Trials@uspto.gov
`571-272-7822
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`Paper 12
`Date: December 1, 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.
`____________
`
`IPR2020-01015
`Patent 9,795,300 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`
`
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`Paper 12
`Date: December 1, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01015
`Patent 9,795,300 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
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`IPR2020-01015
`Patent 9,795,300 B2
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`
`INTRODUCTION
`
`I.
`A. Background and Summary
`Sotera Wireless, Inc. (“Petitioner”)1 filed a Petition requesting inter
`
`partes review of claims 1–20 (“the challenged claims”) of U.S. Patent No.
`9,795,300 B2 (“the ’300 patent,” Ex. 1001). Paper 1 (“Pet.”). Masimo
`Corporation (“Patent Owner”) filed a Preliminary Response to the Petition.
`Paper 6 (“Prelim. Resp.”). Pursuant to our authorization (Paper 7),
`Petitioner filed a reply to Patent Owner’s Preliminary Response (Paper 10,
`“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 11,
`“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. 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); see also
`37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the
`Director.”). 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
`
`
`1 Petitioner identifies Hon Hai Precision Industry Co., Ltd. as a real party-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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`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.
`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
`The parties identify 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 ’300 patent. Pet. 2; Paper 4, 1. Patent Owner also
`identifies the following inter partes review proceedings involving patents
`asserted in the parallel proceeding:
`IPR2020-00912, challenging U.S. Patent No. 10,213,108;
`IPR2020-00954, challenging U.S. Patent No. 9,788,735;
`IPR2020-00967, challenging U.S. Patent No. RE47,244;
`IPR2020-01019, challenging U.S. Patent No. RE47,353;
`IPR2020-01033, challenging U.S. Patent No. RE47,249;
`IPR2020-01054, challenging U.S. Patent No. 9,872,623;
`IPR2020-01078, challenging U.S. Patent No. RE47,218; and
`IPR2020-01082, challenging U.S. Patent No. 10,255,994.
`Paper 4, 2.
`Patent Owner further identifies various applications that claim priority
`to, or share a priority claim with, the ’300 patent. Id. at 1–2.
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`C. The ’300 Patent
`The ʼ300 patent is titled “Wearable Portable Patient Monitor.” Ex.
`1001, code (54). The ’300 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 ’300 patent is directed to
`“[a] wearable portable physiological monitor configured to wirelessly
`transmit real time information regarding a plurality [of] physiological
`parameters.” Id. at code (57). As is further described in the Abstract:
`The portable monitor includes a plurality of sensor ports, where
`at least a first sensor port is positioned on a side of a housing of
`the portable monitor such that, when the portable monitor is
`attached to an arm of a patient, a wired connection extending
`from the first sensor port to a first physiological sensor
`positioned on a digit of the patient follows a path to the digit of
`the patient that avoids tangling of the wired connection. The
`portable monitor further includes one or more processing devices
`configured to cause display of parameter values, combine
`information indicative of the signals into a single word or bit
`stream, and encode and generate a baseband signal. Further
`includes a transmitter to modulate the baseband signal and
`wirelessly transmit.
`
`Id.
`
`The ’300 patent additionally expresses that a drawback to
`“[c]onventional physiological measurement systems,” is the requirement of a
`“patient cable connection between sensor and monitor.” Id. at 2:23–24.
`And describes the problems related with “disconnection of monitoring
`equipment and a corresponding loss of measurements,” when needing to
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`move patients. Id. at 2:24–28. A goal of the ’300 patent is to allow wireless
`pulse oximetry monitoring. Id. at 2:34–38; compare Fig 12, with Fig. 3.
`Figure 3 of the ’300 patent is reproduced below.
`
`Figure 3 above illustrates “a physiological measurement
`
`communications adapter.” Id. at 4:3–4. Communications adapter 300
`includes sensor module 400 and monitor module 500. Id. at 4:49–50.
`
`
`
`
`2 Figure 1 is labeled “Prior Art” and is described as “an illustration of a prior
`art pulse oximetry system.” Id. at 3:66–67.
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`Figure 4A of the ’300 patent is reproduced below:
`
`
`Figure 4A above shows an embodiment of sensor module 400. Id. at
`
`5:28–29. Sensor module 400 includes wrist-mounted module 410 includes
`wrist strap 411, case 412 and auxiliary cable 420. Id. at 5:29–31. Auxiliary
`cable 420 mates to sensor connector 318 and provides a wired link between
`sensor 310 and wrist-mounted module 410. Id. at 5:35–38. 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. 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 5:56–62. In such embodiments, the wearable device can communicate
`with multiple sensors, and a multiple parameter sensor module with sensor
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`interfaces and signal processors may be used as depicted in Figure 13
`(reproduced below). Id. at 11:54–67.
`
`
`
`Figure 13 depicts a functional block diagram of a sensor module
`configured for multiple sensors. Id. at 4:26–27.
`
`D. Illustrative Claim
`Claim 1 is illustrative of the claims at issue and is reproduced below
`in chart form with Petitioner’s added designations for ease of discussion in
`this Decision:
`Designation
`Claim1
`Preamble
`1(a)
`
`Claim Language
`A wearable, portable physiological monitor
`configured to wirelessly transmit real time
`information regarding a plurality physiological
`parameters, the portable monitor comprising:
`
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`
`Designation
`Limitation
`1(b)
`
`1(c)
`
`1(d)
`1(e)
`
`1(f)
`
`1(g)
`
`1(h)
`
`1(i)
`1(j)
`
`1(k)
`
`Claim Language
`a plurality of sensor ports positioned on a housing of
`the portable monitor and configured to provide
`respective wired interfaces with different respective
`physiological sensors of a plurality of physiological
`sensors, wherein:
`at least a first sensor port of the plurality of sensor
`ports is positioned on a side of the housing of the
`portable monitor such that, when the portable monitor
`is attached to an arm of a patient, a wired connection
`extending from the first sensor port to a first
`physiological sensor positioned on a digit of the
`patient follows a path to the digit of the patient that is
`substantially perpendicular to the side of the housing
`and avoids tangling of the wired connection;
`one or more processing devices configured to:
`receive, via the plurality of sensor ports, a plurality of
`signals from the plurality of physiological sensors, at
`least some of the plurality of signals including digital
`information, and at least some of the plurality of
`signals including analog information;
`cause to be displayed, on a display of the portable
`monitor, a plurality of physiological parameters
`values responsive to the plurality of signals;
`combine information indicative of the plurality of
`signals into a single digital word or bit stream; and
`encode the single digital word or bit stream to
`generate a baseband signal; and
`a transmitter configured to:
`modulate the baseband signal with a carrier to
`generate a transmit signal; and
`wirelessly transmit the transmit signal to a remote
`patient monitoring device configured to decode the
`signal and display, on a remote display, the plurality
`of physiological parameters values responsive to the
`plurality of signals.
`
`Ex. 1001, 13:12–49.
`
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`
`Independent claim 16 (also challenged) is similar to claim 1 and
`directed to a “battery-powered wearable physiological monitoring device.”
`Id. at 14:44–45. Claim 16 specifies that a “plurality of sensor
`communication ports” includes a first, second, and third sensor
`communication port. Id. at 14:48–66. Similar to claim 1, claim 16 also
`distinctively requires “the first signal including analog information,” and
`“the second signal including digital information.” Id. at 15:3–7.
`
`E. Evidence
`Petitioner relies on the following references:
`Reference
`
`Exhibit
`
`U.S. Patent No. 6,840,904 issued Jan. 11, 2005 (“Goldberg”)
`PCT Publication No. WO 00/42911, published on July 27, 2000
`(“Kiani”)
`EP0880936A2 published on Dec. 2, 1998 (“Akai”)
`U.S. Patent No. 5,919,141 issued on July 6, 1999 (“Money”)
`PCT Publication WO 96/15994, published on May 23, 1996
`(“Taylor”)
`U.S. Patent No. 5,793,413 issued Aug. 11, 1998 (“Hylton”)
`
`1005
`1006
`
`1007
`1008
`1009
`
`1010
`
`Petitioner also relies on the Declaration of George E. Yanulis
`
`(Ex. 1003) in support of its arguments.
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims of the ’300 patent are
`
`unpatentable based on the following grounds (Pet. 6):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–20
`103(a)
`Goldberg, Kiani, Money
`
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`Claim(s) Challenged
`1–20
`1–5, 10–20
`1–5, 10–20
`
`6–9
`6–9
`
`
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`
`103(a)
`103(a)
`
`Reference(s)/Basis
`Money, Kiani, Akai,
`Goldberg, Kiani, Money, Taylor
`Goldberg, Kiani, Money,
`Taylor, Hylton
`Goldberg, Kiani, Money
`Money, Kiani, Akai, Taylor,
`Hylton
`
`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 NHK3 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,
`
`
`3 NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
`(PTAB Sept. 12, 2018) (precedential).
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`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.
`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. 14–15;
`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. 17.
`On May 29, 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.
`
`(1) 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. 14–15; Reply 2–3. Patent Owner
`contends that a “stay is unlikely.” Prelim. Resp. 14. In particular, Patent
`Owner contends that many courts, including the Southern District of
`California finds 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
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`Revolution II, LLC v. Cont’l Intermodal Group – Trucking LLC, IPR2019-
`01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand
`Revolution”).
`
`(2) 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.
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`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.
`
`(3) Factor 3: investment in the parallel proceeding by the court
`and parties
`Patent Owner contends that “the parties and [District] Court have
`invested substantial resources litigating the issues before the court—
`including patent validity.” Prelim. Resp. 17. 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
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`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
`arguments presented in its March 20, 2020, invalidity contentions. Prelim.
`Resp. 16–17. 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 two 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).
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`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).
`
`(4) 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 ’300
`patent, not merely those at issue in the parallel proceeding. Reply 6; see
`also Ex. 2004, 1 (claims 16–20 of the ’300 patent are asserted 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.” Reply 6; 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 . . . to limit [Petitioner’s]
`ability to assert invalidity of the asserted claims . . . on any other ground
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`(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 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).
`
`(5) 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. 18–
`19; 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
`
`18
`
`
`
`IPR2020-01015
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`
`unrelated to a defendant in an earlier court proceeding, the Board has
`weighed this fact against exercising discretion.”).
`
`(6) 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 ’300 patent are unpatentable.4 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.
`
`(7) Conclusion—No Discretionary Denial
`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, and that there is
`
`
`4 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.E–G).
`
`19
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`IPR2020-01015
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`minimal potential overlap of the two proceedings, indicates that the Fintiv
`factors weigh in favor of instituting inter partes review. As such, we are not
`persuaded that the 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.5 See 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).
`
`
`5 At this stage of the proceeding, the parties have not directed our attention
`to any objective evidence of non-obviousness.
`20
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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. 14–15 (citing Ex. 1003 ¶¶ 27–32). Patent
`Owner does not dispute Petitioner’s contention on the current record, or
`propose its own assessment of the level of ordinary skill in the art.
`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. We also note that the applied prior art reflects the appropriate level of
`skill at the time of the claimed invention. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`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
`
`21
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`IPR2020-01015
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`1312–17). Of course, “[t]here is a heavy presumption that claim terms are to
`be given their ordinary and customary meaning.” Aylus Networks, Inc. v.
`Apple Inc., 856 F.3d 1353, 1358 (Fed. Cir. 2017). “Properly viewed, the
`‘ordinary meaning’ of a claim term is i
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