1001(12:57-60)
`
`“Various signal processing methods may be used to identify and quantify the concentration of cholesterol 876
`and/or glucose 877, or some of the other blood constituents.” Ex. 1001(15:45-48)
`
`IPR2021-00453 Ex. 2138
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`
`
`Apple’s new Reply claim construction and arguments are improper and unsupported
`
`• Apple’s Reply expands two Petition sentences into five pages
`
`• The Reply is mere attorney argument – Apple offers no expert support for its
`positions
`
`IPR2021-00453 Ex. 2138
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`
`
`The Reply’s use of Tran, Carlson and new Lisogurski citations is improper
`
`• In Reply, Apple cites material not found in the Petition and makes new arguments
`not made in the Petition:
`
`Reply 22
`
`• That is improper:
`
`“Petitioner may not submit new evidence or argument in reply that it could have
`presented earlier, e.g. to make out a prima facie case of unpatentability.”
`Consolidated Trial Practice Guide (Nov. 2019) at 73.
`
`“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.”
`Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367-68 (Fed. Cir. 2015)
`
`“Petitioner’s new rationale explaining its claim mapping in the Reply is not based on a previous position
`Petitioner put forth in the Petition; rather, Petitioner posits a rationale about an ordinarily skilled artisan’s
`perspective where none existed previously.”
`Hulu, LLC v. Sound View Innovations, LLC, IPR2018-00582, Paper No. 34 at 30-31 (PTAB Aug. 5, 2019) (Informative).
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`IPR2021-00453 Ex. 2138
`
`45
`
`
`
`Apple’s new Reply arguments are untimely
`• 37 C.F.R. § 42.104(b)(3): “The Petition”
`• The petition must identify “[h]ow the challenged claim is to be construed” and “specify where each element of
`the claim is found in the prior art patents or printed publications relied upon.”
`
`Microsoft Corp. v. IPA Techs., Inc., Appeal No. 2021-1412 (Fed. Cir. April 1, 2022)
`
`IPR2021-00453 Ex. 2138
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`46
`
`
`
`GROUNDS 2-4
`
`On the undisputed facts, Apple has not met its burden of showing
`a motivation to combine three/four/five references together.
`
`IPR2021-00453 Ex. 2138
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`
`
`Apple did not provide a motivation for the combinations it asserted
`
`• Apple’s asserted combinations:
`
`Pet. 59-60
`
`Pet. 68
`Discusses only Lisogurski and Isaacson and no mention of “motivation”
`
`• Ground 2:
`
`• Ground 3:
`
`• Ground 4:
`
`IPR2021-00453 Ex. 2138
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`48
`
`Pet. 73
`
`
`
`Undisputed
`• Analogous art and motivation to combine are two separate inquiries.
`• Undisputed
`
`• Merely showing a reference is analogous art “is not sufficient to establish that one
`of ordinary skill would have had reason to combine its teachings with other prior
`art in the manner set forth in the claim.”
`• Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10 (PTAB Oct.
`16, 2018) (Informative).
`
`• In Grounds 2–4, Apple asserted only that the references are “analogous,” but gave
`no motivation to combine all references.
`
`IPR2021-00453 Ex. 2138
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`
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