Trials@uspto.gov
`571-272-7822
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`Paper 13
`Date: November 25, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-00954
`Patent 9,788,735 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`
`
`
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`Paper 13
`Date: November 25, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-00954
`Patent 9,788,735 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2020-00954
`Patent 9,788,735 B2
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`
`INTRODUCTION
`I.
`A. Background and Summary
`Sotera Wireless, Inc. (“Petitioner”)1 filed a Petition requesting inter
`
`partes review of U.S. Patent No. 9,788,735 B2 (“the ’735 patent,”
`Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the patentability of
`claims 1–20 of the ’735 patent. Masimo Corporation (“Patent Owner”) filed
`a Preliminary Response to the Petition. Paper 7 (“Prelim. Resp.”). Pursuant
`to our authorization, Petitioner filed a reply to Patent Owner’s Preliminary
`Response (Paper 11, “Reply”) to address the discretionary factors set forth in
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential) (“Fintiv Order”), to which Patent Owner filed a sur-reply
`(Paper 12, “Sur-reply”).
`
`We have authority to determine whether to institute inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). An inter partes review
`may not be instituted “unless the Director determines . . . there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having
`considered the arguments and evidence presented by Petitioner and Patent
`Owner, we determine, for the reasons set forth below, that Petitioner has
`demonstrated a reasonable likelihood that at least one challenged claim in
`the petition is unpatentable based on at least one of the grounds presented.
`As discussed below, we institute an inter partes review of all of
`the challenged claims on all grounds set forth in the Petition.
`
`
`1 Petitioner identifies Hon Hai Precision Industry Co., Ltd. as a real parties-
`in-interest “because Hon Hai agrees to be bound by the estoppel provisions
`of 35 U.S.C. § 315(e).” Pet. 1.
`
`2
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`The following findings of fact and conclusions of law are not final,
`but are made for the sole purpose of determining whether Petitioner meets
`the threshold for initiating review. Any final decision shall be based on the
`full trial record, including any response timely filed by Patent Owner. Any
`arguments not raised by Patent Owner in a timely-filed response shall be
`deemed waived, even if they were presented in the Preliminary Response.
`
`B. Related Proceedings
`Petitioner identifies Masimo Corp. v. Sotera Wireless, Inc., Case No.
`
`3:19-cv-01100-BAS-NLS (S.D. Cal.), served on June 13, 2019, as a related
`proceeding involving the ’735 patent. Pet. 2; Ex. 1029; Ex. 1030. Petitioner
`also identifies IPR2020-00912, involving the same parties and U.S. Patent
`No. 10,213,108, which is a parent to the ’735 patent. Pet. 2.
`
`C. The ’735 Patent
`The ʼ735 patent is directed to a “Body Worn Mobile Medical Patient
`Monitor.” Ex. 1001, code (54). The ’735 patent claims priority through a
`series of continuation applications to Provisional Application No.
`60/367,428, filed on March 25, 2002. Id. at codes (63), (60). The invention
`relates to “[a] body worn mobile medical monitoring device configured to
`minimize cable wiring from a sensor by placement of one or more sensor
`communication ports.” Id. at code (57). Structurally, the “device includes a
`housing securable on a lower arm of a patient, a display, and a sensor
`communication port positioned on a side of the housing.” Id. The body
`worn medical monitoring device may have other input or output ports that
`download software or provide a wired connection to other measurement
`instruments. Id. at 5:56–61.
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`The Specification describes a drawback to “[c]onventional
`physiological measurement systems,” as requiring a “patient cable
`connection between sensor and monitor.” Id. at 2:22–24. The Specification
`also describes the problems related with “disconnection of monitoring
`equipment and a corresponding loss of measurements,” when needing to
`move patients. Id. at 2:25–28. A goal of the ’735 patent was to allow
`patient mobility by providing wireless communication links between sensors
`and monitors. Id. at 2:28–38; Fig. 3. The invention also sought “to provide
`a communications adapter that is plug-compatible both with existing sensors
`and monitors and that implements a wireless link replacement for the patient
`cable.” Id.
`As depicted in Figure 4A below, sensor module 400 is plug-
`compatible with convention sensor 310. Id. at 4:58–59. Wrist-mounted
`module 410 has module connector 414 with auxiliary cable 420 running
`therefrom to mate with sensor connector 318. Id. at Fig. 4A, 5:27–61.
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`Figure 4A illustrates an embodiment of the “communications adapter sensor
`module.” Id. at 4:5–6. Wrist-mounted module 410 may have display 415
`that shows sensor measurements, module status, and other visual indicators,
`such as monitor status. Id. at 5:39–42.
`
`The Specification explains that in certain embodiments wrist-mounted
`module 410 may have other input or output ports that download software,
`configure the module, or provide a wired connection to other measurement
`instruments or computing devices. Id. at 5:54–61. In such embodiments,
`the wearable device can communicate with multiple sensors, and a multiple
`parameter sensor module with sensor interfaces and signal processors may
`be used as depicted in Figure 13. Id. at 11:56–66.
`
`
`Figure 13 depicts a functional block diagram of a sensor module configured
`for multiple sensors. Id. at 4:24–25. The Specification also notes that
`sensor signal conditioning may be performed in the analog domain or digital
`domain or both. Id. at 6:61–65.
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`1(c)
`
`1(d)
`
`1(e)
`
`Limitation
`1(b)
`
`D. Illustrative Claim
`Claim 1, reproduced below in chart form with Petitioner’s added
`designations to identify each limitation, is illustrative of the claims at issue:
`Designation
`Claim Language
`Claim1
`A body worn mobile medical monitoring
`(Preamble)
`device configured to minimize cable wiring
`from a sensor by placement of one or more
`1(a)
`sensor communication ports, the mobile
`medical monitoring device comprising:
`a housing configured to be secured on a lower
`arm of a patient being monitored via a strap
`extending around the lower arm of the patient;
`a display positioned on a face of the housing,
`opposite the strap, so as to be visible to a user;
`a first sensor communication port positioned
`on a side of the housing and configured to face
`a hand of the lower arm of the patient when the
`mobile medical monitoring device is mounted
`to the lower arm of the patient, wherein: the
`side of the housing faces the hand of the lower
`arm of the patient of the patient when the
`mobile medical monitoring device is mounted
`to the lower arm of the patient,
`the first sensor communication port is
`configured to provide wired communication
`with a pulse oximetry sensor attached to a digit
`of the hand of the patient,
`the wired communication with the pulse
`oximetry sensor provided at least partly in the
`analog domain, and
`the first sensor communication port is
`positioned on the side of the housing such that
`a path from the first sensor communication
`port on the side of the housing to the digit of
`the patient is substantially perpendicular to the
`side of the housing and shorter than any other
`path from any other side of the housing to the
`digit of the patient;
`
`1(f)
`
`1(g)
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`Designation
`1(h)
`
`1(i)
`
`1(j)
`
`1(k)
`
`Claim Language
`a plurality of additional sensor
`communications ports positioned on the
`housing and configured to provide wired
`communication with a plurality of additional
`physiological sensors at least partly in the
`digital domain; and
`one or more processors and a transmitter
`configured to:
`display, on the display, physiological
`measurements derived from the pulse oximetry
`sensor and the plurality of additional
`physiological sensors; and
`wirelessly transmit information indicative of
`the physiological measurements to a remote
`computing device.
`
`Ex. 1001, 13:14–56.
`Independent claim 13 (also challenged) is similar in scope to
`claim 1, but also requires the “a battery configured to provide power
`to the medical monitoring device” as well as “a case configured to
`house the battery.” Id. at 14:38–15:9. Independent claim 20 has
`unique limitations not found in claim 1, such as “the front side of the
`housing comprises a single user interface and a bezel,” and “a
`rechargeable battery.” Id. at 15:59–18:18.
`
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`E. Evidence
`Petitioner relies on the following references:
`
`
`
`Exhibit
`1005
`
`Reference
`U.S. Patent No. 6,840,904, filed on Oct. 11, 2001 and issued Jan.
`11, 2005 (“Goldberg”)
`PCT Publication No. WO 00/42911, published on July 27, 2000
`(“Kiani”)
`EP0880936A2, filed on Oct.30, 1997 and published on Dec. 2,
`1998 (“Akai”)
`U.S. Patent No. 5,919,141, filed on Sept. 13, 1996 and issued on
`July 6, 1999 (“Money”)
`PCT Publication No. WO 99/13698 filed on Aug. 28, 1998 and
`published Mar. 18, 1999 (“Estep”)
`U.S. Patent No. 4,425,921, filed on Sept. 11, 1981 and issued on
`Jan. 17, 1984 (“Fujisaki”)
`Petitioner also relies on the Declaration of George E. Yanulis
`
`(Ex. 1003) in support of its arguments.
`
`1006
`
`1007
`
`1008
`
`1009
`
`1016
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims of the ’735 patent are
`
`unpatentable based on the following grounds (Pet. 6–7):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1, 2, 7–9
`103(a)
`Goldberg, Kiani, Money
`
`3–6, 13–19
`
`10–12
`
`20
`
`1, 2, 7–9
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Goldberg, Kiani, Money,
`Fujisaki
`Goldberg, Kiani, Money, Estep
`
`Goldberg, Kiani, Money,
`Fujisaki, Estep
`Money, Akai, Kiani.
`
`8
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`Claim(s) Challenged
`3–6, 13–19
`
`35 U.S.C. §
`103(a)
`
`Reference(s)/Basis
`Money, Akai, Kiani, Fujisaki
`
`10–12
`
`20
`
`
`
`103(a)
`
`103(a)
`
`Money, Akai, Kiani, Estep
`
`Money, Akai, Kiani, Fujisaki,
`Estep
`
`II. ANALYSIS
`A petition must show how the challenged claims are unpatentable
`under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4).
`Petitioner must show “there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. 314(a).
`
`
`A. Discretion Under 35 U.S.C. § 314(a)
`Patent Owner, relying on our precedential decisions in NHK2 and the
`Fintiv Order, contends that we should exercise our discretion under
`35 U.S.C. § 314(a) to deny institution based on the status of the parallel
`district court litigation. See Prelim Resp. 15–21.
`1. Legal Standards
`Under 35 U.S.C. § 314(a), the Director has discretion to deny
`institution of an inter partes review. Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is
`a matter committed to the Patent Office’s discretion.”); SAS Inst. Inc. v.
`
`
`2 NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
`(PTAB Sept. 12, 2018) (precedential).
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`Iancu, 138 S. Ct. 1348, 1356 (2018) (“SAS”) (“[Section] 314(a) invests the
`Director with discretion on the question whether to institute review.”
`(emphasis omitted)); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
`(Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute
`an IPR proceeding.”).
`In determining whether to exercise discretion to deny institution under
`35 U.S.C. § 314(a), the Board considers an early trial date in related
`litigation as part of an assessment of all relevant circumstances of the case,
`including the merits, in an effort to balance considerations such as system
`efficiency, fairness, and patent quality. Fintiv Order 5–6; see also NHK,
`Paper 8 at 19–20 (denying institution relying, in part, on § 314(a) because
`the parallel district court proceeding was scheduled to finish before the
`Board reached a final decision).
`When considering an early trial date in related litigation, the Board
`evaluates the following factors (“Fintiv factors”):
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
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`Fintiv Order 5–6. In evaluating these factors, “the Board takes a holistic
`view of whether efficiency and integrity of the system are best served by
`denying or instituting review.” Id. at 6.
`2. Factual Background
`The progress of the related district court litigation is pertinent to
`discretion under 35 U.S.C. § 314(a). We summarize the progress as follows.
`On June 12, 2019, Patent Owner filed a Complaint (Ex. 1029) against
`Petitioner in the U.S. District Court for the Southern District of California.
`Petitioner has filed a Motion to Stay the District Court proceedings
`(Ex. 1036) and Patent Owner opposed (Ex. 2001). According to the parties,
`the District Court has not yet ruled on the Motion. See Prelim. Resp. 16;
`Reply 2–3. The District Court has vacated all Markman deadlines, including
`the previously scheduled November 3, 2020, Markman hearing, pending its
`decision on Petitioner’s Motion to Stay. See Ex. 1037.
`Patent Owner served its infringement contentions on January 24,
`2020. Ex. 2002, 1–2; see Prelim. Resp. 18–19. Petitioner served its
`invalidity contentions on March 20, 2020. Ex. 2004; see Prelim. Resp. 18–
`19.
`
`On May 18, 2020, Petitioner filed the Petition in this proceeding. See
`Paper 1.
`Per the court’s Scheduling Order, which was modified on October 6,
`2020, fact discovery closes on February 12, 2021, and expert discovery
`closes on May 7, 2021. Ex. 2009, 3. The Scheduling Order also includes a
`trial date of November 30, 2021. Id. at 4.
`Petitioner filed a stipulation in the District Court. Ex. 1038. The
`stipulation states that if the Board institutes inter partes review, Petitioner
`“will not pursue in [the District Court] the specific grounds [asserted in the
`
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`inter partes review], or on any other ground . . . that was raised or could
`have been reasonably raised in an IPR (i.e., any ground that could be raised
`under §§ 102 or 103 on the basis of prior art patent or printed publications).”
`Id. at 6–7.
`3. Analysis of the Fintiv Factors
`With this background, we consider each of the factors set forth in the
`Fintiv Order. We then weigh the factors and take a holistic view of whether
`efficiency and integrity of the patent system are best served by denying or
`instituting review.
`
`Factor 1: whether a stay exists or is likely to be granted if a
`proceeding is instituted
`
`Petitioner has filed a Motion to Stay, but the District Court has not yet
`ruled on the motion. Prelim. Resp. 16; Reply 2–3. Patent Owner contends
`that a “stay is unlikely.” Prelim. Resp. 16. In particular, Patent Owner
`contends that many courts, including the Southern District of California, find
`that direct competition between the parties in the relevant market evidences
`significant prejudice and weighs against a stay. Id. Petitioner notes,
`however, that in the order vacating all Markman deadlines, the “[District]
`Court noted that any rescheduled Markman date may not be necessary,
`depending on how the [District] Court rules on the motion to stay.” Reply 3
`(citing Ex. 1037).
`Because the District Court has not ruled on the pending motion to
`stay, we determine that this factor does not weigh for or against denying
`institution in this case. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper
`15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv DI”); Sand Revolution
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`II, LLC v. Cont’l Intermodal Group – Trucking LLC, IPR2019-01393,
`Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”).
`
`Factor 2: proximity of the court’s trial date to the Board’s
`projected statutory deadline
`
`As noted above, trial in the parallel proceeding currently is set to
`begin on November 30, 2021. Ex. 2009, 4. Patent Owner contends that this
`trial date means there is little opportunity for efficiency or simplification
`with IPR proceedings because the final written decision date will still come
`during or after trial. Sur-reply 2–3. Petitioner contends, on the other hand,
`that because the final written decision will issue close to the scheduled trial
`date, and all Markman deadlines have been indefinitely vacated, this factor
`strongly weighs in favor of instituting inter partes review. Reply 3–4.
`Petitioner also notes that the District Court “has already amended its case
`management order twice—including extending the trial date two months.”
`Id. at 3.
`“If the court’s trial date is earlier than the projected statutory deadline,
`the Board generally has weighed this fact in favor of exercising authority to
`deny institution under NHK.” Fintiv Order 9. On the other hand, “[i]f the
`court’s trial date is at or around the same time as the projected statutory
`deadline or even significantly after the projected statutory deadline, the
`decision whether to institute will likely implicate other factors discussed
`herein, such as the resources that have been invested in the parallel
`proceeding.” Id.
`Here, the trial is scheduled to begin around the same time as our
`deadline to reach a final decision. Thus, we find that this factor does not
`weigh for or against denying institution in this case.
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`Factor 3: investment in the parallel proceeding by the court
`and parties
`
`Patent Owner contends that “the parties and [District] Court have
`already invested substantial resources litigating the issues before the court—
`including patent validity.” Prelim. Resp. 19. As noted above, the parties
`have already served their respective infringement contentions and initial
`invalidity contentions. However, as Petitioner points out, all Markman
`deadlines have been vacated, including the Markman hearing. Reply 4.
`Moreover, much other work remains in the parallel proceeding as it relates
`to invalidity: fact discovery is ongoing, expert reports are not yet due, and
`substantive motion practice is yet to come. Id. Thus, although the parties
`and the District Court have invested some effort in the parallel proceeding to
`date, further effort remains to be expended in this case before trial. The
`facts here are similar to those in both recent Board informative decisions.
`See Sand Revolution 11; Fintiv DI 14; see also Fintiv Order 10 (“If, at the
`time of the institution decision, the district court has not issued orders related
`to the patent at issue in the petition, this fact weighs against exercising
`discretion to deny institution under NHK.”).
`The Fintiv Order also recognizes that “notwithstanding that a
`defendant has one year to file a petition, it may impose unfair costs to a
`patent owner if the petitioner, faced with the prospect of a looming trial date,
`waits until the district court trial has progressed significantly before filing a
`petition at the Office.” Fintiv Order 11. The Order instructs the parties to
`explain facts relevant to the Petition’s timing. Id.; see also id. at 11–12
`(considering timing of the Petition as part of the third Fintiv factor). Patent
`Owner notes that Petitioner waited until just before the statutory deadline to
`file its Petition, arguing that the Petition includes substantially the same
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`arguments presented in its March 20, 2020 invalidity contentions. Prelim.
`Resp. 18–20. Petitioner, on the other hand, contends that it “was not dilatory
`in filing this petition.” Reply 5. Petitioner explains that the parties spent six
`months after the complaint was filed “engaged in settlement discussions.”
`Id. Further, Petitioner notes that its initial invalidity contentions were filed
`on March 20, 2020, which was “concurrent with the nationwide shift to
`‘work from home’ and the closing of counsels’ public offices.” Id.
`Petitioner contends that, thereafter, it “diligently worked to draft IPR
`petitions challenging [nine] patents and 183 claims,” including the present
`Petition. Id. Patent Owner responds that “[n]ormal settlement discussions
`. . . cannot excuse” the delay and reiterates its contention that Petitioner
`“waited until just before the statutory deadline to file its Petition.”
`Sur-reply 3.
`Petitioner filed its Petition approximately two months after serving its
`initial invalidity contentions, and approximately three weeks before the
`statutory deadline. Based on the facts present here, we find that Petitioner’s
`explanation for the timing of the Petition is reasonable, notwithstanding the
`closeness to the statutory deadline, particularly in view of the large number
`of patents and claims challenged in this and Petitioner’s other related
`petitions for inter partes review, as well as the increased difficulty in
`preparing the Petitions due to concurrent office closures. See Reply 5; supra
`Section I.B (identifying related inter partes review proceedings).
`Due to the relatively limited investment in the parallel proceeding to
`date and the fact that the timing of the Petition was reasonable, we find that
`this factor weighs in favor of not exercising discretion to deny institution
`under 35 U.S.C. § 314(a).
`
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`Factor 4: overlap between issues raised in the petition and in
`the parallel proceeding
`
`Patent Owner contends that Petitioner relies upon the same two
`primary references and substantially the same invalidity arguments, under
`the same claim construction standard, as in the District Court. Prelim.
`Resp. 19; Ex. 2004 (Invalidity Contentions).
`Petitioner notes that the Petition seeks review of all claims of the ’735
`patent, not merely those at issue in the parallel proceeding. Reply 6; see
`also Ex. 2004, 1 (claim 20 appears to be at issue in the parallel proceeding).
`Further, as noted above, Petitioner has filed in the District Court
`“a stipulation that, if IPR is instituted, they will not pursue in the District
`Court Litigation any ground raised or that could have been reasonably raised
`in an IPR.” Id.; Ex. 1038. Petitioner contends that, because of this
`stipulation, there will be no overlap of invalidity issues between the parallel
`district court proceeding and this inter partes review. Reply 6.
`Patent Owner contends that the stipulation is “unclear” as to whether
`Petitioner reserves the right to proceed based on other references cited in the
`invalidity contentions. Sur-reply 4. We disagree with Patent Owner’s
`contention here. The portion of the stipulation quoted by Patent Owner,
`states in full that the “stipulation is not intended, and should [not] be
`construed, to limit [Petitioner’s] ability to assert invalidity of the asserted
`claims . . . on any other ground (i.e., invalidity under §§ 101, 112).”
`Ex. 1038, 7 (emphasis added). Petitioner’s stipulation also unequivocally
`states, however, that it “will not pursue in this case the specific grounds . . .
`[in] the instituted inter parties [sic] review petition, or on any other ground
`. . . that was raised or could have been reasonably raised in an IPR (i.e., any
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`ground that could be raised under §§ 102 or 103 on the basis of prior art
`patents or printed publications).” Id. at 6–7 (emphasis added).
`Petitioner’s stipulation here mitigates any concerns of duplicative
`efforts between the district court and the Board, as well as concerns of
`potentially conflicting decisions. See Sand Revolution 12. Importantly,
`Petitioner broadly stipulates to not pursue any ground raised or that could
`have been reasonably raised. Reply 6. As noted in Sand Revolution, such a
`broad stipulation better addresses concerns of duplicative efforts and
`potentially conflicting decisions in a much more substantial way. Sand
`Revolution 12 n.5. Accordingly, Petitioner’s broad stipulation ensures that
`an inter partes review is a true alternative to the district court proceeding.
`Id.
`
`Thus, we find that this factor weighs strongly in favor of not
`exercising discretion to deny institution under 35 U.S.C. § 314(a).
`
`Factor 5: whether the petitioner and the defendant in the
`parallel proceeding are the same party
`
`Petitioner and Patent Owner acknowledge the parties are the same in
`the inter partes proceeding and in the parallel proceeding. Prelim. Resp. 20;
`Reply 6–7. Thus, this factor supports denying institution. See Fintiv DI 15;
`Sand Revolution 12–13; cf. Fintiv Order 13–14 (“If a petitioner is unrelated
`to a defendant in an earlier court proceeding, the Board has weighed this fact
`against exercising discretion.”).
`
`17
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`IPR2020-00954
`Patent 9,788,735 B2
`
`
`Factor 6: other circumstances and considerations that impact
`the Board’s exercise of discretion, including the merits
`
`As discussed below, on this preliminary record, Petitioner has met its
`burden of demonstrating a reasonable likelihood that it would prevail in
`showing that claims of the ’735 patent are unpatentable.3 Although we
`recognize the record may change during trial, as discussed in detail below,
`Petitioner has made a sufficiently persuasive showing, on the record
`presently before us, that the prior art references cited in the Petition teach or
`suggest all limitations of the challenged claims. See Fintiv Order 14–15
`(discussing the merits of the Petition as a consideration).
`We determine that this factor does not weigh for or against denying
`institution in this case
`
`Conclusion
`
`We take “a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review” when considering
`the six Fintiv factors. Fintiv Order 6. Our holistic review of the Fintiv
`factors, namely that the timing of the Petition was reasonable, the relatively
`limited investment in the parallel proceeding to date, that there is minimal
`potential overlap of the two proceedings, and that the merits of the Petition
`are reasonably sufficient, indicates that the Fintiv factors weigh in favor of
`instituting inter partes review. As such, we are not persuaded that the
`
`
`3 The parties include arguments directed to the merits of the asserted
`grounds in their discussions of Factor 6. See Reply 7; Sur-reply 4–7. We do
`not rely on these arguments in our determination below that Petitioner has
`presented a reasonable likelihood of success on the merits (see infra Sections
`II.D–L).
`
`18
`
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`IPR2020-00954
`Patent 9,788,735 B2
`
`interests of the efficiency and integrity of the system would be best served
`by invoking our authority under 35 U.S.C. § 314(a) to deny institution of a
`meritorious Petition. For the reasons discussed above, we decline to deny
`institution under § 314(a).
`
`
`B. Principles of Law
`
`1. Obviousness
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented 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. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). 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 ordinary skill in the art; and (4) objective evidence of
`nonobviousness.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In
`that regard, an obviousness analysis “need not seek out precise teachings
`directed to the specific subject matter of the challenged claim, for a court
`can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
`Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007).
`
`
`4 At this stage of the proceeding, the parties have not directed our attention
`to any objective evidence of non-obviousness.
`19
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`IPR2020-00954
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`
`
`2. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art “would
`have been a person with at least a B.S. degree in electrical or biomedical
`engineering or a related field with at least two years’ experience designing
`patient monitoring systems.” Pet. 14 (citing Ex. 1003 ¶¶ 25–32). Patent
`Owner does not offer any rebuttal on the current record.
`Based on the current record and for the purposes of this Decision, we
`adopt Petitioner’s proposed description of the person of ordinary skill in the
`art.
`
`
`
`C. Claim Construction
`In an inter partes review for a petition filed on or after November 13,
`2018, a claim “shall be construed using the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`[§] 282(b).” 37 C.F.R. § 42.100(b) (2019). In applying this claim
`construction standard, we are guided by the principle that the words of a
`claim “are generally given their ordinary and customary meaning,” as
`understood by a person of ordinary skill in the art in question at the time of
`the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005) (en banc) (citation omitted). “In determining the meaning of the
`disputed claim limitation, we look principally to the intrinsic evidence of
`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17). Of course, “[t]here is a heavy presumption that claim
`terms are to be given their ordinary and customary meaning.” Aylus
`
`20
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`IPR2020-00954
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`
`Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1358 (Fed. Cir.
`2017). “Properly viewed, the ‘ordinary meaning’ of a claim term is its
`meaning to the ordinary artisan after reading the entire patent.” Id. (quoting
`Phillips, 415 F.3d at 1321).
`Petitioner contends that “the terms of the unexpired ’735 patent’s
`claims are to be given their plain and ordinary meaning, as understood by
`one of ordinary skill in the art, in view of the ’735 patent’s specification.”
`Pet. 14. Petitioner further states that “the Board need not construe any claim
`terms to find the claims invalid.” Pet. 14–15, n.1. At this stage of the
`proceeding, Patent Owner does not propose any specific term or phrase need
`be construed.
`
`Only those terms that are in controversy need be construed, and only
`to the extent necessary to resolve the controversy (e.g., whether the claim
`reads on a prior art reference). See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). At this stage of the
`proceeding, we give the claim terms their plain and ordinary meaning and
`determine that it is unnecessary to further construe any claim term.
`
`We do note, however, that the claims require “sensor communication
`p
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