Trials@uspto.gov
`571-272-7822
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`Paper 11
`Date June 17, 2020
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`10UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`IPR2020-00175
`Patent US 10,188,299 B2
`____________
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a); 37 C.F.R. § 42.4
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 7 and 10–14 (“the challenged claims”) of U.S. Patent No.
`10,188,299 B2 (Ex. 1001, “the ’299 patent”). Paper 1 (“Pet.”), 3. Omni
`MedSci Inc. (“Patent Owner”), filed a Preliminary Response. Paper 6
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`571-272-7822
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`Paper 11
`Date June 17, 2020
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`10UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`IPR2020-00175
`Patent US 10,188,299 B2
`____________
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a); 37 C.F.R. § 42.4
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 7 and 10–14 (“the challenged claims”) of U.S. Patent No.
`10,188,299 B2 (Ex. 1001, “the ’299 patent”). Paper 1 (“Pet.”), 3. Omni
`MedSci Inc. (“Patent Owner”), filed a Preliminary Response. Paper 6
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`(“Prelim. Resp.”). After we issued an order (Paper 7) that granted
`authorization for additional briefing addressing discretionary denial under 35
`U.S.C. § 325(d), Petitioner filed a Reply to the Preliminary Response (Paper
`8 (“Pet. Reply”)) and Patent Owner filed a Sur-Reply to the Reply (Paper 9
`(“PO Sur-Reply”)). We have authority under 35 U.S.C. §§ 6, 314.
`Upon consideration of the Petition, Preliminary Response, and
`additional briefing we decline to exercise discretion to deny institution under
`35 U.S.C. §§ 325(d) or 314(a), and we are persuaded that Petitioner has
`demonstrated a reasonable likelihood that it would prevail in showing the
`unpatentability of at least one challenged claim of the ’299 patent.
`Accordingly, we institute inter partes review of all challenged claims on all
`grounds raised.
`
`II.
`
`BACKGROUND
`
`A. Related Matters
`Petitioner and Patent Owner identify the following as matters that
`would affect or be affected by a decision in this proceeding:
`Issued patents: U.S. Patent No. 9,651,533 (“the ’533 patent”) and U.S.
`Patent No. 9,164,032.
`Litigation: Omni MedSci, Inc. v. Apple Inc., Action No. 2-19-cv-
`05673-YGR (N.D. Cal.); Omni MedSci, Inc. v. Apple Inc., Action No. 2-19-
`cv-05924 (N.D. Cal.); Omni MedSci, Inc. v. Apple Inc., Action No. 2-18-cv-
`00429-RWS (E.D. Tex.) (terminated); and Omni MedSci, Inc. v. Apple Inc.,
`Action No. 2-18-cv-00134-RWS (E.D. Tex.) (terminated).
`Inter partes review proceedings: IPR2019-00913 (terminated), and
`IPR2019-00916 (instituted).
`See Pet. xii–xiii; Paper 4, 1–2.
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`B. Evidence Relied Upon
`
`Reference
`Mannheimer
`
`Date
`
`Exhibit
`
`US 5,746,206
`
`May 5, 1998
`
`Lisogurski et al. US 9,241,676 B2
`
`May 31, 2012
`
`Park et al.
`
`US 9,596,990 B2
`
`Nov. 6, 2013
`
`Carlson et al.
`
`US 2005/0049468 A1 Mar. 3, 2005
`
`1008
`
`1011
`
`1010
`
`1009
`
`Petitioner also relies upon the Declaration of Brian Anthony, Ph.D.
`(Ex. 1003). Patent Owner relies upon the Declaration of Duncan L.
`MacFarlane, Ph.D., P.E. (Ex. 2122).
`C. Asserted Grounds of Unpatentability
`Claims
`Challenged
`7, 11–13
`12, 13
`10, 14
`14
`
`References
`35 U.S.C. §
`Lisogurski, Carlson
`103
`Lisogurski, Carlson, Mannheimer
`103
`Lisogurski, Carlson, Park
`103
`Lisogurski, Carlson, Park, Mannheimer
`103
`D. Overview of the ’299 Patent
`The ’299 patent was filed on May 12, 2017, and claims priority to a
`utility application filed on December 17, 2013 and a provisional application
`filed on December 31, 2012. Ex. 1001, codes (22), (60), (63), 1:7–13. The
`’299 patent is directed to a system for measuring physiological parameters.
`Id. at code (54).
`The system, in one embodiment, includes a wearable measurement
`device for measuring physiological parameters. Id. 6:48–50. This
`measurement device includes a light source including multiple
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`semiconductor sources configured to generate an output optical beam in
`which a portion of the wavelengths of the output optical beam are of a near-
`infrared wavelength between 700 and 2500 nanometers. Id. 6:50–55. A
`portion of this output optical beam is delivered to a sample and some portion
`of the beam reflected or transmitted from the sample is received and
`processed. Id. 6:55–63.
`A system including a wearable device is depicted in Figure 24 of the
`’299 patent, which is reproduced below.
`
`
`Figure 24 is a schematic illustration of a medical measurement device that is
`part of a personal or body area network. Id. at 8:25–30. Wearable
`measurement device 2401 is a physiological measurement or blood
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`constituent measurement device which includes processor 2402 and
`transmitter 2403. Id. 30:16–19. Communication link 2404 allows
`communication between measurement device 2401 and personal device
`2405. Id. at 30:16–22. Personal device 2405, which may be a smart phone,
`optionally has a receiver, a transmitter, a display, a voice control, a speaker,
`one or more buttons or knobs, and/or a touch screen. Id. at 30:39–43.
`Personal device 2405 stores, processes, displays, and transmits at least a
`portion of the output signal generated by wearable measurement device
`2401. Id. at 30:37–39. Personal device 2405 also transmits some of the data
`or the processed output signal over a wireless transmission link to internet or
`“cloud” 2407. Id. at 30:46–49. Internet or cloud 2407 may provide services
`including storage, processing, and retransmission of data to the originator or
`to another designated recipient such as a health care provider or doctor. Id.
`at 30:55–67.
`The light source of the measurement device can increase a signal-to-
`noise ratio by increasing either the LED intensity or pulse rate. Id. at code
`(57), 3:11–16. Additionally, “change detection schemes may be used, where
`the detection system captures the signal with the light source on and with the
`light source off. . . . Then, the signal with and without the light source is
`differenced. This may enable the sun light changes to be subtracted out.”
`Id. at 29:13–18.
`E. Challenged Claims
`Claim 7 of the ’299 patent is a representative claim, the sole
`independent claim of the challenged claims, and is reproduced below, with
`one limitation (the “pulse rate limitation”) italicized for emphasis.
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` A system for measuring one or more
`7.
`physiological parameters comprising:
`a light source comprising a plurality of
`semiconductor sources that are light emitting
`diodes, each of the light emitting diodes
`configured to generate an output optical beam
`having one or more optical wavelengths,
`wherein at least a portion of the one or more
`optical wavelengths is a near-infrared
`wavelength between 700 nanometers and 2500
`nanometers;
`a lens configured to receive a portion of at least
`one of the output optical beams and to deliver a
`lens output beam to tissue;
`a detection system configured to receive at least a
`portion of the lens output beam reflected from
`the tissue and to generate an output signal
`having a signal-to-noise ratio, wherein the
`detection system is configured to be
`synchronized to the light source;
`a personal device comprising a wireless receiver, a
`wireless transmitter, a display, a microphone, a
`speaker, one or more buttons or knobs, a
`microprocessor and a touch screen, the personal
`device configured to receive and process at
`least a portion of the output signal, wherein the
`personal device is configured to store and
`display the processed output signal, and
`wherein at least a portion of the processed
`output signal is configured to be transmitted
`over a wireless transmission link;
`a remote device configured to receive over the
`wireless transmission link an output status
`comprising the at least a portion of the
`processed output signal, to process the received
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`output status to generate processed data, and to
`store the processed data;
`wherein the output signal is indicative of one or
`more of the physiological parameters, and the
`remote device is configured to store a history of
`at least a portion of the one or more
`physiological parameters over a specified
`period of time;
`the system configured to increase the signal-to-
`noise ratio by increasing light intensity of at
`least one of the plurality of semiconductor
`sources from an initial light intensity and by
`increasing a pulse rate of at least one of the
`plurality of semiconductor sources from an
`initial pulse rate; and
`the detection system further configured to:
`generate a first signal responsive to light received
`while the light emitting diodes are off,
`generate a second signal responsive to light
`received while at least one of the light emitting
`diodes is on, and
`increase the signal-to-noise ratio by differencing
`the first signal and the second signal.
`Ex. 1001, 33:29–34:11; Certificate of Correction.
`Claims 10 and 11 depend from claim 7, claim 12 depends from claim
`11, claim 13 depends from claim 12, and claim 14 depends from claim 13.
`Id. at 34:21–37.
`
`III. Discretionary Denial
`A. 35 U.S.C. § 325(d) Discretion
`Patent Owner contends we should exercise our discretion to deny the
`Petition under 35 U.S.C. § 325(d). Prelim. Resp. 26–38; PO Sur-Reply.
`Patent Owner argues that, during patent prosecution, the Examiner
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`considered the prior art and arguments presented in the Petition. Prelim.
`Resp. 27, 29–35; PO Sur-Reply 3. Patent Owner additionally contends that
`Petitioner has not shown error in the Examiner’s evaluation of the art and
`arguments. PO Sur-Reply 3–5.
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
`(the AIA does not impose a “mandate to institute review”). Our discretion is
`guided by 35 U.S.C. § 325(d), which provides, in relevant part:
`MULTIPLE PROCEEDINGS -- . . . In determining whether to
`institute or order a proceeding under this chapter, chapter 30, or
`chapter 31, the Director may take into account whether, and
`reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the
`Office.
`Thus, 35 U.S.C. § 325(d) identifies two separate issues that the
`Director may consider in exercising discretion to deny institution of review:
`whether the petition presents to the Office the same or substantially the same
`art previously presented to the Office; and whether the petition presents to
`the Office the same or substantially the same arguments previously
`presented to the Office. Advanced Bionics, LLC v. MED-EL
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, at 7 (PTAB
`Feb. 13, 2020) (designated precedential March 24, 2020). We may consider
`multiple factors when determining whether to exercise our discretion not to
`institute under § 325(d), including:
`
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination; (b) cumulative
`nature of the asserted art and the prior art evaluated during
`examination; (c) the extent to which the asserted art was
`evaluated during examination, including whether the prior art
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`was the basis for rejection; (d) the extent of the overlap between
`the arguments made during examination and the manner in which
`Petitioner relies on the prior art or Patent Owner distinguishes
`the prior art; (e) whether Petitioner has pointed out sufficiently
`how the Examiner erred in its evaluation of the asserted prior art;
`and (f) the extent to which additional evidence and facts
`presented in the Petition warrant reconsideration of the prior art
`or arguments.
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
`8, 17–18 (PTAB Dec. 15, 2017) (informative; precedential as to § III.C.5,
`first paragraph). We apply a two-part framework, first considering Becton,
`Dickinson factors (a), (b), and (d) to determine whether the same or
`substantially the same art or arguments were previously presented to the
`Office, and if so, evaluating Becton, Dickinson factors (c), (e), and (f) to
`determine whether the Petitioner has demonstrated that the Office erred in a
`manner material to the patentability of challenged claims. Advanced
`Bionics, 7–11.
`1. “whether the same or substantially the same art or arguments
`previously were presented to the Office”
`With respect to the first part of the Advanced Bionics framework,
`Petitioner’s challenge is based on four prior art references which were each
`presented to the Examiner in an IDS, which the Examiner both initialed as
`considered and separately noted as having been considered. Pet. 20–71;
`Ex. 1002, 506–510 (IDS dated July 30, 2018 citing Lisogurski and Carlson),
`522–526 (Examiner-initialed version), 555–566 (IDS dated Sept. 11, 2018
`citing Lisogurski, Carlson, Mannheimer, and Park); 586–597 (Examiner-
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`initialed version); Pet. 17; Prelim. Resp. 28. We agree that the same art
`presented in the Petition was previously presented to the Office.
`Patent Owner also contends that, in addition to the same or
`substantially the same art, substantially the same arguments relating to that
`art were before the Examiner because Petitioner’s invalidity charts from a
`related case were also submitted in an IDS. Prelim. Resp. 28–38; PO Sur-
`Reply 2–3; Ex. 1002, 586–597. We recognize Patent Owner’s argument that
`the submitted claim charts included Petitioner’s specific arguments
`regarding the relevance of Lisogurski, Carlson, and Park to the patentability
`of claims of the ’533 patent with limitations that are “nearly identical” to
`those in challenged claim 7 of the ’299 patent, thereby providing the
`Examiner “a ‘roadmap’ of Petitioner’s invalidity analysis” regarding the
`challenged claims. Prelim. Resp. 29–34; see Ex. 2126, 2127, 2129. We
`further recognize that Petitioner does not address these contentions.
`We note, however, that although the submitted claim charts provide
`Petitioner’s contentions with respect to the individual teachings of
`Lisogurski and Carlson, and how those references individually relate to the
`pulse rate limitations in the claims of the ’533 and ’299 patents, they do not
`provide Petitioner’s contentions with respect to the combined teachings of
`Lisogurski and Carlson, and how the combined teachings relate to such
`pulse rate limitations. See Ex. 2126, P-1, pp. 1, 7–9; Ex. 2127, N-1, pp. 1,
`3–5 (discussing how Lisogurski and Carlson individually anticipate or
`render obvious the claims of the ’533 patent, but not including any
`allegations that Lisogurski and Carlson are combinable, why a person skilled
`in the art would combine them, or how the combination teaches or suggests
`the limitations recited in the ’299 patent, including its pulse rate limitation).
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`2. “whether the petitioner has demonstrated that the Office erred in a
`manner material to the patentability of challenged claims”
`In the second part of the Advanced Bionics framework we consider
`Becton, Dickinson factors (c), (e), and (f) to determine whether Petitioner
`has demonstrated that the Office erred in a manner material to the
`patentability of the challenged claims. Advanced Bionics at 8. While it is
`undisputed that the Examiner initialed the IDSs presenting the same or
`substantially similar art and certain of the same or substantially similar
`arguments presented in the Petition, there is no record of the extent to which
`the Examiner actually considered that art or those arguments. See,
`generally, Ex. 1002. As Advanced Bionics instructs, “if the record of the
`Office’s previous consideration of the art is not well developed or silent,
`then a petitioner may show the Office erred by overlooking something
`persuasive under factors (e) and (f).” Advanced Bionics at 10. These factors
`require us to consider “whether Petitioner has pointed out sufficiently how
`the Examiner erred in [the] evaluation of the asserted prior art,” and “the
`extent to which additional evidence and facts presented in the Petition
`warrant reconsideration of the prior art or arguments.” Becton, Dickinson at
`17–18.
`Petitioner argues that the Examiner materially erred by not
`considering any obviousness issue based on the teachings of Lisogurski and
`Carlson. Pet. Reply 3. Petitioner notes that the Patent Owner has
`characterized challenged claim 7 as containing “nearly identical limitations”
`as claims in the ’533 patent, which is the parent of the ’299 patent. Id. at 2
`(citing Prelim. Resp. 29–34). Petitioner argues the decision instituting inter
`partes review of the ’533 patent contains an analysis which, “at a minimum,
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`shows that [Lisogurski and Carlson] are highly material to the patentability
`of the ’299 patent claims.” Id. (citing Apple Inc. v. Omni MedSci, Inc.,
`IPR2019-00916, Paper 16 at 32–36 (PTAB Oct. 18, 2019)). Therefore,
`Petitioner argues, the Examiner erred in not mentioning or discussing the
`teachings of these references when allowing the claims of the ’299 patent to
`issue. Id. at 3; Pet. 17, 20–71.
`Patent Owner argues that the Board determined in the institution
`decision in IPR2019-00916 that Lisogurski did not teach or suggest a pulse
`rate limitation appearing in certain claims in the ’533 patent, and thus
`reasonable minds can disagree about whether Lisogurski discloses the
`similar pulse rate limitation appearing in claim 7 of the ’299 patent. PO Sur-
`Reply 4; Prelim. Resp. 14–17. Patent Owner also contends that the
`Examiner considered the arguments presented in the Petition regarding the
`teachings of Carlson because the Petition cites the same portions of Carlson
`that were cited in the invalidity charts provided in an IDS. PO Sur-Reply 4–
`5; Prelim Resp. 14–15, 18–22; Ex. 2127. Patent Owner further argues that
`reasonable minds can disagree about whether the combination of Carlson
`and Lisogurski teaches the pulse rate limitation of claim 7, because its
`expert, Dr. MacFarlane, declares that the combination does not. PO Sur-
`Reply 4–5 (citing Ex. 2122 ¶ 81).
`Advanced Bionics describes a framework which “reflects a
`commitment to defer to previous Office evaluations of the evidence of
`record” and evaluates the treatment of the art in the record to determine
`whether reasonable minds can disagree. Advanced Bionics at 8–9 & n.9.
`In this case, there are three records documenting the Office’s previous
`consideration of the teachings of Lisogurski and Carlson—the two
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`Examiner-initialed IDSs indicating, without discussion, that the Examiner
`had considered the teachings of these references—and the Board’s
`institution decision in IPR2019-00916, which contains an extensive
`discussion of their teachings. Ex. 1002, 522, 523, 588, 589, 591 (item 14),
`592 (item 16); IPR2019-00916, Paper 16 at 27–40. Given (a) the Board’s
`prior evaluation of the merit of arguments relating to the combined teachings
`of Lisogurski and Carlson and finding that a sufficient basis existed to
`institute inter partes review of the parent ’533 patent based on that
`evaluation, and (b) the absence of any record of what the Examiner’s
`consideration of these references entailed during prosecution of the
`challenged ’299 patent, Petitioner has sufficiently shown Examiner error.
`See Advanced Bionics at 10 (“[I]f the record of the Office’s previous
`consideration of the art is not well developed or silent, then a petitioner may
`show the Office erred by overlooking something persuasive under factors (e)
`and (f).”).
`The subject matter in Petitioner’s invalidity contentions that were
`submitted in the IDSs considered by the Examiner is explicit and reads
`directly on the pulse rate limitations appearing in the claims of the ’299 and
`’533 patents. Ex. 2126, P-1, pp. 1, 7–9; Ex. 2127, N-1, pp. 3–5. The pulse
`rate limitation was specifically described by the Examiner as not disclosed in
`the prior art, either alone or in combination with other references, in the
`Notice of Allowance. Ex. 1002, 632. However, in IPR2019-00916, this
`panel made preliminary findings that the combination of Lisogurski and
`Carlson teaches this limitation. We therefore determine that the Office erred
`in a manner material to patentability in overlooking specific teachings of the
`relevant prior art that impact patentability of the challenged claims.
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`Accordingly, we decline to exercise discretion under 35 U.S.C.
`§ 325(d) not to institute inter partes review.
`B. 35 U.S.C. § 314(a) Discretion
`Patent Owner additionally takes the position that we should exercise
`our discretion to deny the Petition under 35 U.S.C. § 314(a). Prelim. Resp.
`38–41. Even where a petitioner demonstrates a reasonable likelihood as to
`at least one claim, we consider whether a lack of particularity as to one or
`more asserted grounds would justify denial of a petition. Adaptics Ltd. v.
`Perfect Co., IPR2018-01596, Paper 20 at 17–18 (PTAB Mar. 6, 2019)
`(informative).
`Patent Owner argues that Petitioner has used disjunctive terminology
`to combine references by describing its ground as relating to obviousness
`over the combination of Lisogurski, Carlson, and Park “with or without”
`Mannheimer. Prelim. Resp. 39. Patent Owner argues that because of this
`description “it is unclear which grounds the Patent Owner is expected to
`respond to, and which grounds the Board must undertake in its review of the
`petition.” Id. at 39–40. Therefore, Patent Owner argues, we should deny the
`Petition in its entirety in the interests of efficient administration of the Office
`and the integrity of the patent system. Id. at 40–41 (citing Adaptics at 18).
`In Adaptics, a ground was presented which yielded an “unduly
`burdensome” number of combinations – seventeen possible combinations of
`ten references under a “conservative interpretation” of the ground, and
`hundreds of combinations, under a broader interpretation. Adaptics at 18–
`19. In this case, Patent Owner has presented, for each of claims 12 and 13,
`two alternative combinations of art, setting forth in separate grounds, first,
`an argument for obviousness over Lisogurski and Carlson, and, second, in
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`the alternative, an argument over Lisogurski, Carlson, and Mannheim.
`Petition 57–66. In the next ground, for the additional recitations of claim 14,
`which depends from claim 13, Petitioner adds teachings from Park. Id. at
`67–72. We understand the Petitioner to be asserting, for claim 14, that this
`ground is based on the two alternative obviousness arguments (“with or
`without Mannheimer”) that were previously presented for claim 13, upon
`which claim 14 depends. While Petitioner could have been clearer in
`describing this ground, the intent nonetheless is easily discernable and the
`number of combinations presented for claim 14 reasonable, and therefore
`this situation is unlike that in Adaptics, where the grounds presented lacked
`in particularity and were not reasonably bounded in scope.
`Accordingly, we decline to exercise discretion under 35 U.S.C.
`§ 314(a) not to institute inter partes review.
` DISCUSSION
`IV.
`A. Person of Ordinary Skill in the Art
`Petitioner, relying on the testimony of Dr. Anthony, identifies a
`person of ordinary skill in the art (“POSITA”) as someone who “would have
`[had] a good working knowledge of optical sensing techniques and their
`applications, and familiarity with optical system design and signal
`processing techniques.” Pet. 15; Ex. 1003 ¶ 37. Such a person, according to
`Petitioner, would have obtained such knowledge through “an undergraduate
`education in engineering (electrical, mechanical, biomedical, or optical) or a
`related field of study, along with relevant experience studying or developing
`physiological monitoring devices . . . in industry or academia.” Pet. at 15–
`16; Ex. 1003 ¶ 37. Patent Owner does not offer an opinion on Petitioner’s
`definition, either agreeing or disagreeing, and does not offer a counter
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`definition of a person of ordinary skill in the art.
`At this stage of the proceeding, and for purposes of this Decision, we
`find Petitioner’s definition to be consistent with the problems and solutions
`disclosed in the patent and prior art of record, and adopt it as our own. See,
`e.g., In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
`B. Principles of Law
`It is a petitioner’s burden to demonstrate unpatentability. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`1316, 1326–27 (Fed. Cir. 2008)).
`A claim is unpatentable as obvious if “the differences between the
`claimed invention and the prior art are such that the subject matter as a
`whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a) (2012). The question of obviousness is resolved on the
`basis of underlying factual determinations, including: (1) the scope and
`content of the prior art; (2) any differences between the claimed subject
`matter and the prior art; (3) the level of skill in the art; and (4) objective
`evidence of nonobviousness.1 Graham v. John Deere Co. of Kansas City,
`383 U.S. 1, 17–18 (1966).
`Even if prior art references disclose all claim limitations when
`combined, there must be evidence to explain why a person of ordinary skill
`in the art would have combined the references to arrive at the claimed
`
`
`1 No argument or evidence concerning secondary considerations has been
`adduced in the current record.
`
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`invention. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
`1366–67 (Fed. Cir. 2012) (citing Innogenetics, N.V. v. Abbott Labs., 512
`F.3d 1363, 1374 (Fed. Cir. 2008) (holding that “some kind of motivation
`must be shown from some source, so that the [trier of fact] can understand
`why a person of ordinary skill would have thought of either combining two
`or more references or modifying one to achieve the patented [invention]”)).
`An invention “composed of several elements is not proved obvious merely
`by demonstrating that each of its elements was, independently, known in the
`prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather,
`“it can be important to identify a reason that would have prompted a person
`of ordinary skill in the relevant field to combine the elements in the way the
`claimed new invention does.” Id.
`An obviousness determination “cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006));
`see In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
`2016).
`C. Claim Construction
`We apply the same claim construction standard that is applied in civil
`actions under 35 U.S.C. § 282(b), which is articulated in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R § 42.100(b)
`(2019). Under Phillips, claim terms are afforded “their ordinary and
`customary meaning.” Phillips, 415 F.3d at 1312 (quoting Vitronics Corp. v.
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)). “[T]he ordinary
`and customary meaning of a claim term is the meaning that the term would
`
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`have to a person of ordinary skill in the art in question at the time of the
`invention. . . .” Id. at 1313. “Claim construction begins with the words of
`the claim, which ‘must be read in view of the specification, of which they
`are a part.’” Wi-Lan, Inc. v. Apple, Inc., 811 F.3d 455, 462 (Fed. Cir. 2016)
`(quoting Phillips, 415 F.3d at 1312–15). Only claim terms which are in
`controversy need to be construed and only to the extent necessary to resolve
`the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`1. “beam” and “lens”
`Petitioner requests construction of the terms “beam” and “lens.” Pet.
`18–19. Patent Owner agrees with Petitioner’s adoption, for these terms, of
`the district court claim constructions in related litigation. Prelim. Resp. 10.
`We determine, however, that construction of these terms is not needed to
`resolve whether Petitioner has demonstrated a reasonable likelihood of
`showing the unpatentability of claims 7 and 10–14. See Nidec, 868 F.3d at
`1017.
`
`2. The Pulse Rate Limitation
`Patent Owner requests construction of the term “the system 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”
`recited in claim 7. Prelim. Resp. 10.
`In the institution decision in IPR2019-00916, we construed the term
`“a light source comprising a plurality of semiconductor sources that are light
`emitting diodes . . . configured to increase signal-to-noise ratio by . . .
`increasing a pulse rate of at least one of the plurality of semiconductor
`sources” as “a light source containing two or more light emitting diodes
`
`18
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`(semiconductor sources), wherein at least one of the light emitting diodes is
`capable of having its pulse rate increased to increase a signal-to-noise ratio.”
`IPR2019-00916, Paper 16 at 10–11. Patent Owner argues that this claim
`construction in IPR2019-00916 improperly broadened the claim by
`“replac[ing]” the claim term “configured to” with “is capable of” and by use
`of passive voice in the construction. Prelim. Resp. 10–12. Patent Owner
`argues that a correct construction must “discern the meaning of the claims
`using the claims themselves and the intrinsic record.” Id. at 11.
`However, the claim limitation at issue in IPR2019-00916 is not the
`same limitation; here, the system is configured to increase the signal-to-noise
`ratio (“SNR”) by increasing a pulse rate of at least one of the plurality of
`semiconductor sources from an initial pulse rate, whereas, in the claims at
`issue in IPR2019-00916, the light source is claimed to be configured to
`increase the SNR by increasing a pulse rate of one of the semiconductor
`sources. At this point, we determine that construction of this term is not
`required in order to determine whether Petitioner has demonstrated a
`reasonable likelihood of showing the unpatentability of claims 7 and 10–14.
`D. Overview of the Prior Art
`1. Lisogurski
`Lisogurski discloses a “physiological monitoring system [that]
`monitor[s] one or more physiological parameters of a patient . . . using one
`or more physiological sensors.” Ex. 1011, 3:44–46. The physiological
`sensors may include a “pulse oximeter [that] non-invasively measures the
`oxygen saturation of a patient’s blood.” Id. at 3:62–64. The pulse oximeter
`includes “a light sensor that is placed at a site on a patient, typically a
`fingertip, toe, forehead, or earlobe.” Id. at 4:6–7. The light sensor “pass[es]
`
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`light through blood perfused tissue and photoelectrically sense[s] the
`absorption of the light in the tissue.” Id. at 4:8–11. The light sensor emits
`“one or more wavelengths [of light] that are attenuated by the blood in an
`amount representative of the blood constituent concentration,” and may
`include red and infrared (IR) wavelengths of light. Id. at 4:42–48.
`Figure 3 of Lisogurski is reproduced below.
`
`
`
`
`Figure 3 of Lisogurski is “a perspective view of a physiological monitoring
`system.” Id. at 2:23–2
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