Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 38
`Entered: October 2, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00916
`Patent 9,651,533 B2
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 38
`Entered: October 2, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00916
`Patent 9,651,533 B2
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`
`I. INTRODUCTION
`
`Apple, Inc. (“Petitioner”) filed a Petition challenging certain claims of
`
`U.S. Patent No. 9,651,533 B2. Paper 1. In the Petition, Petitioner alleged
`
`that Lisogurski1 teaches increasing the signal-to-noise ratio of a
`
`physiological measurement by increasing the pulse rate of an LED used to
`
`take the measurement. See Paper 1, 35–36.
`
`We instituted inter partes review of the challenged claims on October
`
`18, 2019. Paper 16. The deadline for filing a Final Written Decision in this
`
`proceeding is October 16, 2020. See 35 U.S.C. § 316(a)(11) (requiring the
`
`Director to prescribe regulations “requiring that the final determination . . .
`
`be issued not later than 1 year after the date on which the Director notices
`
`the institution of a review”).
`
`Omni MedSci, Inc. (“Patent Owner”) filed a Response to the Petition
`
`on January 31, 2020, stating in the Response that Lisogurski teaches
`
`improving signal-to-noise by “modulating the light signal to correlate with
`
`‘physiological pulses’ such as a ‘cardiac pulse, . . .” Paper 23, 15 (“the
`
`correlation statement”). Petitioner filed a Reply on April 30, 2020, arguing
`
`the correlation statement was as admission that when Lisogurski increases
`
`the LED pulse rate to match an increased cardiac cycle, Lisogurski improves
`
`or increases signal-to-noise. See Paper 28, 10–11. Patent Owner filed a Sur-
`
`Reply on June 11, 2020. See Paper 32 (“PO Sur-Reply”). The Sur-Reply
`
`provided Patent Owner with a first opportunity to challenge Petitioner’s
`
`
`1 U.S. Patent No. 9,241,676 B2
`
`2
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`
`characterization of the correlation statement as an admission, but Patent
`
`Owner chose not to avail itself of that opportunity. Id. at 1–21.
`
`An oral hearing was held on July 16, 2020, and a transcript of the
`
`hearing was filed on July 31, 2020. Paper 37 (“Tr.”), 1. At the oral hearing,
`
`Petitioner repeated its contention that Patent Owner’s correlation statement
`
`was an admission that Lisogurski increases signal-to-noise by increasing the
`
`LED pulse rate to match an increased cardiac cycle rate. See Tr. 8:17–9:22.
`
`The oral hearing provided Patent Owner with a second opportunity to
`
`challenge Petitioner’s characterization of the correlation statement as an
`
`admission, and Patent Owner did so. Id. at 43:5–46:1.
`
`On September 28, 2020, Patent Owner emailed the Board, copying
`
`Petitioner, requesting admission of a declaration filed in another proceeding
`
`(IPR2020-00175, Ex. 2131) (“the declaration”) as evidentiary Exhibit 2125
`
`in this proceeding. See Ex. 3001. Patent Owner avers “the two proceedings
`
`are related” and the declaration “addresses questions the Board asked during
`
`oral argument in this proceeding concerning the Lisogurski reference.” Id.
`
`Patent Owner further avers that “Petitioner opposes this request.” Id.
`
`II. DISCUSSION
`
`Our rules state that “[u]ncompelled direct testimony may be taken at
`
`any time to support a petition, motion, opposition, or reply; otherwise,
`
`testimony may only be taken during a testimony period set by the Board.”
`
`37 C.F.R. § 42.53(b). The Scheduling Order governing this proceeding
`
`provided the parties with several opportunities to exchange testimonial
`
`3
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`
`evidence, but no opportunity to exchange such evidence after the oral
`
`hearing. See Paper 17, 10.
`
`Moreover, nothing in the Scheduling Order contemplates or permits
`
`admitting a declaration that is not tied to a motion, opposition, or reply as
`
`evidence in this proceeding. Our rules do permit Patent Owner to request
`
`authorization to file a motion seeking relief to consider the declaration as
`
`new evidence. See 37 C.F.R. § 42.20(b). However, given the late date, any
`
`such subsequently filed request would be untimely. See id. § 42.25(b) (“A
`
`party should seek relief promptly after the need for relief is identified.
`
`Delay in seeking relief may justify a denial of relief sought.”).
`
`As discussed above, Patent Owner has already had two opportunities—
`
`Patent Owner’s Sur-Reply and the oral hearing—to contest Petitioner’s
`
`characterization of the correlation statement as an admission. If Patent
`
`Owner was not satisfied with its rebuttal of that characterization at the oral
`
`hearing, or felt expert testimony was needed to refine or elucidate that
`
`rebuttal, it could have timely requested authorization to file a motion to
`
`clarify its rebuttal or to consider an elucidating declaration. A timely request
`
`is one that would have provided sufficient time for (a) Petitioner to cross-
`
`examine the declarant, (b) both parties to brief the significance of the
`
`declaration, and (c) the Board to consider the new evidence and argument.
`
`See 37 C.F.R. §§ 42.23, 42.51(b)(1)(ii).
`
`Patent Owner’s current request, made 18 days before the due date for
`
`the Final Written Decision, is not a timely request. It fails to give the Board
`
`sufficient time to (a) order any discovery on the declaration to which
`
`Petitioner is entitled under our rules, (b) order any briefing to explain the
`
`significance and relevance of the declaration, (c) consider the declaration
`
`4
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`
`and any briefing explaining its significance and relevance, and (d) write a
`
`Final Written Decision by the statutory due date.
`
`III. ORDER
`
`It is ORDERED that Patent Owner’s request to file Ex. 2131 from
`
`IPR2020-00175 as an exhibit in this proceeding is denied.
`
`
`
`
`
`
`
`5
`
`
`
`IPR2019-00916
`Patent 9,651,533 B2
`
`
`PETITIONER:
`
`Jeffrey P. Kushan
`Ching-Lee Fukuda
`Thomas A. Broughan III
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`clfukuda@sidley.com
`tbroughan@sidley.com
`
`
`PATENT OWNER:
`
`Thomas A. Lewry
`John S. LeRoy
`Robert C.J. Tuttle
`John M. Halan
`Christopher C. Smith
`BROOKS KUSHMAN P.C.
`tlewry@brookskushman.com
`jleroy@brookskushman.com
`rtuttle@brookskushman.com
`jhalan@brookskushman.com
`csmith@brookskushman.com
`
`
`
`
`6
`
`
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